patent in such case extended by the act of 1903. This is deemed satisfactorily demonstrated by the reasoning in the following cases, viz.: Sawyer Spindle Co. v. Carpenter, 143 Fed. 976, 75 C. C. A. 162; Shoe Co. v. Shoe Co., supra; Malignani v. Hill-Wright Elec. Co., supra; Malignani v. Marsh Consolidated Electric Lamp Co., supra.

[3] Whether or not there is any patentable novelty in the apparatus patent in suit seems extremely doubtful. The invention of the patent in suit was fully disclosed and claimed in the said expired British patent and died with it. The other questions raised in the record need not be considered at this time.

In the judgment of the court, even were infringement shown, which, in the judgment of the court, is not the case, there existed at the time of filing the bill no right of action in complainants.

The bill is therefore dismissed for want of equity.

EQUITABLE ASPHALT MAINTENANCE CO. v. PARKER-WASHINGTON CO.

(District Court, W. D. Missouri, W. D. July 8, 1912.)

No. 3,408.

1. PATENTS (8 328*)—VALIDITY AND INFRINGEMENT MACHINE FOR HEATING SURFACES.

The Lutz patent, No. 839,071, for a machine for heating surfaces, de signed for use in repairing asphalt pavement and comprising, generally, means for supplying a fluid heating medium, including a heating chamber, a conduit for such medium, and a jet blower discharging a blast of steam, preferably, into such conduit for forcing the medium against the surface to be treated, mingling with it and modifying its effect, is void for lack of novelty and invention. It covers a combination of elements all of which were old, and the combination itself is only differentiated from others in the prior art by substituting for a fan blower for forcing the heating medium against the surface to be heated, a jet blower which was also old in an analogous art, and its transfer required no more than mechanical skill. Also, held not infringed if conceded validity.

2. PATENTS (§ 66*)—ANTICIPATION.

If the effect of a combination was present, though not emphasized, in a prior invention, a later applicant cannot, by mere explicit reference, transform it into patentable novelty and appropriate it to his own exclusive use.

[Ed. Note. For other cases, see Patents, Cent. Dig. §§ 79, 81; Dec. Dig. § 66.*]

3. PATENTS (§§ 66, 70*)—ANTICIPATION-Prior PATENTS.

Rev. St. § 4886 (U. S. Comp. St. 1901, p. 3382), by authorizing a patent for any invention or discovery not known or used by others in this country "and not patented or described in any printed publication," places printed publications and prior patents on the same footing as anticipa tions.

[Ed. Note. For other cases, see Patents, Cent. Dig. §§ 79, 81, 85; Dec. Dig. 8 66, 70.*]

In Equity. Suit by the Equitable Asphalt Maintenance Company against the Parker-Washington Company. On final hearing. Decree for defendant.

For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

Arthur C. Brown, of Kansas City, Mo., and Chas. K. Offield, of Chicago, Ill., for complainant.

R. E. Ball, of Kansas City, Mo., and Edward E. Longan and John C. Higdon, both of St. Louis, Mo., for defendant.

VAN VALKENBURGH, District Judge. [1] This is a suit for alleged infringement of United States letters patent No. 839,071, the subject-matter of which is entitled "Machine for Heating Surfaces." The bill of complaint charges infringement, and asks for an accounting and damages, and that the defendant be restrained from further infringement. The defenses are that the matter covered does not involve invention, was not novel at the time of its alleged invention, and that the defendant, in any event, is not guilty of infringement. The answer, therefore, denies the validity of the patent in suit and infringement. But four claims, numbered respectively 1, 2, 3, and 5, of the patent in suit, are involved. These claims are as follows: "1. An apparatus for heating surfaces, comprising means for supplying a fluid heating medium, a conduit for directing the fluid heating medium against the surface to be heated, and a jet blast discharging into the conduit in a direction to cause a flow of the fluid heating medium toward the surface to be heated and directing the said medium with the blast medium added thereto, against said surface.

"2. An apparatus for heating surfaces, comprising a heating-chamber into which air is passed to develop a fluid heating medium, a conduit through which the fluid heating medium thus developed is directed upon the surface to be heated, a jet blast discharging into said conduit, drawing the heating medium from the combustion-chamber, mingling the blast medium with said heating medium to modify the effect of the latter, driving said heating medium thus modified against the surface to be heated.

"3. In an apparatus for heating surfaces, the combination of a combustionchamber, means for supplying a fuel medium to said chamber for combustion therein, whereby a fluid heating medium is developed, a conduit for conducting the fluid heating medium from the combustion-chamber to the surface to be heated, a jet blower discharging into said conduit and developing therein a flow of the fluid heating medium toward the surface to be heated, and means for supplying a blowing agent to said jet blower, independent of the fluid heating medium, whereby the fluid heating medium is drawn out of the combustion-chamber, modified by a blowing agent and forced through the conduit to the surface to be heated."

"5. In a machine for heating surfaces, a heating-chamber, means for heating the interior of said chamber, a vertical air-conducting pipe having communication with the interior of said chamber, a hood at the lower end of said pipe, a jet member located in a horizontal position in said pipe, and means for supplying a fluid blast agent to said jet member."

It is the contention of defendant that the device and the various elements purporting to be covered by these claims were anticipated. by a large number of prior patents and publications, and relies more particularly upon three patents, numbered, respectively, 330,700, 330,701, and 342,091, issued to David Hawksworth in 1885 and 1886, covering methods and devices of destroying grass, weeds, and vegetation. generally on and along railway tracks and roadways; the German patent to Bosenius, No. 89,365, dated March 24, 1895, covering a device for melting snow; the Waterbury patent, No. 157,559, dated December 8, 1874, entitled "Improvement in Machines for Melting Snow"; patent No. 805,337, issued November 21, 1905, to Frank Ŏ. Blake et al., entitled "Machine for Heating Surfaces"; patent No. 743,020, issued

November 3, 1903, to John W. Nesmith, entitled "Apparatus for Heating Asphalt Surfaces"; and patent No. 743,021, dated November 3, 1903, issued to John W. Nesmith and Frank O. Blake, entitled "Method of Heating Asphalt Pavements." The three patents last named are especially designed for heating asphalt pavements in repair work, and that is the use to which machine covered by the patent in suit is specifically applied.

In patent No. 805,337, Lutz, the patentee in the patent in suit, is named as a joint inventor, and that patent was before the examiner when the patent in suit was under consideration; but neither the Hawksworth, the Bosenius, nor the Waterbury patent appears to have been referred to or considered.

It is strongly insisted by complainant that all of these last-named patents belong to an entirely different art and should not be considered as references for anticipation in the present case. It must be admitted, I think, that all the machines covered by the patents enumerated are "heating" machines; further than this, that they are "surface heating" machines, and that this quality is not altered by the fact that some heat surfaces for purposes of destruction while others do the like for purposes of conservation and repair; and even though the heating and repairing of asphalt surfaces may be considered as an art distinct in itself, nevertheless that to which these kindred devices. belong is at least so closely analogous that the rules governing double or new uses of the same invention must apply, provided conditions exist which would justify their application in the ordinary administration of the law governing patents. The briefs and arguments of counsel on both sides are ingenious and exhaustive. It will be my purpose to point out my reasons for arriving at the conclusion I have reached without any unnecessary analysis or repetition of the complex mechanical details involved.

It will facilitate both discussion and understanding if the claims invoked by complainant are first discussed with the view of reducing the matter in dispute to its last analysis, thereby eliminating elements which tend to confuse rather than to enlighten. Stripped, for the purposes of this analysis, of unnecessary verbiage, these claims present the following elements:

Claim 1. Apparatus for heating surfaces, comprising:

(a) Means for supplying a fluid heating medium.

(b) A conduit for directing this medium against surfaces to be heated.

(c) A jet blast discharging into this conduit, causing the heating medium to flow toward and directing it against the surface.

Claim 2. Apparatus for heating surfaces, comprising:

(a) A heating chamber into which air is passed to develop fluid heating medium.

(b) A conduit as in claim 1.

(c) A jet blast as in claim 1, with the addition of
(d) Mingling with the heating medium and modifying the

latter.

Claim 3. In such apparatus the combination of:

(a) A combustion-chamber.

(b) Means of supplying fuel medium to same, whereby a fluid heating medium is developed.

(c) A conduit as before.

(d) A jet blower discharging into this conduit as before. (e) Means for supplying a blowing agent to the jet blower, whereby the heating medium is drawn out, modified, and forced to the surface.

Claim 5. In such a machine:

(a) A heating-chamber.

(b) Means for heating the interior of such chamber.
(c) A vertical air conducting pipe (conduit).

(d) A jet member located in horizontal position in said
pipe.

(e) Means for supplying a fluid blast agent to said jet blower.

Again condensing we have:

1. An apparatus for heating surfaces, comprising.

(a) Means for supplying a fluid heating medium, including a heating chamber.

(b) A conduit for directing this heating medium against the

surface.

(c) A jet blast discharging into this conduit, causing the medium to flow toward and directing it against the surface, mingling with it and modifying its effect.

2. In such an apparatus the combination of:

(a) A combustion or heating chamber.

(b) Means for heating the interior of such chamber, including the supplying of a fuel medium to same.

(c) A vertical air conducting pipe or conduit.

(d) A jet member or blower located in horizontal position in said pipe and discharging into it.

(e) Means for supplying a blowing or fluid blast agent to said jet member, whereby the heating medium is drawn out, modified by same, and forced to surface.

Independently then of the apparatus as a whole, we have the following distinct elements referred to:

(a) A heating or combustion chamber.

(b) Means of heating it, whether by fuel supply pipe and burner or otherwise.

(c) A conduit for directing heating medium developed against sur

face. (d) A jet blower discharging into this conduit, causing the heating medium to flow forward, directing it against the surface, mingling with it and modifying its effect, and involving (e) Means for supplying a blowing or fuel blast agent to this jet blower.

It was admitted by complainant's assignor in his application before the Department, and by counsel for complainant in their brief and

argument, that in surface heating machines a heating or combustion chamber and a fuel burner, as well as a hood for confining the heat at the surface (the latter, however, not involved in these claims) are "old and well known in the art," and that "steam or compressed air used as a blast or blowing agent is well known, and a claim for such device alone is not made." Of course, a jet blower or member, being a pipe appropriately fashioned for delivering such a blast, was also well known, and a conduit for directing a heating medium against the surface to be heated had long been used in all asphalt repair as well as all surface heating machines. It is quite clear, therefore, that every mechanical element recited in these claims, standing by itself, is old and well known in some form of apparatus covered by prior patent or publication. Unless, then, the combination here present involves the exercise of the inventive faculty, the development of some idea, which can be deemed new or original in the sense of the patent laws, it must be conceded that this patent must fail. It will be serviceable, therefore, to differentiate exactly what it is, involving novelty and invention, which complainant claims for its combination of old elements. Of the utility of its complete machine there can be little question. We shall arrive at this knowledge most satisfactorily by an examination of the inventor's attitude of mind from the date of his application to that of the issuing of the patent as disclosed by the file wrapper and contents.

The first claims were rejected as being in conflict with the prior patent to Blake and others. Replying to this the applicant referred to the fact that in the Blake patent a fan mechanism was used for forcing the hot products of combustion down upon the surface. It was then pointed out that this device would soon get out of order, by reason of its essential position in the mechanism, and that the applicant's jet blower was a novel and effective substitute for this fan mechanism. This is the only feature of the new patent which was emphasized in the proposed machine, and the examiner would be led. to infer that this was the specific object to be attained. To this the examiner made reply that a certain part, numbered 20, in the Blake patent, was a jet blower, and therefore within the terms of the alleged new device. The applicant replied by revising his claims without substantial change, to which the examiner again objected with the statement that there was "no invention merely in substituting one form of blowing means for another"; and, further, that the blowing device of the applicant was nothing more than the forced draft device used in locomotives and the like. Thereupon the applicant reiterated that the fan used in the Blake patent was not patentable in itself, and was a well-known method for exhausting and blowing. He reasserts that his claim is, in fact, limited to a new combination of old elements, the purpose of which was to do away with the fan and its cumbrous system of belting bearings and small parts which may be easily broken and rendered useless from heat and want of lubrication; admits that, while the blower is unquestionably old, its operation is different from others used in the proposed device. Apparently the only virtue claimed was the advantage over the old form of fan blow