
    J. J. WARREN CO. v. ROSENBLATT. 
    
    (Circuit Court of Appeals, Seventh Circuit.
    May 14, 1897.)
    No. 402.
    
      i. Patents—Validity—Cycle Luggage Carriers.
    The Allen, Sachtleben, and Walters patent, No. 444,642, for a luggage carrier for cycles, is void for want of invention, and as involving merely a change in the .form of an ordinary hand bag to fit the space between the arch, strut, and tie of a cycle.
    
      2. Same—Presumption prom Grant op Patent.
    The presumption of validity arising from the grant of a patent cannot control the judgment of the court when it is manifest there is no invention.
    Appeal from the Circuit Court of the United States for the Northern District of Illinois.
    The J. J. Warren Company, the appellant, as assignee of the patentees, filed Its bill to restrain the infringement of letters patent of the United States No. 444,642, issued January 13, 1891, to Thomas Gaskell Allen, Jr., William Louis Sachtleben, and John Forrest Walters for “luggage carrier for cycles.” The-answer denied patentable novelty and invention, and asserted that the alleged invention required nothing more than the exercise of mere mechanical skill,, and that the letters patent were invalid. Testimony was taken upon the part of the complainant below solely upon the question of infringement, and which established such infringement. The defendant introduced by stipulation a certain old medicine case in use in 1889. At the hearing the bill was dismissed for want of equity, and upon the ground that the patent was invalid. The specification of the patent contains the following: “The usual and present construction of carrier for attaching to a cycle is of laced metal or of basket work, like a flat, rectangular screen, with fasteners for fixing it onto the tip of the frame of the machine, and it is on such a screen that a coat or other article-of wearing-apparel is usually fastened by a cord or a strap; and in some cases, when a small bag is used, it is generally hung from the handle-bar; there being in every instance a difficulty of adjusting the carrier to the balance of the machine, which renders it inconvenient for the rider to master the motion of the machine, and necessarily increases his labor in working the pedals. Another disadvantage arises from the tendency of the machine to overbalance itself by the height of the article fastened on the upper frame,—circumstances which have always prevented cyclists from taking a change of clothing with them on a journey. All the foregoing disadvantages are completely eclipsed by our invention, which consists of a hold-all or casing of a shape corresponding to the space between the ‘arch,’ ‘strut,’ and ‘tie’ of a machine, so that it occupies a position below the rider’s body, and sufficiently low to the gravity-center as to steady the machine while traveling. Its position in no wise interferes with the rider’s legs while operating the pedals, and its capacity is such that all the necessary articles for personal use, besides a stock of the most essential small articles of wearing-apparel, such as socks, collars, and the like, besides a complete change of clothing, can be stored in it for use, as required. The hold-all is provided internally with web-loops or pockets, and the opening, which is at the side, is covered by a flap, over which is another flap to fold in an opposite direction to enable the inclosed articles to be protected from dust and rain.”
    The luggage carrier occupies the space between the arch, strut, and tie of a safety bicycle, and is of the form and shape of that space, and by straps and buckle fasteners is attached to the arch and strut and other portions of the cycle; the specification further stating that: “The shape or formation of the-hold-all will depend essentially upon the curvature of the machine frame, the hold-all being in every case, according to our invention, of such a character that it can be fixed into and occupy the space between the arch, strut, and tie-of a cycle-machine propelled by manual power acting on pedals, as hereinbefore set forth. * * * The hold-all, when removed from the cycle-machine, can be readily carried in the hand, like an ordinary hand-bag, by the loop-strap, U.”
    The cláim of the patent is as follows: “A hold-all, adapted to fit within the-space between the arch, strut, and tie of a cycle-machine, and composed of two side plates, A, B, edge strip, 0, one of the side plates being provided with a flap, D, to fold downward, and coverable by an outside flap, E, to fold upward, for inclosing the contents, and preserving them from dust and rain, substantially as described.”
    William Zimmerman, for appellant.
    T. A. Banning, for appellee.
    
      Before WOODS, JENKINS, and SHOWALTER, Circuit Judges.
    
      
       Rehearing denied June 17, 1897.
    
   JENKINS, Circuit Judge

(after stating the facts as above). It may be difficult to accurately define the distinction between invention and mechanical skill. Possibly no better definition can be presented than that stated by Justice Matthews in Hollister v. Manufacturing Co., 113 U. S. 59, 72, 73, 5 Sup. Ct. 717, 724. “Invention,” he says, “is that intuitive faculty of the mind put forth in the search for new results or new methods, creating what had not before existed, or bringing to light what had been hidden from vision.” This is in contradistinction to “the suggestion of that common experience which arose spontaneously and by a necessity of human reasoning in the minds of those who had become acquainted with the circumstances with which they had to deal.” And mechanical skill, he says, is that which “involves only the expression of the ordinary faculties of reasoning upon the material supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice.” Within the provisions of the constitution touching the issuance of patents, the beneficiary must be' an inventor, and he must have made a discovery. It is, therefore, “not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been known before, and that it shall be useful, but it must, under the constitution, amount to an invention or a discovery.” Thompson v. Boisselier, 114 U. S. 1, 5 Sup. Ct. 1042, and authorities cited; Hill v. Wooster, 132 U. S. 693, 700, 10 Sup. Ct. 228; Burt v. Evory, 133 U. S. 349, 359, 10 Sup. Ct. 394. Within these decisions, can the subject-matter of this patent be deemed an invention, or a product of mechanical skill? It appears from the specification of the patent that previously there had been in use attached to a cycle a carrier of laced metal or basket-work like a flat, rectangular screen, attached to the tip of the frame. The carrier of the patent is of the shape corresponding to the space between the arch, strut, and tie of the machine. It was not novel to make the flaps of the carrier fold in opposite directions. That is shown in the medicine case presented by the defendant, and was old. What, then, did the patentees accomplish? They adopted the idea of a valise or hand bag, and conformed its shape to the space between the arch, strut, and tie of the cycle. The specification itself declares that when removed from the machine it can be carried as an ordinary hand bag. This is, therefore, a mere change in the shape of a hand bag. To be sure, it overcomes the objections to that which was formerly in use. It is more convenient, and by means of straps and buckle fasteners it will not sway from side to side when the cycle is in motion. There is, however, nothing novel in such fastening to prevent motion, and we are unable to perceive anything in this alleged invention except th'e adaptation in shape and size of an ordinary hand bag to the space between the arch, strut, and tie of the machine. It is a mere change of form and size, and that is not invention. Smith v. Nichols, 21 Wall. 112, 119, and cases supra. It even does not exhibit a high degree of mechanical skill.

A certain presumption in favor of the validity of the patent arises from the action of the patent office in granting the patent. In the consideration of the case we have allowed to this presumption its due weight, and we have assumed it to be true that no such article of such shape or size, or for the purpose designed, was before known, and that it is of superior utility. The presumption referred to is sometimes defined to mean that the patent itself is prima facie evidence of novelty and of invention, but that presumption is probably a mere rule of evidence, which casts the burden of proof upon the alleged infringer. This presumption cannot usurp the province of the court to declare what constitutes novelty. The court should give due consideration to the action of the patent office, but should not permit that action to control its deliberate judgment when it is manifest that there is no invention. Hollister v. Manufacturing Co., 113 U. S. 59-71, 5 Sup. Ct. 717. If we entertained doubt touching the question of invention here, the presumption arising from the issuance of the patent would perhaps avail to resolve the doubt in favor of the patent. Entertaining no such doubt, we cannot yield our judgment to a presumption which arises merely from the patent itself, and casts the burden of proof upon the infringing party. The decree will be affirmed.  