In the reissue the invention is said to consist in

Combining in an extension lamp-fixture a shade-ring provided with a device for removably securing the shade to the ring, with the lamp attached to said shade-ring and a weight of ring form to serve as a counter-balance, the said ring-shaped weight and shade-ring connected by chains or cords over a suitable support above, so that the lamp and shade may be drawn down, the weight-ring rising from the shade-ring. The first claim of the reissue is as follows:

The combination in an extension lamp-fixture, of the shade-ring, a device for re movably securing the shade to the ring, the lamp attached to said shade-ring, the ring-shaped weight and shade-ring connected by chains or cords over a support above, substantially as described.

In the second claim the shade was added to the combination of the first claim. In view of the history of the original patent in the Patent Office and of the original specification, the claims of the reissue should be so construed as to compel the weight-ring to rest upon or crown the shade, meaning thereby the shade-ring. No adjudication upon the patent has ever been had. The invention has had great commercial success, and I shall assume that the validity of the patent has been, in substance, acquiesced in from its date to the time of its infringement by the defendant, which has recently entered upon the manufacture of a substantial imitation of the Evarts fixture, to the serious injury of the plaintiff. A temporary injunction must, therefore, be ordered, unless the defendant can show that, notwithstanding the acquiescence of the public, a fair and substantial question exists in regard to the validity of the patent, and that, therefore, it is proper that its validity should not be prejudiced by an injunction order, although the defendant has been until recently a stranger to the lamp business, and is seriously injuring its neighbors by this new rivalry,

The main question which the defendant presents is that of patentability, in view of the state of the art. The tendency of late decisions of the Supreme Court is to the effect that this question is one which is to be examined with increased care. Slawson v. Grand St., &c., R. Co., 24 O. G., 99, S. C. 2 Sup. Ct. Rep., 663; Atlantic Works v. Brady, 23 O. G., 1330, S. C. 2 Sup. Ct. Rep., 225.

The theory of the defendant and the two questions which, it seems to me, are of sufficient importance to call for a stay of judgment until final hearing, may be stated as follows: The Mitchell, Vance & Co., fixture, which preceded the Evarts invention, "employed a metal shade, to which the lamp-holder was riveted, so that it became a fixed and permanent part of the lamp holder. The end of two chains was attached to this shade. The chains, passing over pulleys above, thence down, were attached to a ring-shaped weight, which would set down upon the top of the shade," the weight being of the same circumference with the shade-top. The construction was not adapted to a glass or removable shade. The actual invention of Evarts was the adaptation of this construction to the necessities of a porcelain shade, and consisted in the same arrangement of ring-shaped weight and chains in connection

with the metallic rim which received the neck of the shade, and to which was directly attached the lamp-holder. The rim or ring of the shade was provided with a set-screw, so that the porcelain part of the shade could be disconnected from the rim for convenience in packing. The defendant says that this porcelain shade, with its metallic rim and lamp-holder directly attached thereto, was a well-known method of construction, and that when once the idea of a ring-shaped weight of the same diameter with the top of the shade, suitably connected by chains with the shade-top, which was also firmly connected with the lamp-holder, was known, the method of adapting the invention to the necessities of porcelain shades was a matter of the common knowledge of a maker of lamp-fixtures. Atlantic Works v. Brady, supra. second point is a more technical one, and is founded upon the principle which is thus stated in Pickering v. McCullough (104 U. S., 310).

The

In a patentable combination of old elements all the constituents must so enter into it as that each qualifies every other. It [the combination must form either

a new machine of a distinct character and function or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions.

The defendant says that the object of this improvement was so to construct a porcelain extension lamp-fixture that the lamp and shade could together be raised or lowered at the will of the operator, and would remain in position at any desired point; that a device for removably securing the shade to the ring contributes nothing to this result, and does not enter into the combination, so as to keep or co-operate with the other elements.

I am of opinion that, in view of the nature of these questions, the first more particularly, it is proper that an injunction should not be granted.

(United States Circuit Court - Northern District of New York.

THE CLARK POMACE HOLDER COMPANY 7. FERGUSON,

Decided July 10, 1×83.

24 O. G., 1090.

1. LETTERS PATENT TO JOHN CLARK, FEBRUARY 6, 1877, DECLARED INVALID. Letters Patent to John Clark, dated February 6, 1977, for an alleged improvement in cheese-formers for cider-presses, examined and found to be invalid, 2. COMBINATION OF OLD ELEMENTS-MUST CO-OPERATE.

All the component parts must so enter into the combination of old elements that each qualifies every other. If the elements of a combination act independently of each other, or if one element acts independently of the others, it is an aggregation of parts, and not entitled to protection as a combination. 3. SAME-NEW AND USEFUL RESULT,

It is indispensable to the validity of a combination claim that the parts nained therein should produce some new and useful result. Unless this is the case, even though the elements act reciprocatively and in combination, the requirements of the law are not satisfied. The combinations must be new; so must the result.

4. SAME-PRESUMPTION THAT ELEMENTS ARE OLD.

It is a presumption of law where a patent is claimed for combination simply that all the elements of the combination are old.

5. PUBLIC USE.

One instance of public use more than two years prior to application of patent is sufficient to defeat it.

Mr. Walter E. Ward and Mr. J. Van Santvoord for the complainant Mr. William H. King for the defendant.

COXE, J.:

This is an equity action for infringement of letters patent issued to. John Clark on the 6th day of February, 1877, for an aileged improvement in cheese-formers for cider-presses. The patent was subsequently assigned to the complainant. The patentee in the specification declares

The object I have in view is in laying up a "cheese" for the cider-press where each layer is folded up in a cloth, to secure uniformity of thickness of all the layers in the mass or cheese, and thus secure uniform pressure on its entire area, and to avoid all tendency to break the pomace frames or racks. To this end it consists in the employ ment of a guide-frame, in combination with extended pomace-racks, as more fully hereinafter set forth.

The claim is in the following words:

The guide-frame D, in combination with an extended pomace-rack, and a cloth to inclose a layer of pomace therein, substantially as described.

In the Cider Makers' Manual, published in 1869 by J. S. Buell, the author, after stating the advantages to be derived from the substitution of cloths for straw, as used in the old method of cider-making, proceeds to describe, at page 47, a plan which suggested itself to him in the fall of 1868, and which in its essential particulars is similar to the process described in the patent. After explaining how the frames are made, by placing laths or thin boards near together and nailing to them similar boards placed at right angles, he proceeds in these words:

These frames are designated and known as "pomace-frames," and are used in laying up a cheese as follows: First, place upon the platform of the press one of these frames, seeing that it covers the inner surface of the curb. Place upon the top of this frame the cloth or cloths, at the same time covering the inside of the rack with one thickness of cloth, laying the lower ends over the frame, and then fill in with pomace to the uniform depth of from three to five inches. Then lay on cloths, and upon the cloths place another frame, upon which lay other cloths, and add thereto five inches of pomace, thus building up successive layers of frames, cloths, pomace, cloths, frames, cloths, pomace, alternating in like manner until the curb is filled, and then proceed as before described. The frames separate the cloths and allow the free passage of the cider from all parts of the cheese through and between them, while the openings between the slats of the frames act as conduits for the liquid to the outside receptacle.

It also appears by other evidence that two years and more before the application cloths had been used in a precisely similar manner to that described in the patent, racks or frames had been used, so had guideframes. This is not seriously disputed by the complainant's counsel,

but they contend that the combination is new-that a guide-frame in combination with an extended pomace-rack and a cloth to inclose the layer of pomace was not used or known before.

Without pausing to consider the defenses of a purely technical character relating to defects in the drawings, omissions in the affidavit, and the like, it will be more satisfactory to examine in the light of recent adjudications the three questions which seem to be of paramount importance:

First, does the use of the various elements claimed in the patent constitute a valid combination?

Second, has the patentee discovered anything that rises to the dignity of invention and,

Third, was the precise process described in the patent known and used two years and more prior to the application?

The law as applicable to patents of this character would seem to be as follows: All the component parts must so enter into a combination of old elements that each qualifies every other. The result must be the product of the combination, which is patentable provided something new and useful is produced. If the elements of the combination act independently of each other, or if one element acts independently of the others, it is an aggregation of parts, and not entitled to protection as a combination. It is indispensable that a new and useful result should be produced either by the invention of a new thing or a new combination of old things. Unless this is the case, even though the elements act reciprocally and in combination, the requirements of the law are not satisfied. The combination must be new; so must the result. Hailes v. Van Wormer, 20 Wall., 353; Pickering v. McCullough, 104 U. S., 310; Reckenderfer v. Faber, 92 U. S., 347; Packing Co. Cases, 105 U. S., 566; Perry v. Co-operative Co., 12 Fed. Rep., 436; Welling v. Crane, 14 Fed. Rep, 571; Slawson v. Railroad Co., 14 Fed. Rep., 581; Stephenson v. Railroad Co., 14 Fed. Rep., 457; Manufacturiny Co. v. Meyers, 23 O. G., 1443; Doub leday v. Roess, 11 Fed. Rep., 737. Turning now to the patent in controversy, it may be said at the outset that the presumption of law where a patent is claimed for a combination simply is, that all the elements of the combination are old; but in addition to this presumption it is, as above stated, practically conceded that all the elements entering into this alleged combination are old. The proof sufficiently establishes the fact that cloths and racks had been used before; that they had been used both separately and in combination; and, further, that they had been used in combination with some device which if not technically a "guide-frame," enabled the manufacturer to produce a layer of postace" of a uniform depth of from three to five inches." So it would see that the only distinction that can be suggested between the old method and the method described in the patent is in the extended racksin the use of a guide-frame a few inches smaller instead of a few inches larger than the racks. The result sought and obtained in both cases 10452 P-26

was the expression of the juice from the pomace. Whether the new method possesses advantages over the old is left somewhat to conject ure by the proof. Perhaps the presumption that it does possess such advantages is a legitimate one, arising from the patent itself.

It is sometimes extremely difficult to distinguish between a meritorious combination and a mere aggregation of distinct parts, and the case at bar furnishes a new illustration of this fact. It is not quite easy to perceive how the use of the guide-frame causes any coaction or combination between it and the racks and cloths. No new result is produced by its use. The press operates in the old way. The cheese is pressed down and the juice forced out, as before. To what that is new or useful does the guide-frame contribute in connection with other devices ↑ In other words, suppose this patentee to be the first inventor of racks and cloths, could he be deprived of the benefits of his discovery in its simplest and most practical form by another person who should obtain a patent for such a combination as is described in the specification! Would it not be immediately insisted that the latter was simply using the old invention with the addition of a very simple and well-known mechanical contrivance which added to the old combination no new cooperative element? It would seem at least doubtful whether the guideframe, to any greater extent than the shovel with which the pomace is placed upon the racks, or the instrument with which it is "struck' level with the girts of the frame," acts in combination with the racks and cloths. The guide-frame has been removed and has ceased to perform any function before the racks and cloths begin to act reciprocally. It does not act on them or they on it. If straw or a solid platform were under the the guide-frame instead of the racks, it would perform the same office. To constitute a valid combination there must be a new result produced by the combined action of all the component parts. What is that result in this case? It may perhaps be admitted that the guide-frame operates more conveniently than the old devices, but something more than this is necessary to sustain a patent for a combination.

Second, assuming for the moment that there is here what the law recognizes as a combination, viz, such a union of separate and distinct parts that each operates upon and with the others, producing a new and useful result by their united action, the next question to be considered is, has this patentee invented anything worthy of protection! Before this patent cider-makers had an undoubted right to use racks and cloths in combination or alone, and they had also a right to use some device by which the pomace could be placed on the rack in layers of uniform thickness. Any man of ordinary mechanical ingenuity who wished to contine a yielding substance within prescribed limits would almost certainly make a frame of the desired size. Clark did this and only this. He nailed four boards of equal length together at the corners in the form of a hollow square and laid it on the rack. Why is