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Opinion of the Court.

swifts. In this shape it forms the raw silk of commerce and is imported into America in large quantities, mostly from Europe and Asia. The skeins of raw silk are treated by the manufacturer of silk thread (I do not mean by this term 'thread' sewing silks and braids only, but rather that known as tram and organzine that is used in making textile fabrics) usually as follows: The raw silk is ungummed; it is dried to a sufficient degree, and is then, in skein form, put on swifts, from which it is wound on to spools or bobbins. The silk, according to the use to which it is to be put, is further doubled, in which operation it goes from spool to spool, is twisted, in which operation it goes from spool to spool, and when of sufficient size as to number of threads and of condition as to twisting it is reeled from the spool or bobbin into skein form. In this skein form it is dyed, and with the old form of skeins is then parted to separate the several small skeins that compose the larger skein, such as I now produce, and is then put on 'risers,' so called, and wound on to bobbins, in which shape the silk is used usually in the manufacture of textile fabrics. I will state that the 'risers,' as used in this old process of manufacture that I am describing, consisted of two small drums or pulleys, usually of about five or six inches in diameter, and that the skein was wound from these 'risers.'

"In this art the term 'winding' means the changing of the silk from the skein form to its form on a bobbin or spool, and by 'reeling' is meant the putting of the silk into the skein form."

The contention of the appellant is that the skein of the patent should be considered in connection with the specification and knowledge of the art possessed by the persons to whom the specification is addressed, and if the prior art requires limitations in order to leave validity in the patent, then it is right and proper for the court to read such limitations into the claims by construction, and on the basis of this proposition it is urged that Grant's skein differed from the earlier skeins shown by the testimony in at least two particulars: First, that the earlier skeins were gummed, and Grant's skeins are ungummed, which prevented the former from being dyed,

Opinion of the Court.

while the latter can be; and, secondly, that the earlier skeins. were laced tightly for the purposes of transportation and handling, while Grant's skeins are laced loosely so that they are in a condition for dyeing. The Grant skein is shown to be an improvement over the earlier skeins for the purposes of dyeing, but neither the specification nor the claims of the patent limit it to that purpose. The disclaimer undertakes so to do, or rather to limit it to a condition in which the skein may be dyed.

The court below properly held that the disclaimer did not give any increased validity to the patent for the skein, or change it into one for a process. And the simple question presented is whether Grant's skein possesses features of patentable novelty over the earlier skeins shown by the testimony. The cross-reeling and lacing in the skein of the patent perform substantially the same function in substantially the same way as in the earlier skeins, but at a later and different stage or condition of the silk thread forming the skein. It is perfectly manifest that if a patent had existed on the earlier skein, the skein of the patent would be an infringement thereof, as being simply for a double or analogous use. Such analogous use, under the authorities, is not patentable. Brown v. Piper, 91 U. S. 37; Pennsylvania Railroad v. Locomotive Truck Co., 110 U. S. 491; Miller v. Foree, 116 U. S. 22; Dreyfus v. Searle, 124 U. S. 60. And the same result must follow, although the earlier skein is not patented, if it embodies substantially the same form, and for a like use.

The function and purpose of the prior skein and the patented device were exactly analogous, operated in the same way, and were serviceable in both cases to preserve the skein from entanglement, the patented skein being applicable to a later stage of the thread. This, within the principle announced in Smith v. Nichols, 21 Wall. 112, would constitute simply a mere carrying forward or extended application of the original device with the change only in degree, but doing substantially the same thing in the same way by substantially the same means with some better results, and would not, therefore, be patentable.

Opinion of the Court.

The difference insisted upon in support of the patent, that the looser lacing of the skein across the band to preserve its form and keep it in condition suitable for dyeing the thread, is clearly a matter of mechanical skill which does not involve invention. It is said by one of complainant's witnesses that such loose lacing, as is insisted upon as a requisite for effective dyeing, is neither shown in the drawings, nor in the specification nor claims, but that it should be read into the patent, because " a man that understands his business must know that it must be laced loosely or that the silk would be spoiled in dyeing," and that, if this were not noticed or not known, it would be taught him by the first experiment. It is perfectly evident that it would readily occur to any one skilled in the art that, as the skeins are increased in size or width of band, the necessity for lacing in order to preserve the form and keep the skein in a condition for dyeing would be correspondingly increased, and that the looser the lacing the more perfect would be the dyeing. Such changes in degree, merely, would not constitute an invention. Estey v. Burdett, 109 U. S. 633.

It is settled that distinct and formal claims are necessary to ascertain the scope of the invention. Merrill v. Yeomans, 94 U. S. 568; Western Electric Co. v. Ansonia Brass & Copper Co., 114 U. S. 447.

If, therefore, the elements of "boiling off," or ungumming the silk, or the dyeing thereof, and of improving the winding facility, were patentable, in view of the prior skeins, they should have been covered by the claims of the patent. James v. Campbell, 104 U. S. 356, and authorities cited above.

The disclaimer takes away nothing from the claims except what is not in condition for dyeing, and no silk thread is in condition for dyeing by simply being cross-reeled and laced. The patent, notwithstanding the disclaimer, is still for an old device of a cross-reeled and laced skein for whatever purpose it may be designed, and is void for want of patentable novelty. The counsel for the appellant, while claiming the benefit of his disclaimer, and insisting that Grant's skein is distinguishable from the earlier anticipating skeins, for the reason that the latter were coated with gum and were not loosely laced, states that

Opinion of the Court.

"Grant's specification addresses its direction wholly to the skeinmaker, never to the dyer. It says: 'My invention relates to a novel manner of winding silk or other thread upon the reels in a reeling machine preparatory to its being dyed.' 'My improvement consists in winding the silk or other thread upon the reel in the form of a wide band.' 'When the required quantity has been wound, I lace the skein or band . so as to divide it into a number of parts and hold it in its flat or band-like condition.' Grant had a clear idea of the real nub of his invention. He says: This lacing constitutes the chief point of my invention, and is what preserves the skein in its shape and prevents its becoming entangled in the process of dyeing.' Grant gives no instruction to the dyer or the winder, for the simple reason that in dyeing his skein and afterwards winding it upon bobbins the procedure is identical with the procedure of the old art. All that is novel is found in the skein, and that answers the question, Is Grant's improvement a skein or a process? That answer is: Grant's improvement is a new skein." So that the whole invention must be tested by the simple question whether the looser lacing for the purpose of dyeing, over the more tightly laced skeins for the purpose of preserving their form and winding qualities, while being "boiled off" or ungummed, constitutes a patentable invention. Considering the purpose for which it is now claimed, it cannot be anything more than a mere application of an old process to a new use, which does not rise to the dignity of invention, the looser lacing for the purposes of dyeing being perfectly apparent to any one skilled in the art of silk manufacture, or in the preparation of thread for that purpose. But while it is thus claimed that the Grant specification addresses itself to the direction wholly of the skein-maker, and never to the dyer, the disclaimer undertakes to confine such direction solely to the dyer, rather than to the skein-maker, as the effect of the disclaimer is intended to exclude skeins "which, by reason of being coated with gum or by reason of the manner of its lacing or for any other reason, is not in condition for dyeing for ordinary manufacturing purposes." So that, under the operation of the disclaimer,

Syllabus.

the specification and claims would have to be read as addressed to the dyer rather than to the skein-maker. This would involve a complete change of what was covered by the specification and claims, which must be held controlling.

The most that can be said of this Grant patent is that it is a discovery of a new use for an old device which does not involve patentability. However useful the nature of the new use to which the skein is sought to be confined by the disclaimer, compared with the former uses to which the old skein was applied at the date of the improvement, it forms only an analogous or double use, or one so cognate and similar to the uses and purposes of the former cross-reeled and laced skein as not to involve anything more than mechanical skill, and does not constitute invention, as is well settled by authorities already referred to.

The advantages claimed for it, and which it no doubt possesses to a considerable degree, cannot be held to change this result, it being well settled that utility cannot control the language of the statute, which limits the benefit of the patent laws to things which are new as well as useful. The fact that the patented article has gone into general use is evidence of its utility, but not conclusive of that and still less of its patentable novelty. McClain v. Ortmayer, 141 U. S. 419, 425, and authorities there cited.

Our conclusion is that there was no error in the decree of the court below, and the same is accordingly

Affirmed.

KREMENTZ v. THE S. COTTLE COMPANY.

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

No. 161. Argued and submitted March 23, 1893. - Decided April 10, 1893.

Letters patent No. 298,303, issued May 6, 1884, to George Krementz for a new and improved collar button, protect a patentable invention, which was not anticipated by the invention described in letters patent No. 171,882

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