Lay v. Indianapolis Brush & Broom Mfg. Co.

• Decision Date: 12 January 1903
• Docket Number: 894.
• Parties: LAY et al. v. INDIANAPOLIS BRUSH & BROOM MFG. CO.
• Court: U.S. Court of Appeals — Seventh Circuit

120 F. 831

LAY et al. v. INDIANAPOLIS BRUSH & BROOM MFG. CO.

No. 894.

United States Court of Appeals, Seventh Circuit.

January 12, 1903

C. C Linthicum, for appellant.

V. H Lockwood, for appellee.

Before JENKINS and GROSSCUP, Circuit Judges, and BUNN, District Judge.

BUNN District Judge.

This is an appeal by complainants below from a decree dismissing a bill brought for infringement of patent No. 652,542, for an improvement in broom cases, granted Samuel C. Lay, June 26 1900. The defenses are: (1) Prior sale or use two years before filing the application for the patent in suit, with a strong intimation that the patent was void for want of novelty amounting to invention. We think the decree sound on both of these grounds.

A prior patent, No. 208,685, was obtained by Joseph Lay in 1878 for an improvement in brooms, and another, No. 272,890, in 1883 and the complainants had been engaged in the manufacture of brooms at the city of Ridgeville, Ind., for 24 years or more prior to the hearing in this case.

The 1883 patent was for a sheet-metal cap formed of two thin sheets having their edges interlocked at the two narrower sides or edges, like this:

(Image Omitted)

These complainants first manufactured brooms with this metal cap or case to inclose the upper end of the brush where the handle is inserted. This was in 1881, before the second patent was issued. This case was clinched on both edges by an interlocking of the metal case, and nails were driven through the interlocking parts. For the first inch or so at the bottom the case is straight, and does not follow the slope of the broom. The upper part of the case slopes or flares upwardly toward the handle. This is complainants' broom No. 1. The testimony shows that it was a good, strong broom for heavy sweeping, but cost too much, was most too good for the market, and the profits were too light. Besides this, the material had to be cut too short in making the connection with the handle, so that the case did not secure a firm grip on the material.

Some time afterwards, but early in the manufacture, complainants made another case, which is marked as their No. 2 broom, shaped like this:

(Image Omitted)

In this broom the case flares all the way from the bottom to the top of the metal case, following the natural slope of the brush. This case is fastened by interlocking on the two edges the same as in No. 1, except that the clasp is wider, and is nailed in a similar manner. The complainants say they began the manufacture of this broom in 1890. The purpose of the change was: (1) To answer the objection of too great cost, and give the public a cheaper broom; and (2) to secure the handle and brush together with a wider fastening or clasp. But the difficulty with this broom was the tendency to become loose at the interlocking edges. There were also other objections, as that the insertion of the nails to hold the material together had a tendency to unlock the edges and spread them apart. To remedy these defects, complainants made another form of case, which is No. 3, about 2 3/4 inches long, with straight edges, like this:

(Image Omitted)

Why they went to a straight up and down case for a sloping broom, after using a flaring case so many years, is not very apparent. Afterwards they adopted the flaring case, such as is described in their last patent of 1900, tapering with the taper of the broom, like this:

(Image Omitted)

This style of flaring case to fit a flaring broom is the one which would naturally suggest itself to a noninventive and nonmechanical man, because it fits the natural shape of a brush broom, which all the witnesses agree is flaring, that is, wider at the lower end where the sweeping is done, and continuing to a narrower compass at the handle. What invention there would be in adopting such an obvious style of case, it is difficult to see. It would seem to be about as sensible to place a straight iron case on a flaring broom as to put a straight iron hoop on a flaring wooden barrel or pail. It would not require invention to fit the case to the slope of the broom, and this is just what the complainants did by their Nos. 4, 5, and 6 cases, which are substantially alike. In all these cases the interlocking and nailing is on one side instead of two, a change which would not seem to require invention, or even mechanical skill, to perform. But this is the substance of the complainants' 1900 patent: (1) the employment of a flaring metal case to fit a flaring broom, and (2) the nailing on one side instead of two. To further show the preposterousness of claiming invention for a flaring case in 1900, it is only necessary to observe that they had themselves used a flaring case of a little different form from the time they first began business. Indeed, the straight iron jacket of 1890 is the only case they have ever used that was not flaring. All the other five cases on exhibit are flaring, either in whole or in part. All are wholly flaring except No. 1, and that is flaring for about one-half its length. So that, in view of the state of the art when the patent in suit was applied for, it seems clear that the patent shows no novelty amounting to invention. And this is just what the Patent Office at Washington decided upon full presentation of the complainants' claim in 1897.

2. In 1897, the complainants, through their attorney, Chester C. Shepherd, of Columbus, Ohio, made application for a patent on this No. 4 flaring metal case. The application was filed on March 5, 1897, serial number 626,069, and, when reached in its order by the examiner, was rejected on the ground of want of invention, in view of the state of the art. Mr. Shepherd then renewed the application and made an argument, and he thinks probably an amendment, to the case, which resulted in a second rejection. After receiving two or three rejections, he gave a power of attorney to W. S. Boyd, a patent solicitor in Washington, who also tried to get the patent. Mr. Boyd had the case, in conjunction with Mr. Shepherd, for a year or two, during which time Mr. Shepherd would call on Mr. Boyd at Washington, who always reported to him that, although he had made numerous efforts to secure an allowance of the patent, he had failed. The final rejection was on June 26, 1897, as appears by the following entry in the Department of the Interior:

'Department of the Interior.

'United States Patent Office,

'Washington, D.C., June 26, 1897.

'Mailed June 26, 1897.

'Samuel C. Lay, Care C. C. Shepherd, Columbus, Ohio. Brooms, No. 626,069. Filed Mch. 5, 1897.

'The claim presents nothing patentable over the references of record, and is rejected.

'Applicant may for the purpose of appeal consider this rejection final.

'H. C. G. Gould, Examiner.

'Serial No. 626069 Paper No. 3.

'Final Rej:

'Dated June 26, 1897.'

Nothing further was done toward obtaining a patent until some three years had elapsed. On January 6, 1900, the complainants discharged Mr. Shepherd, and gave a power of attorney to Higdon & Longan, of St. Louis, and R. P. Haines, of Washington, D.C. On February 21, 1900, the attorneys at St. Louis sent to complainants an affidavit to sign and swear to, and return to them as a preliminary foundation for obtaining the patent. The oath is signed by Samuel C. Lay, and is as follows:

'Oath.

'State of Indiana, County of Randolph, City of Ridgeville-- ss.

'Samuel C. Lay, the above named petitioner, being duly sworn, deposes and says that he is a citizen of the United States and resident of Ridgeville, Ind., and that he verily believes himself to be the original, first, and sole inventor of the improvement in brooms described and claimed in the annexed specification; that he does not know and does not believe that the same was ever known or used before his invention or discovery thereof; or patented or described in any printed publication in the United States of America or any foreign country before his invention or discovery thereof, or more than two years prior to this application, and that no application for foreign patent has been filed by him or his legal representatives or assigns in any foreign country, except as follows: Samuel C. Lay.

'Sworn to and subscribed before me, this 21st day of Feb. 1900.

'(Notarial Seal.) S. R. Allen, Notary Public.

'Com. Ex. April 7' 1901.

'Serial No. 7,368 Paper No. 1/2 U.S. Patent Office

'Application Mar. 5, 1900

'Filed Mch. 5, 1900. Chief Clerk

'S. C. Lay.'

In order to obtain a patent it was necessary for the complainants to make oath that the proposed invention had not been in public use or on sale in the United States for more than two years prior to the application. This oath Mr. Samuel C. Lay took and subscribed, and upon this oath, after some amendments and correspondence, the patent was issued on June 26, 1900, just three years after the final rejection of the former application, June 26, 1897.

It is clearly shown by the testimony, and is now admitted by the complainants, that this material statement in the oath taken by Mr. Lay is not true. It is in evidence, and fully admitted by complainants, that the improvement had been in public use and on sale by them from 1895 to 1900, for a period of nearly five years, when this oath was taken and filed. To obviate this rather awkward situation, complainants' counsel contends, but without much tenable ground for it, that Mr Lay did not intend to swear that his invention had not been in public use or on sale for more than two years prior to 'this' application--that is to say, the application he was then making in 1900-- but prior to 'his' application, referring to the application he had made three years previous, in 1897, the final rejection of which was filed on ...