Fig. 2 Fig.3. Fig.A. ## Fig. 2 shows what the patentees describe as a "wire spiral." Fig. 3 shows a "corrugated" picket, and Fig. 4 the "convaluted" picket. The specifications state: "The action of twisting thereby compels the pickets to assume the positions shown in Figs. 2 and 4, depending on whether the spirally twisted pickets or the convaluted pickets are used; the principle, however, being the same in either case." The so-called "convaluted" picket is substantially the "crimped or kinked" picket of the second Hewitt patent. Whether simply "corrugated," "convaluted," "crimped," "kinked," "spiral," or bent into "angles," the office is the same, namely, to furnish seats or lodging places for the binding wires, and thus prevent slipping. They were all old forms and equivalents for the notches or grooves or horizontal channels cut in wood pickets or pailings for the same purpose. No new result was reached, and no new method of producing the result is shown. If it was old to reversely twist the wires upon each picket, it must be evident that the same "fine result" asserted for the claims of the Lane and Lane patent must have resulted whenever any "crimped," "kinked," or "corrugated" picket fence was constructed in the field by any of the old fence machines, which could not be operated without reversing the crank so as to reversely twist between each picket. That which was commonplace, whether as a result directly sought or incident to a usual mode of construction, cannot be novel. It is, in effect, an effort to incorporate upon the old art a function of the mechanism used in producing the fabric of the old art. That this fabric has gone into extensive use is an unsafe criterion by which to judge its novelty. Other causes have doubtless co-operated in creating a large sale. The commercial success of a patented article is only one element to be considered where patentability is otherwise in doubt. Manufacturing Co. v. Robbins, 43 U. S. App. 391, 21 C. C. A. 198, 75 Fed. 17; McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800. The decree holding both patents void and dismissing the bill must be affirmed. PERFECT CIGAR SHAPER CO. v. DOYLE et al. (Circuit Court, E. D. Pennsylvania. January 19, 1900.) No. 45. PATENTS-INFRINGEMENT-CIGAR SHAPERS. The Ogden patent, No. 530,794, for a cigar mold, consisting of a body and a cap, so formed as to engage with each other, and to be retained in connection by the friction of the parts, held valid and infringed. In Equity. This was a suit in equity for an infringement of a patent. On final hearing. Charles N. Butler and Frank P. Prichard, for complainant. MCPHERSON, District Judge. This bill is filed to restrain the alleged infringement of letters patent No. 530,794 and No. 587,600, both of which are owned by the plaintiff. The first-named patent has the following claims: "(1) A cigar bunch mold consisting of a tapering tubular body and a reversely tapering tubular cap, both of nonabsorbent material, one of said parts having at its large end a projecting flange serving to guide the other part into place, and to retain the same by friction thereupon, substantially as specified. "(2) A cigar bunch mold consisting of a tapering tubular body and a reversely tapering tubular cap, one of said parts having at its large end a projecting flange serving to guide the other part into place, and to retain the same by friction thereupon, substantially as specified." The third claim of the other patent is as follows: "(3) A cigar shaper consisting of a tubular body and a tubular cap, said body and cap each having a beveled rim, one rim being adapted to engage with the other, the inner contour of the body and of the cap being continuities of each other." I do not think it necessary to determine the validity of the third claim of No. 587,600, nor to decide whether or not the cigar shaper manufactured by the defendants infringes that claim. I am of opinion, however, that these shapers are a clear infringement of the two claims of No. 530,794, and nothing further need now be decided. Before the plaintiff's first patent was granted, no satisfactory cigar shaper had been invented. The makers of cigars recognized that such a shaper was much to be desired, and it was evident that a large supply could readily find a market. Other devices had previously been put into more or less extensive operation, but none of them had been successful at all points. None of them disclosed a mold or shaper such as No. 530,794 discloses, namely, a body and a cap so formed as to engage with each other, and to be retained in connection by the friction of the parts. This is the essence of the plaintiff's invention, and it was not anticipated by any patent that has been brought to our notice. It is therefore a valid invention, and, if it has been infringed by the defendant, the conclusion must follow that the plaintiff is entitled upon this patent to the decree. sought. In support of the denial of infringement, the defendants set up a patent granted to them, No. 585,348, under which they claim to be manufacturing the shapers complained of. It is not necessary to decide whether shapers manufactured under this patent would infringe the plaintiff's patent No. 530,794; for an inspection of the shapers manufactured and sold by the defendants makes it plain that they are not made under their own patent. The essential feature of their shaper is that the mouths, both of the body and of the cap, shall be flared; while the mouths of the shapers that they have been making and selling are not flared at all, but, on the contrary, are either straight or slightly inclined inwards. There is some confusion in the testimony, caused by the failure of some wit nesses to use words in their precise meaning. It will be found that some of the witnesses speak of a "flared" end or edge, when they really mean an end or edge that has been "reamed" or "beveled." If this is borne in mind, the apparent conflict in part of the testimony will be at once removed; or, if the testimony is read with the exhibits in hand, the meaning of the particular word used will be at once perceived. A decree may be drawn in accordance with this opinion, providing for an injunction and the usual accounting. BANNERMAN v. SANFORD. (Circuit Court of Appeals, Second Circuit. January 5, 1900.) 1. PATENTS-VALIDITY-PRIOR USE. Where A. and B. jointly invented and constructed an operative machine, containing a certain useful combination, A. is precluded, by the prior knowledge and use of such combination by B., from covering it by a patent procured in his own name for a different machine subsequently invented by himself; and it is immaterial by which of the two the combination was actually invented. 8. SAME-MAGAZINE FIREARMS. The Roper patent, No. 316,401, for a magazine firearm having an actu. ating hand-piece beneath the barrel, and connected with a piston-breech, for removing exploded shells and inserting cartridges without taking the gun from the shoulder, held invalid because of prior use. Appeal from the Circuit Court of the United States for the Southern District of New York. This is an appeal from a decree of the circuit court, Southern district of New York, dismissing bill of complaint (85 Fed. 448) in a suit for infringement of United States letters patent No. 316,401, granted April 21, 1885, to Sylvester H. Roper, for a magazine fire arm. The facts sufficiently appear in the opinion. Chas. G. Coe, for appellant. Geo. D. Seymour and Chas. R. Ingersoll, for appellee. Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. LACOMBE, Circuit Judge. The specification opens with the statement that the "Invention consists mainly in the combination, in a magazine firearm, of a piston-breech with an actuating-slide, provided with a hand-piece, arranged beneath the barrel, and acting as a support therefor, and adapted to be grasped by one hand and reciprocated, in a line parallel with the axial line of the barrel, while the other hand is employed in holding the stock of the gun against the shoulder of the person using it." In describing the drawings the specification further states that: "The piston-breech, E, is connected with and operated by the reciprocating slide-bar, F, provided with the handle, F. This handle, F', not only affords means of reciprocating the slide-bar, F, but also constitutes a means whereby the barrel may be supported. The handle therefore constitutes a support for the barrel." The brief of counsel for appellant contains an epitome of the tes timony of complainant's expert, which sets forth the invention described in the patent with sufficient accuracy, as follows: "The essence of the Roper invention is a magazine firearm so organized and constructed that the supporting, actuating handle, by reason of its location in front of the receiver, and of its combination and connection with the pistonbreech, performs the function of actuator operating the piston-breech to work the action mechanism of the gun, and also, by being at the proper time in exactly the right place to be grasped by the forwardly extended hand of the user, the function of supporting the gun at the moment of firing, thus insuring accuracy of aim and steadiness of fire." It will not be necessary to give further quotations showing what particular functions the piston-breech discharges, and precisely how, in the device shown in the patent, it brings about, when moved by the connection with the actuating hand, the ejection of the discharged shell, the removal of the new shell from the magazine, transference thereof to the barrel of the gun, and the closing of the parts in readiness for discharge, because, out of the 11 claims of the patent, only 6 are here in controversy, and in those 6 such details are not made elements of the claim. This is apparent from the text of the claims, which read as follows: "(1) In a magazine firearm, a piston-breech suitably connected to, and in combination with, an actuating sliding handle situated forward of the receiver, and serving as a means for supporting the barrel, and provided with a path of reciprocation in a line parallel with the axial line of the barrel. (2) În a magazine firearm, the combination of a piston-breech, a supporting-handle forward of the receiver, and movable in the direction of the length of the barrel, means connecting the handle and piston-breech, and means whereby the pistonbreech will be held in position during firing, substantially as specified. (3) In a magazine firearm, the combination of a piston-breech, a supporting-handle forward of the receiver, and means connecting the piston breech and supporting handle, so that when the supporting-handle is used the piston-breech will be moved in the same direction, substantially as specified. (4) In a magazine firearm, the combination of a piston-breech, a supporting-handle forward of the receiver, movable in the direction of the length of the barrel, and means whereby, when the said supporting-handle is moved back and forth, motion will be transmitted to the piston-breech so as to cause the latter to move back and forth, substantially as specified. (5) In a magazine firearm, the combination, with a barrel and a tubular magazine, of a piston-breech, a device whereby the passage of a cartridge from a point opposite the magazine to a point opposite the barrel will be effected, and a supporting-handle forward of the receiver, adapted to move in the direction of the length of the barrel, to operate the piston-breech, and to operate the device whereby the passage of a cartridge from the magazine to a point opposite the barrel is effected, substantially as specified. (8) In a magazine firearm, the combination, with a barrel and magazine of a piston-breech, a supporting-handle situated forward of the receiver, for reciprocating the piston-breech in the direction of the length of the barrel, and a device operated by the piston-breech, and serving to cause * * the passage of a cartridge from a point opposite the magazine to a point opposite the barrel, substantially as specified." A movable breechblock, which could be opened and closed in order to remove old shells, place new cartridges in position, and close the breech against explosion, was, of course, old in the art; and long before the patent in suit there were in use two well-known varieties of breechblock,-the "piston-breech," the principal mode of motion of which was forward and backward, or in a line parallel with the longitudinal axis of the barrel, and the "swinging-breech," the principal movements of which are sliding or rocking movements in planes which are transverse to the longitudinal axis of the barrel. We concur with the circuit judge that, both forms of breechblock being old, there would be no invention in the mere actuation of a pistonbreech by axial movement of the supporting handle, if the art already knew of the actuation of a swinging-breech by axial movement of such handle, although there might be field for improvement in the mechanism by which connection was made between the handle and breech, and in the mechanism by which the breech, when actuated, completed its necessary movements. But in the claims in suit the mechanism by which the breechblock operates is not made an element, and the mechanism for connecting handle with breechblock is referred to only by such phrases as "suitably connected," or "means connecting," "means whereby motion will be transmitted," "handle adapted to move the piston-breech," "handle for reciprocating the piston-breech." Among the patents set forth in the answer was one to E. M. Spencer and Sylvester H. Roper (the patentee of the patent in suit) for magazine firearms (No. 255,894, dated April 4, 1882). The description of this firearm is clearly set forth in the specifications, as follows: "It is the object of our invention to provide for the recharging of a magazine-shotgun without requiring the gun to be taken down from the position in which it has been fired. We accomplish this result by means of a forked slide provided with a handle, which is arranged beneath the barrel, in convenient position to be grasped and reciprocated by one hand while the gun is held against the shoulder by the other hand, which grasps the stock. One arm of the forked slide carries at its end a laterally projecting pin, upon which is a friction roller which traverses a cam-groove provided with a spring-tongue or switch-cam in the side of an oscillating breechblock." Here follows a detailed description of the mechanism by which the handle is connected with the breech, and of the mechanism by which the breechblock performs its functions in removing old shells, supplying new ones, etc. The specification proceeds: "It will be understood that, while the devices which we employ may be variously modified, the leading feature of our invention—the prime mover of the mechanism by which the desired results are accomplished-is the forked slide provided with a handle forward of the breech, in a convenient position to be grasped by the hand and reciprocated in a path substantially parallel with the barrel, while the other hand grasps the stock and holds the gun against the shoulder in firing position." The similarity between this statement of invention and that set forth in the patent in suit is most striking. The evidence, however, shows that the firearm of the patent in suit was actually made (Feb |