which the patent was intended to protect. If that board believed, as is claimed by appellants, that there is "substantial identity of the idea. of the Young patent with that of the Painter patent," how is it possible that, after an exhaustive examination and review of the Young and other alleged anticipations, it could find, as it did find, that "there is novelty, and clear patentable novelty, in the combination which includes the vessel with its groove and shoulder and the raised expansible disc or plate?"

Having thus considered what we think are the essential features of Painter's patent, we will now, at the risk of some repetition, consider the essential features of Young's patent. Primarily, it suggests no substitute for the ordinary cork stopper. It proceeds on the theory that such a stopper is necessary, and provides nothing to take its place. There is no flanged or cup-shaped disc, or anything working on that principle as a substitute for the cork. All that it claims is "a disc of sheet metal raised into a conical form." which by pressure assumes a flat form, which "will retain the cork or other elastic stoppers securely in the necks or mouths of such vessel." The figures illustrating his conception show a round flat piece of metal, with a hole in the center and a line cut through to the circumference, which permits it to be coiled. like a ribbon in the shape of a cornucopia. There is no inward projecting shoulder to the groove to arrest the coil of metal in the plane of the groove, for it is intended to rest on the cork. The law of its structure requires a pressure against the small end of the coil, which will cause it to unwind and thus slide flatwise into the groove. The principle on which it operates involves a radial division from center to circumference. It does not form and cannot form a continuous peripheral engagement with the wall of the groove as, either by itself or supplemented by a peripheral packing or gasket, will constitute a stopper, for it is not intended for any such purpose; its only purpose being to bar the escape of the stopper.

There is a great deal of testimony tending to show that it is not effective for that purpose; that, if operated under commercial conditions, it is not available for any practical purpose; and the record shows that experiments conducted in the former case for the purpose of preparing a defense satisfied the parties interested that it was inoperative and worthless. The experts, on the one hand, have pointed out the difficulties which in their opinion constitute a fatal disability inherent in the plan. On the other hand, experts have testified to their successful experiments. No bottlers engaged in the business and having practical experience in the art have shown that bottles can be stopped by this method with that uniformity, facility, and economy which gives it superiority over the old method of retaining corks by wire. All that these experiments prove is that by careful manipulation the disc can be inserted. There is no testimony whatever that the device has gone into practical tise, and, as everybody has been free to use it for many years, this fact creates the strongest presumption of its inutility. Commercial success is not an infallible standard by which to test the merit of an invention. Such success is often due to mere business ability in manufacturing, exploiting, and advertising; but, given a large demand for a particular thing, a market already created, and an invention. which it is free to use, the fact that it is not used strongly demonstrates

its inadequacy. The public, crying for bread, is not satisfied with a stone. It needed a new stopper, cheap in production, facile in operation, efficient in results. Young gave it only its old stopper with a new device for holding it in place, so difficult in operation as not to exclude the older method, which accomplished a like purpose, and the result was that nobody wanted it; and, so far as the testimony shows, nobody has ever used it, except the experts employed and paid to do so. From the time of Noah all mankind, including Young, stopped his bottles with cork or some other resilient material, until Painter's patents taught him something better and cheaper, so much better and so much cheaper that 60,000,000 of his stoppers were taken last year; and yet the learned counsel for the appellants, admitting in the court below, and not denying here, that he is operating under patents that are infringements, if Painter's is valid, asks with apparent earnestness, and with iteration, wherein consists Painter's inventive idea? If the records of the Patent Office, wherein it is set forth in detail, and where, after sharp contests and exhaustive examination, the claims were allowed and framed; if the instant public recognition in the large demand for the article produced-is not proof that he has invented something new and usefuí, it would be difficult, perhaps, to give an answer that would satisfy.

This is not one of those great inventions that awaken admiration for the genius of the inventor and stir the heart like a trumpet. It is nothing but a bit of metal and a bit of cork, so co-operating that the result is something very simple, very cheap, very efficient, and so very much needed that the wonder is that nobody did it before, but nobody did. It is not surprising that Young did not, for he was not working towards this result. He only sought to devise a new method of holding down the stopper, not to produce a new stopper. He had a different conception, worked on a different plan, and produced a different effect. He, too, it is true, used a bit of metal so coiled as to enter the mouth of the bottle, which in its devolution might be flattened out. There is no shoulder under the disc groove, with diameter less than the unexpanded disc, which would prevent its slipping into the bottle; for this shoulder, according to Young's conception, was not necessary, as the disc was not designed to enter until the cork was in, and was to rest on that. His coil might, by unwinding, serve the purpose of holding the cork in its place; but it could not possibly, by the very law of its construction, maintain that close circumferential contact with the wall of the bottle neck essential to make an effective stopper, either with or without the packing or gasket. It has not and cannot have the permanent flexion which Painter's disc has. It is a cone of thin metal, something like a metal ribbon, which is designed to perform its function by unwinding, liable to overlap, and entirely incapable of forcible expansion against the wall of the bottle like a continuous flange. The primary idea that an efficient seal could be effected by it alone, or by the lateral pressure of its edges against a packing of elastic material, which would thus insure the filling of any irregularities between the metal and the adjacent wall, is entirely lacking in Young's invention. Nobody has suggested, and nobody would pretend, that Young's disc alone could be used for sealing a bottle, while Painter's alone would seal the bottle, provided the bottle neck was perfectly round and regular ; the gasket or packing being made necessary only by reason of the ir

regularities and imperfections incident to cheap bottles. It does not follow that the inventive idea is the same because each employed a metallic element and an elastic element to accomplish the same purpose; for, if terms are employed which avoid defining the distinctive character of the device or imperfectly describe it, few patents would escape anticipation, for nearly all employ the same elements. The imagination may find in Young's "disc of sheet metal" the cup-shaped disc of Painter; for men are prone to see what they want to see. Polonius saw in the cloud first a camel, then a weasel, and then something "very like a whale," as Hamlet bade him. Taught by Painter, we can see that a "disc of sheet metal" may be converted to a purpose altogether different to that which Young conceived, not by a mere mechanical change, but by a functional change, due to a conception of a different plan. Young, it is true, does not in his statement of invention require that his disc of sheet metal should be slit; but his drawing shows it, and it cannot operate on his plan unless it is slit radially to form the coil or cone to enter the bottle neck, so as to unfold. So, with the cork. It is not a mere matter of dimensions, for that is simply a question of proportion, merely one of mechanical judgment; but the difference between the cork as used by Young and the thin layer or packing used by Painter is a difference of function. With Young the cork is the stopper; with Painter the packing is merely ancillary to the stopper. The difference in the interior groove and shoulders in the bottle neck is also one of function. This has already been pointed out, but a mere inspection of the drawings shows it more plainly than any words of description.

That there is a superficial resemblance between the two patents must be conceded, in that both use a combination of metal and elastic material; but it does not follow that there is an identity in the inventive idea, for, as we have endeavored to point out, each was guided and informed by a different purpose. The elements are combined upon a fundamentally different plan, and one cannot be merged into the other by mere changes in proportion or degree or by the substitution of equivalents. The mechanical skill which may be invoked to exclude the idea of invention must be mechanical skill applied in accordance with the direction of the alleged anticipating patent; not the skill which, taught by the invention in suit, seeks to reform and reorganize the former patent, so disguising it under a cloud of subtlety of argument and suggestion as to transform it.

The judgment of the court below is affirmed.

BRUNSWICK-BALKE-COLLENDER CO. v. KLUMPP et al.

(Circuit Court of Appeals, Second Circuit. May 17, 1904.)

No. 184.

1. PATENTS-INVENTION-BOWLING APPARATUS.

The Reisky patent, No. 599,447, claim 1, for an improvement in bowling apparatus, which consists of a specially constructed runway for the return of the balls, since the filing of a disclaimer of the feature of using a double incline, is void on its face, for lack of patentable invention.

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

For opinion below, see 126 Fed. 765.

This cause comes here upon appeal from a decree of the Circuit Court, Southern District of New York, sustaining a demurrer to the complainant's amended bill, and dismissing the same. The decision below is reported in 126 Fed. 765.

J. C. Clayton, for appellants.

Harold Binney and S. L. Moody, for appellee.

Before LACOMBE, TOWNSEND, and COXE, Circuit Judges.

LACOMBE, Circuit Judge. The suit was brought upon letters patent No. 599,447, granted February 22, 1898, to complainant, as assignee of Emil Reisky, for "improvement in bowling apparatus." It was heard upon pleadings and proofs, and the bill dismissed for lack of patentable invention. Appeal was taken to this court, and decree was reversed. Our opinion is reported in 111 Fed. 904, 50 C. C. A. 61. It sufficiently sets forth the specifications and the claim in controversy. We concurred with the judge who heard the cause in the conclusion that the "improvement" was one which should have been obvious to an ordinary skilled mechanic, but were constrained by the testimony to hold that there was patentable invention. That testimony is set forth in the opinion. It showed that the desirability of retarding the ball as it neared the home terminal of the returnway had been appreciated for many years; that many different devices to secure that result had been suggested, but that apparently no one of those who sought to secure the result had adopted the seemingly obvious one of making the ball reach the home terminal on an up grade. Had any such method been disclosed in the earlier art, the original decision would have been affirmed. It now appears that, apprehending proof of such a structure antedating the patent, the patentee has filed a disclaimer which recites that in the prior art there were ball returnways with "an upgrade near the player's end, merging into the terminal," and disclaims such part of the claim "as would include a returnway by which the homing of the ball was not accelerated." The bill presents the disclaimer as well as the patent, and, with the concession that in the prior art the returning ball had been retarded by an up grade, the case may properly be disposed of on demurrer; and, for the reasons set forth in our former opinion, we have reached the conclusion that the patent discloses no patentable invention, except possibly as to minor details of construction, which are subject of other claims, not here in controversy.

The decree is affirmed, with costs.

TIMOLAT et al. v. PHILADELPHIA PNEUMATIC TOOL CO.

(Circuit Court, S. D. New York. April 30, 1904.)

1. PATENTS-ANTICIPATION-UNSUCCESSFUL DEVICES.

A patent for an improvement or manufacture which does not accomplish the objects and purpose of its conception and is impracticable does not anticipate a later patent upon a similar device capable of successful operation, unless the objections to the device of the prior patent relate merely to details of construction, or where it can be converted into a successful device by a mechanic of ordinary skill.

2. SAME-PRIOR USE-BURDEN OF PROOF.

A defendant has the burden to establish an alleged prior use to defeat a patent by proofs clear, satisfactory, and beyond reasonable doubt. 3. SAME-INFRINGEMENT-PORTABLE DRILLING MACHINE.

The Moffet patent, No. 369,120, for a portable drilling machine having a rotary engine operated by steam or compressed air, was not anticipated, and is entitled to a liberal construction; the machine described being the first successful portable power drill for heavy metal boring. Claims 1 and 2 also held infringed.

In Equity. Suit for infringement of letters patent No. 369,120, for a portable drilling machine, granted to John Moffet August 30, 1887. On final hearing.

Hillary C. Messimer (John R. Bennett, of counsel), for complainants. D. Frank Lloyd (E. Hayward Fairbanks and Hector T. Fenton, of counsel), for defendant.

HAZEL, District Judge. This is a bill in equity to recover damages for infringement of United States letters patent issued to John Moffet, No. 369,120, granted August 30, 1887, and to restrain infringement of claims 1 and 2 of said patent, of which complainant Timolat is the assignee, and the complainant corporation sole licensee. The patent is for a portable drilling machine. Its motive power is a rotary engine operated by steam or compressed air, compactly united and inclosed in a light cylindrical case, adapted to be used by the hand of the operator. The specification calling attention to the manner in which holes were formerly bored in metal parts connected and placed in position says:

"This has commonly been accomplished by the use of a suitable clamping device applied to the parts in which the hole was to be bored, and boring the same by the means of the ordinary ratchet-drill manipulated by the hand of the artisan, which is a very slow and fatiguing process."

The object of the invention is to supply the workman with a portable drill, with motive power, having a boring device suitably adapted for being changed from place to place as the operator desires. The engine. is attached to the frame which carries the boring spindle and other parts connected with the boring device. Claims 1 and 2 only are involved. They read as follows:

"(1) In a portable boring machine, the combination of the boring spindle with a rotary engine, upon the cylinder of which is formed the journal bearing for the boring spindle, as set forth.

"(2) In a portable boring machine, the combination of the boring spindle,

1. See Patents, vol. 38, Cent. Dig. § 73.

131 F.-17