the gas has no hydrocarbon vapors to be broken up and fixed. Hydrocarbon gases and vapors are destroyed if exposed to a too high temperature; and the Siemens patent does not seem to offer a suggestion to assist an expert to ascertain that the superheater could be practically employed in treating hydrocarbon gases as they are required to be treated in the fixing chamber of the Harkness process, or the process of the complainants' patent. One of the experts for the complainants testifies, in substance, that the Siemens superheater was not designed to perform the functions of a fixing chamber; that "fixing" in gas-making is a term which is unquestionably limited to cracking up condensible hydrocarbon vapors into permanent hydrocarbon gases to effect a chemical decomposition, destroying one set of substances not suitable for illuminating gas, and creating another set of substances extremely valuable in illuminating gas; and that no such materials or products occur in the Siemens operation, and no such chemical changes result in the regenerating chamber of the Siemens apparatus. The patent is no more an anticipation of the present invention than the Harkness patent is. Any prior apparatus which would not produce the same results as the apparatus of the present invention cannot be substantially the same apparatus. The patent shows that a secondary chamber through which gas from a generator passes can be heated by placing refractory material within it to be envel oped by the gas. To this extent it is of some value, as showing the use of appliances, in principle like those of the complainants' patent, for a cognate purpose; and beyond this it is not valuable. The Harkness patent exhibits the present invention more nearly than does the Siemens patent, but the Harkness patent is not an anticipation of it, because the parts of the apparatus in combination do not operate in the same way to produce the same results. Invention was not necessarily absent in making the substitution of the fixing chamber of the patent for the fixing chamber of Harkness because Siemens had previously used his device to superheat a different gas. It would have been absent if the Siemens device had been obviously adapted to supply the place of the externally heated fixing chamber in the Harkness apparatus. But the inquiry is whether the adaptability of the Siemens superheater to fix the gas of the Harkness patent was self-evident to the intelligence of those skilled in the art. If it had been, why was not the substitution made? It introduced very desirable advantages into the process of making illuminating water-gas. The experts on both sides concede that the fixing chamber of the patent can be heated more economically and more quickly than the fixing chambers which were previously used as in the Harkness apparatus, or in similar apparatus. If the making of this change had been an obvious thing, falling within the range of ordinary mechanical adaptation, it is probable that those skilled in the art would have sought to avail themselves of its advantages; yet, as appears by the prior patents in the record, the more expensive method of fixing the gas in retorts heated by external fires was everywhere followed. The various manufacturers in this country who were making gas according to the Tessie du Motay process, and using the externally fired retort, did not discover

what it is now asserted was an obvious thing. The fact that the older organizations which it is now claimed were susceptible of being modified by mere mechanical skill into the apparatus of the patent remained without any such modification until the patentee made it, and his improvement when made was so useful and valuable as to commend itself at once to those skilled in the art to which it relates, is sufficient to resolve any doubt whether the improvement embodies invention in favor of the patent. A decree is ordered for the complainants.

PHILADELPHIA NOVELTY Manuf'g Co. v. Rouss.

(Circuit Court, 8. D. New York. July 8, 1889.)

1. PATENTS FOR INVENTIONS-REISSUE-HAIR-CRIMPERS.

Complainant's original patent embraced hair-crimpers of two kinds,-one in which the fabric is stitched to the soft metal core; the other in which the fabric is fastened to the core by a metal fold, made by turning over the thin edges of the core, or of a strip of sheet-lead inside the fabric over the core. The original contained the clause: "I also modify my invention in various other equivalent ways, such as would suggest themselves to any intelligent mechanic, " etc. The reissued patent contained claims for fastening the fabric to the core by cementing them together. Held, that the reissue was invalid, being an expansion of the original, and embracing a new, invention. 2. SAME-REISSUE-LACHES.

If it be conceded that the inventions claimed in the reissue were described in the original, then, such claims being expansions, and more than three years having elapsed after the original was granted before the reissue was applied for, the doctrine of laches applies, and the delay must be held unreasonable in the absence of explanatory averments in the bill.

In Equity. Bill for infringement of patent. On demurrer to bill.
Joshua Pusey, (H. F. Fenton, of counsel,) for complainant.
John J. Jennings, for defendant

WALLACE, J. All of the claims of the reissued patent in suit are for inventions not shown or suggested in the original patent, with the exception of claims 5 and 6. The invention of the original patent embraced haircrimpers of two kinds,—one in which the fabric is applied to the soft metal core by stitching, and another in which the fabric is fastened to the core by a metal fold made by turning over the thin edges of the core, or of a strip of sheet-lead inside the fabric over the core. Two of the claims (the third and sixth) were for the core separately, with modifications, and all the others were for the core with the fabric attached to it in one of these specified ways. The specification of both the original and the reissued patent closes with this clause: "I also modify my invention in various other equivalent ways, such as would suggest themselves to any intelligent mechanic to meet special requirements." It is insisted now for the complainant that fastening the fabric to the core by cementing them together is an equivalent mode of fastening them to stitching or turning v.39F.no.4-18

in the lateral edges of the core or its supporting strip. Claims 1, 2, 3, 4, and 7 are expansions of claims of the original, apparently intended to embrace the cemented fastening in the claims, as well as the fastening by stitching or turning over the edges of the metal. If it is true, as argued, that this is only the introduction of an equivalent into the claims, it was wholly unnecessary; and it may reasonably be assumed that the patentoffice did not so consider it. It must be held that these claims were designed to expand the claims of the original, and take in inventions which are not found in the original, and are therefore invalid. If it should be conceded that the inventions now claimed were described in the original patent, then, as the claims of the reissue are expansions, and more than three years elapsed after the original was granted before the reissue was applied for, the doctrine of laches applies; and the delay must be held unreasonable in the absence of any explanatory averments in the bill accounting for it. Wollensak v. Reiher, 115 U. S. 96, 5 Sup. Ct. Rep. 1137. The special demurrers to the bill are sustained. As the principal controversy has been upon the matters raised by these demurrers, costs are allowed to the defendant. The general demurrers are not sustained because, unless the patent is invalid for want of novelty, the fifth and sixth claims are good, and entitle the complainant to a decree for infringement; and the court cannot decide as matter of law upon the face of the patent without the aid of extrinsic evidence that those claims are destitute of inventive novelty.

THOMPSON et al. v. AMERICAN BANK-NOTE Co.

(Circuit Court, S. D. New York. June 28, 1889.)

PATENTS FOR INVENTIONS-STAPLE-DRIVING MACHINE-INFRINGEMENT.

Complainants' patent was a combination of an inclined and retreating anvil to sustain the wire of a staple while being bent, and to sustain the staple while being driven, with the bender-foot and driver, in a wire-stapling machine. The bender-foot boxed the prongs of the staples on all but their inner sides, while the inclined and retreating anvil filled the space between the prongs, retreating from the crown as it was driven, and thus the prongs were supported at all points while being driven. Held infringed by a machine in which the anvil was the same in shape and operation except that it did not fill the space between the prongs entirely to the crown, where support was

unnecessary.

In Equity. On bill for infringement of patent.
Horace Barnard, for complainants.

H. D. Donnelly, for defendant.

WHEELER, J. The patent in this case was before this court in Thompson v. Gildersleeve, 34 Fed. Rep. 43, and the validity of the third claim was there sustained. It was again before this court, on the same question of infringement that is here now, in Thompson v. Bank-Note Co., 35

Fed. Rep. 203. On account of doubts expressed in other cases, as to whether the device in question is an infringement of the combination of that claim, the matter has been fully heard and considered again now. Thompson v. Supply Co., 38 Fed. Rep. 112. That combination is of an inclined and retreating anvil, so called, to sustain the wire of the staple while being bent, and to support the staple while being driven, with the bender-foot and driver, in a wire-stapling machine, operating substantially as described. By the operation of these parts, wire staples are bent and driven through the material being stapled, without having holes first punched for the prongs of the staples. This had not been done before this invention. The bender-foot and driver, operating as in former machines, are here without question. The presence of the inclined and retreating anvil of the combination only is denied. The bender-foot boxed the prongs of the staples on all but their inner sides, and prevented their crippling in any other direction. The inclined and retreating anvil of the patent, after supporting the wire for bending by the bender-foot, by filling the space between the prongs, and retreating out of the way of the crown as the staples are driven home by the driver, supports the prongs on their inner sides, and prevents their crippling in that direction. Thus the prongs of staples of very slender wire are steadied in place and driven into the material. This invention underlies the use of the anvil for this purpose, and covers all forms of it based upon the invention. Railway Co. v. Sayles, 97 U. S. 554. In the machine of Thompson v. Gildersleeve the anvil was in two parts, one for supporting the wire while being bent and the other for supporting the prongs while being driven. Both were inclined in shape, and one retreated in one direction after supporting the wire in being bent, and the other retreated in the opposite direction, supporting the prongs as it went, both making room for the crown of the staple. Together these two parts constituted the inclined and retreating anvil of the patent, different in form, but accomplishing the same result in the same way. In the machine of this case now in question, the part of the anvil which supports the wire while being bent is precisely the same in shape and operation. The other part fills the space between the prongs in width, and supports them on their inward sides, and prevents them from crippling in that direction in precisely the same manner, and retreats out of the way of the crown of the staple in the same way. It does not fill the whole

space between the prongs of the staple in height to the crown, and does not support the prongs in that place while being driven. Support in that place is not necessary, and this difference appears to be wholly immaterial. All the support against inward crippling of the prongs furnished is by the same means, operating in substantially the same way. This is none the less an infringement, because more support is not furnished, especially when all that is useful is furnished. The conclusion. reached, after going over the whole ground again, is the same as that reached before.

Let there be a decree for a continuance of the injunction, and for an account, with costs.

DOBSON et al. v. CUBLEY.

(Circuit Court, S. D. New York. June 19, 1889.)

PATENTS FOR INVENTIONS-INFRINGEMENT.

Banjos made under letters patent issued April 3, 1883, to E. J. Cubley for improvement in banjos, in which the parchment rests directly on a rim consisting of a metal shell, in form like the old wooden rim, but differing from any rim previously made, and producing by such rim distinctive musical properties, do not infringe letters patent issued May 17, 1873, to C. E. Dobson, for an improvement consisting of a ring, either of metal or wood. to ease the wear of the parchment against the rim, and improve the tone of the instrument; nor do they infringe letters patent issued November 18, 1881, to Henry C. Dobson, whose improvement consists of a metal ring between the parchment and a rim of wood and metal, and which eases the parchment, as does the ring in the first patent, and produces a metallic musical sound.

In Equity. Bill to restrain infringement of patent.
Arthur S. Brown and Albert Comstock, for complainants..
Edward P. Wilder and Howard Henderson, for defendant.

WALLACE, J. The question in this case is whether banjos made conformably to the patent to Edwin J. Cubley, dated April 3, 1883, are an infringement of the patents granted one to Charles E. Dobson, dated May 14, 1873, and one to Henry C. Dobson, granted November 18, 1881, for improvements in banjos. The banjo of the first Dobson patent contains a dome-shaped ring, interposed between the parchment and a wooden rim. The ring may be of metal or of wood, and serves to ease the wear which the parchment is subjected to when the rim has an angular edge, and to improve the tone or resonance of the instrument. When the ring is made of metal, it imparts a metallic tone to the instrument. If made of wood, as it may be by the patent, it is doubtful whether the musical properties of the instrument would be improved. Whether the ring is made of metal or wood, the amount of material used will affect these properties. In easing the wear upon the parchment what is done by the ring was as well accomplished practically by the wooden rims, which were previously used, having the edge rounded where it came in contact with the parchment. The banjo of the second Dobson patent has a metal ring formed with two downwardly projecting flanges, interposed between the parchment and a rim composed of wood and metal. The ring is curved at the part which comes in contact with the parchment, and therefore serves to ease the wear upon the parchment similarly with the ring of the first patent. So much of the ring is out of contact with the parchment that it has a vibratory movement, and the ring thereby imparts a bell-like tone to the instrument; and the further this free portion extends beyond the point of contact with the parchment the more emphatic will be the metallic ringing or bell-like quality of the sound. Not only is the ring an element of each of the claims in controversy in both of the Dobson patents, but its peculiar form is essential in each invention in producing peculiar musical properties of the instru