CHESHIRE v. COX MULTI-MAILER CO., 229 F. 415

KOHLSAAT, Circuit Judge (after stating the facts as above). Unless there is novelty in the combination of a reciprocating, concavely curved base plate, curved transversely of its path of travel, with means for engaging the lowermost

article in the hopper and for adjusting the parts of the base plate toward and from each other, appellant’s device is devoid of novelty. The ' curved reciprocating base plates, curved transversely of their line of movement, constitute the genius of the invention. If there was no joint invention, then also the patent is void. It will be observed that the original claims 2 and 3 were indefinite in form for the want, among other things, of a clause requiring the base plate to be curved transversely of its path of travel.

In the absence of the prior art, we may well assume that this alone may have differentiated them from the references in the patent office. Comparison of them shows that they failed in other respects to properly describe the invention for the purposes set out in the specification. New claim 1 is simply an amplification of original claim one, which makes reference to the specification instead of making a full recital, and in other particulars. We do not consider the statement of claims 1 and 2 as to spacing apart as functional.

It is a matter of common knowledge that the placing of leaves or pamphlets in a concave position has a tendency to engage the edges of the articles with the curved sides of the base plate, and to a degree release the lower

article along its longitudinal center from the bulk. This is true of any appreciable curve, the spacing diminishing with the decrease of the curve. The statement of claim 1, “so that articles to be printed resting thereon will be in curved positions with their side edges elevated and so that the lower one of said articles will have its longitudinal central portion spaced apart from the

article above it,” is therefore a mere declaration of what the effect of a curve is, and in no sense proclaims a function. Were the claim to call for a certain degree of curvature to produce a certain .definite effect, it might be objectionable. We conclude that the difference between claim 1 as allowed and original claim 1 is simply one of form, and does not effect an abandonment of any of the essential features of the original claims, by the claims as allowed, and do not consider the objection well taken.

We are, however, of the opinion that the changes in the form of the original claims as disclosed in the new may well, in the absence of the prior art, be deemed to have removed whatever of anticipation the examiner found in the prior art. What were the character and form of the reciprocating curved plate of Sullivan and the reciprocating separator of Wright, we are not advised. Presumably they were not deemed of importance in the present suit.

While, of course, curved receptacles for holding pamphlets and the like, in connection with printing devices, are not new, yet there would appear to have been something new in the combination of the patent. Appellee’s manager seized upon the idea with avidity. It operated successfully at high speed, doing the work of a number of human hands. With some classes of work it seems to have needed "further adjustment, such as the work on the “Woman’s World,” but as a concept it took the field. It does not appear that it had ever been practically applied to the printing art.

We are satisfied from the record that the idea worked a great improvement in labor saving, and has been of real value. The basic idea was the combination of the curved reciprocating base plates curved transversely of their path and having finger points to expel the lowermost article. These we consider somewhat broadly patentable in combination, sufficiently so to dominate ordinary means for effectuating them, with a liberal range of equivalents. We are not impressed with appellee’s contention that the invention was not a joint one.

That both patentees worked upon the combination and contributed ideas which were incorporated therein is plainly disclosed in the record. The combination is a unit. Rach element pervades the whole of the basic features of the patent. Brewer contributed the adjustable feeder fingers and the curving of the base plates with its edges upward. Cheshire supplied the other items of the combination. It requires clear proof to overcome the presumption of joint invention created by the grant. Priestly v. Montague (C. C.) 47 Fed. 650; Page Woven Wire Fence Co. v. Land (C. C.) 49 Fed. 936; 1 Hopkins on Patents, p. 27.

It is not necessary that both patentees should have hit upon the same inventive thought at the same time. Worden v. Fisher (C. C.) 11 Fed. 505. The invention may be joint, though some of the elements are contributed by but one of the patentees. Quincy Mining Co. v. Krause, 151 Fed. 1014, 1017, 81 C. C. A. 290; Vrooman v. Penhollow, 179 Fed. 296, 102 C. C. A. 484. The objection is a formal one, and, in the present case, deemed not well taken. Therefore we conclude that the patent in suit is valid, and proceed to tire question of infringement.

Appellee’s contention that it avoided the patent by reducing the curve of its base plate is indefinite. There is no prescribed curve to the base plates of the patent. Appellee insists that its curve is merely for the purpose of giving a stiffening effect to the lower pamphlet or

article to be advanced by the feeder fingers. This advantage, if it be one, would be more marked where the curve is considerable. If appellee’s curve be less than appellant’s the difference would be one of degree. There would still be a spacing effect. If appellee’s device produces no such effect, then why is it found necessary to supply a beveled gate block, so as to press the lower

article against tire superincumbent mass? It is inevitable that the longitudinal center of the pamphlet or other

article should be spaced by the concave base plate at least up to the gate block, which has an almost inappreciable elevation, and the object of which seems to beta flatten the articles so that they will pass under the so-called feed gate to the rollers. This block is .riot a part of the curved base feeding device, but is attached to a cross bar situated below the feeding device. Appellant provides for the feed to the printing rolls in a like flat condition by means of feed rolls, and the evidence shows that "under"ordinary conditions the provision is adequate.

We find therefore that appellee’s device used in tire construction of the “Woman’s World” has the spaced longitudinal center. The so-called gate block, if an improvement, is nothing more than that. The principle of operation is the same in both feeders. Appellee claims that its feeder finger does not enter the space between the two lower articles in the hopper,, but engages the body of the lower article. ' This finger is adjustable to meet the variation in thickness of the

article to be advanced. If desirable, appellee’s operator could adjust it within the space or at any operable point below the top of the article. It is nothing more than an equivalent of appellant’s arrangement. The fact that appellant’s curved base plates are made in three sections, while appellee’s are constituted of one piece, does not constitute a patentable difference between the two or modify the combination of the patent. They operate in substantially the same way. Their functions are the same, and tire concept of the two is practically identical.

It is urged that the “Woman’s World” device was so modified as to come within the patent, if it did so come, by parties other than appellee, after it was installed. This contention we find to be not sustained. We are clearly of the opinion that appellee has appropriated the substance of appellant’s invention. Whether or not it has made improvements thereon need not be now passed upoh. That can be taken into consideration on the accounting. The decree of the District Court is reversed, with direction to grant the injunction as prayed and order an accounting.