UNION BISCUIT CO. et al. v. PETERS, 125 F. 601

THAYER, Circuit Judge, after stating the case as above, delivered the opinion of the court. The principal question that arises in this case, and the only one which we have found it necessary to consider, is whether the inventive faculty was exercised in the construction of the paper box or carton which is described in the Peters patent, and is claimed as a product in the second, third, and fourth claims of that patent, and as a method of packing crackers in the first claim.

This question, as a matter of course, must be determined upon a full consideration of the state of the art to which the patent in suit appertains and in the light of the well-established doctrine that the patent itself creates a presumption of patentable novelty, which must be fully overcome by the appellant before it can be adjudged invalid.

The specification of the Peters patent contains a general admission that prior to its issuance paper boxes or cartons, as they are sometimes termed, had been used to pack crackers and biscuits and other like articles; also the admission that in some instances such cartons had been provided with a lining of waxed or paraffined paper to pretect the inclosed

article from dampness. It is said in the specification, however, in substance, that heretofore the lining of such cartons had not been so disposed as to fully exclude moisture, and the chief object of the patentee seems to have been to so construct a paper box with a lining of wax paper that it would more effectually exclude dampness and dust. A merely cursory examination of the art shows that this was a necessary admission on the part of the patentee.

Paper boxes had been made and were in use for the purpose of holding and carrying crackers, berries, candy, ice cream, lard, butter, and a great variety of other articles long before the date of the Peters invention, and many patents describing a method of constructing such boxes had been granted.

Indeed, so common has the use of paper boxes become that, without resorting to patents or other printed documents, this court would be justified, by its everyday experience, in taking judicial notice of the fact that paper boxes, both lined and unlined, were in common use for at least io or 15 years prior to the date of the patent in suit. As a general rule, such boxes were made in substantially the same way; that is to say, by taking thick heavy paper, either pasteboard or strawboard, and cutting it into such a shape that when folded along certain lines a box of a certain desired shape would be formed.

The boxes were either left open at the top, or were provided with an overlapping cover, or were entirely closed. Very frequently the paper which was used to construct such boxes was cut so as to have angular or curved flaps which, in the process of folding, were inserted in slits cut in the side or top of the box so as to hold it together.

On the trial of this case in the lower court a large number of patents were offered in evidence for the purpose of showing the state of the art in question and establishing the fact that very many persons had described methods of making paper boxes long before the date of the Peters patent, and that, as a rule, the processes so described were very much alike, and substantially as last above described; the only differences in the processes being that the paper out of which the boxes were made was cut at times in a different form, so as to produce boxes of a different shape, which would be best adapted to the uses to which they were to be put.

For the purpose of showing that the art of making paper boxes was old and well understood when the Peters patent was issued, it is only necessary, we think, to refer to the following patents by name and number, without describing them in detail: United States letters patent No. 164,099, dated June 8, 1875, issued to James L. Moore; United States letters patent No. 183,950, dated October 31, 1876, issued to Charles L. Lockwood; United States letters patent No. 268,311, dated November 28, 1882, issued to Hugh R.

Stewart; United States letters patent No. 285,456, dated September 25, 1883, issued to August Brehmer; United States letters patent No. 556,675, dated March 17, 1896, issued to W. B. Howe; and United States .letters patent No. 511,080, dated December 19, 1893, issued to W. B. Howe and F. B. Davidson.

An examination of these patents has satisfied us that when Peters entered the field as an inventor it was well known to those familiar with the art of making paper boxes that they could be produced in any desired form by simply cutting the paper out of which the box was to be made in a certain way and with the necessary flaps and slits, before it was folded.

Other patents, which the record contains, show with equal certainty that Peters was not the first person to suggest the idea of lining paper boxes with waxed or paraffined paper, o'r with any other kind of paper, for the purpose of more effectually excluding moisture. This idea was suggested by Smith as early as May 9, 1882.

Vide United States letters patent No. 257,522; by Albert, United States letters patent No. 355,496, issued January 4, 1887; by Bower, United States letters patent No. 232,930, issued October 5, 1880; by Munson, United States letters patent No. 288,255, issued November 13, 1883; and by some others. The conclusion, therefore, is inevitable that when the patent in suit was applied for the art to which it appertained had reached a high state of development, and that, because it was a very simple art, little, if anything, remained to be done to perfect it.

Paper cartons in many forms had already been made and applied to a great variety of uses.

They had been made with a lining and without a lining, depending generally upon the use to which they were to be applied; and, when lined, the lining had sometimes been stuffed in after the box was formed, as shown by the Smith patent, No. 257,522, while in other instances the lining had been pasted in places to the outer covering, so as to be folded with it integrally in the process of making the box, as shown in the Albert patent, No. 355,496- In view of what has been said, it is difficult to understand in what respect the Peters specification discloses patentable novelty, whether we consider the described method of making paper boxes claimed in the first claim or the product of the process.

Novelty does not reside in the manner of cutting the pasteboard or strawboard blank out of which the box is formed, because the patentee himself says that the blank so cut “may be of any suitable form which is adapted for the purpose of being folded up into a box or carton and is provided with overlapping ends.” Besides, it was a well-known fact, when the patent in suit was issued, that cartons of any desired shape could be made if a little attention was given to cutting the blank before folding.

Nor does the novelty of the device consist in providing cartons with a lining of any sort, because cartons with linings were in common use long prior to the date of the application for the patent. If we correctly understood learned counsel for the appellee, it was frankly conceded on the oral argument that, if what Peters accomplished rises to the dignity of an invention, it is because he was the first to suggest the idea of laying a sheet of waxed or paraffined paper on top of the blank carton and folding them together so as to form a unitary structure.

This method of making a carton, it was said, was of great importance, because it had the effect of interfolding the ends of the two protective envelopes in such a way as to more “effectually close these ends, and at the same time prevent any movement of the lining relatively to the box,” and because more dampness and dirt was thereby excluded from the inclosed article. Did this suggestion involve the exercise of the faculty of invention? We think not.

In the first place, the idea of placing the lining sheet on top of the blank carton, and folding the two together was not new, but was disclosed by United States letters patent No. 355,496, issued to Albert on January 4, 1887. That patent covers a paper box for carrying fruit, oysters, and other like articles. The box was made water-tight by pasting a sheet of thin manilla paper on top of the blank carton and folding the two at the same time so as to form the walls of the box integrally out of the two sheets.

The patentee of this box pointed out as one of its chief merits that when a box was thus constructed the lining could not be torn out or displaced. Again, in a patent granted to Cooke on December 3, 1895 (United States letters patent No. 550,-870), a paper box for shipping currency is fully described, which was constructed by placing the blank carton on top of a sheet of wrapping paper and pasting the two sheets together at the place where they united to form the bottom of the box. The patentee of that box also suggested that the two sheets might be pasted together where they united to form one side of the box.

The xarton was then folded in the ordinary way, to form the box, and after it was formed by inserting the flaps in the appropriate slits, the wrapping paper at the sides and ends was folded around it in the ordinary way to serve as an outer covering.

One of the appellants’ experts on the trial expressed the opinion, in which we fully concur, that, if the process of constructing a box which Cooke described was reversed by placing the wrapper on top of the blank carton, and then folding the two together to form a box, the result would be a carton for packing crackers that would exclude moisture and dirt as effectually as the Peters box.

The examiner of the Patent office to whom Peters’ application for a patent was first submitted also called attention to the Cooke patent, and in rejecting the application made the following statement in which we fully concur: “It would not involve invention to place the wrapper on the inside of the box instead of the outside.” But, aside from the foregoing view of the case, the sole object which Peters seems to have had in view in folding the lining and the blank carton together was to more effectually close the ends of the box so as to exclude more dirt and moisture.

Let it be assumed that this object was attained, or was attained to some extent, and yet it does not appear, we think, that the method of folding thus suggested was new, or was so far new as to amount to invention. It was substantially the same method of folding two sheets of paper which grocers have employed from time immemorial when they have had occasion to wrap up sugar, salt, flour, rice, and a hundred other like articles, using for that purpose two sheets of paper, one laid on top of the other.

When two sheets are thus used instead of one, for the purpose of wrapping up an article, the ends of the two sheets are necessarily interfolded practically in the same manner which Peters describes; and the effect of such interfolding is to more “effectually close the ends,” and prevent the inner sheet from moving relatively to the outer sheet.

It is urged, however, at great length, and with considerable force, that the demonstrated utility of the Peters carton as a means of pack-i ing crackers and preserving them from moisture in damp climates entitles him to favorable consideration and a monopoly of the use of the carton which he has constructed. It is said, in effect, that the great utility of the carton is sufficient evidence of invention.

In view of this line of argument we have considered the evidence of utility with some care, and, while it is sufficient to show that the cartons in question do operate to exclude the outer air and moisture to a considerable extent, yet we are by no means satisfied that this result is due to the carton, or to the manner in which the ends of the lining and carton blank are interfolded. ■ The testimony shows that when the carton is fully made up in the manner described in the patent, and filled with crackers, it is then carefully covered with an outer wrapper, which is closely sealed along the edges so as to entirely exclude the outer air.

It admits of very little doubt, we think, that this outer cover, which is not mentioned or described in the patent, has as much, if not more, to do with protecting the contents of the box from dampness and dirt as the carton itself. But, even if this were not so, and if the carton possesses all the merit that is claimed for it, its mere utility would not suffice to render it patentable. It sometimes happens that an improvement in a machine or device, which is the result of ordinary mechanical skill, adds much to the utility of the device or machine, but this fact does not render it patentable.

If a doubt arises in the consideration of a patented

article or device whether the inventive faculty has been exercised, the fact that the

article in question has gone into general use, that there is a large demand for it, and that it seems to possess great utility, is entitled to great weight; but when it is apparent that the inventive faculty has not been exercised, and that nothing more has been accomplished by the alleged inventor than might have been done by an ordinary workman or mechanic acquainted with the art, if his attention had been directed to the subject, a patent, if granted, cannot and ought not to be sustained. The law to this effect is well settled. McClain v. Ortmayer, 141 U. S. 419, 427, 428, 12 Sup. Ct. 76, 35 L.

Ed. 800; Duer v. Corbin Cabinet Lock Co., 149 U. S. 216, 13 Sup. Ct. 850, 37 L. Ed. 707; Fox v. Perkins, 3 C. C. A. 32, 52 Fed. 205, 213; Dueber Watch Case Mfg. Co. v. Robbins, 21 C. C. A. 198, 75 Fed. 17; Lovell Mfg. Co. v. Cary, 147 U. S. 623, 635, 13 Sup. Ct. 472, 37 L. Ed. 307; Falk Mfg. Co. v. Missouri Railroad Co., 43 C. C. A. 240, 103 Fed. 295, 302, and cases there cited.

In the case in hand it is plain, we think, upon a fair consideration of the state of the art at the time the patent in suit was applied for, that Peters’ patent is lacking in patentable novelty, and that he is not entitled to a monopoly of the manufacture, use, and sale of the

article in question. Indeed, we think it would be a perversion of the patent law to hold that one who has made no greater advance in the art of manufacturing paper boxes than he appears to have done, is entitled to a patent. Considering the fact that Peters merely suggested the idea of folding the carton blank and superimposed lining sheet together, or at the same time, so that the two sheets, at the ends, would be interfolded, as always must be the case when any package is wrapped up in two sheets of paper instead of- one, we may, with great propriety, apply to the alleged invention the oft-quoted remark of Mr.

Justice Bradley in Atlantic Works v. Brady, 107 U. S. 192, 200, 2 Sup. Ct. 225, 231, 27 L. Ed. 438, that: “The design of the patent law is to reward those who make some substantial discovery or invention which adds to our knowledge and makes a step in advance in the useful arts. * * * It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures.

Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement and gather its foam in the form of patented monopolies which enable them to lay a heavy tax upon the industry of the country without contributing anything to the real advancement of the arts.” We are of opinion, for the reasons heretofore expressed, that the Peters carton or paper box fails to disclose patentable novelty, and that the decree below ought to be reversed, and the bill dismissed.

It is so ordered.