the proper authorities." This language, it seems to us, was intended to conserve and did save from the operation of the new act then existing fire escapes which had been officially approved under the act of 1879. If this was not the purpose of the proviso, it was very misleading. As the act of 1885 is highly penal, it is not, in view of its proviso, to be construed as embracing persons who had complied with, or were under the protection of, the previous act. It will be perceived that even a departure from the particular construction specified in the act of 1885 is permissible, if approved by the constituted authorities. Evidently the Legislature considered the approving judgment of these authorities as worthy of all acceptation. Hence the emphatic declaration of the final proviso "that nothing in this act shall interfere with fire escapes now in use, approved by the proper authorities." Under this sweeping language, existing and duly approved fire escapes were in no wise interfered with by anything contained in the act. The defendant's fire escape came squarely within the terms of this proviso. It therefore continued to be a legally sufficient structure, and the official certificate of its approval protected the defendant from the plaintiff's demand. We are of opinion that the court below should have entered judgment for the defendant on the reserved question.

The judgment of the circuit court is reversed, and the cause is remanded to that court, with direction to enter a judgment in favor of the defendant below non obstante veredicto.

FAY v. MASON et al.

(Circuit Court of Appeals, Second Circuit. December 16, 1903.)

No. 44.

1. PATENTS-INFRINGEMENT-IRONING MACHINES.

The Fay reissued patent, No. 11,664 (original No. 560,816), for machines for ironing the edges of collars and cuffs, and No. 678,949, to the same inventor, for improvements thereon, construed, and held not infringed by the machine of the Rickey patent, No. 660,277; the ironing heads of the Fay patents being circular heads, which revolve, having no equivalent in the Rickey device, which has swinging heads, with fixed eccentric

axes.

2. SAME-SUIT FOR INFRINGEMENT-EXPERT TESTIMONY.

Where difficult questions of form of operation and equivalency of function between the parts of a patented machine and one alleged to infringe are involved in a suit for infringement, the complainant should give the court the benefit of expert testimony on such questions.

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

This cause comes here by appeal from a decree sustaining the validity, and ordering an injunction against infringement, of complainant's reissued patent No. 11,664, dated May 17, 1898, and patent No. 678,949, dated July 23, 1901, for machines for ironing edges of collars and cuffs.

For opinion below, see 120 Fed. 506.

A. Parker Smith, for appellants.
J. W. Ellis, for appellee.

Before LACOMBE and TOWNSEND, Circuit Judges.

TOWNSEND, Circuit Judge. The record fails to show that, prior to the alleged inventions of the patents in suit, any machine had been constructed which would smooth the rough edges of collars and cuffs. The complainant testified that, as a result of some months of inquiry and investigation throughout the United States, he "became satisfied that there was no such machine or device used; that laundrymen did not make any effort at all to get rid of said wire edge or saw edge upon collars and cuffs." He constructed such a machine. It was operative and commercially successful, and its construction is covered by the patents in suit.

Counsel for complainant accurately states the issue herein, namely, the question as to the pioneer character of the Fay invention. If the patent is not a basic one, the charge of infringement cannot be sustained.

The chief contention of the parties centers about the earlier or reissued patent, No. 11,664. It "relates to improvements upon those machines for ironing the edges of cuffs and collars in which a heated revolving cylindrical body is provided with peripheral grooves, in which the edge of the cuff or collar is to be inserted to smooth the same." Its object "is to greatly increase the convenience and facility of adjusting the edge of the collar in the groove, thus to increase the rapidity with which the work can be done." The "invention comprises an ironing-machine in which the rotating head has a peripheral groove, the lower wall of which is wider than the upper wall, and projects to form a stop, rest, and guide for catching the cuff or collar, and guiding the edge thereof into the groove."

The rotating head is further described as follows:

"The improved rotating smoothing-head which I have invented is conical, and stepped upon its upper face, and has around each of the steps a peripheral groove, the lower wall of which is on a line with the next lower step."

Of the first four claims alleged to infringe, claim 2 is said to be most clearly reproduced in defendants' construction. Said claim is as follows:

"(2) An ironing-machine having a rotatable head, a circular groove in the head, and a guide on the same plane as a side of the groove, forming a pro. jecting wall to the latter, substantially as set forth."

The only evidence furnished as to the prior art consisted in the introduction by defendant, without explanation, of the German patents to Senkbeil and Gantenberg for polishing the edges of collars and cuffs, and United States patent No. 557,766, to Burges, not necessary to be discussed, for a collar-creasing machine.

The Senkbeil patent shows a stationary iron head having several circular grooves, adapted to different thicknesses of collars, through which the collars may be drawn by hand. The Gantenberg patent shows a revolving cylinder with two grooves of different sizes, for

1

collars of differing thicknesses. The only criticism of the Senkbeil patent by complainant's experts is as follows:

"The surface being a long, straight groove, you could not bring the irregular shape of collars in contact with the groove; and the grooves are all made of fixed width, which would only take an article of even thickness, and no collars are of an even thickness at all points."

The Gantenberg patent is said to be impracticable, for the second reason stated above. But in this regard the reissued patent is at least equally open to the same objection, for, while the German patents suggest and show different thicknesses of grooves for different thicknesses of linen, all the grooves of the reissued patent are shown as of equal widths.

Both of complainant's witnesses agree in the following testimony: "X-Q. 15. Would it require more than mechanical skill to mount the drum, c, shown in the Gantenberg patent, in a lathe, and cut therein grooves of the same cross-section shown in the various figures of the drawings of the Senkbeil patent? A. No; it would not."

Such a machine would embody the construction of the reissued patent, except the widening of the lower step to serve as a guide.

Complainant attempts to avoid the effect of this evidence by the contention that "the invention lay in the discovery that a guide to the groove was what was necessary," and "that was the discovery underlying the Fay invention." But there is not a word of testimony on the part of complainant's experts to show that the German patents were impracticable for this reason. And his expert, Leary, referring to the drawings of the Gantenberg patent, makes the following admission on this point:

"If the groove was wide enough, so that the article being ironed could be made to touch on one wall only, it would then form a guide to the groove."

This evidence disposes of the complainant's reissued patent, and shows in what his mere improvement on the prior art consisted. The prior art sufficiently disclosed the principle and mode of operation of such machines. His only contribution thereto consisted in a widening of the circular groove so as to make a better finish, and of one of its walls so as to make a better guide for the collar. The patentee says:

"The necessity of having a guide which is a continuation of the groove is to avoid forming a rough portion at the corners of the article to be ironed. The article ironed in this way forms such a perfect finish of the edge that there is no apparent space between the surfaces which are ironed by the two machines, namely, the large collar and cuff ironer and the edge ironer."

The reissued patent is thus brought within the rule that: "A mere carrying forward of the original thought, or a change only in form, proportions, or degree, the substitution of equivalents doing substantially the same thing in the same way by substantially the same means, with better results, is not such invention as will sustain a patent." Smith v. Nichols, 21 Wall. 112, 119, 22 L. Ed. 566; Burt v. Evory, 133 U. S. 349, 358, 10 Sup. Ct. 397, 33 L. Ed. 647.

In order that a person shall be entitled to a patent, "it is not enough that the thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been before known, and that it

.

shall be useful, but it must amount to an invention or discovery." Hill v. Wooster, 132 U. S. 693, 701, 10 Sup. Ct. 231, 33 L. Ed. 502.

In this case the patentee has testified, as already shown, that "laundrymen did not make any effort at all to get rid of said wire edge or saw edge." He was satisfied that such a machine would meet with a market, and he constructed one. As soon as the want was apparent, he supplied that obvious want by what confessedly amounted only to the ordinary skill of a mechanic. Hollister v. Benedict, 113 U. S. 59, 5 Sup. Ct. 717, 28 L. Ed. 901.

The following copies of the drawings of the reissued patent show its construction:

A, is the cone-shaped revolving circular head; a, a, a, are the grooves into which the edge of the collar is to be inserted to be ironed; "the lower wall, b, of each groove projects to form a step, rest, or guide for the cuff or collar to be smoothed," the discovery for the necessity of which is the foundation of the Fay invention.

The defendant's machine is covered by letters patent No. 660,277, granted to W. H. Rickey October 23, 1900. Its construction is best shown by the following copy of Fig. 1 of the drawings of the patent:

P

2

Fig.

a, a, a, are ironing heads mounted and swinging on pivots, b, b, b; d, d, are weights swinging on fulcrums, and thus controlling the backward and forward movements of the heads; i, i, i, are the grooves in the face of the heads. The heads are not cone-shaped. They are not rotatable, except as they swing on the pivot or eccentric axis when the collar is pressed into the grooves. The grooves are not circular, but are elliptical or oblong. The only guide claimed to correspond to com