Claims 1 and 2 of letters patent No. 178,463, granted June 6,
1876, to George M. Peters for an improvement in tools for attaching
sheet metal moldings, on an application filed March 7, 1876,
namely,
"1. A sheath for applying metallic moldings, said sheath being
furnished with a stop for advancing the molding, all substantially
as and for the purpose specified. "
Page 129 U. S. 531
"2. The within described sheath for applying metallic moldings,
said sheath being furnished with recesses
f' g', and a key
G, or their equivalent stops, as and for the purposes
explained,"
cover improvements which are merely adaptations of old devices
to new uses, not involving invention.
Claim 3 of the patent, namely,
"3. A sheath composed of two grooved bars A E B E', bolts or
screws C, and washers D, whereby the sheath is rendered capable of
adjustment to contain moldings of different diameters, as herein
set forth,"
is not infringed by an apparatus in which no washers are used
for adjustment.
In equity to restrain an alleged infringement of letters patent.
Decree dismissing the bill, from which complainant appealed.
The case is stated in the opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity, brought in the Circuit Court of the
United States for the Southern District of Ohio in January, 1882,
by George M. Peters against the Active Manufacturing Company, for
the alleged infringement of letters patent No. 178,463, granted
June 6, 1876, to the plaintiff, George M. Peters, for an
improvement in tools for attaching sheet metal moldings, on an
application filed March 7, 1876. The specification, drawings, and
claims of the patent are as follows:
"My invention comprises a peculiarly constructed sheath or
holder wherewith the ornamental molding on the top of the carriage
dashes may be applied in the most expeditious manner, and without
bending or buckling or otherwise injuring or marring either said
molding or its supporting dashboard. In its preferred form, said
sheath consists of a two-part holder or receiver, connected
together with bolts and washers, and provided with a longitudinal
groove or channel of such size and shape as to readily enclose the
molding that is to be applied to the upper edge of the dash, a key
or other suitable
Page 129 U. S. 532
stop being fitted within the sheath to prevent the molding
slipping through said longitudinal groove when the device is in
use."
"The sheath is rendered capable of carrying moldings of various
lengths and sizes by an arrangement of adjusting devices, whose
details of construction will be hereinafter more fully
explained."
"In the accompanying drawing, forming part of this
specification, Fig. 1 is a perspective view of a two-part sheath in
an inverted position, the middle portion and rear end of the device
being broken away. Fig. 2 is a perspective view of the molding
detached from sheath. Fig. 3 is a plan showing the molding located
within the sheath. Fig. 4 is a longitudinal section through the
rear end of the sheath, with a screw-stop for the molding to bear
against. Fig. 5 is a transverse section at the line
x x,
showing the molding encased within the sheath, and Figs. 6 and 7
represent modifications of the holder."
"A and B represent two metallic bars of any appropriate size,
and having their lower outer edges slightly beveled off at
a and
b. These bars are maintained in a parallel
position with reference to each other by means of bolts or screws,
C, and washers or fillings, D. Instead of washers and bolts or
screws, C, the bars may be maintained in parallel position and
separated or brought nearer together by means of right and left
screws, the right-hand thread of said screw engaging a female screw
in one bar, and the left-hand thread engaging a female screw in the
other."
"The bar A has a longitudinal groove E formed along its inner
surface and near the lower edge of said bar. E' is a precisely
similar groove, made in a other bar B, and when the two members, A
B, of the sheath are joined together the grooves E E' form a
channel that is approximately circular in its transverse section. F
represents a hook, shackle, or link pivoted to the front end of the
sheath and guttered at
f to avoid contact with the upper
edge of the dash. The bars are furnished with undercut notches
g g' to receive a detachable key G, which latter serves as
a stop or "
Page 129 U. S. 533
image:a
Page 129 U. S. 534
"abutment for the rear end of the molding to rest against. A
series of similar notches may be made in the bars A B at such
distances from the front end of the sheath as will correspond with
the various lengths of moldings, or, if preferred, the notches and
key may be dispensed with, and a screw H may be arranged for the
molding to bear against, as seen in Fig. 4. This screw may be
adjusted out or in to agree with the length of molding."
"The advancing end of the sheath is rounded off at I so as not
to tear up the leather coverings of the dash while the molding is
being applied. The molding consists of a sheet metal tube J having
a longitudinal slot or parting K and a flaring or trumpet-mouthed
end L. This trumpet mouth is located at the forward end of the
molding."
"As represented in Fig. 7, the sides of the molding M are
straight and have an outward flare, the top of said molding being
somewhat crowning. This illustration shows a three-part sheath, the
two outer bars N N' being secured to the central member O by right
and left hand screws
n n', and nuts P. Fig. 6 represents
the sheath as made of a single piece of metal, or other suitable
material."
"Previous to using the sheath, the key G is first inserted in
the notches
g g' at such a distance from the end I as will
correspond with the length of molding J, which latter is then slid
into the groove E E', the rear end of said molding being brought in
contact with the vertical edge of said key. When thus located
within the sheath, the flaring mouth L of the molding has a slight
projection beyond the chamfered end I of the bars A B, as
represented in Fig. 3. The carriage dash is then held perfectly
rigid, and the upper margins of the coverings of the same are
inserted in the flaring end L of the molding, after which any
suitable power is applied to the hook F to draw the sheath along
the top of said margins or projections. As the sheath advances, the
flaring mouth serves to conduct the leather margins into the slot K
of the molding, and as the grooves E E' prevent any radial
distension of the tube J, it is evident that the molding is caused
to embrace said margins in the most uniform and secure manner.
After the molding has
Page 129 U. S. 535
traversed the entire length of the dash, the sheath can then be
retracted, thereby leaving the tube J in its proper position upon
the dash, the flaring end L being either filed off or else disposed
of in any other suitable manner. During the progress of the sheath
along the top of dash, the molding is impelled forward by the key
G, and consequently no strain whatever is brought to bear upon the
flaring end L of the tube."
"As a considerable degree of force is required to anchor the
molding J securely to the leathern margins, it is evident that the
driving action of key G would have a tendency to buckle said tube;
but this defect is obviated by making the channel of the sheath of
such capacity as to allow a pretty snug fit of the molding within
it."
"When a longer molding is to be applied to a dash, the key G is
driven out and inserted in another set of notches nearer the rear
end of the sheath, or the same results may be effected by causing
the molding to abut against the end of screw H, the latter being
adjusted either out or in so as to agree with the length of molding
that the sheath is to carry. The width of channel E E' may be
increased to receive a molding of greater diameter by removing
washers or filling, and inserting thicker ones in their place, or
by turning the right and left-hand screws, where the latter are
employed."
"It is preferred to make the sheath of two pieces on account of
the facility of grooving them, but it is evident the holder may be
made of a greater or less number if desired. (See Figs. 6 and 7.)
It is also preferred to have the sheath embrace the molding as
completely as possible, so as to bring the lower edges of the bars
A B near the parting K, and thereby prevent any spreading of the
tube at said slot; but if the tube is sufficiently stiff to prevent
such spreading, the sheath need not surround the molding so
completely. This modified form of sheath is shown in Fig. 6."
"Furthermore, the sheath may be composed of wood lined with a
metallic bushing. It is evident that this form of sheath may be
advantageously employed for attaching sheet metal moldings for
tubes to various articles, and I reserve the right to use it for
any and every purpose that it is capable of. "
Page 129 U. S. 536
"What I claim as new and desire to secure by letters patent
is:"
"1. A sheath for applying metallic moldings, said sheath being
furnished with a stop for advancing the molding, all substantially
as and for the purpose specified."
"2. The within-described sheath for applying metallic moldings,
said sheath being furnished with recesses
f' g' and a key
G, or their equivalent stops, as and for the purposes
explained."
"3. A sheath composed of two grooved bars A E B E', bolts or
screws C, and washers D, whereby the sheath is rendered capable of
adjustment to contain moldings of different diameters, as herein
set forth."
"4. The combination of bars A E B E' and guttered hook or
shackle F
f for the object stated."
Infringement is alleged of claims 1, 2, and 3. The defenses
insisted upon are want of invention, want of novelty, and
noninfringement of claim 3.
The substance of the invention set forth in the specification is
the use of a sheath or holder or receiver having in it a
longitudinal groove or channel, in which is placed the molding that
is to be applied to the upper edge of the dashboard, the sheath or
holder, when pulled, drawing with it the molding over the upper
edge of the dashboard, and the key or stop being fitted within the
sheath or holder, to prevent the molding from slipping through the
groove. One useful effect of the sheath is to support the molding
laterally and prevent it from bending or buckling or injuring the
dashboard. Claim 1 covers the use of a sheath furnished with a
stop, which operates to prevent the further advancing of the
molding when it reaches the stop. Claim 2 covers the use of a
sheath with a stop formed by means of notches or recesses, and a
detachable key to be inserted in the notches. Claim 3 covers a
sheath composed of two grooved bars, parallel to each other, and
having bolts or screws connecting them and washers between them, so
as to render the apparatus capable of being adjusted to contain
moldings of different diameters.
The circuit court entered a decree dismissing the bill, from
which the plaintiff has appealed. The opinion of that court,
Page 129 U. S. 537
reported in 21 F. 319, says in regard to claims 1 and 2:
"The respondents' evidence establishes that as early as
September, 1867, Joseph P. Noyes, a manufacturer of combs at
Binghamton, New York, used a machine for putting moldings on combs
in which the molding was held in a sheath fitting it closely and
having an extension enough smaller to fit the comb. In this
extension there was a sliding follower fitted to abut against the
end of the comb. At the extreme opposite end of the larger part of
the sheath there was a slot across the sheath containing a key or
stop to prevent the sliding of the molding. The follower was
attached to a slide and lever so that when a molding was laid in
the larger part of the sheath, and the comb in the smaller part,
the comb, being prevented from bending by the walls of the sheath,
could be forced into the molding by the action of the slide and
lever upon the follower, the molding being prevented from bending
by the walls of the part of the sheath within which it was placed.
This machine was in use more than three years before the date of
the complainant's invention. That this was a comparatively small
machine and used only for applying moldings to combs is not
material.
Planing Machine v. Keith, 101 U. S.
490. Nor is it material that the groove or gutter was so
open in cross-section that the molding could be dropped into it.
Fig. 6 of the drawings accompanying the letters patent issued to
complainant shows a sheath of like shape, and is referred to in the
specifications as a modified form of the sheath patented, and the
claim is so broad as to cover any sheath, of any material, shape,
or size, for applying moldings to any article. There is nothing
more in the sheath patented to the complainant than an adaptation
of the sheath used at Binghamton to the application of moldings to
carriage dashboards -- an adaptation which would have occurred to a
skilled mechanic without the exercise of the inventive faculty. Had
the complainant's invention been first in time and patented, the
Binghamton sheath would have been an infringement; and, conversely,
had the Binghamton sheath been patented, the complainant's would
have been an infringement. That which infringes if later would
anticipate if earlier."
We concur in these views.
Page 129 U. S. 538
The affirmative evidence on the part of the defendant in regard
to the Noyes apparatus consists of the testimony of Noyes and
Yingling, their testimony having been taken in August, 1882. Noyes
testified that he had been engaged in making combs at Binghamton,
Broome County, New York, since 1860, and had, since 1864, made
combs with metallic moldings for stiffening the backs. He produced
one of such combs, marked "A," and one of such moldings, marked
"B." He further testified as follows:
"Q. 6. State whether or not you have ever used any machinery for
putting these moldings on combs."
"A. I have."
"Q. 7. Can you describe any of the machines used by you for
putting moldings on combs?"
"A. Yes. I have one machine in which the molding is held in a
groove, which fits it closely, and the same groove has an extension
enough smaller to fit the comb closely, and in this extension there
slides a follower, which is fitted abut against the end of the
comb. At the extreme opposite end of the larger part of the groove
there is a slot across the groove, containing a key or stop to
prevent the molding sliding through the groove. The follower before
mentioned is attached to a suitable slide and lever, so that when a
molding is laid in the larger part of the groove, and the comb in
the smaller part, the comb, being prevented from bending by the
walls of the groove, can be forced tightly into the molding by the
action of the follower and its connected parts, the molding being
at the same time prevented from bending by the walls of the larger
part of the groove."
"Q. 8. Can you produce a drawing illustrating the machine above
described, and its operation?"
"A. I here produce a drawing which illustrates said machine In
this drawing, Fig. 1, A, represents the main body of the machine.
In the part A is the groove C, and its smaller extension D, in
which are placed the molding and the comb, as described in my
previous answer. O represents the slot in which is placed the key,
marked 'Fig. 2.' E, Fig. 1, represents the follower B, the slide of
which the follower forms a part; L, K, M, and H the lever and
connecting parts by which E and B are operated. Fig. 3 shows an end
view of the slide and follower."
"Q. 9. Into which of the grooves do you
Page 129 U. S. 539
place the metallic molding?"
"A. Into the groove C."
"Q. 10. And into which the comb?"
"A. Into the groove D."
"Q. 11. In use, the key or stop, Fig. 2, is placed in the slot O
to prevent the metallic molding sliding, is it not?"
"A. It is."
"Q. 12. State whether the groove C in the sheath A effectually
prevents the metallic molding from bending as it is forced over the
back of the comb."
"A. It does."
"Q. 13. State how long you have used the above-described machine
for putting metallic moldings on combs in the manner
described."
"A. Since September, 1867."
"Q. 14. Can you fix the date by any positive evidence besides
your memory?"
"A. I can; I have referred to the time book of the men who made
the machines, and find the machine to have been finished at the
date named, and remember that it was put into immediate use."
"Q. 15. Has it been used ever since?"
"A. It has been in continued use ever since, without any
alteration."
"Q. 16. Have you ever made any effort to keep its use a secret,
or has it always been open to the inspection of any person who
might come into your shop?"
"A. I have made no effort to keep it secret, but the shop has
always been open to visitors, and anyone could see the machine who
cared to look at it."
The drawing so produced, marked "C," shows a machine
substantially like that of the plaintiff.
Yingling testified that he was at the time of testifying in the
employ of Noyes, and since 1868, or for about 14 years, had used a
machine like that shown by the drawing C, above referred to, for
putting metallic moldings upon combs. Noyes had stated, on
cross-examination, in answer to a question as to who made the
machine he had described as made in 1867, that William Knopp and
his son were in his (Noyes') employ as machinists at that time, and
worked some on it; that his time book, kept at that time, which he
had consulted, contained a record of the fact that Knopp and his
son so worked on the machine, and that the machine was built during
the first week in September, 1867. In rebuttal, the plaintiff
examined as witnesses William Knopp and three persons named Newman,
Coyle, and McAuley.
Knopp testified that he was employed in Noyes' comb factory
Page 129 U. S. 540
from 1865 to 1869, and was familiar with the kind of machinery
manufactured by them during that time for use in their comb
factory. He then proceeded:
"Q. 5. In September, 1867, or at any other time, did you make
machinery for putting metallic backs on combs?"
"A. I did."
"Q. 6. Without going into detail as to the kind you did make, I
will ask you whether, in September, 1867, a you made, or helped to
make, a machine for putting moldings on the backs of combs where
the molding is held in a groove which fits it closely, and the same
groove has an extension enough smaller to fit the comb closely, and
in this extension there slides a 'follower,' which is fitted to
abut against the end of the comb. At the extreme opposite end of
the groove there is a slot across the groove, containing a key, or
stop, to prevent the molding from sliding through the groove. The
follower is attached to a suitable slide or lever, so that, when a
molding is laid in the larger part of the groove and the comb in
the smaller part, the comb is prevented from bending by the walls
of the groove, and can be forced tightly into the molding by the
action of the follower and of the connecting parts."
"A. I do not remember that I made anything of that kind."
"Q. 7. Did you at any other time make such a machine?"
"A. I don't remember that I did."
"Q. 8. Please examine the comb I now hand you, and state whether
Noyes Bros. & Co. at that time when you worked for them and
since, manufactured a comb with metallic back similar to this one,
and if so state how said metallic back was put on the comb? [Comb
marked 'Exhibit A' shown witness, and offered in evidence by
solicitor for complainant.]"
"A. They manufactured a comb in general appearance similar. The
metallic back was put on and fastened to the comb by compression.
The back was compressed in a vice to make it fit in a groove in the
comb tightly. The molding was placed on the comb by hand and then
put in a vice and the molding pressed up tightly against the
comb."
"Q. 9. Do you remember working on or making machinery for
compressing the molding on the comb as above described?"
"A. I do."
"Q. 10. Is the mode above described the only way Noyes Bros.
& Co. put metallic moldings on that kind of a comb?"
"A. It is."
"Q. 11.
Page 129 U. S. 541
You were familiar at that time with the mode employed by them
for putting moldings on combs, were you?"
"A. I was."
This testimony of Knopp is very inconclusive. He merely
testifies, thirteen years after he had left Noyes' establishment,
that he does not remember that he made, fifteen years before the
time when he was testifying, a machine like that described in
question 6, put to him. The drawing produced by Noyes was not shown
to Knopp.
The testimony of Newman, Coyle, and McAuley amounts to nothing.
Although they were employed in the comb factory of Noyes at the
time they gave their testimony in December, 1882, and had been
employed their, Newman from 1862, Coyle for 14 or 15 years, and
McAuley for about 30 years, neither of them was shown the comb A
nor the molding B nor the drawing C, above mentioned, nor was a
distinct question put to either of them as to the use of a machine
like that described in question 6 put to the witness Knopp.
The only difference between Noyes' device and that of the
plaintiff is that in Noyes' the stop holds the molding stationary
while the comb is forced into the molding by the action of the
follower. But its action is substantially the same as that of the
stop in the plaintiff's patent, which prevents the molding from
slipping through the groove.
The case falls within the principle applied in
Pennsylvania
Railroad v. Locomotive Truck Co., 110 U.
S. 490, and cases there cited.
As to the third claim, it is not infringed because, in the
defendant's apparatus, no washers are used for adjustment.
The decree of the circuit court is affirmed.