Statement of the Case. ment, instead of one, than there would be in fastening a board to a piece of studding or beam by two nails instead of one.' In that opinion this court entirely concurs. Is there then invention in this device exhibited connecting the wires for simultaneous operation? The complainant's expert testified upon cross-examination that the principal difference between the operation of the single file and that of the double file consisted in operating the vibrating wires of the latter simultaneously by means of connecting mechanism, and that, considered as an abstract principle, he did not regard the connecting of two old devices to operate simultaneously as invention, when the operation and function of each in their connected relation were the same as that performed by each when used singly. The expert was right in the view thus expressed. "The only remaining feature is the use of the spring to hold the wires in an open or closed position. The use of a spring to hold any device in an open or closed position was common and well known long prior to complainant's patent. Equivalents for like use were shown in the patent to Joseph B. Underwood, No. 187,494, February 20, 1877, for improvements in temporary binders.' It is true that the precise construction or device shown in complainant's device does not appear in any of the prior devices in evidence, but it required no invention to apply the spring to duplicate wires which had been applied to single wires. Moreover, the application to duplicate wires is shown in the Underwood patent. But it is contended that there are both novelty and invention in the specific combination in the old devices recited in the claims. This brings us to the lowest plane of the patent law, where, if the distinction between mechanical skill and invention is not altogether ignored and novelty and utility made the only test, the line between skill and invention is so shadowy and uncertain and so little regarded that in very many cases, if not the majority of them, the patent is wholly invalid. I do not see how the specific combination 1 See ante, p. 819. Statement of the Case. in this case can be recognized as patentable. But if the patent restricted to the precise arrangement described and shown could be sustained, the defendant would not be within the restriction, and therefore does not infringe. Its files are manufactured under letters patent No. 438,574 to Alexander Dom, issued on October 14, 1890.1 In external appearance they do not differ in any material respect from the files manufactured by complainant. The general construction is similar. The files are double with fixed and vibrating wires, the latter arched, pivoted and rotated, into or out of engagement with the fixed wires, which have their ends beveled in the same manner as in the complainant's device. On the lower ends of the transfer or rotating wires are cranks projecting in opposite directions, having intermeshing gear teeth for causing the simultaneous movement of the rotating wires inwardly toward the fixed wires and outwardly away from them. A spring is connected to the crank beneath the base plate and pressing toward its center of rotation, so that when the crank is moving across the center of motion the spring is under the greatest tension, but when on either side it serves to hold the crank and wires in proper position whether open or closed. It is claimed that this spring is the equivalent of the complainant's spring, as a leaf spring is the equivalent of a coil spring, if it performs the same function in the same way. "Attention is called to the statement in the specification of the Dom Patent, that instead of the S-shaped spring (which is the shape employed by defendant), any suitable form of spring or springs may be employed for accomplishing the desired result, and it is altogether true that the meshing gear teeth take the place of the connecting-bar in the complainant's device. The patentee of that device might have drawn his claim to cover 'connected mechanism' or 'means for connecting' or 'a connection between' the filing wires, whereby they might be operated simultaneously, but, as pointed out by counsel for the defendant, had he done this the state of the art and the 1 See ante, p. 804. Opinion of the Court. authorities would have limited his claim to the precise construction shown and described. He elected to draw his claim for combinations calling for certain specified elements, and independently of the state of the art, and he must be held limited to combinations containing those precise elements or mechanical equivalents each for each, which would relieve the defendant from the charge of infringement. The connectingbar is entirely absent from defendant's device. The defendant employs a different spring applied in a different way, attains his result by a different combination of different elements, and employs one less element than the combinations called for by the claims. The defendant therefore does not infringe." Mr. Frederick F. Church (Mr. Melville Church and Mr. J. B. Church were with him on the brief) for appellant. Mr. Charles M. Peck and Mr. George S. Baily for appellee. HAMMOND, District Judge, after stating the case as last above stated, delivered the opinion of the court. We have carefully read the record, including the evidence of the experts, we have compared the patents in the prior art with the patent sued on and the alleged infringing device, and fully concur with the learned judge at the circuit in the view that the patent, if valid, must be so limited in its scope that the defendant does not infringe. The reasons for this are so well stated in the opinion filed below that it is unnecessary for us to repeat them in a different form. We adopt the part of the opinion of the Circuit Court quoted above as the opinion of this court, and, without considering the question of laches in the disclaimer, the decree appealed from is Affirmed, with costs. Cases not Otherwise Reported. CASES ADJUDGED IN THE UNITED STATES CIRCUIT COURT OF APPEALS FOR THE SIXTH CIRCUIT BETWEEN THE 8TH DAY OF JULY, 1896, AND THE 20TH DAY OF JULY, 1896, AT OCTOBER TERM, 1895, OMITTED FROM THE TABLE IN 37 U. S. APP. 775, AND ALSO CASES ADJUDGED IN SAID COURT BETWEEN THE 20TH DAY OF JULY, 1896, AND THE 19TH DAY OF APRIL, 1897, AT OCTOBER TERM, 1895, AND AT OCTOBER TERM, 1896, NOT OTHERWISE REPORTED. AT OCTOBER TERM, 1895. No. 436. FoWLER MANUFACTURING COMPANY v. PIERPONT BOILER COMPANY. Appeal from the Circuit Court of the United States for the Northern District of Ohio. July 8, 1896. Affirmed, without an opinion. Mr. Lawrence Maxwell, Jr., and Mr. Ephraim Banning for appellant. Mr. Thomas W. Bakewell for appellee. AT OCTOBER TERM, 1896. No. 421. AMERICAN BUTTON-HOLE, OVERSEAMING AND SEWING MACHINE COMPANY V. BABCOCK. Appeal from the Circuit Court of the United States for the Eastern District of Michigan. October 19, 1896. Affirmed, without an opinion. Mr. George W. Radford for appellant. Messrs. Bowen, Douglas & Whiting for appellee. No. 491. BOYLE v. CLARE. Error to the Circuit Court of the United States for the Western District of Tennessee. February 2, 1897. Dismissed, with costs, on motion of Messrs. Percy & Watkins, counsel for plaintiff in error. Cases not Otherwise Reported. No. 465. BUTLER v. ASHLAND COAL AND IRON RAILWAY COMPANY. Appeal from the Circuit Court of the United States for the District of Kentucky. February 24, 1897. Affirmed, without an opinion. Mr. W. A. Byrne for appellant. Mr. John Hagar for appellee. No. 315. CITY OF MACKINAC, THE. Appeal from the District Court of the United States for the Eastern District of Michigan. November 10, 1896. Discontinued by consent after the reversal of the decree dismissing the libel (ante, p. 190) and before any rehearing was had under the order of October 5, 1896, granting a rehearing. Mr. John C. Shaw for Timothy Hurley and another, libellants, appellants. Messrs. Wells, Angell, Boynton & McMillan for the claimant of the City of Mackinac, appellee. No. 490. FLORENCE MINING AND MANUFACTURING COMPANY v. MORRIS. Appeal from the Circuit Court of the United States for the Middle District of Tennessee. February 2, 1897. Dismissed, with costs, on motion of Messrs. Champion, Head & Brown, counsel for appellant. No. 454. FREIBERG v. MATTINGLY COMPANY. Appeal from the Circuit Court of the United States for the District of Kentucky. February 2, 1897. Affirmed, without an opinion. Mr. D. W. Fairleigh for appellants. Mr. George M. Davie for appellee. No. 459. IRON CHIEF, THE. Appeal from the District Court of the United States for the Eastern District of Michigan. March 2, 1897. Affirmed after argument and without an opinion. Mr. Fred Harvey and Mr. H. C. Wisner for appellant. Mr. John C. Shaw and Mr. Harvey D. Goulder for appellee. No. 444. KING v. SPERRY'S ADMINISTRATOR. Error to the Circuit Court of the United States for the Northern Dis |