inson that it would be simpler and better to adjust the armature shaft which carried the diaphragm, the actuating device.

[1] 1. Hutchinson changed the arrangement of the prior patents by turning up the motor from a parallel to a perpendicular position relative to the diaphragm; (2) he then provided the armature shaft with an adjustable and thrust screw, not as a part of the motor, but as a part of an outer case, and left the armature shaft loose in the case, so that he could adjust the cam towards the diaphragm with the end thrust screw. The first step, that of turning up the motor to a perpendicular position, was obvious; and after the first step was taken, the second step, that of providing the motor when turned up with means for adjusting it to vary the position of the cam with respect to the diaphragm, was also obvious.

The patent in suit contemplates no new function and accomplishes no new result. No new sound is produced. The substitution of a face cam for a rim cam is not a matter of importance. The two structures are merely mechanical equivalents. And this court is not prepared to hold that the taking of two steps, both obvious and not involving invention, and unpatentable when taken separately, involves invention and becomes patentable when taken in unison.

[2] It is, of course, true that invention may consist in the combination of old elements; the invention being in the combination. But the combination to be patentable must produce a new result or effect in the combined forces or processes from that given by their separate parts. The language of the Supreme Court in Reckendorfer v. Faber, 92 U. S. 347, 23 L. Ed. 719 (1876) is applicable here:

"The combination, to be patentable, must produce a different force or effect, or result in the combined forces or processes, from that given by their separate parts. There must be a new result produced by their union; if not so, it is only an aggregation of separate elements."

And in the same case the court declared:

*

"The law requires more than change of form, or juxtaposition of parts, or of the external arrangement of things, or of the order in which they are used, to give patentability. Curtis on Patents, § 50; Hailes v. Van Wormer, 20 Wall. 353 [22 L. Ed. 241]. A double use is not patentable. * * Curtis, $$ 56, 73. An instrument or manufacture which is the result of mechanical skill merely is not patentable. Mechanical skill is one thing; invention is a different thing. * The distinction between mechanical skill, with its conveniences and advantages, and inventive genius, is recognized in all the cases."

In the Hutchinson patent No. 923,122, no provision was made for securing an adjustment. But such a provision appears in his patent No. 923,049 in which there is disclosed a hinged bracket, whereby the cam and flexible driving shaft might be adjusted parallel with its own axis, not endwise thereof. The adjustment could not be applied to the motor-driven horn without pivotally supporting the motor and swinging the entire motor about its pivotal support each time an adjustment was made.

[3] In the patent in suit the claim is that Hutchinson has so designed the construction as to avoid the movement of the entire motor in adjusting the cam; that the adjustment does not involve any move

ment of the body of the motor, and only involves an axial sliding of the armature shaft in its bearings, which are a part of the motor. It seems necessary, in our opinion, that this claim should be established, if any invention is to be found in this patent. The defendant has strenuously denied that the adjustment of the armature shaft through the motor and without movement of the body of the motor is possible in the plaintiff's structure. The defendant insists that the degree of overlap of the cam upon the wear piece of the defendant's horn cannot be adjusted by a movement of the armature shaft through the body of the motor, and that it is only accomplished by a movement of the entire motor itself, as in the case of the prior Hutchinson patent. This court has reached a like conclusion. The plaintiff appears to have adopted the difficult rôle of blowing hot and cold at the same time. To establish novelty and patentability, plaintiff advanced the theory that the patent in suit provided for an adjustment of the armature shaft through the motor and without any movement of the body of the motor. But to make out infringement by the defendant, plaintiff reversed its position, and urged that the patent in suit included a construction in which the adjustment is obtained by a movement of the entire body of the motor. If that be the case, the patent in suit includes the adjustment of the prior patents, in which the entire motor is moved to accomplish the adjustment, and covers the very feature which the patentee says he made the invention to avoid. This certainly would make his patent invalid.

Other models of Hutchinson cam-actuated motor-driven horns have been before this court in previous litigations. In Lovell-McConnell Mfg. Co. v. Automobile Supply Mfg. Co., 216 Fed. 146, 132 C. C. A. 240 (1914), the Hutchinson patents, Nos. 923,048, 923,049, and 923,122, for alarm horns on automobiles, were before this court, and as to their broad claims were held void for anticipation by the device of the Pierman patent, granted on March 14, 1899. And the more specific claims were held not infringed. In that case 48 claims were involved. The same Hutchinson patents were again before this court in LovellMcConnell Mfg. Co. v. Garland Automobile Co., 221 Fed. 634, 137 C. C. A. 358 (1915), and on that occasion only 5 claims were involved, and they were held void for lack of invention in view of the prior art. The plaintiff's horn in the first and second suits was called the "Klaxon" and defendant's horn in the first case was the "Newtone" and in the second case was the "Sparton." The present patent covers what is alleged to be an improvement upon the "Klaxon" of the earlier patents. We have no knowledge as to the time when it occurred to Hutchinson to make the changes he made in the present patent. But the attention of the court has been called to the filing date of the application and that it was about five years after the original filing date. It is suggestive, too, that the application was filed very soon after this court handed down its decision in Lovell-McConnell Mfg. Co. v. Automobile Supply Mfg. Co., supra. That decision was filed on June 8, 1914, and two months later, on August 14, 1914, the appellant divided the original application, which he had filed on October 26, 1909, and filed his divided application for the patent in suit. Counsel for appellants say in their brief:

"That it is high time the courts took notice of this practice on the part of the plaintiff's in attempting to ruin competitors and drive them out of the market by patents which have been allowed to remain in the Patent Office for years, and until others, with plaintiff's full knowledge, have built up a business and have large vested rights."

No attempt to ruin a competitor's business or to drive it out of the market by malicious or unfair and unlawful dealings can hope to succeed in a court of justice. No court will be astute to aid an enterprising patentee in an undertaking of that sort. We do not intend to reflect upon the conduct of the particular patentee in the case at bar. He has done nothing unlawful. And we have no evidence that his conduct has been malicious. But a patent issued under the circumstances which attended the issuance of this one, and indeed any patent the validity of which is challenged, will be closely scrutinized for the protection of the public against a monopoly not authorized by the law. The patent in suit fails in this case, as did the prior patents in LovellMcConnell Mfg. Co. v. Garland Automobile Co., supra, because of lack of invention.

Decree reversed.

Judge LACOMBE heard the arguments, participated in the consultation, and indicated concurrence in the conclusions above expressed, but did not see the text of the opinion.

(231 Fed. 725)

GENERAL ELECTRIC CO. v. SUNDH ELECTRIC CO. (two cases).

(Circuit Court of Appeals, Second Circuit. February 15, 1916.)

Nos. 173, 174.

PATENTS 328-VALIDITY AND INFRINGEMENT SYSTEM OF TRAIN CONTROL. The Case patents, No. 736,816, claims 37 and 38, and No. 716,189, claims 12, 13, and 17, both patents being for a system of train control, held void for lack of novelty and invention, the combinations claimed being old; also held not infringed, if valid.

Appeals from the District Court of the United States for the Southern District of New York.

Suits in equity by the General Electric Company against the Sundh Electric Company. Decrees for defendant, and complainant appeals. Affirmed.

On appeal from final decrees dismissing the bills in two actions based upon two patents granted to Frank E. Case for a system of train control. No. 736,816, known in this litigation as the "First Case Patent," is dated August 18, 1903. This patent contains 62 claims, but only two, 37 and 38, are in issue. No. 716,189, known as the "Second Case Patent," is dated December 16, 1902. This patent contains 17 claims, but only 12, 13 and 17 are in controversy. Although No. 716,189 was issued December 16, 1902, eight months prior to No. 736,816, the latter was applied for February 28, 1898, three years prior to the former and has therefore been referred to as the "First Case Patent." The alleged infringing apparatus is the same in each suit. Judge Hough held, as to the second Case patent, that the claims in issue covered only "a mechanical readjustment of the combination elements shown by the first Case

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

patent." He found as to the first Case patent that the complainant is limited to a switch actuated by a single current which the defendant does not use; also that the claims in issue, 37 and 38, are invalid for lack of novelty and invention, the combination claimed being old, and that these claims were not infringed.

W. K. Richardson and A. D. Salinger, both of New York City, for appellant.

William B. Whitney, of New York City, for appellee.

Before COXE, WARD, and ROGERS, Circuit Judges.

COXE, Circuit Judge. The first Case patent states that in order to operate a train having a plurality of motor cars successfully, it is necessary that the control be had from a single point on the train, otherwise the amount of work will be unevenly distributed among the motors. To reduce complications to the minimum it is desirable that each car should be a complete unit in itself, provided with a contact device, motor or motors and a suitable controlling mechanism arranged to co-operate with other controlling devices on the train. It is, says the patentee, highly desirable that the contact devices of each car shall take sufficient current for the needs of that particular car and that the heavy currents which actuate the motors should not pass from car to car. The principal object of Case was to provide a system of train control, so that from any point on the train all of the machines may be made to act simultaneously and equally to accelerate the train, maintain it in motion in either direction or retard it evenly and strongly-all of these actions being under the control of a single motorman. The patentee says that he prefers to divide the motors of the train into sets and govern each set of motors by a separate set of controllers. He also provides at a number of selected points on the train mastercontrollers so arranged that each desired master-controller will actuate all of these controllers. The learned counsel for the appellant says that the switch which is the subject-matter of the first Case patent "is well shown in Figs. 4, 5a and 5b of the patent." This statement is undoubtedly true so far as skilled electricians are concerned but to those who have little expert knowledge on the subject the drawings as shown in Figs. 5a and 5b are inadequate and confusing. The description covering the combinations in controversy is as follows:

"The motor-controller O comprises a plurality of separate electromagnetically-actuated contacts or switches of the form shown in Figs. 3, 4 and 5. Each contact is provided with a cup-shaped casting or supporting-frame A, arranged to form a part of the magnetic circuit, and within said casting is mounted an energizing-coil or solenoid-winding A1. Secured to the top of casting A is a cover A2, provided with a downwardly-extending core A3, slightly hollowed out at its lower end to receive the upper end of core A4. On the side of casting A are lugs A5, by means of which the contacts or the switches as a whole are secured to a suitable support. Extending downwardly from the casting are lugs A6, which support pivots B2 of the switch-blade B, at the same time forming a part of the magnetic circuit of the blow-out. Connecting the lower ends of the lugs A6 is a piece of wood or other insulating material A7, forming a support for the stationary contact B1. The core A4 is pivotally secured at its lower end to switch-arm B and under normal conditions-that is, when no current is flowing in coil A1-is held in the position shown by a compression-spring B3, and by the weighted arm B4. The spring Bз surrounds a

pivoted pin B5, which acts as a guide for the switch-arm, and at the same time retains the spring in place. The movable core A4 is surrounded by a non-magnetic bushing As and surmounted by a sheet-metal cap A9 to prevent it from sticking to the casting and stationary core A3. The outer and inner ends of the switch-blade are insulated from each other, as indicated in the drawings, and connection is established between the outer end of the switchblade and the motor-circuit by a flexible cable B6, which is wrapped around the pin B2 to further increase the flexibility of the connection. The stationary terminal B1 consists of a spring-supported piece of metal provided at its outer end with a rounded portion B with which the switch-blade makes contact. The switch-blade and fixed brush are provided with arcing points or projections B8, as shown in Figs. 3 and 5. The arrangement of the terminal mounted on the switch-blade and the terminal constituting the fixed brush is a particularly desirable one, for it permits a wiping connection between the parts as they are moved to the position shown by the dotted lines, Fig. 4, yet when the parts are free to return to their normal position there is no friction between them tending to retain them in the closed position. On the contrary, there is a decided effort exerted by the brush, tending to force the switchblade back to its full-line position. The direction of the wiping movement is transverse to the movement of approach of the switch terminals or contacts. When the circuit is first closed between the switch-arm B and brush B1, the projections B8 are in contact; but as the switch-blade moves to its final closed position, as shown in dotted lines, Fig. 4, the projections Bs move away from each other. This particular feature is more fully represented in Figs. 5a and 5b. In the first figure switch-blade B is just making contact with the fixed brush B1 and the projections Bs are in contact. These projections being the first to close the circuit are the last to break it. Consequently all of the arcing takes place at this point, and the remainder of the parts are left bright and clean. Fig. 5b represents the final closed position of the switchblade, the projections Bs being separated by a definite space. No matter how much arcing takes place at the projections Bs the contact between the parts will always be good, for it is made at some distance from the point at which the arc forms."

The claims are as follows:

“37. In an electromagnetically-actuated switch, the combination of fixed and moving contacts, an actuating-coil for said moving contact located in a control-circuit independent of the circuit controlled by said contacts, and a resilient mounting for one of said contacts so arranged that the said contacts will make a wiping or sliding connection with one another and will tend to be forced apart when the moving contact is released.

"38. In an electromagnetically-actuated switch, the combination of a fixed terminal, a moving terminal, and a resilient connection between one of said terminals, and the support on which it is mounted, an actuating-soleneid for the support on which said moving terminal is mounted, said solenoid being located in a circuit independent of the circuit in which said terminals are located, the two terminals being so constructed and arranged that as the support carrying the moving terminal is moved to cause said terminals to engage, the resiliently-mounted terminal will be displaced in such a manner as to make a sliding or wiping contact with the other terminal."

The elements of the combination of claim 37 are in an electromagnetically-actuated switch:

First: Fixed and moving contacts.

Second: An actuating-coil for said moving contact located in a control-circuit independent of the circuit controlled by said contacts. Third: A resilient mounting for one of said contacts so arranged that the said contacts will make a wiping or sliding connection with one another and will tend to be forced apart when the moving contact is released.