Statement of the Case.

NATIONAL HAT POUNCING MACHINE COMPANY v. HEDDEN.

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF NEW JERSEY.

No. 138. Argued March 13, 14, 1893. - Decided April 3, 1893.

The fifth claim in letters patent No. 220,889, issued to Edmund B. Taylor, October 21, 1879, for improvements in machines for pouncing hats, viz.: "5. The combination of the support for the hat and the self feeding pouncing cylinder, whereby the hat is drawn over the support B in the direction of the motion of the pouncing cylinder," was anticipated by the second claim in letters patent No. 97,178, issued November 23, 1869, to Rudolph Eickemeyer.

THIS was a bill in equity to recover damages for the infringement of two letters patent for improvements in machines for pouncing hats, viz., patent No. 97,178, issued November 23, 1869, to Rudolph Eickemeyer, and patent No. 220,889, issued October 21, 1879, to Edmund B. Taylor.

In his specification Taylor states:

"The object of my invention is to dispense with feed rolls and hat blocks in machines for pouncing hats, to make the cutting or pouncing cylinder self feeding, to enable the operator to control the speed and direction in which the hats to be pounced pass over the cutting or pouncing surface by the hand with the assistance of a guard and presser pin, and to cause the material to be pounced to move in the same direction as the surface of the self feeding cutter in contact with it, thereby avoiding the injurious strain to which it is subjected in ordinary hat pouncing machines with feed rolls or their equivalents.

"With my machine not only can hats be pounced without any stretching or straining of the material to be pounced, but hats of different styles can be pounced, or different parts of the same hats can be pounced more or less, as may be desired, without any change in the adjustment of the machine. . . .

Statement of the Case.

"My machine consists of a table or supporting frame, X, which carries the bearings F for the shaft, upon which is fixed the driving pulley E and the self feeding pouncing cylinder A, which can be revolved at any desirable speed. This self feeding cylinder is covered with the pouncing or cutting material.

"A block, B, supports the hat or material to be pounced and presses it against the self feeding pouncing cylinder A. This block is adjustable upon its middle point by means of a bolt tapped into it, which passes through the bracket D, and is fastened by a nut, M. It is supported by the bracket D, which turns on a pivot, and is operated by a treadle and lever, P, and connecting rod O.

"A guard, C, is placed directly over the supporting block to protect the hands of the operator from contact with the self feeding pouncing cylinder, and is adjustable upon the bracket D by the means of the nut R, which works in a stirrup in the guard.

"The mode of operating my machine is as follows: The hat to be pounced is placed over the supporting block and pressed against the self feeding pouncing cylinder by means of the treadle operating the swinging bracket. The self feeding pouncing cylinder, revolving at great speed, draws the hat through the space between the supporting block and the self feeding pouncing cylinder. The hand of the operator, assisted, when necessary, by the presser pin L, retards the hat in its passage and controls its direction, by which means the pouncing surface can be caused to move over the material to be pounced at any rate of speed or in any direction that may be desired."

The only claim alleged to be infringed was the fifth, which reads as follows:

"5. The combination of the support for the hat and the self feeding pouncing cylinder, whereby the hat is drawn over the support B in the direction of the motion of the pouncing cylinder."

The following represent Figures 1 and 2 of the drawings:

Counsel for Appellees.

Fig. 1.

Fig. 2

Upon a hearing upon pleadings and proofs in the Circuit Court, the court found in favor of the plaintiff upon the second claim of the Eickemeyer patent, but also found the fifth claim of the Taylor patent to be invalid for want of novelty, and dismissed the bill as to this patent. 36 Fed. Rep. 317. Defend ants did not appeal from the decree against them as to the Eickemeyer patent, but plaintiff appealed from so much of the decree as related to the patent to Taylor.

Mr. Eugene Treadwell and Mr. William W. Swan for appellant.

Mr. Edward Q. Keasbey, (with whom was Mr. A. Q. Keas bey on the brief,) for appellees.

Opinion of the Court.

MR. JUSTICE BROWN delivered the opinion of the court.

The fifth claim of the Taylor patent was held to be invalid by the court below upon the ground that it was anticipated by the second claim of the Eickemeyer patent.

The operation of cutting or grinding off the rough surface of the wool or fur of which the hat is made, by the use of pumice, is termed "pouncing." This was formerly done by pumice or sand paper held in the hand, and applied to the frame of the hat, laid upon a flat surface, and to the crown, fitted over a hat-block of corresponding shape. In time, mechanical devices began to be employed for the same purpose. Originally, this mechanism consisted simply of a block over which the hat-body was stretched, and to which a rotary motion was imparted, while the pouncing material was held in the hand and applied to the surface of the hat. The patent to Wheeler and Manley of August 14, 1866, contained an improvement upon this, and consisted in pouncing the hatbody by means of an emery cylinder or other pouncing surface moving at a high speed in contact with or against a hat-body revolving at a comparatively low speed. This machine, however, consisted of two separate devices, one for pouncing the crown of the hat, and the other for pouncing the brim. The patent to Nougaret of September 18, 1866, also provided for two separate devices, one to pounce the crown and the other the brim. Like the Wheeler and Manley crown machine, the Nougaret device for pouncing the crown contained a revolving hat-block for carrying the hat, but the subordinate devices for bringing the different parts of the hat-block in contact with the pouncing roller, differed somewhat in the two machines. The patent to Labiaux of March 26, 1867, was simply for an improvement in the crown machine of Nougaret, and consisted in the manner of hanging and operating the shafts upon which the pouncing roller and block were secured, and in the manner of securing and holding the sand paper to the pouncing roller, and in some other minor particulars.

The patent to Eickemeyer of November 23, 1869, was a decided advance upon previous devices, in the fact that the

Opinion of the Court.

crown of the hat was so supported that both the crown and the brim were presented by the same instrument to the pouncing cylinder. 25 Fed. Rep. 496. In his specification he stated his method of accomplishing this as follows: "My invention further consists in an arrangement of the pouncing cylinder, and a rest or supporting horn for the hat-body, which can be introduced within the crown to support it against the cutting action of the pouncing cylinder during the operation of pouncing, the arrangement being such as to dispense with the use of a hat-block in pouncing the tips and side crowns of the hats." The second and third claims of this patent, the only ones material to be considered, read as follows:

"2. The arrangement and combination of a rotating pouncing cylinder with a vertical supporting horn, substantially as described, whereby the supporting horn may be used to support the tip, side crown, or brim during the operation of pouncing the hat.

"3. In combination with a rotating pouncing cylinder and a rest or supporting horn, a swivelling feeding mechanism, substantially as described, whereby the hat may be drawn between the pouncing cylinder in different curves or directly forward, as required."

The Taylor patent was applied for May 21, 1879. The fifth claim of the specification as originally drawn read as follows:

"5. The combination of the pouncing cylinder and the support for the hat, whereby the hat is drawn over the moving pouncing cylinder in the direction of the motion of the cylinder, substantially as described.”

As thus drawn, this claim was rejected by the examiner upon reference to the Eickemeyer patent of March, 1874, which does not appear in the record, but which it may be, presumed was substantially the same as the patent of 1869 in this particular. The specification was thereupon amended by inserting before the words "pouncing cylinder," wherever they occurred, the words "self-feeding," and the fifth claim was amended to read as follows:

"5. The combination of the support for the hat and the self-feeding pouncing cylinder, whereby the. hat is drawn