186 F. 992 | U.S. Circuit Court for the District of Southern New York | 1911
(after stating the facts as above). The defendant does not assert that these claims are invalid, but does insist
“A device which automatically moves the paper away from the moistening device arranged between the paper holder and the moistening device.”
And in claim 5:
“Means for moving the free end of the paper which is adjacent to the surface of the moistening roller.”
Before taking up the literal meaning of these claims, it will be best to consider their interpretation from the file wrapper and the prior art. The original of both claims was as follows: .
“A guide for holding the paper out of contact with the roller when the paper is not being used.”
Against this was cited Hobbs No. 542,384, whereupon the present claims were substituted in substantially their present form and were at once passed without objection. Claim 2 is differentiated from Hobbs, in the first place, because it was automatic, and, in the second place because it was between the paper holder and the moistening device, neither of which was the case in Hobbs. Claim 5 is differentiated because the free end of the paper was not adjacent to the moistening roll in Hobbs. It is true that the defendant says that the frame containing the paste bath in Hobbs might be lowered so as to approach the knife, but the purpose of the machine was to keep a considerable length of paper between the paste bath and the knife, since it was only upon that paper that the paste would be tempered which was the main purpose of the machine. That purpose would be defeated if the knife was closely approximated to the paste bath, so that the free end of the paper could be said to be adjacent to the moving device.
The reference and changes consequent thereon in no sense limit the character of the device itself. The defendant insists that the means indicated must be themselves moving, but this is obviously not so, because the means in Hobbs were moving, and, if that had been the purpose of the citation, it was not answered by the change of the claims. The file wrapper therefore contains nothing of interest.
Next as to the prior art as a basis for construing the claims. In it there is nothing of consequence except Bruen, No. 305,892, and Hobbs already cited. Bruen, with slight modifications, would unquestionably have been a good anticipation of the defendant’s machine. Had the roller in that' case been raised, a serrated edge been added, a continuous gummed strip been used, and the machine placed horizontally, it would certainly have been the equivalent of the defendant’s; but these changes were by no means obvious. It is true that the slot in Bruen through the natural energy of the paper would tend to lift the free end of the tape from the roller G, and it might have been enough to overcome both the adhesion of the gum to the roller and the force
The question remains whether the defendant’s machine removes the tape from the sponge at all within the meaning of the claims, and in deciding that question the action of the patent in suit itself may fairly be considered. The purposes of moving the tape from the roller are three: First, page 1, lines 62, 63, 64, to “prevent the strip from becoming wet and weakened so that it will readily break”; and second, page 2, lines 5, 6, 7, 8, so that the “danger that the paper shall stick to this part of the apparatus while the parts are at rest is reduced to a minimum”; third, page 2, lines 25-29, “so that the free end of the paper is directly over the moistening roller in position to be pressed against the moistening roller by hand, should such end of the paper be found to be dry.” All these purposes are secured, provided that the tape he detached from the surface of the moistener, even though if rest lightly against the moistener, and, as 1 have said, in the complainant’s device it does rest against the moistener, but not so as to become wet or to stick. The defendant's device secures all those three purposes. The first it secures because the contact between the tape and the edge of the sponge is too light to moisten the tape; the second because the paper’s native resiliency removes it from the face of the sponge in a majority of instances; the third be
It is true that in a large number of instances the tape in the defendant’s machine actually sticks, to the face of the sponge. To that extent the machine does not operate with certainty. However, the removal of the tape depends altogether upon the angle at which it crosses the edgé of the space of the sponge face. If the twin posts are moved nearer the sponge, the angle between the tape and the face of the sponge approaches 90 degrees, and, with a slight change in position, the tape will not stick to the face of the sponge at all. This -can be easily tested by holding a • lead pencil firmly upon the radius- line at a point between the twin posts and the sponge. The question is one of degree, therefore, and in the actual machine in evidence the twin posts are so placed as not to insure detaching the tape from the sponge.
Let the usual interlocutory decree pass, with costs.