National Binding Mach. Co. v. James D. McLaurin Co.

• Decision Date: 02 March 1911
• Parties: NATIONAL BINDING MACH. CO. v. JAMES D. McLAURIN CO.
• Court: U.S. District Court — Southern District of New York

186 F. 992

NATIONAL BINDING MACH. CO. v. JAMES D. McLAURIN CO.

United States Circuit Court, S.D. New York.

March 2, 1911

Frederick L. Emery, for complainant.

T. Hart Anderson, for defendant.

HAND District Judge (after stating the facts as above).

The defendant does not assert that these claims are invalid, but does insist that under their natural meaning and the prior art they must be limited so as not to cover the defendant's machine.

There can be no question that the serrated edge is a mechanical equivalent for the knife, and that the sponge is an equivalent for the roller; nor is there any substantial difference in the fact that the complainant's machine is vertical and the defendant's horizontal. The real issue is upon the following words in claim 2:

'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 of gravity.

Certainly if it had been placed horizontally, it would have done as well as the defendant's machine as originally patented. If the differentiation between the patent in suit and Bruen rested only in the moving means, the defendant would not infringe, but there is a wider differentiation between Bruen and the patent in suit than this, for Bruen was designed for a very different kind of use. It is true that it was used to moisten package fasteners, but the fasteners were to be torn off at the perforations, and must necessarily therefore be of predetermined length. They were not intended to be moistened, before they were detached, for the roller was not adapted to moisten them by a straight draft over the...