BRINKERHOFF v. ALOE

BRINKERHOFF v. ALOE. APPEAL PROM THE QIRCUIT • COURT OP THE UNITED STATES POR THE EASTERN DISTRICT OP MISSOURI. No. 85. Argued December 9, 1892. Decided December 12, 1892. ‘Letters patent No. 224,991, granted to Alexander W. Brinkerhoff, March 2, 1880, for an improvement in rectal specula are void for want of novelty-in the invention protected, by them. This was a bill to restrain the infringement of letters patent No. 224,991, granted to Alexander "W. Brinkerhoff under date of March 2, 1880, for an improvement in “ rectal specula.” The claims made.in'the specification were as follows: “ 1; A slide in the side of a speculum extending through its whole length, and used substantially as herein described. “ 2.' The incline in the front fend of the chamber, in combination with the tube, slot and slide, substantially as and for the purposes herein set forth. “3. In cylindrical tubular specula having a slotted side and closed end to prevent the entrance of feces, the incline in the front end of the chamber extending upward from the bottom and forward to under side of slide, substantially as described, and for the purposes herein set forth.” The court below in its opinion in the record said: “ 1. It is clear that the first claim of this patent, covering ‘ a slide in the sidé of a speculum, extending its whole length,’ cannot be sustained. Indeed it is not seriously contended by complainant’s counsel that the device covered by that claim is novel.” “ Hilton’s rectal speculum, an instrument said to have been in use in. England as early as 1870, also clearly anticipates the first claim of. complainant’s patent, and probably the second and third claims. If Hilton’s speculum, as contended, was described in a printed publication in England as early as 1876, that fact also invalidates the first claim of the patent under consideration, and most likely the second and third claims.” . . • “ 2. The third claim of the patent is a claim for- the ‘ incline ’ in cylindrical tubular specula having a slotted side and closed end. “The particular device attempted to be covered by this claim was anticipated, in my opinion, by a rectal speculum produced by Dr. Mudd and shown, to the .satisfaction of the. court, to have been purchased at an instrument .store, and to have been in use in this country before the date of complain-. ant’s invention.” “But, regardless of the obvious nature of the improvement - made by adding the incline, the court is of the opinion that the combination so formed was not patentable, because no new result or effect was produced by. the united action of the old elements. “ To sustain a patent on a combination of old devices it is well settled that a new result must be obtained which is due to the joint and cooperating action of all the old elements. Either this must be accomplished ór a new machine of dis-tinct character and function must be constructed. Pieicering v. McCullough, 104 IT. S. 310; Hailes v. Van Wormer, 20 "Wall. 353; Tach Co. v. Manufacturing Co., 9 Bissell, 258;. Wringing Machine Co. v. Young, 14 Blatchford, 46. . “ If several old devices are so put together ¿s to produce even a better machine or instrument than was formerly in use, but each of the old devices does what it had formerly done in the instrument or machine from which it was borrowed and in the old way, without uniting with other old devices to perform any joint function, it seems that the combination is not patentable. Háiles v. Van Wormer, supra; Bechendorf&r v. Faber, 92 IT. S. 347. “ In the present case the incline, when placed in combination with the ‘ tube, slot and slide,’ acted precisely as it did when placed in the forward end of a slotted tube not provided with a slide. Its action was in no sense modified by the new relation in which it was placed, nor did it, in unison with the other elements of the combination, produce a distinctively new result.” The bill was accordingly dismissed, and the plaintiffs appealed from that decree. Mr. J. G. Smith for appellants.. Mr. George II. Knight for appellee. [MAJORITY — The Chief Justice:] The Chief Justice: Having reached the same conclusions as those expressed in the opinion of the Circuit Court, reported in 37 Fed. Rep. 92, we direct the decree to be Affirmed.