
    
      A. B. DICK CO. v. WICHELMAN.
    (Circuit Court, S. D. New York.
    November 26, 1900.)
    Patents — Anticipation—Stencil Sheets.
    The Dick patent, No. 562,590, for a duplicating stencil, the essential feature of which is the mixing of lard or lard oil with paraffin to form a coating for the paper of which the stencil sheet is made, was anticipated by tlie Brodrick patent, No. 377,706, which is sufficiently broad to cover the coating of the sheet with any gummy or waxy substance; the best material for the purpose being a matter to be determined by mechanical experiment.
    In Equity. Suit for infringement of patent. On final hearing.
    Dyer, Edmonds & Dyer, for plaintiff.
    Frederick A. Wichelman, pro se.
   WHEELER, District Judge.

This suit is brought upon patent No. 562,590, applied for December 27, 1887, granted to Albert B. Dick, assignor to the plaintiff, and dated June 23, 1896, for a duplicating stencil. The specifications of that patent state:

“Por preparing the stencil sheet from which the stencil is made I prefer to employ a thin, tough paper, which at the same time is very open. * * * This paper may be coated with paraffin in the ordinary way of coating paper with paraffin for other purposes, but I have found that when this alone is done the coating is tenacious, and does not readily break when struck by the type; but by adding to the paraffin a material which makes the coating frlable, this objection is overcome. For this purpose I have found that lard, or lard oil, is an efficient material. When I employ paraffin as the main ingredient of the coating, I mix the.paraffin and lard or lard oil preferably in the proportion of seven parts of paraffin to one part of lard or lard oil, whereby the paraffin is shortened. The paper is coated with this mixture after the manner of the usual paraffin process.”

The claims fin question are for:

“(1) A stencil sheet or duplicating stencil of open material provided with a coating having a shortening material as an ingredient, substantially as set forth. (2) A stencil sheet or duplicating stencil of open material provided with a coating of wax mixed with a shortening material, substantially as set forth. (3) A stencil sheet or duplicating stencil consisting of open material coated with a mixture of paraffin and lard oil, substantially as set forth.” .

John Brodrick applied for a patent for a prepared sheet for stencils May 20, 1886, which was No. 377,706, dated February 7, 1888, and is now owned, and claimed to be valid, by the plaintiff. The specifications of that patent state:

“I prepare my improved sheet by preference from a sheet of thin, highly-porous paper by immersing the same in a bath of melted gummy or waxy substance^-such as páraffin — of about 120 degrees Fahrenheit fusion point, or by any other suitable method of waxing paper now known to the arts.”

It had three claims. The first two were for sheets coated with a substance impervious to ink, such as paraffin; and the third was for a sheet coated with a substance impervious to ink. It was in litigation between these parties, and upheld. Wichelman v. A. B. Dick Co., 31 C. C. A. 530, 88 Fed. 264. In speaking of it, Judge Wallace, for the circuit court of appeals, said:

“The patent, however, is not limited to the use of these constituents in preparing the sheet. The specification points out that any sheet of the requisite porosity, thinness, and toughness may be used, and may be coated with any gummy .or waxy substance of a consistency that will yield upon pressure, so as to expose the interstices of the basic material at the lines of impression without abrasion.”

Although these applications were before the patent office at the same time, the dates show a clear precedence of the Brodrick invention over that of Dick involved here, and therefore the question arises whether the shortening of paraffin with lard or lard oil — which is what Dick appears to have really accomplished — is a patentable improvement upon what Brodrick had done. Coating the sheets with a gummy substance of the right consistency, which might include paraffin and lard, or lard oil, or any other ingredient, was the invention- of Brodrick. How much, and of what, was to be determined by mechanical experiment.. Many of the experiments of Dick by which he reached the substances and proportions of the patent were made for him by the defendant as a skillful operator in the art of waxing paper., After Brodrick, there does not seem to have been any room left for anything to be -¿one in this direction but the making of mechanical experiments within the scope of what he had described. The testimony of Dick and of the defendant as to what was done in arriving at the proper proportions appears to show only such experiments. Is either struck out anything new, hut only carried forward what Brodrick had discovered, and was, therefore, well known. Bill dismissed.  