Opinion of the Court.

The claim of the patent is as follows:

"The combination, with the packing, such as herein specified, of an elastic backing or cushion of vulcanized india-rubber, substantially as and for the purposes set forth.”

The patent so referred to, issued to McBurney June 28, 1859, was No. 24,569, and was granted for an "improvement in packing for stuffing-boxes of pistons." The specification. and drawings of the McBurney patent were as follows:

"Fig. 1 is a plan of the packing in the sheet; Fig. 2, a strip as it is bent into a circle when it is in use. Fig. 3, a section through a stuffing-box with the packing inserted. The hempen packing heretofore employed in stuffing-boxes is not easily adjusted so as to produce a uniform pressure upon all sides of the rod, and an elastic, durable, and substitute for it has long been a desideratum. In experimenting for this purpose I have laid together a suitable number of plies of canvas or cotton cloth with india-rubber between them, forming a cake of packing, which was afterward cut into strips. This was found to be objectionable for three reasons: 1st, the longitudinal threads of the canvas rendered the strips of packing very difficult to bend so as to insert it into the stuffing-box; 2d, thể short transverse threads prevented the packing from yielding with a sufficient ease when the follower was brought upon it; 3d, the longitudinal threads of the strips were drawn out of place by the motion of the rod, leaving the packing with an uneven surface. The same packing was then cut into rings, the inner circle of which was of the diameter of the rod and the other circle of a diameter just sufficient to fill the stuffingbox; but it is obvious that this method of cutting the packing is very wasteful of material, as each stuffing-box requires a ring of a particular size both upon its inner and outer circle, and, as the ends of the threads are exposed to wear at four points around the circle, while at the four intermediate points the sides of the threads are exposed, these rings wear very irregularly, and when worn they become useless. To remove all these objections is the object of my present invention, the nature of which I will now proceed to describe. I take 25 pounds of india-rubber, 2 pounds of sulphur, and 4 to 8 pounds

Opinion of the Court.

of silica or plumbago. With this compound, after it is suitably ground and mixed, canvas or other suitable fabric of cotton, linen or hemp is coated upon each side and a sufficient number of plies of such fabric are united by a heavy pressure or by rolling. The packing is then vulcanized, and to prepare it for use it is cut diagonally into strips (as seen in Fig. 1). These strips are then cut of the right length and are bent into rings (Fig. 2), which are inserted into the stuffing-box, as seen in Fig. 3, in which A is the box, B the follower, C' the packing, D the valve or piston-rod. In lieu of cutting the packing into short strips and bending it into rings, as above described, a longer strip may be wound spirally around the rod, the pressure of the follower bringing it to a uniform bearing upon the rod. It will be observed that, when cut diagonally, as above described, the ends only of all the threads are exposed to wear, by which it is caused to wear slowly and uniformly, whilst there are no longitudinal threads to resist the action of bending the strips, and they are consequently easily coiled within the stuffing-box; also, as there are no threads running transversely of the packing, it is easily caused to expand against the rod by pressure, and thus, as the packing wears, it may be again and again tightened up by bringing down the follower. In lieu of making the packing of continuous strips of canvas the latter may be cut into lozenge-shaped pieces, Fig. 4, which when matched together (Fig. 5) may be cut longitudinally, as upon the line y y, and produce the same effect.

"The compound which I have given above is that which I prefer for the manufacture of the packing, but both the ingredients and the proportions in which they are used may be variously modified without altering the spirit of my invention. Even the vulcanizing process may be dispensed with, and I do not, therefore, restrict myself thereto, but what I claim as my invention and desire to secure by letters patent is a packing for stuffing-boxes composed of canvas and india-rubber, as set forth, and cut diagonally, as described."

The answer to the bill denied infringement, and alleged that Gately was not the first and original inventor of the thing patented, referring to various prior patents, and setting up that,

Opinion of the Court.

in view of the state of the art at the time of Gately's alleged invention, the claim of the patent was too broad, covering more than that of which Gately was the first and original inventor; that the specification failed to distinguish sufficiently what was novel from what was old in the art, and was not

distinct and clear; and that, in view of the state of the art, what was described and claimed in the patent exhibited no invention on the part of Gately. Issue being joined, proofs were taken, and the case was heard before Judge Nixon, then the district judge, who entered an interlocutory decree in favor

VOL. CXLI-22

Opinion of the Court.

of the plaintiff for an account of profits and damages and a perpetual injunction. The court, in its opinion, 27 Fed. Rep. 362, held that the patent had been infringed by the defendants, and decided, in view of the exhibits put in to show anticipation and want of patentability, that the combination of Gately involved invention. On the report of the master, exceptions to which were filed by the defendants and waived and withdrawn, a final decree was entered for the plaintiff, for $9026.66 profits and $742.05 costs. The defendants have appealed.

On the question of novelty and patentability, the defendants introduced the following letters patent: English patent No. 384, October 14, 1852, to Joseph Henry Tuck; English patent No. 1865, August 25, 1854, to the same; United States patent No. 13,145, June 26, 1855, to the same; English patent No. 19, January 4, 1865, to Edward Keirby; English patent No. 647, March 8, 1865, to Francis Wise; English patent No. 2064, August 11, 1866, to John Edwin Keirby; and United States patent No. 63,071, March 19, 1867, to James P. McLean. They also introduced certain devices testified to by the witnesses Allen Magowan, William F. Harrison, William W. Smith, James S. Lever, and S. Lloyd Wiegand.

The Gately packing is an improvement on the McBurney packing; and the Gately patent claims the combination with the McBurney packing of the elastic backing or cushion of vulcanized india-rubber which Gately's specification describes. The McBurney patent describes a packing made of alternate layers of canvas and india-rubber, the whole being vulcanized into one homogeneous mass. McBurney, in his patent, explains as an important feature connected with his invention, that the layers of canvas are to be cut bias, so that the strip of packing, when finished, will be sufficiently flexible to enable it to be bent around the piston-rod and placed in the stuffing-box with comparative ease, which would not be the case if the canvas were cut along the line of any one thread. The packing, after being thus made, is to be so used that the ends of the threads are exposed to wear that is to say, are to lie against the moving surface of the piston-rod. Gately says, in his speciti

Opinion of the Court.

cation, that this McBurney packing did not possess a sufficient amount of elasticity to operate satisfactorily in all conditions that is, the gland of the stuffing-box would not force the packing with such tightness against the piston-rod that a tight joint would result. The improvement of Gately consisted in the combination with the McBurney packing of a vulcanized rubber backing of pure gum- that is, gum free from layers of canvas, which backing was to lie between the portion of the strip of packing which was made in accordance with the McBurney specification, and the walls of the stuffing-box. Gately states that this backing is to be vulcanized to that portion of the packing which is to be subjected to wear, and the whole is to form one homogeneous mass which can be put into and taken from the stuffing-box as a single piece. The portion of the strip which is made according to the McBurney patent furnishes a wearing surface, the character of which always remains the same and is not altered under wear; and the pure rubber at the back furnishes an elastic backing, which serves always to keep the wearing portion of the packing in close contact with the piston-rod, when such pure gum backing is pressed upon by the gland of the stuffing-box. By this combination a new article results, namely, one which presents always the same character of surface under wear, and one which has sufficient elasticity to make a tight joint. The union by vulcanization of the front and back portions of the strip of packing serves also to insure the position of the packing in the stuffing-box, which result would not be attained if the front and the back portions were formed separately and placed in the stuffing-box as separate articles, the result of such union being that the ends of the threads of the parts submitted to wear must always be in contact with the piston-rod.

We think there was patentable invention in producing this article of Gately's, in view of everything put in evidence by the defendants, and in view of the McBurney patent. In the United States patent to Keirby, and the English patent to Keirby, the packing shown differs from the Gately packing in that the wearing surface is not entirely on one side of the strip of rubber which gives elasticity to the packing, but