gently moving it, or it passes under the package and allows it to fall back to its original position with a shock.

Friedman's roller has an entirely different function, to enable a barrel to be pitched while being rolled up an incline. It is adaptable only to barrels, and not to other packages. It rolls the barrel off the conveyer.

Plaintiff's rollers on the crossbars have the sole function of so moving packages not properly placed on the elevator that the next flight will properly engage them. The roller, in passing under the package, moves it slightly forward without danger to the package. They act thus in co-operation with the other parts of the structure, and produce a combination both useful and novel.

Infringement is practically conceded, if validity of the claims is established. The slight differences in detail are immaterial as to the claims in issue.

Decree affirmed.

MUNSON MFG. CO. v. DEERE & CO.

(Circuit Court of Appeals, Seventh Circuit. January 7, 1919.)

No. 2614.

PATENTS 328 VALIDITY AND INFRINGEMENT-REVOLVING CLOD FENDER. Munson patent, No. 1,025,420, claims 1 and 4, for an improved revolving clod fender for use with a corn cultivator, held not anticipated and valid, and infringed by a device of similar shape and operation, but constructed of malleable castings, instead of wire, as described in the claims. Appeal from the District Court of the United States for the Northern Division of the Southern District of Illinois.

Suit by the Munson Manufacturing Company, a partnership, against Deere & Co., a corporation, for infringement of patent No. 1,025,420. From a decree dismissing complainant's bill, complainant appeals. Reversed, with instructions to enter decree for complainant.

W. R. Bair, for appellant.

Albert H. Adams, of Chicago, Ill., for appellee.

Before BAKER, ALSCHULER, and EVANS, Circuit Judges.

EVANS, Circuit Judge. The patent to Munson, No. 1,025,420, covering a "revolving clod fender," describes a device attached to a corn cultivator standing between the cultivator shovels and the plants; its function being to permit a quantity of fine earth to roll up close to and around, but not covering, the plants.

There have been two kinds of clod fenders-one, the stationary kind, consisting ordinarily of metal sheets interposed between the shovel and the plants; the other, to which appellant's device belongs, is known as the rotary clod fender. These fenders are disc-shaped devices formed with toothed or serrated edges and designed to turn on their axes by reason of the contact of the edge with the earth. The prior art con

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

(257 F.)

tained such fenders with openings or slots through which some fine earth could pass. The following illustrations will show types used prior to Munson's patent:

The two claims in suit are 1 and 4, and they read as follows:

(1) A revolving clod fender, comprising a suitable hub and spokes radiating therefrom, said spokes being formed of looped wire secured to the hub at their open ends.

(4) In combination with a cultivator having spaced beams, stems fixed at their forward ends to said beams, said stems converging rearwardly and bent into parallel planes at their rear end portions, pivot bolts in rear end portions of said stems, and revolving clod fenders mounted on said pivot bolts and spaced apart, said fenders comprising radiating spokes of looped wire clamped together at their open ends.

That such slight changes would produce new results or new functions might well seem, on first impression, questionable.

It is claimed, however, and the evidence seems to support the claim, that the fender with the loop structure made it possible for the operator to better loosen the ground, and put the dirt close to and around the stalks of corn and at the same time quite effectively prevent the covering of the young plants.

More specifically, it was claimed that the fine earth is piled up around the stalks; that the loops which have been imbedded in the fine earth by reason of the operation of the shovels carry some of the earth upward and toward the plants; that where the plants, for some reason are knocked to one side by the dirt, the loops in the clod fender draw the leaves of the plant out from under the dirt, thereby avoiding stops by the operator to uncover the plants.

The evidence shows that plaintiff's device went into immediate and extensive use. While this may have been in part a matter of advertising and the result of appellant's energy in pushing its product on the market, it was not necessarily or entirely so. Appellee's experience confirms appellant's claims. It used rotating fenders in the early eighties and sold many between the years 1885 and 1890. Thereafter the rotating fender went out of the market and was not again used until 1916, when appellant's device came into use. Thereupon appellee, having the merits of the fender fully set forth to it by Munson, provided some of its cultivators with the infringing device, and its use by appellee multiplied with surprising rapidity.

The best prior art citations are Hench (Fig. 2), Eisenhart (Fig. 1),

and Allison (Fig. 3). Eisenhart's patent deals with cultivators, a fender merely being shown in the drawings. The patent to Hench also deals with improvements in cultivators; the disclosed fender being quite similar to the one which appellee adopted and later discarded. The Allison patent covered a fender (see Fig. 3), the claim being as follows: "The arrangement of the rotary perforated clod guards n n combined with the plows bb, and beams D D, constructed and operating as herein set forth." In his specifications Allison says:

"On the inside of each of the inside plows b b, I place clod guards, n n, which are little wheels suspended by rods p p to the plow beams, and made with spokes or open lattice work of any kind, to allow the finer soil to sift through as they travel alongside of the plows when at work, while the larger clods are turned aside and prevented from being thrown upon the young plants."

Appellant's assignor did not, of course, patent a revolving clod fender as such, but merely the specific construction or fender described in the claims quoted above.

The file wrapper does not detract from the force of appellant's claims. The first claims filed were too broad and were rejected. Present claims 1 and 2 and others were then presented, and the examiner rejected original claim 4, because completely covered by present claim. 1, stating that

"Any novelty in the claim resides in the specific construction of the fender." With this ruling claimant acquiesced. In this we find nothing inconsistent with appellant's present asserted position. We conclude both claims are valid.

Noninfringement.-Appellee bases its defense of noninfringement upon the use of the word "wire" in the two claims involved. That its infringing fender otherwise responds to the claims in question is not open to dispute.

Herewith is presented a figure of appellee's fender, with each alternate loop removed and loops taken from the Munson clod fender substituted.

Grant appellant's invention is not a pioneer, and his claims are limited, and that he deals merely with an improvement in a revolving fender, yet a fair application of the doctrine of mechanical equivalents, we think, compels us to include appellee's structure. With appellant's device before it, with its merits and advantages fully explained by a representative of the Munson Manufacturing Company, appellee constructed a fender which, outside of the material and the way it was made, is in all respects similar to appellant's fender. Appellee, however, makes its fender of malleable castings.

(257 F.)

Although using the word "wire" in its claim, the patentee should not be restricted to this material, nor should appellee be permitted to escape infringement by reason of the substitution of malleable castings for wire. While the substitution of different materials may, under certain circumstances, avoid infringement by the user, such a conclusion could not well be reached in the present case. All the previously used revolving fenders were made of metal, some of steel, some of malleable castings. In the prior art citations of the Patent Office were revolving wire fenders. The novelty could not be said then to lie in the metal. The problem which Munson successfully attacked was solvable, not by the use of a particular metal, but by the construction of the loops. We think infringement is shown.

The decree is reversed, with costs, with instructions to enter a decree in complainant's favor for an injunction and an accounting.

ROSEMARY MFG. CO. v. HALIFAX COTTON MILLS, Inc.
(Circuit Court of Appeals, Fourth Circuit. January 7, 1919.)

No. 1647.

PATENTS 328-VALIDITY-POWER LOOM.

The Patterson reissue patent, No. 12,159 (original No. 722,243), for power loom, held void, as claiming broadly a combination of Jacquard mechanism with a plain power loom equipped with an automatic weftreplenishing device, which was not the patentee's invention.

Appeal from the District Court of the United States for the Western District of Virginia, at Lynchburg; Henry Clay McDowell, Judge. Suit in equity by the Rosemary Manufacturing Company against the Halifax Cotton Mills, Incorporated. Decree for defendant, and complainant appeals. Affirmed.

William W. Dodge, of Washington, D. C., and Robert Fletcher Rogers, of New York City (Caskie & Caskie, of Lynchburg, Va., on the brief), for appellant.

Melville Church, of Washington, D. C. (Titian W. Johnson, of Washington, D. C., and Coleman, Easley & Coleman, of Lynchburg, Va., on the brief), for appellee.

Before KNAPP and WOODS, Circuit Judges, and ROSE, District Judge.

ROSE, District Judge. The plaintiff, the Rosemary Manufacturing Company, is the owner of reissued letters patent No. 12,159, granted September 29, 1903, to Samuel F. Patterson. It charges infringement by the defendant, the Halifax Cotton Mills, Incorporated. The lower court dismissed its bill, and it has appealed.

If the patent is valid, its claims can be read upon the looms used by the defendant. The latter, however, denies validity, and in the alternative says it has a license. In the view we take of the first con

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes 257 F.-21

tention, it is unnecessary to consider the second. In substance the claims are for a combination of Jacquard mechanism with a plain power loom equipped with automatic devices for replenishing or renewing the weft thread. The plain hand loom is milleniums old. More than a century has elapsed since men found how it might be driven by steam. The invention of Jacquard was made a hundred years or more ago, and for that length of time the combination of the Jacquard mechanism with the plain power loom has been in general use. As early as 1834 it was perceived that such a combination as the plaintiff now claims would be a great improvement in the art. In the year mentioned two British inventors obtained a patent for a loom which they thought embodied it. In point of fact their device did not work, and their machine does not anticipate the plaintiff's.

In many inventions there are two distinct steps: First, the conception of the general result wished for; second, the discovery of a way of obtaining it. In a large majority of cases, perhaps, the first may be obvious to every one interested in a particular art, and it is the second which calls for the exercise of inventive genius. But that is not always so. It may well be that two or more machines, appliances, or tools are old and well known. Some day it dawns on some one that, if they are combined, new and useful results will be obtained. It may be that, so soon as the advantages of the combination are understood, the means of bringing it about are within the capacity of any fairly skilled mechanic. In a third class of cases inventive genius may be required both in perceiving the combination that is desirable, and in finding out a practical way of making it.

In applying these platitudes to the instant case it will be seen that there is nothing new in Patterson's idea that the combination claimed by him would be useful. That was then at least 65 years old. All the greater would be the presumption of invention in one who after such a length of time found the way to attain the end. One who so succeeded could, it is true, not claim a monopoly of the combination, however brought about, because the conception of that combination was not his contribution to the art. But he would be entitled, not only to a patent for his way of making that combination workable, but also to an extremely liberal construction of his claim, so as to cover a broad range of equivalents. Unfortunately Patterson's claims are in fact for the combination, no matter how effected, and of that he was not the inventor. It is true that some of these claims apparently go somewhat into detail; but the patent does not clearly tell us in what the invention lies, unless it is in the combination, nor have we been able to discover in what other than such combination it is supposed to be found, although we have had the benefit of the testimony of highly qualified experts and of the briefs and oral arguments of able and experienced counsel.

The patent law requires the patentee to tell in what his invention consists. This is the rule, which we may not relax, even if we would; but this is a case which from every standpoint calls for its reasonable application. Why, after the desirability of the combination was perceived, did two-thirds of a century pass before it was effected. The