I concur in the result reached in the prevailing opinion, because I am satisfied that the eighth claim of the Sutton patent embodies the essential parts of an unhairing machine which was an improvement upon its predecessors in the prior art, and because I am satisfied that the machine of the defendant embodies essentially the combination of the claim, and contains equivalent devices, so arranged as to perform their combined functions in substantially the same way. I do not think the machine of the Sutton patent a prodigious advance upon that of the prior Covert patent, and I think a higher degree of merit has been attributed to it than it deserves ; but it was enough of an advance to be patentable and to deserve protection against an infringing machine which appropriates it.
Sutton’s machine was designed for unhairing “seal skins and other furs,” and was a failure for unhairing seal skins, the only kind, which he specifically mentioned, and the kind which he had prominently in view. He equipped his rotating cutting blade with a carding brush, which he evidently considered an important feature of his machine, as he includes it in the general statement of the essentials of his invention ; but the carding brush in operation defeated the utility of his machine. He provided his machine with a stationary card having a comb or set of teeth, the different functions of which he set forth fully in his specifications, but which was practically only useful as a pressure device, and as such no improvement upon the pressure guard of the Covert patent. The improvements upon his machine for which he obtained subsequent patents show that originally it was unnecessarily complex, and to an extent which seriously impaired its efficiency. Indeed, with the carding brush, it was not a more useful machine than Covert’s.
In a patent applied for by Sutton in 1894, covering improvements on the patent in suit, No. 536,742, he states that the important feature “is the substitution for the stationary card above the stretcher-bar of a rotary brush,” and he makes this statement in the specification:
“When the car which is supported back of the rotary knife in my prior machine [the carding brush with which the rotary knife is equipped] passed the edge of the stretcher-bar it drew out from under the stationary card all the fur and hair on that section of the pelt that were on the edge of the bar. Some of the fur, however, was only partly drawn out, owing to the varying thickness of the pelts, and this partly drawn out fur lay in *506the form of a loop which stood out far enough to be reached by the knives, but not far enough to be drawn in by the rotary brush below the stretcher-bar, and so was cut off by the knives. With the rotary brush in place of the stationary card heretofore used by me this looped fur is drawn back and laid down before the knives reach it, so that the cutting of the fur is prevented and only the stiff hairs are removed.”
It is fair to say that this later patent does not appear in the record in this action, but appears in the record of the action of the complainant against Derbohlaw; but it is a public record, and as the declaration of the patentee himself it is much more persuasive evidence than any given by the experts for the complainant to exhibit the merits of the original machine of the patent in suit. The machine seems to have had the same imperfections for which the machine of the Covert patent had been condemned. Nevertheless, upon the testimony of the record, it must be accepted as true that with changes which were soon discovered to be desirable, and which did not involve invention, the machine became a commercially successful one.
Although Sutton regarded Ins carding brush as an essential part of the machine, the eighth claim is for a subsidiary combination in which that device is not included, and as it was not essential in fact it need not be read into the claim by implication, especially in view of some of the other claims of which it is a constituent.
I do not think the Covert patent has been accorded the consideration which it deserves. It has never been considered by the courts below except incidentally by Judge Townsend, in the Bowsky Case (C. C.) 113 Fed. 698, in considering the question whether the omission of the carding brush in the claim of the patent in suit rendered the claim one for a nonoperative combination, and in the present case for the purpose of showing that the Lake patent did not anticipate the patent in suit. The machines built under it by Covert were operative machines, probably about as efficient as was the original Sutton machine. Covert experimented in improving his machine, but he was a man of small means, the machines were expensive, and he became discouraged. In any view which can be taken of this patent, however, it does not anticipate the eighth claim of the patent in suit, or so limit its construction as to permit the defendant to escape the charge of infringement.