
    HARRY F. WAITE v. THE UNITED STATES
    [No. B-129.
    Decided May 2, 1927]
    
      On the Proofs
    
    
      Patents;, X-ray system.- — Tlie invention of an N-ray system, covered by Letters Patent 1343599 issued to Waite, held- valid and infringed.
    
      Same; automatic clamp for bracket supports.- — Tile claim made in Letters Patent 1371011 issued to Waite for automatic clamp for bracket supports, held anticipated by prior art.
    
      Same; vertical fluoroscopic unit., — -The claim made in Letters Patent 1420395 issued to Waite for vertical fluoroscopic unit, held anticipated by prior art.
    
      Same; new a-pplicat-ion of old combination-. — Securing a new and unique application of power in a way not theretofore done or suggested, by the use of an old combination, is patentable invention.
    
      The Reporter's statement of the case:
    
      Mr. 0. Ellery Edwards for the plaintiff. Mr. Joseph W. Cox was on the briefs.
    
      Mr. John 8. Bradley, with whom was Mr. Assistant Attorney General Herman J. Galloway, for the defendant. Mr. Harry E. Knight was on the briefs.
    
      The court made special findings of fact, as follows:
    I. The plaintiff is a citizen of the United States, residing in the State of New York. He is the president and active managing head of the Waite & Bartlett Manufacturing Co., a corporation duly organized under the laws of the State of New York, and owns the controlling interest therein. This company is and was his exclusive licensee under his patents here in suit since their issue dates.
    II. On October 6, 1917, the plaintiff filed in the United States Patent Office an application for letters patent on certain stated improvements in X-ray systems. Upon this application letters patent No. 1343599 were issued to him June 15, 1920, and the title to the patent therein allowed remains in him. A copy of the file wrapper and contents is in the case as defendant’s Exhibit No. 6 and is by reference thereto made a part of this finding. A copy of the specifications of said letters patent with annexed drawing is attached to these findings as Appendix No. 1 and made a part hereof by reference.
    III. At the time the said application for letters patent was filed there were in the art prior thereto inventions or systems disclosed by the following patents and publications, hereby made a part of these findings by reference:
    United States patent 1012326, December 19, 1911, electro-therapeutic apparatus, to Campbell.
    United States patent 1122011, December 22, 1914, process and apparatus for producing Eoentgen rays, to Lilienfeld.
    British patent 7869, A. D. 1915, published January 13, 1916, improvements in or relating to Bontgen tube apparatus, to Burdon.
    United States patent 1182291, May 9, 1916, rectifier, to Meikle.
    United States patent 1195632, August 22,1916, circuit connections of electron-discharge apparatus, to White.
    United States patent 1203495, October 31, 1916, vacuum tube, to Coolidge.
    United States patent 1211091, January 2, 1917, cathode ray device, to Coolidge.
    
      Article on Tungar rectifier, General Electric Review of March, 1917.
    In the same art there were also the following patents granted on applications filed before October 6, 1917:
    United States Patent 1291379, January 14, 1919, thermionic converter, to Birdsall.
    United States Patent 1250731, December 18, 1917, X-ray system, to Waite (plaintiff herein).
    Prior to the granting and issuing of the said Waite patent No. 1343599 the type of X-ray systems which had been in use or were in use were as follows:
    1. The induction coil system using a gas tube. This is the first X-ray system which has been used since 1895.
    2. The induction coil system was followed by the Snook system shown in the Snook patent No. 954056 of April 5, 1910. This also used a gas tube.
    3. A later advance in the art, of great importance, was the introduction of the Coolidge tube shown in the Coolidge patents No. 1203495, No. 1211091 and No,> 1326029 and plaintiff’s Exhibit 25. Here a vacuum in the tube was made much higher than any before in use, and no reliance was placed on the atmosphere in the tube for X-ray generation, a hot cathode heated by an independent current being relied upon for the purpose of electron discharge. This tube employed a special cathode heating current and means for supplying the same which means was either a step-down transformer or a storage battery. This tube was supplied with an X-ray generating current from a step-up transformer which was separate from the step-down transformer or storage battery, but connected thereto so that both were charged with high potential. This Coolidge tube came into use in 1913.
    None of these prior art structures was used in the advanced hospitals and dressing stations during the World War near the firing line.
    Copies of the specifications and drawings annexed thereto of the foregoing nine patents and copy of said article on the Tungar rectifier are attached to these findings and designated Appendix No. 2.
    
      IV. The claim made and allowed in said Letters Patent No. 1343599 is stated therein by the plaintiff as follows:
    “An X-ray system composed of an X-ray tube with a hot cathode and an anode, a transformer unit with a single primary and a secondary composed of two sections, one having a few turns of coarse wire suitable for the cathode heating current, and the other having many turns of fine wire suitable for the X-ray generating current, three wires connecting the X-ray tube and the secondary, two of which connect the coarse wire with the hot cathode and one of which connects the fine wire -with the anode, and means for supplying the primary with a suitable electric current.”
    Y. On August 10, 1920, the plaintiff filed in the United States-Patent Office an application for letters patent for an automatic clamp for bracket supports, upon which application letters No. 1371011 were issued to him on March 8, 1921. The title to this patent remains in him. A copy of the specifications thereof and annexed drawings Is attached to these findings as Appendix No. 4.
    VI. At the time of the filing of said application August 10, 1920, there were in the art prior thereto the following United States patents :
    No. 375031, December 20,1887, fire escape, to Westbrook.
    No. 833167, October 16, 1906, lamp stand, to Hughes.
    No. 902949, November 3, 1908, scaffold, to Dibler.
    No. 1174051, March 7, 1916, harness hook, to Buland.
    Copies of the specifications and annexed drawings, of the foregoing four patents, are attached to these findings as Appendix No. 5.
    VII. The claims made by the plaintiff and allowed in Letters Patent No. 1371011, for automatic clamp for bracket supports, are as follows:
    “1. A device of the class described, a vertically disposed spindle, a pair of forks with rollers mounted therein, means for holding said forks in rigid relation to each other, a clamp having two parts, springs adapted to separate said parts, a lever with cams adapted to bring said parts together, and a spring stronger than the springs separating the clamp, which is adapted to actuate the lever and cause it to force the two parts of the clamps toward each other.
    “ 2. A device of the class described, a vertically disposed spindle, a pair of forks with rollers mounted therein, means for bolding said forks in rigid relation to each other, a clamp having two parts, springs adapted to separate said parts, a lever with cams adapted to bring said parts together, and a spring stronger than the springs separating the clamp, which is adapted to actuate the lever and cause it to force the two parts of the clamps toward each other, and means for counterbalancing the weight of the forks and connected parts which move with them.”
    VIII. The device made by the Wappler Electric Co. under the contract mentioned in Finding XIV, for holding in place the bracket support on which was to be mounted the X-ray tube, was of the kind and character described in Letters Patent No. 1371011, issued to the plaintiff, with the following differences: There were no springs adapted to separate the two parts of the clamp; in the place of cams the lever was provided with toggles which were adapted to separate the said parts of the clamp as well as bring them together, and had a spring of indefinite strength, which was adapted to actuate the lever and cause it to force the two parts of the clamps toward each other. This device is illustrated by plaintiff’s Exhibit 13, made a part of this finding by reference.
    IX. On November 20,1920, the plaintiff filed in the United States Patent Office an application for letters patent for a vertical fluoroscopic unit. Upon this application Letters Patent No. 1420395 were granted June 20, 1922, and the title to the patent remains in the plaintiff. A copy of the specifications and drawing annexed thereto is attached to these findings as Appendix No. 6.
    X. At the time of the filing of said application, November 20, 1920, there was in the prior art the invention shown by United States Letters Patent No. 1285283, for Rontgeno-scope, issued November 19, 1918, to McClintock. A copy of the specifications and drawings thereto annexed of the McClintock patent is attached to these findings as Appendix No. 7.
    XI. The claims made by the plaintiff and allowed by the Commissioner of Patents in said Letters Patent No. 1420395 for vertical fluoroscopic unit are as follows :
    
      “ 1. In a device of the class described, a hot cathode tube for generating X-rays, a fluoroscopic screen adapted to receive said rays, means for causing the fluoroscopic screen and X-ray tube to be raised ,or lowered together or be supported in a stationary condition at the same level, a control for regulating the quantity of X-ray generation which extends adjacent to the screen and which is supported by the means for supporting the X-ray generating tube.
    “ 2. In a device of the class described, a fluoroscopic screen and means for supporting the same, an X-ray tube adjacent to said screen and means for supporting the same, means for keeping the screen and X-ray tube at corresponding levels, a rheostat carried by said tube supporting means and a rheostat regulating means carried by said tube supporting means with a part always adjacent to said screen whereby the quantity of X-ray generation may be controlled by an operator holding the screen and without moving his body.”
    XII. The device made by the Whippier Electric Co. under the contract mentioned in Finding XIY for a fluoroscopic unit was of the kind and character described in Letters Patent No. 1420395, issued to the plaintiff.
    XIII. During the war with Germany the plaintiff conversed with John S. Shearer in the interest of the defendant with regard to some sort of a portable X-ray apparatus for the Army, and this occurred right after Lt. Col. John S. Shearer was appointed at the school of instruction, Cornell Medical School, New York City, New York. Colonel Shearer was an eminent scientist temporarily in the employ of the United States Army. Doctor Waite and Colonel Shearer talked over the various types of apparatus that were available at that time, but there were none such as Colonel Shearer felt were required for overseas Army service, so that Doctor Waite thereafter conducted a series of experiments with a view to making an apparatus that would fill Colonel Shearer’s requirements, and the system of the patent in suit No. 1343599 is the result of Doctor Waite’s experimental work. Colonel Shearer approved this system. A number of such units were manufactured by the Waite & Bartlett Manufacturing Co. and delivered to the United States Army during 1917 and 1918 upon contracts with the defendant. Colonel Shearer knew of the application from which this patent developed as early as November 4th, 1919.
    XIV. On June 28, 1921, the Wappler Electric Co. entered into a contract with the United States to furnish and deliver thereto, among other things, 50 fluoroscopes, vertical, United States Army type; 50 transformers, improved bedside type; and 50 universal X-ray units, at $249, $97, and $399 each, respectively, all to be according to specifications which were attached to and made a part of the contract, and which provided that said articles were “ to be constructed as per standard sample on exhibit at Cornell University, Ithaca, N. Y.”
    The contract also provided as follows:
    “Article IX. The contractor will hold and save the United States, its representatives, and all other persons acting for its agent, contractor or otherwise, harmless from all demands or liabilities for alleged use of any patented or un-patented invention, secret process, or suggestion in, or in the making or supplying of the articles or work herein contracted for, and for alleged use of any patented invention in using such articles1 or work for the purpose for which they are made or supplied, and if and when required, will discharge and secure the United States from all demand or liability on account thereof by proper release from the pat-entees dr claimants, but if such release is not practicable, then by bond or otherwise, and to the satisfaction of the Surgeon General of the Army.”
    A certified copy of the aforesaid contract is filed as defendant’s Exhibit 27 and is made a part of this finding by reference thereto.
    XV. Work upon the contract was immediately started by the Wappler Electric Co. and delivery of the finished articles described therein completed on or about June 15, 1922. The transformer made thereunder by the Wappler Electric Co. is described as follows:
    A single primary winding is carried on a suitable core and adapted to be traversed by the ordinary 110-volt alternating current. Wound upon this primary are two secondary coils, each composed of many thousand turns of fine wire, said secondary coils being connected in series and constituting in effect a single secondary winding, the number of turns of the secondary winding being proportioned to give the desired high voltage for the X-ray generating current. For generating the heating current two separate and distinct coils are used, each composed of a few turns of relatively coarse wire, wound upon the secondary coils, and are known in the art sometimes as tertiary coils. One of the tertiary coils is used at a time, the other being held in reserve in case of a breakdown.
    The said transformer is illustrated in Appendix No. 3 to these findings.
    XYI. After the war was over, the Surgeon General’s Office appointed Lieut. Col. Shearer to use his knowledge in the developing, for field service work, apparatus that would be an improvement, if possible, over the defendant’s equipment at that time. Dr. Waite was asked by the Surgeon General’s Office whether he would be willing to work -with Col. Shearer in the perfecting of such equipment and this Dr. Waite agreed to do. He designed, built, and submitted to Col. Shearer apparatus which, in the opinion of Dr. Waite, conformed to Col. Shearer’s requirements. Col. Shearejr told Dr. Waite what he would like to do, and Dr. Waite’s part consisted in designing and making apparatus that would fulfill the defendant’s requirements to the best advantage. Within the course of this work Dr. Waite designed a special clamping device for the tube stand which prevented the tube from falling due to any carelessness on the part of the operator. Dr. Waite applied for a patent upon this device and this developed into a patent which is patent in suit, plaintiff’s Exhibit No. 2, No. 1371011. Col. Shearer was fully informed as to this patent and the application from which it developed.
    XVTI. The device described in Letters Patent No. 1420395, applied for November 20, 1920, granted June 20, 1922, was designed by the plaintiff independently of his Army work.
    XVIII. In October, 1920, the Waite and Bartlett Manufacturing Co. completed the making of a sample X-ray outfit of the kind and character determined by the plaintiff and shipped the said outfit to Lieut. Col. John S. Shearer, at Cornell University, Ithaca, New York. This outfit consisted of two transformers, one vertical fluoroscope, one bedside unit, a photograph of which is in evidence as plaintiff’s Exhibit 21, which is made a part hereof, by reference, and certain other articles not necessary to enumerate here. These devices constituted the samples which were copied in the later manufacture of the Wappler apparatus and were the samples referred to in the contract specifications as the “ standard samples ” on exhibit at Cornell University, Ithaca, N. Y. (Finding XIY.) Col. Shearer had nothing to do with the designing or manufacturing of these samples, further than set forth in Findings XV and XVI. He had the power to accept or reject the same and he elected to accept them.
    XIX. About two months before the defendant sent out its proposals for bids the plaintiff knew that the said devices shipped to Lieut. Col. Shearer, at Ithaca, were to be the basis of Government contracts for quantity manufacture of X-ray outfits. Prior to that time plaintiff did not know that the Government would use this apparatus.
    XX. On June 16, 1921, the defendant issued its proposal for bids for the manufacture and delivery of the said outfits. The Wappler Electric Co. and the Waite & Bartlett Manufacturing Co. were among those receiving the proposals. In order that the Wappler Electric Co. might make an intelligent bid it was necessary for its agent to go to Ithaca, since the specifications were not fully disclosed in writing in the proposal, but had to be ascertained from the said samples manufactured by the Waite & Bartlett Manufacturing Co. and on exhibition at Ithaca as aforesaid. The vice president of the Wappler Electric Co., Charles Fayer, inspected the sample apparatus there, was informed by the said Shearer that it was developed in his laboratory for the United States Army, and did not know and was not informed that it had been manufactured by the Waite & Bartlett Manufacturing Co. or had in any measure been designed by the plaintiff. There was nothing on the apparatus to indicate the name of the manufacturer or that letters patent thereon had been applied for or allowed, and the said Fayer did not know of any such patent or application therefor. Such marks were ordered on each apparatus. Why they did not appear is not disclosed. Col. Shearer, who was acting for the United States, knew of plaintiff’s patent and was fully acquainted with the plaintiff’s rights.
    XNI. The bids were opened in due course, and it was found that the Wappler Electric Co. had underbid the other bidders, including the Waite & Bartlett Manufacturing Co. Mr. Holman, secretary of the Waite & Bartlett Co., was present and made a memorandum from the several bids. The contract was thereafter awarded to the Wappler Electric Co.
    XXII. After the said contract had been entered into between defendant and the Wappler Electric Co. June 28,1921, the following correspondence passed between the said company and the Waite & Bartlett Manufacturing Co.:
    JANUARY 12, 1922.
    Wappler Electric Co.,
    
      Long Island City, N. Y.
    
    Gentlemen: We understand that you are infringing the following patents: 1348599, 967469, 1371011, 1400333.
    We might also call your attention to the fact that we have an application pending on the mounting of the filament control on the same carriage with the tube and arranged so that it can be controlled same as the shutter is controlled.
    Yours very truly,
    Waite & Bartlett Manufacturing Co.
    Dr. HFW: MEM.
    February 4, 1922.
    Registered mail.
    Waite & Bartlett Mfg. Co.,
    
      53 Jackson Avenue, Long Island City.
    
    Gentlemen: This is in reply to your letter of January 12th.
    Will you kindly give us specific instances in which we are supposed to be infringing upon the four patents mentioned in your letter and oblige,
    Very truly yours.
    Wappler Electric Co. (Inc.).
    (Signed) A. Mutscheller.
    Dr. AM/ER.
    
      FEBRUARY 6, 1922.
    Begistered.
    Wappler Electric Co.,
    
      168-184 Harris Avenue, Long Island City, N. Y.
    
    Attention Dr. A. Mutscheller.
    Dear Sir : In reply to your letter of February 4th would say, that you have accepted a contract with the Government to deliver vertical fluoroscopes and the new model U. S. Army bedside unit.
    Patent 1343599 covers the specified construction of the transformer to be used in the Bedside. Patent 1371011 covers the automatic clamp on the tube stand. Patents 1400333 and 967469 cover the vertical fluoroscope.
    We also desire to call your attention to the fact, that your portable X-ray outfit infringes our patent 1277003.
    Yours very truly,
    Waite & Bartlett Meg. Company.
    Dr. HFW: MEM.
    June 23d, 1922.
    Wappler Electric Co.,
    
      Hams Avenue, Long Island City.
    
    GeNtlemeN: I call your attention to my following patents : Nos. 1343599, 1871011, 1400333, 1420395.
    Yours very truly,
    Waite & Bartlett Meg. Co.
    Dr. W.-B.
    July 5, 1922.
    Dr. Harry Waite,
    
      C/o Waite <& Bartlett Mfg. Co.,
    
    
      53 Jaekson Ave., L. I. City.
    
    Dear Sir: We have received your letter of June 23d, in which you call our attention to some patents. We are asking our attorney to look into this matter, as it is not our intention to infringe anyone else’s patents.
    Thanking you for the information given, we are
    Very truly yours,
    Wappler Electric Co. (Inc.).
    A. Mutscheller.
    Dr. AM, HG.
    XXIII. The following statement of facts has been stipulated between the parties to this suit by their attorneys, signed on behalf of the plaintiff by O. Ellery Edwards and on behalf of the defendant by Robert H. Lovett, Assistant Attorney General, and is adopted by the court as part of its special findings of fact herein:
    “ 1. That the mechanisms incorporated in the ‘ standard samples ’ referred to in contract between the United States and the Wappler Electric Company, dated June 28, 1921, defendant’s Exhibit 27, were bought and paid for by the United States.
    “2. That the fifty universal X-rays units, commonly referred to as ‘ bedside units,’ were upon receipt by the United States from the manufacturer, the Wappler Electric Company, unpacked, completely assembled, tested to ascertain that they were in operative condition, and then immediately disassembled and repacked, and, with the exception of one unit, are still in storage in disassembled condition.
    “ 3. That one of said bedside units was later shipped to the Army Medical School at Walter Reed Hospital, where it was assembled and tested for about one month to determine its suitability for Army requirements. Although it operated satistfactorily up to its limitations, a more powerful apparatus was considered more suitable. Therefore, it has not been used since the month of test referred to, save for occasional operations in connection with the instruction of students at the school.
    “ 4. That the fifty fluoroscopes referred to in said contract between the United States and the Wappler Electric Company were received by the United States in a disassembled condition from the manufacturers and, with the exception of one, have never been unpacked, the transformers thereof being simply removed from their packing cases, tested to ascertain that they were in operative condition and then immediately repacked. They have remained in storage disassembled ever since with the exception of the one fluoroscope already referred to.
    “ 5. That one of the said fluoroscopes was later shipped to the Army Medical School at Walter Reed Hospital, where it was assembled and tested. With the exception of this test this fluoroscope has been used only two or three times while repairs were being made to the hospital, when it was more convenient to use it than the regular equipment.”
    XXIY. Prior to the plaintiff’s operation of the system of his patent in suit No. 1343599, it was the belief of pers'ons skilled in the art that the tube of such system would burst if a high potential current, suitable for generating X rays, were turned on simultaneously with the cathode heating current.
    The court decided that plaintiff was entitled to recover.
   Booth, Judge,

delivered the opinion of the court:

This is a patent suit. Infringement is alleged. The defense relied upon goes exclusively to invalidity of the patent and nonuser. The patent is No. 1343599, issued to Harry F. Waite on June 15, 1920. The patent was allowed upon a single claim, as follows: An X-ray system composed of an X-ray tube with a hot cathode and an anode, a transformer unit with a single primary and a secondary composed of two sections, one having a few turns of coarse wire suitable for the cathode heating current and the other having many turns of fine wire suitable for the X-ray generating current, three wires connecting the X-ray tube and the secondary, two of which connect the coarse wire with the hot cathode and one of which connects the fine wire with the anode, and means for supplying the primary with a suitable electric current.

An intelligent discussion of the conception of the inventor involves a review of antecedent conditions which inspired the effort and point out what the inventor was trying to do and what he did. X-ray systems are old, their purpose long since disclosed; but notwithstanding their age, a necessity existed for an X-ray system so constructed as to be easily portable and available for use as a bedside unit and behind the lines in time of war. Lt. Col. John S. Shearer was an eminent scientist. During the war he was appointed to the School of Instruction, Cornell Medical School, New York City. Colonel Shearer wras deeply interested in securing a type of X-ray system available for use by the Army. The plaintiff and Colonel Shearer discussed the question and as a result the plaintiff conducted a series of experiments looking toward the construction of a unit capable of Army use as the urgent needs of the time required. The difficulty to be overcome in existing systems was the obviation of cumbersomeness. If a new system was to be evolved, its utility revolved about a reduction of parts, a simplification in construction, and a material reduction in weight and cumbersomeness. Without going into the scientific causes or factors essential to produce X rays, it is sufficient for the case to limit observations in this respect to the operation of the Coolidge tube. The functioning of the indispensable element is the supplying of electric current to the Coolidge tube. In the old system the flow of electric current into and through the Coolidge tube was accomplished by two transformers, one of which supplied low current to the cathode and the other high voltage to the anode. The Coolidge tube exacts a low-voltage current to heat to incandescence the cathode end of the tube and an extremely high voltage for the anode end to generate X rays. This current, as previously observed, was supplied through the medium of two distinct transformers, one of which reduced or stepped down the flow of electric current and the other stepped it up.

The plaintiff conceived the idea of a single transformer capable of doing what had theretofore required two. He combined the mechanism into a single simple unit capable of easy transportation and thereby enabled the creation of an X-ray device susceptible to use wherever ordinary electric current was available. This he did by a simplification of the theretofore double system of transformation of current employed to generate X rays by the use of the Coolidge tube. True, his transformer is simple, and no claim is made for a basic patent of transformers. The claim is essentially a system patent, and the novelty of the invention is its adaptability to this single type of X-ray system employing the Coolidge tube. Instead of employing in separate units a winding of comparatively heavy wire to step down electric current and a winding of a large quantity of very fine wire to step it up, the plaintiff accomplished the same result by adding a few turns of coarse wire to the secondary of his step-up transformer, so that the secondary thereafter became-double in its function — i. e., the plaintiff wound around the-exceedingly fine wire used to step up the current a few turns-of coarse wire to step it down, thus producing a single unit transformer of comparatively small dimensions and weight-.. What did this accomplish? It materially reduced, if it did not entirely eliminate, the tension dangers to an attendant operating the mechanism by means of the second separate step-up transformer. It simplified the wiring system theretofore employed and reduced to three in number the wires essential to operate the tube, and as a final and most important result brought into being a compact and portable device capable of easy transportation and reliably available at any place or point where electric current is generated. It made the Coolidge X-ray system available as an X-ray unit behind the lines in the war, and it enabled the use of the system as a bedside unit.

The defendant does not dispute that the Waite transformer is simple, reliable, practical, safe, portable, and sufficiently powerful, claims made for it by the inventor. Neither is it contended that its use in an X-ray system is not new. The defendant challenges the validity of the patent, insisting that it is devoid of novelty. Transformers, it is said, are old. This is true. Their manner of functioning and purpose in use were well known. This too is true. From these statements the defendant deduces the conclusion “ that if one wanted to make a transformer from the secondary of which is to be obtained a current of much lower voltage than that of the primary and also a current of much greater voltage than that of the primary, and if it was desired to keep the transformer as small as possible, it would be accomplished by winding the secondary first with the number of turns required for the low step-down voltage, using heavy wire because of the unavoidable increase in amperage * * *. Such transformers have been made and used for many years.” In other words, Waite’s application of a single and simple transformer to an X-ray generating tube of the Cool-Idge type was one suggesting itself to anyone skilled in the art and involves mechanics, not invention. A short answer is found in the demonstrated fact that, notwithstanding the Coolidge X-ray system was old, no one prior to Waite did what might have been done.

Keeping in mind that the plaintiff’s patent is limited to the single system described, and claims no novelty except as a functioning element of the system, is it impossible for one to claim invention for embodying elements old in the art which, notwithstanding their known status in the scientific world, when applied to a system in a new way never theretofore adopted, enabled the use of the system to be expeditiously and safely made available for its designed creation in a way not theretofore employed ? The defendant concedes that a combination of old elements into a new machine producing a new mode of operation is patentable. What is condemned in plaintiff’s patent, both in the brief and testimony of defendant’s expert, is that the process of stepping up and stepping down electric current by the use of fine and coarse wires would in primary and secondary windings in a single transformer accomplish nothing new. The plaintiff' does assert to the contrary. The plaintiff found an X-ray system employing the wonderful invention of Doctor Coolidge; i. e., the Coolidge X-ray cathode tube. Electric-current was supplied to the tube by means of two separate- and distinct transformers, one to step down, the other to step up, the necessary voltage. It was, of course, in use and served a most important purpose in the medical and scientific world; but it was not adapted for use in the Army.. It was cumbersome and incapable of sudden removal from place to place. The wiring was complicated, the separate units employed were heavy and detached. The Army of the-United States wanted a portable system; no thought of discarding the Coolidge tube prevailed; no possibility of eliminating the factors indispensable to generate X rays. Something was to be done to preserve intact the X-ray system, but simplifying the mechanism and make it available where it had not been universally or uniformly available before. This is what the plaintiff did. He took the elements old in the art, combined them, it is true, as they had been combined before; but with his combination he secured a new and unique application of the power in a way not theretofore done or suggested. He made it possible to use an X-ray system under circumstances and in places the system existing had been excluded from. This, we think, narrow and limited as it is, was invention. It was not the invention of a transformer; it was the original idea of taking what was in the art and adapting it to a new purpose in a novel way.

We need not dwell upon the beneficial resultó which followed the use of plaintiff’s device in connection with the X-ray system. It was used in the war most beneficially, and it is being used by the Army to-day. We have no doubt upon the subject of user. The defendant’s alleged modification is not sufficiently distinct to differentiate the two transformers. The plaintiff’s patent was sufficiently broad to cover all structures coming within his claim. The findings show that the defendant used the patent in suit and used it to very great advantage. The two separate transformers were discarded and the defendant has found the new Coolidge X-ray system with the plaintiff’s transformer to be one adaptable to its needs and occupying a place the old ¡system did not meet.

We do not go at length into the prior art. The findings afford an opportunity for its review. The single claim of the patentee and the acknowledged limitations' of his patent circumscribe the inquiry. The exhibits filed and considered unmistakably disclose that prior to the plaintiff’s patent the Coolidge X-ray system functioned by the use of and depended upon a single step-up transformer for supplying current to the anode and another step-down transformer for voltage to the cathode. And no exhibit appears in the record of a combined transformer suitable to or adaptable to use with a Coolidge tube X-ray system, except the patent in suit. So far as the prior art is involved, we feel confident in the assertion that no single transformer appears of record to have the windings' necessary to use in a Coolidge X-ray system.

A doubt existed as to compliance by the patentee with R. S. section 4900, as amended by the act of February 7, 1927, requiring the marking and giving notice of patents. The parties were required to furnish additional briefs upon this point. We now believe that even in the absence of markings that the United States was' fully advised and possessed knowledge of plaintiff’s patent. Doctor Shearer knew of plaintiff’s patent at the time he exhibited the patent to prospective bidders, and in addition to this he assembled the parts of the patent and wasJ fully cognizant of the existence of plaintiff’s rights. The testimony does disclose that the plaintiff gave instructions to mark the patent, but it was not done. On the other hand, the representative of the successful bidder to manufacture for the Government the patent in suit does not expressly disclaim knowledge of the existence of the patent. It is impossible to conclude that any injury was done because of the absence of the markings. This' is a suit against the Government, and notice to the Government of plaintiff’s patent rights is clearly established.

Two other minor patents are declared upon. Plaintiff does not insist upon them if sustained as to patent 1343599. If patents' No. 1371011 and No. 1420395 are relied upon as augmenting damages as for infringement, we think both have been anticipated by the prior art, and that as to No. 1371011 the defendant did not use it.

The case will be remanded to the general docket in accord with the agreement of the parties, with leave granted to take such proof as the agreement provides for respecting damages. It is so ordered.

Moss, Judge; Geaham, Judge; Hay, Judge; and Campbell, Chief Justice, concur.  