
    STEAD LENS CO. v. KRYPTOK CO.
    (Circuit Court of Appeals, Eighth Circuit.
    May 7, 1914.)
    No. 4052.
    1. Patents (§ 81) — Prior Use — Evidence to Establish.
    Oral testimony of prior use cannot prevail over the legal presumption, of validity which attaches to a patent unless it is clear and convincing.
    [Ed. Note. — iFor other cases, see Patents, Cent. Dig. § 104; Dec. Dig. § 81.*
    Priority and continuance of public use of invention as affecting patent-ability, see Eastman v. City of New York, 69 C. C. A. 646.]
    2. Patents (§ 328*) — Validity and Infringement — Eyeglasses.
    The Borsch patent, No. 637,444, for bifocal lenses for eyeglasses in which the lens is made of two pieces of glass of different indices of refraction, the smaller being mounted in a recess in the larger and exposed on one face thereof, and the Borsch, Jr., patent, No. 876,933, for similar lenses, with the added improvement that the two parts are united by fusing, were neither of them anticipated and both disclose patentable' invention. The devices also held capable of conjoint use, and both patents infringed.
    
      Appeal from the District Court of the United States for the Western District of Missouri; Arba S. Van Valkenburgh, Judge.
    Suit in equity by the Kryptok Company against the Stead Lens Company. Decree for complainant, and defendant appeals.
    Affirmed.
    For opinion below, see 207 Fed. 85.
    D. W. Cooper, of New York City, and H. P. Denison, of Syracuse, N. Y. (Theoph. L. Cams, of Kansas City, Mo., and Eugene A. Thompson, of Syracuse, N. Y., on the brief), for appellant.
    William M. Stockbridge, of New York City, and John H. Atwood, of Kansas City, Mo., for appellee.
    Before SANBORN and CARLAND, Circuit Judges, and RINER, District Judge.
    
      
      For other oases see same topic & § number in Dec. & Am. Digs. 1907 to Sate, & Rep’r Indexes
    
   RINER, District Judge.

This was a bill in equity brought by the Kryptok Company, praying an injunction and accounting for an alleged infringement by the Stead Lens Company of two patents, one numbered 637,444, issued to John L. Borsch November 21, 1899, and the second numbered 876,933, issued to John L. Borsch, Jr., January 21, 1908. Both patents are for new and useful improvements in bifocal lenses to be used in spectacles and eyeglasses of the special character known as bifocal.

It is averred in the bill that the Kryptok Company is a corporation organized and existing under the laws of the state of New York and is the owner of these two patents; that the two patents are capable of conjoint use in one and the same lens; that the Stead Lens Company has made and sold bifocal lenses in infringement of both of these patents; and that the lenses so made and sold by the Stead Lens Company “each constitutes a conjoint use of the inventions or improvements of both of said letters patent in one,and the same bifocal lens.”

The Stead Lens Company filed an answer and, by leave of court, a supplemental answer, denying in detail the averments of the bill, setting up certain facts, and referring to prior patents and publications for the purpose of showing anticipation and consequent invalidity of the patents in suit. It is expressly denied in the answers that the patents are capable of conjoint use; that the patents, in view of the state of the art at the time they were issued, did not disclose any new or patentable invention, but that the alleged invention involved, if anything, simply mechanical skill and judgment, and that the Stead Lens-Company has not infringed either of the patents. It is further averred in the answers that the Kryptok Company is not a bona fide corporation; that its promoters and organizers were its present nominal stockholders; that -it had previously been engaged in an unlawful combination in restraint of trade; and that they organized this corporation as a nominal corporation in furtherance of said unlawful purpose of restraining trade and are still, in the name of the company, keeping up and carrying out said unlawful combination in restraint of trade.

A replication was filed, testimony taken, and at the hearing the district court entered an interlocutory decree granting the injunction prayed for in the bill and directed an accounting. This is an appeal from that decree.

The patent issued to John L. Borsch contained but 'a single claim, as follows:

“A bifocal lens formed of two pieces of glass of dissimilar index and size placed and secured face to face, the smaller of said lenses being mounted in a recess in the larger of said lenses,' and exposed upon one face of the latter, substantially as set forth.”

In tjie patent issued to John L. Borsch, Jr., claims 1, 2, 3, 7, and 8 are the only ones in suit. But one of these claims, claim 3, was selected by counsel for submission to the court as typical of the group of claims in this patent. It is as follows:

“A spectacle, eyeglass, or other optical lens consisting of the body portion having a selected index of refraction, and one or more portions of glass embedded in the surface of said body portion and integral therewith, the said embedded portion or portions having an index or indices, of refraction different from that of the main or body portion.”

If these patents are valid and susceptible of conjoint use, there can be no doubt, we think, but that the defendant’s device constitutes an infringement. It only requires an inspection and comparison of the lenses manufactured by the Stead Company with those manufactured by the Kryptok Company to show that the two lenses are, for all practical purposes, identical. And indeed upon this question there’ is but little, if any, real conflict in, the testimony.

The defense of unlawful combination in restraint of trade, set up in the answers, may well be passed with the remark that the record discloses no substantial showing of monopoly except such monopoly as inheres in the nature and theory of the patent law. Neither do we think that the evidence offered for the purpose of showing prior use of the fused bifocal lenses sufficient to defeat the patent issued to John Iv. Borsch, Jr. We have carefully examined the testimony and find it uncertain and indefinite as to time and detail, and, as suggested by the trial court:

“In itself as well as in its attempted corroboration it is unsatisfactory and unconvincing.”

Oral testimony of prior use cannot prevail over the legal presumption of validity which attaches to a patent unless it is at least clear and convincing. National Hollow Brake-Beam Co. et al. v. Interchangeable Brake-Beam Co., 106 Fed. 693, 694-7703, 45 C. C. A. 544; Parker v. Stebler et al., 177 Fed. 210, 101 C. C. A. 380; Albright v. Rangfeld (C. C.) 131 Fed. 473; Continental Rubber Works v. Single Tube Automobile & Bicycle Tire Co., 178 Fed. 452, 101 C. C. A. 436; Baas v. Scott (C. C.) 161 Fed. 122-126.

It was also urged at the argument that the claimed inventions and discoveries of the patents in suit áre all anticipated in the prior art, and that both patents are void for want of patentable invention. Upon these questions we here quote at length from the opinion of Judge Van Valkenburgh, annexed to the record, as fairly expressing the views entertained by this- court after an attentive and critical examination of the record:

“The first patent in suit, No. 637,444, recited that:
“ ‘Heretofore bifocal lenses have been frequently formed by matching and uniting edge to edge 'two pieces of lens glass, each constituting but part of a complete lens, and respectively suitably ground, the one for distant and the other for near vision, and various forms have by different constructors been given to the respective elements or sections of the lens; the only fixed requirement as to such sections being that they should, when united, present as to their combined outer edges the usual oval outline of a lens.’
“ ‘In whatever forms the respective independent sections or elements of a bifocal lens of this character have been made, however, they have been united-by bringing the respective edges of said sections or elements into contact and cementing the abutting edges by any suitable balsam or uniting medium, or maintaining them in their assembled position by an enclosing lens frame.’
“The aim of the proposed patent is thus stated:
“ ‘This construction has been objectionable, however, by reason of the fact that, however carefully the sections are assembled and cemented, a minute cement-filled space exists between the abutting edges, and the cement which is present, of course, on both surfaces of the lens in time becomes slightly worn away under the action of heat and the attrition to which it is subjected in the cleaning of the lens, with the result that the permanence of the union between the elements or sections is impaired; furthermore, the line of connection between the two sections of a bifocal lens as heretofore constructed as described is always visible, and not only detracts from the appearance of the lens but is an annoyance to the wearer.’
“ ‘Broadly stated,' it is the object of my invention to produce a bifocal lens of an attractive, efficient, and durable character, in which the objections here-inbefore stated to the existing forms of such lenses shall be obviated.’
“As described in the patent this is done by taking a lens of crown glass suitable' for far vision purposes producing in one face thereof a recess of such form as to be adapted to receive and accommodate a smaller near vision lens of flint glass, having an index of refraction .different from that of the larger lens, and securing this smaller lens within the recess of the-larger by means of balsam or other suitable material, the result being a compound bifocal lens uniform in curvature and integral in structure from-edge to edge, the minor lens not being visible to others than the wearer except on very close inspection; a crevice or joint between the elements, with its accompanying disadvantages, being entirely absent.
“The claim declared was as follows: ‘A bifocal lens formed of two pieces of glass of dissimilar index and size placed and secured face to face, the smaller of said lenses being mounted in a recess in the larger of said lenses, and exposed upon one face of the latter, substantially as set forth.’
“The essential novelty and invention claimed for this patent is that it for the first time discloses the use of glass of different indices of refraction in such combination as to permit a completed integral bifocal structure of the same thickness and uniformity of surface as a lens composed of but one-kind of glass and having a single focal point. In this way the unsightliness, instability, and other infirmities pointed out as existing in former structures were either entirely removed or reduced to a more desirable minimum. If this device presents novelty and invention, its utility and desirability can hardly be disputed; but defendant contends that it presents neither the-one nor the other.
“In support of the defense of anticipation something like 27 patents are cited as references. A number of these exhibit the development of the bifocal eyeglass or spectacle from its crude origin up to the application of the first patent in suit; others have to do'with globes, lamp chimneys, photographic camera lenses, reflectors, and other articles of remote analogy. Others-deal with achromatic lenses intended for the elimination of chromatic aberration caused by the dispersion of rays of light into their component colors. We-are, however, relieved of any extended consideration of the greater number-of these cited references, because it was conceded at the hearing that the defendant relied for substantial anticipation of the first patent in suit upon, the British patent issued to Henry Edward Newton in 1866 for improvements in optical instruments; that to Nathan Lazarus in 1881 for improvements-in tlie manufacture of achromatic lenses, and letters patent No. 392,053 issued to August Morek, Jr., in 1888, for improvements in spectacles or eyeglasses. With respect to the first two, it is sufficient to state that they con-cededly recognize the use of two kinds of glass, crown and flint, in the, manufacture of lenses; as their titles indicate, they concern eyeglasses either incidentally or remotely, and bifocals not at all. It is upon the Morck patent that defendant mainly relies for its defense of anticipation of the first patent in suit; and, if the claimed invention of the latter is not disclosed by the Morck patent, then it is not anticipated by any of the other references cited.
“The Morek patent, No. 392,053, dealt specifically with eyeglasses employed for combined near and far range purposes. Its invention ‘consists in securing upon the lower surface of the selected far-vision lens a spherically-ground lens of about one-fourth to one-third of the surface of the larger lens, and which is selected with a vie-# to near-vision purposes, and when combined with the larger lens in the manner stated produces a glass adapted for use for both close and distant range. When the two lenses are united, as stated, the larger or far-vision lens extends to the lower rim of the inclosing frame on both sides of the near-vision lens. * * * - ‘It will be seen that the near-vision lens 8, while having its edge bounded by a curved line of which every part is equally distant from a center, which is preferably just outside of the rim at the lower side of the frame, is made to taper to a feather-edge along the segmental line, and therefore the lens S has its thickest part along the lower edge. This construction obliterates the surface-line 9 to the sight, while giving a perfectly defined area of near vision. It avoids the objection of a horizontal straight projecting ledge, which forms a shelf for the collection of dirt and dust when such near-vision lens is formed thickest at such straight line; and it makes the change from a far-vision to a near-vision lens gradual as the eye crosses the segmental line at its highest point on the surface of the far-seeing lens.’
“When the first patent in suit was originally presented to the patent office it was rejected by the examiner in the following language: ‘The claims of the above-entitled application are rejected in view of patent to Morck, Jr., No. 392,053, October 30, 1888, optics, eyeglasses.’
“Thereupon the applicant made the following amendments: He erased the word ‘preferably,’ as used in the specification describing the minor lens, making it described as ‘formed of flint glass’ and of ‘glass of different, index,’ instead of as ‘preferably formed of flint glass,’ and ‘preferably glass of different index.’ He also erased claims 2 and 3; there being three claims in the patent as originally filed. Original claim 1 was left without a numeral as the sole claim of the patent. Defendant contends that the use of the word ‘preferably’ in the original specification indicated that Borsch did not then have in mind the use of glass of different index imbedded in a recess as the central idea of his invention. I think, however, that the specification as a whole clearly indicates that he had such structure in mind, and that the word ‘preferably’ was erased in order that there might be no doubt respecting it; also to exclude any claimed interference with the Morck patent which might be predicated upon the use of projecting glass of the same index. No point is or can be made of the fact that claim 2 was canceled, because it obviously did not cover the full invention claimed; but defendant Insists that the cancellation of claim 3 in response to this objection limited and narrowed original claim 1, now the contested claim of the first patent in suit. Claim 3 reads as follows: ‘A bifocal lens consisting of a major lens embodying a recess in one face and a minor lens conformed to said recess and mounted and secured in place therein, said lenses being of glass of different index, substantially as set forth.’
“A comparison of this claim with the remaining claim of the first patent in suit, heretofore quoted, will disclose that in all particulars substantial to this controversy they are the same. This being true, the cancellation of the superfluous third claim, substantially identical with the first, would not affect the latter. Bullock Electric Mfg. Co. v. Crocker-Wheeler Co. (C. C.) 141 Fed. 101-110. It has not been, nor to my mind can it be, pointed out in what possible way the cancellation of claim 3 was materially responsive to the examiner’s objection, nor in wbat way the erasure of that claim could narrow or restrict the claim which was left unchanged.
“With no other changes than those specified, Borsch again submitted his application with the nature of his claims thus specifically emphasized:
“ ‘The fact that Morck constructs both elements of glass of the same index, while applicant constructs his two elements of glass of dissimilar index, constitutes a distinction between' Morck’s structure and applicant’s structure, which is fundamental and vital.’
“ ‘By the use of glass of different index, applicant is enabled to provide a construction of bifocal lens in which both faces are, so to speak, smooth; that is to say, a construction in which the small minor lens does not project beyond the plane of the surface of the major lens.’
“ ‘This construction, which is a very desirable and valuable one' in the optician’s art, would not be possible were both pieces of glass of the same index, as in such construction the result would be the same as though the whole lens were formed of one integral piece of glass throughout and there would not be two distinct focal points.’
“To this the examiner replied as follows:
“ ‘The present claim has been considered in connection with applicant’s argument. It appears that the terms of the claim cover all of the views shown, but it is believed that the only construction illustrated which would be operative for use in a bifocal spectacle lens is that shown in figures 1 and 2, inasmuch as the difference in refractive power between glass of the lowest refractive power known and glass, or quartz, of the highest power known would not be sufficient to make a practical bifocal lens wherein the difference in magnifying power were dependent wholly upon the different indices of refraction of the glass. Therefore it is believed that applicant would be compelled to depend upon the difference of curvature of the major and minor lenses for all practical effect. Furthermore, it is not considered invention merely to make a bifocal lens wherein the major lens is of a different kind of glass from the minor lens, in view of the fact that the difference in power secured thereby would be inappreciable.’
“ ‘It is believed that applicant might be entitled to a patent if he were the first to insert in the concavity of a major lens a small or minor lens, and thereby obtain greater security in the junction of the two lenses so that they would be less likely to be displaced by the friction of the spectacle wipers or of accidental contact with surrounding objects. But the Morck patent, cited, shows a small lens inserted in a concavity in a larger lens, the two combined forming a bifocal lens, and having, so far as the firmness of union is concerned, exactly the same advantages as are obtained by the construction of applicant. To make the two parts of different kinds of glass, having different refractive powers, is- believed not to be invention in view of the common knowledge among opticians of the uses of the different kinds of glass, and particularly inasmuch as it is believed that in a spectacle the difference in refractive power would be practically insufficient to produce any appreciable difference of focus. It is thought therefore that the claim should be rejected.’
“There is no hint in this that the examiner thought that Morck was- using glass of dissimilar index. There is every indication that he thought just the opposite, in so far as the essentials of the invention are. concerned, because he doubts the effectiveness of the combination when the minor lens is reduced so much in size. He does think that the Morck patent discloses a small lens inserted in a concavity in a larger lens. He thinks that important only from the standpoint of firmness of union, and decides that Borsch could not claim any invention by reason of that alone. He believes, in view of the common knowledges among opticians of the uses of different kinds of glass, that it is not invention to make the two parts of different kinds of glass having different refractive power; he bases this upon the assumption that in a spectacle the difference in refractive power would be practically insufficient to produce any appreciable difference of focus. Thereupon, without change of specification or claim, in letter or in syllable, the applicant combatted- the views of the examiner and made a practical demonstration of the efficiency of his invention; and the necessary inference from the record is that the examiner receded from his position, for the patent was allowed without further objection.
, “Now, from all this, counsel for defendant argue that complainant, because of this reference and the views expressed by the examiner, is estopped from claiming anything disclosed by the Morek patent, and contend that the Morek patent teaches, not only the use of.a recess, but also the employment of different kinds of glass having different refractive power. It is doubtful if this contention should be sustained. The patentee firmly stood upon his specification and claim without change. The examiner receded and allowed the patent. It may well be doubted whether any of his objections can operate to narrow the import of either specification or claim. Certainly they could have no such effect upon the use of glass of different index. If such a limitation can be raised, it must be from the disclosure of the patent itself independently of anything said or done in the patent office. Defendant’s experts and its counsel then attempt by elaborate and ingenious argumentation to make the Morek patent disclose not only a recess in which the minor lens is embedded, but the necessary employment of different kinds of glass of different index refraction. In my opinion, this effort fails utterly. Neither in specification nor claim is any reference made to such a use, and the inventor must necessarily have considered it of prime importance, if he had it in mind at all. The entire argument is based upon the alleged formation of figure 4 of the Morek patent; and to make their theory consistent experts and counsel are compelled to reconstruct the entire drawing. They first discover a depression where it has at least doubtful existence; and then, to make this depression pertinent, they are compelled to pare away an obvious excrescence upon the face of the same figure of the drawing. Thus they argue that the minor lens, according to this reconstructed drawing, is wholly imbedded in a recess in the major lens, and as it would then be inoperative', unless made of glass of different index from that of the major lens, why, of necessity, they say, glass of different index must have been used. This is not only in defiance of the drawing itself, but of the spirit of the specification as well. The latter specifically seeks to get rid of the sharp horizontal line of separation existing in prior structures. It therefore describes the minor lens as segmental instead of horizontal in outline, and makes it taper to a so-called feather edge at its upper point of contact; its thicker portion being at the lower edge of the glass. If the entire minor lens was to be imbedded, why emphasize the thinner portion at a point of contact, and confess the objectionable thickness at the lower portion? Obviously, if the glass were imbedded, there would be no appreciable edge upon the surface of the major lens, nor would the lens, as a whole, vary in thickness because of the junction of the two lenses. Throughout the entire specification and its accompanying claims, 'the language aptly describes a minor lens placed upon, and not within, the major lens. No mention whatever is made of any recess or of glass of different index, nor is any function or utility ascribed to either. Clearly neither the drawing nor' the body of the Morek patent discloses either recess or the use of different kinds of glass. The drawings are crude, and the examiner, appears to have thought that he detected a recess. He suggested this as an objection, and, because of an implied acquiescence in this suggestion, it may be that Borsch and his assigns are estopped to deny that there was a recess of some kind disclosed in'this drawing. This consideration, and this only, could have the effect of narrowing the Borsch claim in any degree. Glasses purporting to be made in accordance with the teachings of the Morek patent have been submitted. In them the edge of the minor lens projects distinctly b'eyond the surface of the 'májor lens, presenting in smaller degree the very defect which Morek was seeking to minimize. If he had in contemplation a recess at all, it is impossible to explain why he did not bury the minor lens completely, and thus fully attain the desired end. The conclusion is irresistible that his invention did not embrace the conception of a recess with a minor lens of different index imbedded therein; but, on the contrary, that his vision stopped with grinding the minor lens at its point of contact to what he terms a feather edge, which should stand out from the surface of the major lens in the smallest practicable degree.
“Tlie disclosure of a recess in figure 4 of tlie drawings of the Morck patent, if it be a disclosure at all, was purely accidental. It was certainly not appreciated by the inventor. It is well settled that it is no anticipation that by a mistaken showing in the figure of a preceding patent, by the error of the draftsman, the structure of the patent appears contrary to the conception of the inventors and the reading of the patent. Edison Electric L. Co. v. Novelty Incandescent Lamp Co., 167 Eed. 977, 93 C. C. A. 387; Gray Telephone Pay Station Co. v. Baird Mfg. Co., 174 Fed. 417, 98 C. C. A. 353; Beckwith v. Malleable Iron Range Co. (C. C.) 174 Fed. 1001; Brill v. Third Ave. R. Co. (C. C.) 103 Fed. 289.
“ ‘When it is sought to ascertain the state of the art by means of prior patents, nothing can be used except what is disclosed on the face of those patents. They cannot be reconstructed in the light of the invention in suit, and then used as a part of the prior art.’ Naylor et al. v. Alsop Process Co., 168 Fed. 911-920, 94 C. C. A. 315.
“ ‘A prior publication, referred to as an anticipation, must be given effect in accordance with what it actually communicates to the public, and expert testimony cannot be received for the purpose of showing that statements therein made were erroneous, and to give it the effect it would have if reconstructed so as to disclose matters which it might or should have stated, but which it in fact did not.’ Badische Anilin & Soda Fabrik v. Kalle & Co. et al., 104 Fed. S02, 44 C. C. A. 201; American Thermos Bottle Co. v. Vacuum Specialty Co., 178 Fed. 552, 101 C. C. A. 232.
“The disclosures of the Morck patent, as interpreted by defendant, are at least vague and uncertain, and skilled experts differ radically as to their import. Anticipation must be proved by evidence so cogent as to leave no reasonable doubt in the mind of the court. The defendant has failed to carry the burden imposed upon it. Underwood Typewriter Co. v. Elliott-Fisher Co. (C. C.) 165 Fed. 927; Underfeed Stoker Co. v. American Ship Windlass Co. (C. C.) 165 Fed. 65; Beckwith v. Malleable Iron Range Co. (C. C.) 174 Fed. 1001; Victor Talking Machine Co. v. Duplex Phonograph Co. (C. C.) 177 Fed. 248; Hillard v. Fisher Book Typewriter Co., 159 Fed. 439-441, 80 C. C. A. 469; Mueller Mfg. Co. v. Glauber, 184 Fed. 609-620, 106 C. C. A. 613; Cimiotti Unhairing Co. et al. v. Comstock Unhairing Co. (C. C.) 115 Fed. 524.
“But conceding that because of the suggestion made by the examiner, and the asserted acquiescence of the applicant, complainant is precluded from claiming the recess as a substantive part of the Borsch invention, nevertheless it is not estopped from claiming everything Borsch, Sr., actually did invent, nor from denying the pertinency of the Morck patent as an anticipation, with this exception: That it cannot maintain that the claim of the first patent, in that particular, covers the construction of the Morck patent. National Hollow B. B. Go. v. Interchangeable B. B. Co., 106 Fed. 693-714, 45 C. C. A. 544; Owens Co. v. Twin City Separator Co., 168 Fed. 259, 93 C. C. A. 561; Wayne Mfg. Co. v. Benbow-Brammer Mfg. Co., 168 Fed. 271-279, 93 C. C. A. 573; Vrooman et al. v. Penhollow et al., 179 Fed. 296, 102 C. C. A. 484; Bossert Elec. Const. Co. v. Pratt Chuck Co., 179 Fed. 385, 103 C. C. A. 45; U. S. Pe-Wood, Shank & Leather Board Co. v. Sturtevant Co., 125 Fed. 382, 60 C. C. A. 248; Albright v. Langfeld (C. C.) 131 Fed. 473; Keystone Mfg. Co. v. Adams, 151 U. S. 139-144, 14 Sup. Ct. 295, 38 L. Ed. 103.
“The presumption of validity of the first patent in suit is strengthened by reason of its original rejection on the Morck patent. American Stove Co. v. Cleveland Foundry Co., 158 Fed. 978-983, 86 C. C. A. 182; United States Fastener Co. v. Bradley (C. C.) 143 Fed. 523-529; Hale & Kilburn Mfg. Co. v. Oneonta, C. & R. S. Ry. Co. (C. C.) 129 Fed. 598.
“Let us now consider the defense of anticipation as applied to the second patent in suit. ' In this discussion we may disregard all the cited references but three. The defendant avowedly relies upon the Newton and Lazarus patents heretofore referred to, and upon that issued to Leon Kokocinski July 28, 1896, for improvements in spectacle lenses. This patent had to do with welding together two sheets of glass, one colored or shaded and the other transparent, so that the upper portion of the lens might protect the eye from light. All that can be claimed for these three patents, cited against the Borsch, Jr., invention, is that they refer to the union of different pieces of glass by the-action of heat As we have seen, the Newton patent deals with optical instruments in general, and describes a process not at all adapted to producing the delicate result required in an eyeglass lens, and particularly in a bifocal lens. The Kokocinski patent had, of course, an entirely different object in-view; and the Lazarus patent was for the manufacture of achromatic lenses, which, as we have seen, deal with dispersion, and not with refraction. However, it may be freely conceded that the welding or annealing of glass, under certain conditions, was known at the time of this alleged invention, and had been known for many years. Despite that fact no one had ever conceived of the happy expedient of applying this process to the perfection of a bifocal lense, nor, in fact, to any lens, except crudely to counteract dispersion; and the reason for this appears clearly from the testimony. Moreover, the bifocal lens is bi-axial. The two lenses of which it is composed are not concentric. Both must be preserved in their true curvature, and the highest degree of precision is necessary. The comparative minuteness of the parts, and the great delicacy of adjustment required, had created an accepted belief that such a' process was impracticable even after its first suggestion by Borsch, Jr. 1-Ie himself required years of experimentation before success was approximated. The old lens, even as improved by Borsch, Sr., s.till contained imperfections. Up to this point Canada balsam, or some other kind of cement, had been necessary to hold the lenses together. This was essentially less stable than a glass made integral by fusing. Time alone, together with the slight, but continuous, application of pressure incidental to cleaning, would tcause the parts to separate. The cement itself contained imperfections and was subject to disintegration. The fusing process was a distinct advance-from the standpoint of clearness of sight, stability, and appearance. By it the presence of the minor lens was rendered still more imperceptible. Therefore the combination of fusion with the prior structure of the Borsch, Sr., patent marked a distinct and important advance in the art. Here, again, I think the defense of anticipation must fail; and the support of this conclusion by the decided cases is so closely allied with the announcement of the principles establishing invention that it is deemed unnecessary to duplicate-citations.
“This is a product patent. The thing produced was clearly unknown before, and it is therefore immaterial that the separate features of the invention may be found in the prior art.
“ ‘It constitutes no anticipation and no defense to a claim of infringement that one or more elements of a patented combination, or one or more parts of a 'patented improvement, may be found in one old patent or publication, and others in another, and still others in a third. It is indispensable that all of them, or their mechanical equivalents, be found in the same description or machine, where they do substantially the same work by substantially the same means.’ Owens Co. v. Twin City Separator Co., 168 Fed. 259, 93 C. C. A. 561; National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. 693-706, 45 C. C. A. 544; Eldred v. Kirkland, 130 Fed. 342, 64 C. C. A. 588; Knickerbocker Co. v. Rogers et al. (C. C.) 61 Fed. 297; Parks v. Booth, 102 U. S. 96, 26 L. Ed. 54; Potts v. Creager, 155 U. S. 597, 15 Sup. Ct. 194, 39 L. Ed. 275.
“The presumption of invention is not overcome by the fact that an expert is able to build up the patented device by selecting parts taken from the prior art. Loom Co. v. Higgins, 105 U. S. 580, 26 L. Ed. 1177; McMichael & Wild-man Mfg. Co. v. Ruth, 128 Fed. 706-708, 63 C. C. A. 304; Thomson-Houston Elec. Co. v. Ohio Brass Co. (C. C.) 129 Fed. 378.
“That there was invention in the Borsch, Jr., patent is evidenced and emphasized by the number of patents set up by defendant as anticipations, all of which, where pertinent at all, lack some element which the successful patent they are alleged to anticipate possessed, also by the fact that the defendant has appropriated bodily the substantial structure of the Borsch patent. Schmertz Wire Glass Co. v. Pittsburgh Plate-Glass Co. (C. C.) 168 Fed. 73; Naylor v: Alsop Process Co., 168 Fed. 911-917, 94 C. C. A. 315; Edison Electric L. Co. v. Novelty Incandescent Lamp Co., 167 Fed. 977-982, 93 C. C. A. "887. We must remember that appropriateness and obvious usefulness have an important bearing upon the question of invention; that simplicity does not ■detract from its merit; that while great utility and extensive use will not alone sustain a patent, nevertheless ‘where the question of novelty is fairly ■open for consideration under the law, the fact that a patented device or combination has displaced others which had previously been used to perform its function, and has gone into immediate and general úse,' is pregnant and persuasive evidence that it involves invention.’ National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. 693-707, 45 C. C. A. 544. These principles have been forcibly announced in the following cases; Smith v. Goodyear Dental Vulcanite Co., 93 U. S. 486, 23 L. Ed. 952; Parks v. Booth, 102 U. S. 96, 26 L. Ed. 54; Loom Co. v. Higgins, 105 TJ. S. 580-591, 26 L. Ed. 1177; Keystone Mfg. Co. v. Adams, 151 U. S. 139-144, 14 Sup. Ct. 295, 38 L. Ed. 103; Potts v. Creager, 155 U. S. 597-606, et seq., 15 Sup. .Ct. 194, 39 L. Ed. 275; General Elec. Co: v. Wagner Elec. Mfg. Co., 130 Fed. 772-778, 66 C. C. A. 82; Perkins Elec. Switch Mfg. Co. v. Buchanan Co. (C. C.) 129 Fed. 134-137; McKay & Copeland Lasting Mach. Co. v. Dizer et al., 61 Fed. 102-104, 9 C. C. A. 382; Doig v. Morgan Mach. Co., 122 Fed. 460—463, 59 C. C. A. 616; Gould Coupler Co. v. Pratt (C. C.) 70 Fed. 622-624; Hardware Co. v. Tabor Sash Co. (C. C.) 178 Fed. 831-841; Engineering Construc. Co. v. McMullen, 160 Fed. 933-938, 88 C. C. A. 115; Albright v. Langfeld (C. C.) 131 Fed. 473-475.
“That interpretation which sustains and vitalizes the grant should be preferred to that which strikes down and paralyzes it. National Hollow B. B. Có. v. Interchangeable B. B. Co., 106 Fed. 694, 45 C. C. A. 544.
“The court cannot be oblivious to the development that has taken place in the art of bifocal spectacles and eyeglasses as is generally known. The production of a glass effective for far and near vision, compact, stable, enduring, and sightly, was the desideratum long aimed at and but gradually realized. The present high degree of success was first obtained by the complainant company through the patents in suit — a distinct and highly useful advance which has practically revolutionized the art. The acceptance and adoption of the product was immediate and widespread. While the old-fashioned cemented bifocal is still in wide use, because of its comparative cheapness, nevertheless no one who feels able to afford it will accept other than the fused bifocal. I think the conception and successful application of such valuable and elusive improvements rise to the plane of invention as distinguished from mere mechanical skill. While the dividing line between the two is. not always sharply ■defined, nevertheless unyielding strictness should not operate harshly to withhold the reward of merit from marked scientific achievement. The defendant company has made a complete appropriation of complainant’s product, and defends itself solely upon the ground of the alleged weakness of complainant’s title. This casts upon it the burden of establishing its case to the entire satisfaction of the court. That it has failed to do, and whatever doubt, if any, may exist must be resolved in favor of the recognized presumption of .validity.
“It remains only to consider whether these patents are capable of conjoint use, and whether the complainant can maintain its suit upon the bill tendered. Defendant contends that the two patents are inconsistent, in that the first calls for two separate pieces of glass, while this element is absent from the Borsch, Jr., patent as well as from defendant’s structure: Each patent is invoked only to the extent that it discloses a distinct step of improvement; that of the first patent narrowed, as contended by complainant, and as conceded for the purposes of this argument, is the employment of glass of different indices of refraction in the combination described. The Borsch, Jr., patent adds the element of fusion as an advance over cement. The complainant owns both features, and it can avail itself of both in the same structure without inconsistency. The first Borsch patent describes a bifocal lens formed of two pieces of glass secured face to face by cement; the second Borsch patent a bifocal lens consisting of a body of glass or similar substance of any refractive power, and a portion of glass or similar substance of different refractive power secured by fusion to the said body of glass or similar substance. Here, again, two kinds of glass enter into the composition of the lens; the two being made integral by fusion. The one patent supplements the other; the tw« may be and actually are used in conjunction, and so used, are infringed by defendant’s structure.
“The injunction and accounting prayed will be granted.”

Decree affirmed.  