IRWIN v. HASSELMAN et al., 97 F. 964

SEAMAN, District Judge, after the foregoing statement, delivered the opinion of the court.

An inspection of the several forms of record books which appear as exhibits in this case demonstrates the utility of chat feature of the patent device by which “the leaves of the book are creased and rendered flexible at a line parallel to and a short distance from the back.” It produces a book whereof, in the language of the specifications, the leaves, when open, will “fall and lie substantially flat, and the pages thus exposed present, as nearly as possible, a level surface for convenience in writing and ruling thereon.” By this improvement the well-recognized defect of bulging leaves in the common form of large blank books, affecting both convenient use and durability, is obviated, and its value is manifest in such books required for records, accounts, and like uses.

As the specifications further state, this object is accomplished “by forming a hinge-joint in the leaf at a line parallel to and a short distance from the binding,” and three several methods of producing such joint in the leaf are there described, corresponding to the different forms stated as one element, respectively, in the claims allowed, one being “by a crease made by folding as shown in Fig. 2,” which enters into the first claim of the patent.

The appellant produced two record books as exhibits, of wliich he testifies that one is constructed in accordance with claim l of the patent, and the other “an ordinary record book, showing the old method of binding,” and “that the only difference in the construction of the two books is in the creased leaves of the Ryan patent.” And the testimony is clear and uncontroverted that the books made by the appellee of which infringement is alleged are in every particular constructed in old and well-known methods, except that the leaves are creased as described in the first claim of this patent.

This feature of the so-called “hinge-joint” in the leaf, which appears in each of the several forms specified in the patent, constituted the sole element of each of the claims presented in the original application; and the first claim there made unmistakably states as a single element this form of a fold or crease in the leaf on which the alleged infringement by the appellees must rest. That claim reads: “

(1) A book having leaves rendered flexible at a line parallel to and a short distance from the back, substantially as and for the purposes set .forth.” Had the patent been allowed on such claim, infringement would stand confessed by the answer, and the question of patentable novelty upon the showing of the prior art would alone remain for consideration; and on that inquiry the test of invention would not be of simplicity alone in the device, nor in the fact that like means may appear as an element in prior devices where the use is not analogous.

There may be invention in applying a device which is either simple or old where it is used in a new way, and accomplishes a new result; and the rule is well settled in cases of that class that doubt on the question of patentable novelty may be resolved in favor of the patent on such proof of utility and popular acceptance as shown in this record. Loom Co. v. Higgins, 105 U. S. 580, 591; Topliff v. Topliff, 145 U. S. 156, 163, 12 Sup. Ct. 825; Krementz v. S. Cottle Co., 148 U. S., 556, 560, 13 Sup. Ct. 719.

The patent office, however, ruled upon the original application that each claim presented was anticipated by prior patents named, and that “claims 1 and 2 are anticipated by the patents of Hopkins, 228,637, June 8, 1880; also by Edwards, 182,650, Sept. 26,1876”; and a patent was refused. As the applicant thereupon submitted his amended claims without change in the specifications, and accepted the patent on the substituted claims, his acquiescence in the ruling forecloses any claim of invention in the rejected feature, through the well-established doctrine of estoppel which then applies. Morgan Envelope Co. v.

Albany Perforated Wrapping Paper Co., 152 U. S. 425, 429, 14 Sup. Ct. 627, and cases cited; Richards v. Elevator Co., 159 U. S. 477, 486, 16 Sup. Ct. 53. The ruling so made is not now open to question by the patentee, or by the appellant claiming under him, and there can be no inquiry here whether this rejected claim was in fact anticipated by the prior patents referred to, or whether, aside from the ruling, invention would appear in the device.

The device of creased leaves appears as one of the elements in the substituted first claim on which the patent was granted; but, considered alone, it is, nevertheless, subjéct to the conclusive presumption thus created of want of novelty, and is open to the public for use with old methods of binding, or in any association not pre-empted by valid patent.

According to the undisputed testimony, this single element was used by the appellee in books which were in all other respects of old and well-known construction, and it is therefore unnecessary to determine what effect must be given to the additional element inserted in the claim, namely, “a book composed of sections or bunches of a small number of leaves in which each

section is secured to the back separately, and. thereby flexibly thereon, independently of the others.” If the element thus inserted describes a new method o£ binding, it is clear (.hat the hook made by the appellee in the old method Is no infringement. If the description is substantially identical with the pre-existing method, no force is imparted to the claim by this amendment. In either view the suit was properly dismissed for want of equity, and the decree accordingly is affirmed. GROSSCUP, Circuit Judge, sat at (he hearing, but, by reason of illness, took no

part in the decision of the appeal.