JOHNSON V. OLSEN.
increased, they, by fusing, break the circuit, and thus operate to secure immunity from the danger which otherwise would arise from the passage of the abnormal current beyond the point of their insertion. In addition to the fusible strip,llll automatic cut-offs comprise certain other requisite features in common; but it is not necessary to describe them. Each of the claims involved in this case is for a combination of physical parts constituting an integral organism, and, of each of them, terminals provided with lateral supports are an essential element. As to whether the defendants' arrangement embodies this element, the experts broadly differ. Having considered their testi· mony with care, and having also closely examined and compared the respective devices for myself, I have reached the conclusion that that of the defendants is, at least as to the element especially mentioned, materially different in structure from that of the plaintiff; and, furthermore,I am. convinced of the pertinency and soundness of the point made by the learned counsel for the defendants:
"That each terminal of each pair of terminals of the Shapleigh patent is an electrical device embodying lateral supports, and must necessarily so be, whereas but one terminal, at most, of each pair of defendants' terminals, is or need be an electrical terminal embodying lateral supports, and that, therefore, * * * defendants' device does not infringe the specific combination of the claims of complainant's patent."
Upon the ground that infringement of the plaintiff's patent by the defendants has not been shown, the bill is dismissed, with costs.
JOHNSON Y. OLSEN. (Circuit Court, D. Indiana. May 29, 1894.) No. 8,782.
PATENTS-LIMITATION OF CLAIMS-RE.JECTION AND ACQUIESCENCE.
The principle that ar Inventor who acquiesces iI!. the rejection of a claim is estopped from insisting upon such a construction of the claims allowed as would be equivalent to what was rejected, applies when the rejected claim is narrower, as well as when it is broader, than those allowed. Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 14 Sup. Ct. 627, followed. The use of lugs to prevent lateral movement having been long known and practiced, their adaptation to an excelsior machine, to prevent lat· eral movement of the sliding plate, involves no invention. Wooden bearings for excelsior machines being old, there is no inven· tion in placing the wood so that the grain will run vertically with the line of motion, instead of at right angles thereto.
The Johnson patent No. 452,553, for improvements tor excelsior machines, is void for want ot novelty and invention.
This was a suit by Jesse B. Johnson against Olaf R. Olsen for infringment of a patent for improvements in excelsior machines.
II. tor compla:inaht. Chester Bradford; for defendant.
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,BAKED, PlliJtdftJudge. This Is a suit Inequity-for. an tion,; and fol' ofdam.ages for tb;e, of letters patent of the United States No. 452,553, .sued May 19, 1891, "I ,to ,gn in machines. The "defendant ha$ fpterposed as groullds,of llcense, invention i .of ..the machine by, defendant, ,abandonmeIlt, two ,years' prior use, itMt.,the ,IQr aggregations, lack of .and lack of The the only one which . the"oourt deem, to pass the complainis void10r lack of n()velty and lack of invention. The . ot the is to enl;tple upright excelsior machines to 'of long, hair-like fibers from wood thaQ Pl1pl' had been· able to cut" ,and "to .produce a machine which coul,d. ;J>eoperated more cheaply, while it would last .,and ne£\d repaJrs. The claims as finally allowed, and originally:w.ade ,.and·,r,ejected, and,afterwards canceled by,oomplainant, and "al$o the various which appear in of the application on which the patent was granted, are 'as'f6'llows: .
Jan. 28, , machine a driving . . ' ,mec ' m earned thereo,n, a reclprocatmg frame carrYIPI knivesc ted to such driving mechanism, a pair of corrugated ro hold the block of wood in place. the lower roll jou d in boxing, upon the uprights, Dee. 16, '90. movable NrticaUlI upon ed bed-plate bolted to the jra'f'M the upper journaled on a meva'lll. eliQ!Rg plate, and
NOfJ. 28, '90.
to INCh sliding springs connected tRllPlltvitk whose tens' f'.
upper roll in contact with the wood, all combl stantially as shown and described. In an excelsior machine a. framework, driving . mechanism carried therein, reciprocating knives connected to the driving mechanism, a pair of corrugated rolls for holding the block of w.ood, the upper connected to a "i Blidingplate, a pair of springs connected to such sliding plate, for hdldinK the upper roll in contact 'With Dee. 16, '90. receB86d· .' the wood,tbe sliding plate upon a bed plate having lugs to prevent any lateral movement of th. NOfJ.#8.'IO. titftei Me oHllthll Jllt''Il''8868Hrl "8 slide and 'crank and gear mechanism connected to such lliding plate for lifting the same, all combined . stantially as shown and described.
'" . .. ..·. .' /i.
.JOHNSON W. OLSEN.
3, an excelsior machine a framework, driving meehan' I carried thereon, reciprocating knives connected to the driv' echanism, a pair of corrugated rolls for , receiving and ing the block of wood to be operated upon, the lower 0 "urnalled in boxings upon the upper one journalled in boxing. rights of the frame, t Dec. 15, '90. tJidili§ upon a r . bed-plate bolted to the fram, upon a plate, springs ected to such sliding
plate for holding the upper roll in wood, pinions connected to the sbaft 0 vertical shaft connected to and revolvable he main shaft provided with worms engaging with the corrugated rolls and so disposed that the upper at,· lower rolls revolve in opposite directions for holding the block of wood and feeding it to the knives, all combined substantially as shown and described. 2, 'li." In an excelsior machine a framework, driving mechanism carried in bearings thereon, a vertically .reciprocating slide frame carrying scoring and shaving knives connected to such driving mechanism, a pair of corrugated rolls for gripping and feeding the wood to the knives, the lower one journalled in boxings on the framework, the upper one journalled in bearings on a sliding plate, springs connected to such plate for holding the Dec. 15, '90. upper roll in contact with the wood, such ii8 eeld, ""! p6ild ""tl rece88ed Nov. 28, '90. sliding plate moving vertically in bed plates let into
Jan. 2!J, '91.
the framework provided with lugs for preventing the lateral movement of the slide, all combined substantially as shown and described. ,xcelsior machine the bed plate (8), in8ert A. Nov. 28, '90. the central portion S1et in and 1 s with lugs, substantially as and for the purpose 3. 5. In an excelsior machine the bed plate (8), its central portion recessed and let into the upright of the frame, its ends provided with lugs, A. in combination with a sliding plate (5) and an upper corrugated roll journalled therein, substantially as .shown and described.
4.. In an excelsior machine tqesliding ,pI,ate '(5) having a rack-bar at its upper end and a slot (1l} irat its lower end'secured' to the upright (f) of the frame aeeliHtersliftk Bel4i EO) RAa a Iewereeh (10), such 'plate upon abed plate (8) having its central part set back and lugs (1) upon its upper and lower ends, and having a boss (26), in combination with springs (2) connected to the sliding plate, substantially as ' shown and described.
Inanexcelsior machine a pair of corrugated rolls fa' Il:l'ipping a block of wood,. the lower one journalle :n, bearings 6n the framework, the upper one on a plate sliding vertically
Dec. 16, '90. ' . a rece88edbed-pi 'Ip' bolted to
Upon the framework,u 'lombination with springs connected to such slide for holding the .'lpperroll against the block of wood, the shafts of suci.rolls provided with pinions which engage with worms urm a vertical rod driven from the main shaft, whereby tUe 1 per and lower rolls are in opposite directions for 0 ipping . the wood and feeding it to the knives, all cOm bi. ad substantially as shown and . 5. '8....' In an excelsior machine a framework"plates connected to the sides thereof, auxilliary plates ad, justably connected to such side plates, wooden backings , connected to lugs, one to the adjustable plate and the other to the stationary plate, and set with the grain .of the wood vertically and at such a distance as to . permit the passage of the knives between such wooden backings, all combined substantially as shown and described. 6. '9., In an excelsior machine a framework, driving meohanismcarried thereon, a vertically slide frame carrying scoring and shaving knives connected to such driving mechanism, such slide frame provided with wooden baokings, the grain of the wood being vertical on either side, metal plates connected to the side of the framework, l;lnd means for adjusting the same to compensate for the Weal' of the parts during the operation of the machine, all combined substantially as shown and described.
:An' analysis and comparison of rejectedand claim 1 of the application, and the original claim 2 of the application, which became claim 1 of the patent, will show that the only ma-
terial difference between them is in the addition of lugs to the bed plate, and the crank and gear mechanism for operating the sliding plate in the claim allowed. Claim 1 of the application was rejected by the examiner on the distinct ground that it had been anticipated in former patents, American, English, and German. This decision of the examiner was acquiesced in by the complainant, and the rejected claim was canceled. The patentee having once presented his claim in that form, and the patent office having rejected it, and he having acquiesced in that rejection, is, under the repeated decisions of the supreme court, now estopped to claim the benefit of his rejected claim, or such a construction of his present claims as would be equivalent thereto. Leggett v. Avery, 101 U. S. 256; Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. 493; Crawford v. Heysinger, 123 U. S. 589, 8 Sup. Ct. 399; Union Metallic Cartridge Co. v. U. S. Cartridge Co., 112 U. S. 624, 5 Sup. Ct. 475. It is true that these were cases where the original claim was broader than the one allowed, but the principle is the same if the rejcted claim is narrower. Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 14 Sup. Ct. 627. Why the claims 1 to 4, inclusive, of the present patent were allowed after the rejection of claims 1, 3, 5, and 7 of the original application does not appear. The objections made to the claims as originally presented seem to be equally applicable to those allowed. The crank and gear mechanism for operating the sliding plate are old and familiar, and no novelty is shown in their combination or use. The lugs to prevent lateral movement of the sliding plate are made an element in the first four claims of the patent, and it would seem that they constituted the feature which was regarded by the exam· iner as distinguishing these four claims from the prior art. The nse of lugs to prevent lateral movement has been long known and practiced, and, even if this were not so, their application by the patentee as shown and described in his patent would not constitute invention. If lugs had not been previously used in excelsior machines, their use would have been readily suggested to a skillful mechanic familiar with such machines. If the springs connected with the sliding plate for holding the upper roll in contact with the wood were not the mechanical equivalent of the weights formerly in use to accomplish the same purpose (and I am inclined to think they are), still the springs were an essential part of the rejected claims, and, having acquiesced in their rejection, the complainant is now estopped to ask for such a construction of his present claims as would give him the benefit of his rejected claims. Claims 5 and 6 are in all their essential features old and well known, and conceded to be, except that the wooden linings in the slides are arranged with the grain of the wood running vertically with the line of motion. Wooden bearings, wooden linings for bearings, and wooden slides for bearings are all old and well· known devices. Wooden bearings for excelsior machines were known and in use prior to complainant's alleged invention, dillerv.61F.no.8-53
ing from it In· no .important particular except that the grain of the wood was placed at right angles with the line of motion. This change, in my. qpinion, does not constitute invention. In view of what has already been said, I do not deem it necessary to express any opinion upon the other grounds of defense. The bill will be dismissed fOl'want of equity, at complainant's cost.
ELECTRIC MANUF'G CO. et aI. v. EDISON ELECTRIC,LIGHT CO. et al. (OlrcuitCourt of Appeals, Seventh Oircuit. May 1, 1894.) No. 135.
PA1'EN'fS FOR INVENTIONS-ACTION FOR INFRINGEMENT-INJUNCTION. ·
Where a patent has been sustained after protracted and expensive litigation, the right of the owner to a preliminary injunction against a new , infringer can be defeated only by a new' defense, which is sustained by such convincing proof as to raise a presWnption that it would have defested the patent if produced at the original trial, and every reasonable doubt should be resolved against the new defense. 57 Fed. 616, affirmed. On a motion for a preliminary injunction against the infringement of letters patent No. 223,898, issued January 27, 1880, to Thomas A. Edison, for an improved electric lamp, there were ex parte proofs of an alleged anticipation by Henry Goebel in 1854, and subsequently. Held, that these were insu:ffictent to overcome the effect of the adjudications sustaining the patent, because of the improbability of Goebel's making so important a discovery without its becoming generally k,nown, and without his obtaining a patent for it. 57 Fed. 616, afIirmed.
2. SAME-ELECTRIC LIGHTS.
Appeal from the Circuit Court of the United States for the Eastern lJistrict of \Visconsin. Suit by the Edison Electric Light Company and the Edison General Electric Company against the Electric ManUfacturing Oompany, T. A. Pamperin, Julius B. Grunert, and George Beyer to restrain the infringement of a patent. Defendants 'appeal from an order granting a preliminary injunction.
The appellees filed their bill in the court below to restrain the infringement by the appellants here of the second claim of letters patent No. 223,898, issued to Thomas A. Edison, January ,27, 1880, for improvements in electric lamps, which claim is as follows: "The combination of carbon filaments with a receiver made entirely Qf glass. and conductors. passing through the glass, and from whic!;l receiver the air is exhausted, for the purposes set forth." By the original answer, the defendants below conceded that they had infringed the second claim as it had been construed by the courts, but afterwards, by amendment, denied infringement, substantially upon the ground that, by the proper and nalTower construction which they insisted should be given to the claim by reason of the' prior state of the art, founded upon an alleged prior invention by one Goebel, not considered in the prior litigation, the defendants' lamp. should not be construed as infringing upon the patented rights of the appellees. The patent itself was also attacked upon the ground of the alleged prior inventiouQf Goebel. The court below, upon a hearing, granted an injunction pendente lite., from which order this appeal is prosecuted. The case below is reported in 57 Fed. 616, where the facts are sufIiciently stated for the disposition of the case here.
W. H. Webster (Wm. H. Kenyon, JohnJ. Herrick, Allan D. Kenyon, and A. P. Smith, of counsel), for appellants.