It appears from the proofs-and this seems to have influenced the result below that it was very difficult to make dies which would produce both the flange extending in two directions and the hollow molding or bead; and it is probable that the supposed impossibility of making such dies had prevented the making of a structure just like England's, and this because to make it by hand would be too expensive. [2] It is possible that invention was involved either in the devising of the proper dies or in the method of their operation; but, if so, that cannot help this patent. England had a patent, not for the dies, and not for the method of construction, but for the product; and if the product was a thing, the making of which by manual operations involved only the ordinary skill of the artisan, it cannot become patentable just because invention was involved in making it by machinery. Rubber Co. v. Goodyear, 9 Wall. 788, 796, 19 L. Ed. 566; Cochrane. v. Badische, 111 U. S. 293, 311, 4 Sup. Ct. 455, 28 L. Ed. 433.

This conclusion makes it unnecessary to consider the other questions presented, and requires that the decree should be reversed and the case remanded, with instructions to dismiss the bill.

(240 Fed. 418)

ICELESS ICE BOX CO. v. MITCHELL et al.
(Circuit Court of Appeals, Sixth Circuit. February 20, 1917.)

No. 2877.

PATENTS 328-VALIDITY-WINDOW COOLING BOX.

The Morse & Lucas patent, No. 906,545, for improvements in adjustable cooling boxes, intended for use in windows, is void for lack of novelty and invention.

Appeal from the District Court of the United States for the Eastern Division of the Northern District of Ohio; John H. Clarke, Judge. Suit in equity by the Iceless Ice Box Company against George F. Mitchell and Harry W. Mitchell, partners as G. F. Mitchell & Son. Decree for defendants, and complainant appeals. Affirmed.

Wm. R. Miller, of Cleveland, Ohio, for appellant.
Karl Fenning, of Cleveland, Ohio, for appellees.

Before WARRINGTON and KNAPPEN, Circuit Judges, and EVANS, District Judge.

EVANS, District Judge. The appellant (who will be called the "plaintiff") brought this action in the court below, charging that the appellees (who will be called the "defendants") had infringed letters patent No. 906,545, upon certain improvements in adjustable cooling boxes, which had been granted on December 15, 1908, to John F. Morse and Morand D. Lucas, and by them subsequently assigned to plaintiff.

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

The bill contained the usual prayers for an injunction and an account

ing.

It was conceded at the the patent were involved. "1. A device of the class described comprising two parts which combined form the required inclosure, said parts being movable relatively to each other so as to render the structure capable of lateral adjustment to fit within the casing of windows of various widths, each such strip provided upon its end with a vertical strip adapted to seat in the outer sash groove.

hearing that only the first three claims of They are as follows:

"2. A device of the class described comprising two sections movable relatively to each other and together capable of forming the required enclosure, the roof of each section being formed with part only of one edge extending beyond the adjacent vertical plane of the structure, such edge being parallel with the direction of adjusting movement and adjacent to an open side of the section. "3. A device of the class described comprising two sections movable relatively to each other and together forming the required enclosure, the roof of each section being formed with a part only of one edge extending beyond the adjacent vertical plane of the structure, such edge being parallel with the direction of adjusting movement and adjacent to an open side of the section, such projecting portions engaging each other to secure the two sections to each other at such edge."

One of the drawings embraced in the patent, and which will adequately illustrate the characteristics of plaintiff's alleged improvements, is here inserted:

Reduced to plain language, it may be enough to say that the patent is for improvements upon an adjustable cooling box intended to project from windows of various widths. When the box is in place, the lower part of the window forms the side next to the room. To accomplish its objects, the box is in two parts, which, being movable one within the other, are so combined as to make a box capable of lateral adjustments to fit the casings of windows of different widths. Each part of the box has, near the front edge and upon the outside of the respective end walls, a vertical strip adapted to seat in the outer sash groove. The roof of each section of the box is formed with part only of its front edge extending beyond the front of the box, and which edge is parallel with the bottom of the window and near the open side of the box. The roof of each section of the box is formed with part of one edge extending beyond the side of the box, this edge

also being parallel with the bottom of the window and near the open side of the section of the box, such projecting portions engaging each other so as to secure the two sections of the box to each other. In other words, the improvements covered by the three claims referred to appear to consist: (1) Of vertical strips at the ends of the box; (2) of a roof formed with part only of one edge extending beyond the side of the box and parallel with the bottom of the window; and (3) of a roof with part of the edge extending beyond the side of the box, parallel with the bottom of the window and near the open side of the section-the projecting portions engaging each other to secure the two sections to each other at the edge.

The defendant, among other things, insisted that neither novelty nor invention was established. The testimony covered every phase of the case, and included much of the prior art. The court below held that the patent was void for want alike of novelty and of invention.

We have carefully considered the record, and, while giving due consideration to any and every presumption that may arise from the action of the Patent Office, we are nevertheless clearly of the opinion that the conclusion of the court below was correct, because there was an absence both of invention and of novelty.

Its judgment is, accordingly, affirmed. The appellees will recover their costs.

(240 Fed. 420)

BECKER v. MILLER PASTEURIZING MACH. CO.
(Circuit Court of Appeals, Third Circuit. March 5, 1917.)

No. 2160.

1. PATENTS 328-INVENTION-ICE CREAM FREEZER.

The Hoefler and Schantz patent, No. 921,837, for an ice cream freezer, held void for lack of patentable invention.

2. PATENTS

~26(2)—INVENTION-COMBINATION OF OLD ELEMENTS. While a combination of old elements may be patentable, it is only so if the old elements have been so combined as to operate in a new way or to produce a new and useful result.

[Ed. Note. For other cases, see Patents, Cent. Dig. § 29.]

Appeal from the District Court of the United States for the Middle District of Pennsylvania; Charles B. Witmer, Judge.

Suit in equity by the Miller Pasteurizing Machine Company against John J. Becker. Decree for complainant, and defendant appeals. Reversed.

Farrell & Freeman, of Wilkes-Barre, Pa., and Henry D. Williams and William S. Pritchard, both of New York City, for appellant. Edward R. Alexander, of Cleveland, Ohio, for appellee.

Before BUFFINGTON, MCPHERSON, and WOOLLEY, Circuit Judges.

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

MCPHERSON, Circuit Judge. [1] The Miller Pasteurizing Machine Company is the owner of letters patent No. 921,837, issued to Hoefler and Schantz on May 18, 1909, and charges the defendant Becker with infringing the second claim. Without discussing the evidence, the District Judge held the claim to be valid and infringed, following a decision in the Western District of New York. Miller v. Rich (D. C.) 216 Fed. 192. As the record in that case was not offered in the court below, and has not been laid before us on appeal, we are left in a good deal of doubt concerning the weight it should receive. In any event, however, the evidence as we now have it seems to us to indicate a different conclusion, for which we may briefly state the reasons.

The art to which the patent relates is:

"That class of ice cream freezers which are driven by power and in which the refrigeration is effected by circulating brine or similar medium through a jacket which surrounds the cream receptacle."

And the object of the invention is:

To produce an ice cream freezer of this character which has large capacity, which can be readily assembled for use or dismembered for cleaning, which can be quickly emptied of its frozen contents and securely closed for confining the material to be frozen in the freezing chamber, and which has the connection between the refrigerating jacket and the brine supply and discharge pipes so constructed that the cream can and connecting parts may be tilted for cleaning and other purposes without interrupting the flow of the brine."

In order to attain this object the patentees devised and claimed the following described machine:

"2. An ice cream freezer, comprising a support, an upright cream can having its bottom pivoted to said support to turn vertically, a refrigerating jacket surrounding said can, stationary refrigerating liquid supply and discharge pipes, a swinging or rotary joint for connecting said supply with the refrigerating jacket consisting of a casing connected with said supply pipe and a rotary plug turning in said casing and connected with said bottom and having an axial passage which communicates with the lower end of said refrigerating jacket on one side thereof and a radial passage which opens into the interior of said casing, and a swinging or rotary joint connecting said discharge pipe with the refrigerating jacket consisting of a rotary casing communicating with the upper end of said refrigerating jacket on the opposite side thereof and a stationary plug upon which said rotary casing turns and which is connected with said discharge pipe and has an axial passage communicating therewith and a radial passage opening into the interior of the casing, the axes of said swinging joints and the pivot of said can being in line, substantially as set forth."

[2] With one exception all the elements named in this narrow and specific claim are old in the art (see patents to Miller, to Walker, and to Thompson); and the new element-namely, the swinging joint with axial and radial passages-is an old and well-known device, although it had not as yet been used in the construction of freezers. Evidently, therefore, the claim is for a combination or a subcombination of old elements, and in such a situation the rule is that, while

the combination may still be patentable, a patent should only be granted if the old elements have been so combined as to operate in a new way, or to produce a new and useful result. Tried by this established test, we think the claim in suit cannot be upheld. Every element therein described operates in the same way as before, and, while the result is not precisely the same, the difference is so slight that we do not feel justified in pronouncing the machine either new or useful in a patentable sense. So far as appears, the chief, if not the only, advantage in the construction lies in the fact that when the scraping knives need sharpening and they need it only about once a week-they are more accessible and can probably be removed more conveniently from a machine that tilts than from a machine that is fixed in place. In other respects we do not see that the patent affects the usual operation of a freezer in any degree that needs attention. The brine flows in the same way and by the same course; the mixture to be frozen is the same and is subjected to the same cold; it is removed in the same way, and its quantity and quality are apparently what they were before. Neither is the patented combination used even in the frequent cleaning of the freezer; this is accomplished by an old method, which requires no tilting of the can. In short, the evidence discloses nothing more than this; the product is unchanged, and so is the mode of operation, except that the tilting of the freezer permits the knives to be taken out somewhat more rapidly and conveniently.

Believing this to be insufficient to sustain the patent, we direct the decree to be reversed, and the bill dismissed.