68 F. 428 | U.S. Circuit Court for the District of Maryland | 1895
The complainant is an unincorporated joint-stock company, under the laws of Hew York, suing by its president, as the assignee of patent No. 488,630, December 27, 1892, granted to Alfred C. Hafely, who is also a member of the complainant company. The defenses are want of novelty, want of patentability, want of notice of the patent, and noninfringement. The patent is
“The object of my invention is to produce covers, corners, and like articles for books, boxes, albums, and other uses, which shall have certain ornamental features, not heretofore accomplished, and which may be readily and economically manufactured, may be somewhat elastic, and of shapes which do not tend to injure surrounding objects. * * * I have * * * discovered a new and useful manner of preparing such covers and corners from thin sheet celluloid or other substance rendered plastic by heat, and the finished article can thereby be made to possess features not heretofore possible by any method I am aware of. The elasticity of the celluloid, together with its plasticity when warm, renders it peculiarly adaptable to my invention; and, as it may be made transparent, translucent, or tinted and grained, I am enabled by enibossing, and by the use of suitable coloring, and suitable tinted backings beneath it, to obtain a variety of beautiful effects. * * * In making box covers according to my invention, I may employ a wooden frame, B, which is shown in cross section in Fig. 3, and is provided with ornamental moldings as shown. The celluloid sheet, cut to the proper size, and embossed with ornamental figures, as will hereinafter be described, as plainly if preferred, is then laid upon the frame. A heated matrix corresponding in shape to frame, B, is then brought down, and the celluloid, which is heated, and rendered plastic, thereby is pressed into -shape between the matrix and the frame, the latter forming a patrix therefor, to which the celluloid conforms. It is preferable to first coat the frame with celluloid cement, so that the celluloid, when pressed into place by the heated die, may be firmly cemented to the frame. After this operation, the edges of the celluloid sheet project lierpendicularly from the frame. They may then be heated and turned down, as in figure 2, and a flat, heated iron applied to them. By a pressure from or against the .heated iron the overlapping corners are thoroughly blended and united. * * * I form covers for books and albums in a similar manner. Preferably, however, the cover is embossed, and its edges turned at right angles, as shown in Fig. 7, by means of two heated dies, which render the material plastic, and capable of taking up the curved outline required. A pad made of wadding or other soft material is then substituted in the place of the patrix die, as in Fig. 8, and the corners turned over, and secured at the rear of the cover, as is shown in Fig. 6, in a manner substantially the same as in the case of the box just described. * * * The construction may be modified somewhat by substituting a permanent patrix in the process of embossing and turning up the edges upon the back of such patrix to form a cover for either boxes or albums. * * * In the forms heretofore described, the finished article has contained a frame, of permanent padding, to which the celluloid is secured. In figures 10, 11, and 12 is shown, on the other hand, a cover adapted to be fitted over, and to be secured to, the finished cover of a book or album. In forming this corner, the sheet of celluloid is first cut to a suitable blank, as in figure 10. This blank has the side flaps which turn over the edges of the book, and the flap or tongue to cover the corner where the two flaps meet. The blank is first pressed between two suitable dies, which are heated, and render the blank soft and plastic. By these dies the central or exposed portion is embossed with ornamental designs, and given the rounded form shown in figure 12 at E. The flaps, 0, and the tongue are turned up at right angles on the line, F, and present the appearance indicated by dotted lines in figure 12. The flaps and tongue are then treated with suitable cement, and subjected to pressure between the flap back of the patrix and a heated plate, and by this action of heat and pressure are secured together, and securely blended, as shown in figure 11. The corner is now complete, and may be removed from the die, and the patrix slipped out of it. A full celluloid side or cover of a book may be made in a manner similar to the corner just described, it being only necessary to use a blank, dies, etc., provided with two instead of one corner.”
“(1) The method of making covers, corners, and like parts of books, boxes, and other uses of sheet celluloid or kindred material, rendered plastic by-heat, which consists of forming up its border by suitable dies, first at right angles, and then parallel to the cover or comer, and uniting them by the application of heat and pressure, substantially as set forth. (2) The method of making covers, corners, and like parts of books, boxes, and other uses, of sheet or kindred material, rendered plastic by heat, which consists of forming up its border of suitable dies, first at right angles, and parallel to the cover or corner, uniting and blending them by the application of heat and pressure, and padding or filling the interior so formed, substantially as set forth. (3) The method of making comers, covers, and like parts for books, boxes, and other uses, of celluloid or other material that may he rendered plastic by heat, which consists in applying heat and pressure by suitable dies, folding over the borders, and cementing or otherwise securing thorn together, substantially as set forth. (4) A cover or corner for hooks, boxes, and like uses, consisting of sheet celluloid or kindred materials, and provided with round corners, the borders of the said cover or corner being folded over upon its back, and a tongue or flap at meeting edges, of said borders, cemented or otherwise secured thereto, substantially as and for purposes set forth.”
It is quite true, as urged by the defendants, that the use of heated dies in embossing figures upon sheet celluloid was well known at the date of Hafely’s patent, and, indeed, lie sheets used for his purposes are often furnished to the trade by manufacturers, already embossed with a central flgure, but it is very remarkable that, if Hafely’s method of forming album covers of celluloid required no invention, it was not practiced before he disclosed it in 1890 or 1891. Sheet celluloid was to be had ever since Hyatt invented the process of making it in 1878. The beauty, usefulness, and commercial success of the articles made after Hafely’s method are not questioned, and yet it does not appear that any one, before Ms invention, was ever able to apply sheet celluloid successfully, as he has applied it. It appears to me by no means obvious that the result sought for was to be obtained by having a heated die just the size and shape of the box cover or album side, which would form up the round corners, and turn up the sides at the edges by turning over the edges with a heated tool. The experiments of JLefferts, a witness for defendants, who for 15 years had been a manufacturer of sheet celluloid, in making a round corner of celluloid suitable for pocket books, as a substitute for metal comers, and his failure, show the difficulty, and show that Hafely’s method was not one which even an experienced workman in celluloid would hit upon. It seems to me that both the novelty and the patentability of Hafely’s method are fully sustained.
With regard to the defense of public, authorized use for more than two years before the application for a patent, I do not think the evidence in support of this defense is convincing. It is true that the substance of Hafely’s invention was contained in a prior application, which he made on September 25, 1889, and subsequently abandoned. This was two years and seven months prior to the application on which his patent was granted. Hafely testifies that album covers made by this process were not put upon the market until 1891, or the latter part of 1890, which was within two years of his second application.
Another defense is that the complainant’s articles were not marked “Patented,” as provided by section 4900, Bev. St, and that no notice was given to the defendants. Whatever doubt there may be, under the proofs, as to marking the complainant’s articles “Patented,” I think the actual written notice is sufficiently proved; but, at the most, the want of notice or marking would only affect the question of damages, but not the right to an injunction. The complainant is entitled to the usual decree for an injunction and an accounting.