WOOLLEY, Circuit Judge.
This is an appeal from a decree holding invalid the claims of Letters Patent. No. 1,016,153, for folding eyeglasses, issued to Edwin P. Hutten and John McDougall, January 30, 1912, and subsequently assigned to the plaintiffs. The bill charges infringement. Infringement is not denied. The sole issue is the validity of the patent, which is challenged upon the grounds, first, that eyeglasses containing the alleged invention were sold more than two-years before the date of the application for the patent; and second, that patentable invention is not involved.
The defense of prior sale is discussed in the opinion of the District Court, above set out. It is clear that the defendant not only failed to sustain the burden of proving the alleged prior sale beyond a reasonable doubt, Coffin v. Ogden, 85 U. S. (18 Wall.) 120, 21 L. Ed. 821; Cantrell v. Wallick, 117 U. S. 689, 6 Sup. Ct. 970, 29 L. Ed. 1017; but failed to show it even by a preponderance of evidence. Mershon & Co. v. Bay City Box and Lumber Co. (C. C.) 189 Fed. 741, 748. This defense must fall.
The patent is for folding eyeglasses, illustrated by the kind known to the trade as Oxford folding eyeglasses. Eyeglasses of this general type contain straight or flat nose guards attached to the inner curves of the lens frames, seated within the plane of the lenses, and are easily folded. The invention of the patent consists in the use of projecting nose guards or nose guards offset beyond the plane of the lenses, so shaped and placed as to permit the lenses to be as readily folded as in Oxford glasses with non-projecting guards. The patentees say:
“The object of the invention is to provide new and improved folding eyeglasses provided with angular nose clips and arranged to permit folding of one lens over the other without hindrance by the projecting clips and without unduly straining the spring, pivotally connecting the lens frames with each other.
“For the purpose mentioned, use is made of the lens frames pivotally connected with each other by a spring, and provided with rigid posts carrying angular nose dips adapted to pass each other on swinging one frame toward the other, and to allow of turning the frames on their pivots to pass one frame over the other.”
[977]*977The specifications fairly state the subject matter of the claims, the features of which, when assembled, are,
(1) A pair of eyeglasses, comprising lenses;
(2) Frames for holding the lenses; •
(3) A spring pivotally connected at its ends with the said frames at the top thereof;
(4) Posts on the said lens frames and projecting towards each other;
(5) Nose clips on said posts and projecting in the same direction and being outside of the plane of the frames;
(6) The spring being of such length and it and the clips being so arranged relatively one to the other that the clips pass one another by swinging one lens frame toward the other to fold the said frames one upon the other;
(7) A handle on one of the lens frames, having a guideway for receiving the other lens frame, and a spring catch for engagement with the entering lens frame to lock the lens frames in folded position.
Every element of this construction is old, and the function of each element, as employed in the combination, is not varied or distinguished from the function which each would separately exert, if employed alone. Lenses and lens frames are as old as eyeglasses themselves. The pivotal bridge spring has been in use for fifty years (Letters Patent No. 76,420 to Dorn, 1868). Posts to connect the frames with nose guards have been in use since 1884 (Letters Patent No. 292,479 to Fox). Projecting nose clips or nose guards are as old as Letters Patent No. 343,876 to Wells, 1886; Letters Patent No. 346,713 to Boker, 1886; and Letters Patent No. 549,991 to Bilhoefer, 1895. A handle on a lens containing a spring catch used to hold the folded lenses is a standard lorgnette spring catch, certainly as old in the art as the Geoffrey Oxford eyeglasses of 1907. Folding eyeglasses, appear in Letters Patent No. 76,420 to Dorn as long ago as 1868. Therefore, if invention is to be found in the eyeglasses of the patent-in suit, it must reside in the remaining element of the claims, which consists of the arrangement of these old elements in a manner to permit projecting nose guards to pass each other without interference when the lenses are folded one upon the other.
If the patent related merely to folding eyeglasses with projecting nose guards, it would be anticipated by folding eyeglasses with offset nose guards made by the American Optical Company in 1898. These eyeglasses contained a bridge spring rigidly connected with posts projecting from the lens frames. The claims of the patent, however, are not broad enough to cover glasses with any kind of bridge spring. They restrict the patent to eyeglasses comprising “a spring pivotally connected at its ends with the said frames.” This limitation appears in each claim. While the patentees disclaim “the special construction of the pivotal connection” as a part of the patent, and while they do not limit themselves “to the particular construction shown and described,” nevertheless • as each claim provides a construction with a bridge spring “pivotally connected” with the frames, and discloses no' other construction, we are constrained to limit the claims, for the pur[978]*978pose of our consideration, to a structure including a bridge spring pivotally connected with the frames.
A bridge spring is a flexible strip of resilient metal used to connect the lens frames and hold them in position on the nose. A pivotal bridge spring is such a metal strip with its terminals connected with the lens frames by engagement with pivots seated in the upper part of the frames. These pivots are, in turn, actuated by spiral springs. A pivotal bridge spring is capable of three movements, two from the pivots and one from the pliant or yielding quality of the metal strip.
A pivotal bridge spring is known in the art as a French double spring. It appeared as early as Letters Patent No. 76,420 to Dorn in 1868, and is described in the Catalogue of Société des Lunetiers of 1887. While there is dispute as to whether the eyeglasses of the Dorn patent of 1868 and of the French publication of 1887 contained offset nose guards, there is no dispute that they were folding glasses and that the)'- contained a bridge spring pivotally connected with the lens frames. Resolving the controversy on this point in favor of the patentees, we are inclined to comply with their request, that we accept the Geoffroy straight nose guard folding Oxford of 1907 as the state of the art prior to the patent, and consider the single question whether invention is involved in substituting upon such a structure offset nose guards for straight nose guards in such a manner as to enable the lenses to fold freely.
The patentees claim that they were the first to find a way for one offset nose guard to pass the other when lenses are being folded, and that the way found and the means disclosed by them constitute invention. We are not at all satisfied that they were the first to point out such a way, but, assuming for the purpose of this discussion that in this they are correct, we must inquire what was the way they disclosed and whether it amounted to invention.
Free access — add to your briefcase to read the full text and ask questions with AI
WOOLLEY, Circuit Judge.
This is an appeal from a decree holding invalid the claims of Letters Patent. No. 1,016,153, for folding eyeglasses, issued to Edwin P. Hutten and John McDougall, January 30, 1912, and subsequently assigned to the plaintiffs. The bill charges infringement. Infringement is not denied. The sole issue is the validity of the patent, which is challenged upon the grounds, first, that eyeglasses containing the alleged invention were sold more than two-years before the date of the application for the patent; and second, that patentable invention is not involved.
The defense of prior sale is discussed in the opinion of the District Court, above set out. It is clear that the defendant not only failed to sustain the burden of proving the alleged prior sale beyond a reasonable doubt, Coffin v. Ogden, 85 U. S. (18 Wall.) 120, 21 L. Ed. 821; Cantrell v. Wallick, 117 U. S. 689, 6 Sup. Ct. 970, 29 L. Ed. 1017; but failed to show it even by a preponderance of evidence. Mershon & Co. v. Bay City Box and Lumber Co. (C. C.) 189 Fed. 741, 748. This defense must fall.
The patent is for folding eyeglasses, illustrated by the kind known to the trade as Oxford folding eyeglasses. Eyeglasses of this general type contain straight or flat nose guards attached to the inner curves of the lens frames, seated within the plane of the lenses, and are easily folded. The invention of the patent consists in the use of projecting nose guards or nose guards offset beyond the plane of the lenses, so shaped and placed as to permit the lenses to be as readily folded as in Oxford glasses with non-projecting guards. The patentees say:
“The object of the invention is to provide new and improved folding eyeglasses provided with angular nose clips and arranged to permit folding of one lens over the other without hindrance by the projecting clips and without unduly straining the spring, pivotally connecting the lens frames with each other.
“For the purpose mentioned, use is made of the lens frames pivotally connected with each other by a spring, and provided with rigid posts carrying angular nose dips adapted to pass each other on swinging one frame toward the other, and to allow of turning the frames on their pivots to pass one frame over the other.”
[977]*977The specifications fairly state the subject matter of the claims, the features of which, when assembled, are,
(1) A pair of eyeglasses, comprising lenses;
(2) Frames for holding the lenses; •
(3) A spring pivotally connected at its ends with the said frames at the top thereof;
(4) Posts on the said lens frames and projecting towards each other;
(5) Nose clips on said posts and projecting in the same direction and being outside of the plane of the frames;
(6) The spring being of such length and it and the clips being so arranged relatively one to the other that the clips pass one another by swinging one lens frame toward the other to fold the said frames one upon the other;
(7) A handle on one of the lens frames, having a guideway for receiving the other lens frame, and a spring catch for engagement with the entering lens frame to lock the lens frames in folded position.
Every element of this construction is old, and the function of each element, as employed in the combination, is not varied or distinguished from the function which each would separately exert, if employed alone. Lenses and lens frames are as old as eyeglasses themselves. The pivotal bridge spring has been in use for fifty years (Letters Patent No. 76,420 to Dorn, 1868). Posts to connect the frames with nose guards have been in use since 1884 (Letters Patent No. 292,479 to Fox). Projecting nose clips or nose guards are as old as Letters Patent No. 343,876 to Wells, 1886; Letters Patent No. 346,713 to Boker, 1886; and Letters Patent No. 549,991 to Bilhoefer, 1895. A handle on a lens containing a spring catch used to hold the folded lenses is a standard lorgnette spring catch, certainly as old in the art as the Geoffrey Oxford eyeglasses of 1907. Folding eyeglasses, appear in Letters Patent No. 76,420 to Dorn as long ago as 1868. Therefore, if invention is to be found in the eyeglasses of the patent-in suit, it must reside in the remaining element of the claims, which consists of the arrangement of these old elements in a manner to permit projecting nose guards to pass each other without interference when the lenses are folded one upon the other.
If the patent related merely to folding eyeglasses with projecting nose guards, it would be anticipated by folding eyeglasses with offset nose guards made by the American Optical Company in 1898. These eyeglasses contained a bridge spring rigidly connected with posts projecting from the lens frames. The claims of the patent, however, are not broad enough to cover glasses with any kind of bridge spring. They restrict the patent to eyeglasses comprising “a spring pivotally connected at its ends with the said frames.” This limitation appears in each claim. While the patentees disclaim “the special construction of the pivotal connection” as a part of the patent, and while they do not limit themselves “to the particular construction shown and described,” nevertheless • as each claim provides a construction with a bridge spring “pivotally connected” with the frames, and discloses no' other construction, we are constrained to limit the claims, for the pur[978]*978pose of our consideration, to a structure including a bridge spring pivotally connected with the frames.
A bridge spring is a flexible strip of resilient metal used to connect the lens frames and hold them in position on the nose. A pivotal bridge spring is such a metal strip with its terminals connected with the lens frames by engagement with pivots seated in the upper part of the frames. These pivots are, in turn, actuated by spiral springs. A pivotal bridge spring is capable of three movements, two from the pivots and one from the pliant or yielding quality of the metal strip.
A pivotal bridge spring is known in the art as a French double spring. It appeared as early as Letters Patent No. 76,420 to Dorn in 1868, and is described in the Catalogue of Société des Lunetiers of 1887. While there is dispute as to whether the eyeglasses of the Dorn patent of 1868 and of the French publication of 1887 contained offset nose guards, there is no dispute that they were folding glasses and that the)'- contained a bridge spring pivotally connected with the lens frames. Resolving the controversy on this point in favor of the patentees, we are inclined to comply with their request, that we accept the Geoffroy straight nose guard folding Oxford of 1907 as the state of the art prior to the patent, and consider the single question whether invention is involved in substituting upon such a structure offset nose guards for straight nose guards in such a manner as to enable the lenses to fold freely.
The patentees claim that they were the first to find a way for one offset nose guard to pass the other when lenses are being folded, and that the way found and the means disclosed by them constitute invention. We are not at all satisfied that they were the first to point out such a way, but, assuming for the purpose of this discussion that in this they are correct, we must inquire what was the way they disclosed and whether it amounted to invention.
• The prior art shows that when the lens frames of glasses áre connected by a bridge spring, the terminals of which are rigidly connected with the frames, the lenses will not close smoothly and in some constructions will not close at all, when the glasses are equipped with offset nose guards. Rut bridge springs of this fixed character were not used upon Oxford glasses, nor were bridge springs with fixed terminals used upon folding glasses of other types, excepting at a very early period. The art discloses that at a period beginning about 1870, pivotal bridge springs were used both in this country and abroad upon glasses that were intended to fold, and the reason for the use of such springs upon folding glasses is perfectly obvious to anyone manipulating the lenses of such glasses.
A bridge spring pivotally connected, being capable of three separate and- successive movements, causes the moving lens to move or swing in three directions during the folding operation. When glasses are firmly held by the handle on the right lens frame, with the plane of the lenses vertical, a depression of the left or moving lens causes it to move in a downward and vertical direction, the right pivot of the bridge spring being used as an axis. With this movement of the left lens, the left nose guard, whether it be straight or projecting, is car[979]*979ried directly below the right nose guard. Further pressure upon the left lens produces an axial movement of the left pivot, effecting a change in the direction of the movement of the left lens from vertical to horizontal, and toward the right lens, and causing the left nose guard to be carried beyond and to the right of the right nose guard. Continued pressure upon the left lens brings into action for the first time the resilience of the metal spring, causing the left lens to move over the right one until its motion is arrested by engagement with a sprig or catch and the folding movement is completed.
It tints appears that it is the pivotally connected bridge spring with its three clearance motions, that makes possible the free passage of nose guards in the movement of folding. Such a spring is old, very old. The patentees neither invented it nor discovered its function in folding eyeglasses. What the patentees did, and all that they did, was to so locate the offset nose guards upon the lens frames and to so shape them that, in the normal movements of lens frames connected by a pivotal bridge spring, one nose guard would clear the other, and upon completion of the movements, the two would nest. The idea of doing this did not originate with the patentees. It was suggested by the demand of the trade for offset instead of straight nose guards on Oxford glasses. That demand the patentees immediately met. To make such a substitution permitting such a result required nothing more than a little patience and some skill. It meant that the mechanic should select from the great variety of nose guards of the art, two of an appropriate design, alter their shape, if necessary, and by experiment find for them a proper location on the lens frames, so that upon being folded, the projecting guards would pass one another. The tripartite movement of the pivotally connected bridge spring made the accomplishment of this task obvious, the mechanical performance of which did not call for the exercise of invention and involved nothing more than mechanical skill. If the conception of the patentees amounted to an advance in the art, it was such as would spontaneously occur to a skilled mechanic or operator in the ordinary progress of manufacture, and does not merit the reward of a patent monopoly, which under the policy of the law is awarded exclusively to those who make some substantial discovery or invention which adds to human knowledge and makes a step in advance in the useful arts. Atlantic Works v. Brady, 107 U. S. 192, 199, 2 Sup. Ct. 225, 27 L. Ed. 438. We find no error in the decree of the District Court in adjudging invalid, for want of invention, all of the claims of the patent in suit.
The decree below is affirmed.