, 93 FEDERAL REPORTER.
eXiistIng in, the, 'previous devices, aithollgh such changes are highly advan,far better and more efficacious and convenient, does not make the improved ,deVice patentable. In order to be patentable, it must embody some neW Idaaor principle, not before known. It must, as before stated, be a discovery, as distinguished from mere mechanical skill or knowledge. Atlantic WQrks v. Brlldy, 107 U. S. 192, 200, 2 Sup. Ct. 225; Hollister ,y. Manufacturing Co., 1:!-3 U. S. 59,5,Sup. Ct. 717; Thompson v. Boisselier,114 U. S. 2, 11, 5 SuP. Ct. 1042; Trimmer Co. v. Stevens, 137 U. S. 423, 433, 11 Sup. Ct. 150; Andre'*s v. Thum, 33 U. S. App. 39, 15 C. O. A. 67, and 67 Fed. 911."
In Grant v. 14;8 U. 'So 547, 13 Sup. ct. 699, the supreme court, speaking by Mr. Justice Jackson, said:
"The most that ca,n be said of this Grant patent is that it is ,II discovery of II new use for an old deVice, which does not involve patentability. * * * The advantages claimed for it, and which it no doubt possesses to a considerable degree, cannot be beld to this result; it being well settled that utility cannot contr,ol the language of the statute, which limits the benefit of the patent laws to things which are new as well as useful. The fact that the pawpted article has gone into general use is evidence of lts utility, but not conclusive of that, l\nd still less of its.,patentable novelty."
The supreme courtof the United States, in the case of Aron v. Railway Co., 132 U. So 84, 10 Sup. Ct. 24, said, as stated in the syllabllilof said case:
"The same devices employed by him [the patentee] existed in earlier patents. All he did was to adapt them to the special purpose to which he contemplated their application, by making modification$' which did not require invention, but only the exercise of ordinary mechanical 'skill; and his right to a patent must rest upon the n'ovelty of the means he contrived to carry his idea Into practical IlJpplication." "
error in' the decree
frOIn, and it is affirmed.
R'Y-AN ·v. RUNYON et al. Court of Appeals, Circuit. May 4, 1899.)
A patent tor an lIln»;oved spring 1)llltt,ress made in tW9 parts, and in wh,icU,ac()nspicuoui:i, is the hinging the two sections together ,by "of ,a continu01,l!3"u,nl;>roken woven-wire facing, free from the ridge or hard unyielding hinge piece found in other hinged mat-, tresses, is not Infringed by a mattress in which the two sections have a central.lougitudinlj.1 ,il:'OIl brace· or· tie rod, which .allilo, ac.ts:as ia hinge rod, running through tbeupper facing of tue,p1atlress fr:om end to end.,·."
A patent for a bedbottolJI, in Which novelty consists altogether in connecting the, ends, of the stiffening rods or strips to the side edgeso( tb;ewoven-wire"fabric, Is Dot by a mattress In which ',there is no such connectlon,and whlcbhas its transverse tie wires attachedat their outer eJ;lds to the fXli-me. The'JGail 'patent, No. :399,,867,foran improvement in woven-wire mattresses or bed bottorus, construed, as limited by the prior state of the art to the specific formshowIl and described, and held not infringed.
The Ryan: patent, No; 403,143, relating to woven-wire mattresses or bed' bottoms, construed,as limited by 'the 'prior state of the art to the specific constructions, shown, ,and held' not infringed.
Appeal from the Circuit Court of the United States for the District of New Jersey. Stephen J. Cox, for appellant. C. Godfrey Patterson, for appellees. Before ACHESON and DALLAS, Circuit Judges, and BUFFINGTON, District Judge. ACHESON, Circuit Judge. This bill charges the defendants with the infringement of two letters patent,-one of them being No. 399,867, dated March 19, 1889, granted to Daniel H. Gail and John F. Gail, and the other of them being No. 403,143, dated May 14, 1889, granted to James B. Ryan. Each of the patents in suit relates to woven-wire mattresses or bed bottoms. It appears as well by the general proofs in the case as from the specifications themselves that these patentees were improvers in an old art. Manifestly neither of the patents is for a primary invention. In each instance patentability may be conceded. Nevertheless, these inventions, by reason of the state of the prior art, belong to that class in. which the patentee is to be restricted to the specific form of improvement shown and described by him. Railway Co. v. Sayles, 97 U. S. 554; Duff v. Pump Co., 107 U. S. 636, 2 Sup. Ct. 487. The distinguishing feature of the invention of the patent first above cited (No. 399,867) is thus clearly set forth in a written communication found in the file wrapper from the applicant's solicitor to the commissioner of patents, in answer to adverse citations of prior patents referred to by the office a.s anticipatory:
"His invention consists in the manner of hinging the two sections of a spring mattress by means of a continuous unbroken woven-wire facing, which not only presents an from side to side, as well as from end to end, of the mattress, but in itself forms a hinged connection between the two folding sections free from the ridge or hard unyielding hinge piece found in other hinged mattresses. The perfect smoothness and uniformity of bearing surface of a single mattress supported upon spiral springs is thus secured, with the convenience attending it mattress which is hinged to double and fold over upon itself, and such a combination is not found in the references."
The specification of the patent gives great prominence to this feature of the improvement, namely, the unbroken woven-wire facing. Thus it states:
"The impI'oved double mattr'ess is constructed of an upper facing or section, A, which is made to extend in an unbroken sheet from side to side of the bed, and of, two longitUdinal lower sections hinged together lengthwise by means of the upper section, to which they are attached." Again: "The unbroken upper facing or section, A, of the woven wire is stretched upon two metallic frames, B B, each of which is formed of a single iron bar bent to inclose three sides of a rectangle, the fourth side being left open." And still again: "The two frame.s, B B, are placed so as to bring their open sides opposite each other at the middle of the woven-wire sheet, A, at which point the ends of the wire frames, B B, are bent inward, and enter adjacent coilS of the woven web, a, as shown in Fig. 1, which thus becomes a hinge for said frames, B B, so that they may fold over on said middle line, e e, one upon the other."
Now, the defendants' mattress does not have the unbroken wovenwire facing of the patent. That distinctive feature of the Gail invention is entirely wanting in the defendants' bed bottom. On the
93 P'EDJIlRAI. REPORTEB.
CODtrary,aeenatral longitudinal iron brace or tie rod, Wllichal80 act. hifa hinge rod, runs through the upper facing 01' woven web of the defendants' mattress from end to end. The advantages which the patentees describe and claim for their mattress lll'e not attained by the defendants. In this respect the case is like that of Burns v. 100 U. S. 611; where it was held that there was no infringement. We agree with the circuit court that these two mattresses or bed bottoms are materially different, and that the defendants do Dot infringe the. Gail ,patent. . We concur, also, in the conclusion of the court below with respect to the other sued oD,-No,403,143. The claim of this patent alleged to beinfl'inged is the which is as folloWl";
. u(1) In a hE'd boUo\ll compo·cd of a frnmc nnd a \,'·Jycl;-wire fabric, tbe cam, binlltion, with lalJric, or stiffening rolls or .trips passed through Hs llleRlH.s, and lin vlng tbelr ends connectell to the sille edb"es of the fabtic, sulfstalltially: as described."
TIle noveltyDf this claim c6iisists Hltogether in connecting t.he ends of the transverse stitrening rods or s1 rips to the side edges of the woven-wire fahl'ic. 'The defendants, however, do not mal:.e sHch connection. 'I.'lle transverse wires in their Led bottoDJ are at· tached at their olltet· ends to the frame. Therefore the COUl't was ,·Ight in holding that was no infringement of this patent. We find no error in tb13 ,'e--'ol'd, and hence the decree of circuit .,;:ourt is allinued.
DUELl"CommissIoner No. 43.
Pnter\ts. April 4, 1890.)
(Circuit Court or Appeals, Second Circuit.
There 111 no ItlvenLlllI In merl'ly applying and adapting, to the plnnlng and grooving of cakeb u1' In!, IIwcltanism prevl\Jusly USet) In the pi:Willg of wood. The incorporation, Into the first claim of the Briggs pntent. No. 3fi7,2fl7. for an apparatus for planing cakes of Ice (whIch claim W:lS ndjudged Invalid by the circuit court of appeals), of new uJatter describing a cutter consisting of 4 number of points, which will not only cut, out g'l'Oove, the Ice in one operation, and of an Ice elenltor adaptcd to force the a"cending cakes of Ice Into contact with the cutter, would not make the claim patentable, so as to wal'rant a reissue. I
FOR CAKES OF
Appeal from the Circuit Court of the United States for the District of Connecticut. This cause com.es here upon appeal from a decree of the cir('nit dismh;singt he bill. 87 Fed. .J. 19. The court, district of facts are sufficiently set forth in the olJiniun. ,Benjamin F. Lee, for appellant. W. A. Megrath, .fo1' appellee. Before WALLACE, k\..COMBE, and Circuit ,Judges. Cireuit ,Judge. On July 26, 1887. n patent (No. 367,. 267) was grunledto dJe cUllllJlainulit fUL'J.lt:w and useful illiprovements
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