(dissenting). The patents in suit were applied for on July 6, 1892, and issued on the 20th of September ensuing. An application was made at the same time for a patent on the wire-glass which the machine and process were designed to produce, but presumably was denied, since there is no evidence that it was granted, and the expert whose testimony is chiefly relied upon to support the patents granted concedes that the product, wire-glass, was not then new. The fact of that application having been made is important here as evidence that Shuman was either entirely ignorant or the prior art, and supposed himself to be the inventor of wired-glass of the kind in question, or was willing to seek a patent to which he knew him self not entitled. “During December, 1891, and January and February and also March and April, 1892,” he testified, “after conceiving the idea of making wire-glass, we inquired among the glass dealers of Philadelphia and New York, and at two large glass works in Pittsburg, and found no wire-glass on the market in this country.” It may or may not be fair to infer from this use of the plural that he had assistance in working out the conceptions for which he sought patents, but it is noteworthy that in his applications for patents no reference was made to the prior art, and his testimony contains nothing concerning his know!*958edge thereof, or concerning the circumstances or the manner of the making of his supposed discoveries. A statement of the circumstances, and especially of his knowledge of the prior art, it is evident, might throw much light upon the questions whether his conceptions were original, and were of an inventive character, or were the result only of mechanical skill applied to the improvement of prior processes and devices. The earlier patents on mechanism or processes for making wire-glass were foreign, — mainly English, —and it is fair to assume that, if he did not know of them sooner, they were brought to his knowledge by the report of the Franklin Institute of November 1, 1893, on which he was awarded “the John Scott legacy premium and medal, for his machine and process for producing wire-glass,” as set forth in his letters patent. That report contained summary statements and explanations of the British patents to Newton, Hyatt. Lake, Armstrong, and Sievert, and also of certain French, German,' and United States patents; of which those issued in this country manifestly have little relevancy to the art of making plate-glass. Of the Armstrong patent it was said:
“The patent of Armstrong * , * appears to come nearer to the practical solution of the problem than any which preceded those of Shuman. In Armstrong’s case a clever attempt is made to realize practically the plan of pressing a wire-netting, by means of a heavy roller, into the body of a sheet of glass, and then covering the wire up in the glass by a pressure of the second roller following up the first one. The mechanism by which it is attempted to carry out this idea, though embodying the elements of a useful invention, was seriously defective, and the in ventor does not appear to have made any effort to improve it.”
Whether Armstrong made any effort to improve his invention is a question concerning which there is no evidence in the record, and probably nothing was known to the committee of the institute, but their report is important, because it affords an explanation, not otherwise furnished, of the experiments which, six months later, Shuman made for the purpose of testing the Armstrong machine. His testimony is that during May and June. 1894, he supervised the construction of a machine according to the specification of the Armstrong patent, and attempted therewith to manufacture wire-glass “according to the description of the specification, but failed to produce a merchantable wire-glass of any kind with said machine. In operating the machine in the manner described in the specification, we found that the wire was made very hot by its contact with the molten glass, and could not stand the pull of the machine. It distorted, drew out into a thread, and in most cases broke. In the few places where the wire was embedded in the glass it would be either on one side of the sheet or the other, and from the fact of being pulled in its white hot and weak condition the major portion of the sheet of glass rolled had no wire in it at all. Yde rolled about thirty sheets, but failed to produce wire-glass.” This testimony is corroborated only by the superintendent of the glass works, who assisted in making the experiments. Shuman evidently believed or feared that the validity of his own patents depended upon showing that Armstrong’s was a failure. His wish, if not his purpose, was to demonstrate a failure. Complete corrobo*959ration of Ms testimony, if true, could have been preserved and produced. Disinterested and skilled witnesses should have been called to observe the experiments, ¡aid competent mechanics to make them. The machine siioulu nave been preserved, and photographs and other indubitable evidence adduced that it was properly constructed and skillfully and honestly operated. Specimens of the product also should have been preserved, and produced In evidence. But none of Diese tilings are shown to have been done, and no excuse or explanation of the failure has been offered. Not even the names have been given of the mechanics who constructed and. operated, the machine, or of any witness, except the superintendent, who saw it operated, or examined the product. The only defect found in the operation of the machine was “that the wire was made very hot by its contact with the molten glass,” and chat may have resulted from the overheating of the glass, or from needless slowness of opera lion; but, in any event, the trouble was manifestly avoidable by causing the wire-netting to pass down immediately in front of the rear roller, or by leveling the molten mass in front of the small roller by means of a bar or other instrument properly adjusted for the purpose. The expert, Dayton, speaking with reference to Shuman’s testimony on the subject, said: “The result there stated accords with the judgment which I had previously formed as to the practical inoperativeness of the Armstrong machine;” and while he added that he did not see how the machine could be changed to give any other than an unsuccessful result “so long as the scheme, plan, theory, and principle of the machine shall be preserved,” it is evident that a mechanic of even ordinary skill, not compelled to concern himself about the exact “scheme, plan, theory, and principle of the machine,” could easily have made the alteration necessary to prevent the overheating of the wire by its contact with the molten glass, and the consequent distortion and breaking of the wire. It could have been done without alteration of the machine; only a change in the method of use by jiassing Die wire-netting in front of the second, instead of the first, roller was needed; and if a skillful mechanic could not have perceived at once the possibility of obviating, in either of the modes suggested, the obstacles to the successful operation of the device, then mechanical skill is only a name for stupid incompetence and inefficiency. And if the fastening of the wire to the end of the table tended to enhance the tearing and distortion described, it certainly required no invention to omit the fastening, which, it is to be observed, is no part oh the Armstrong machine. It is only a suggestion in the specification touching the process or manner of using the machine. Another expert, after explaining that the lateral position of very hot wire will vary irregularly, concluded, with seeming emphasis: ’“And this irregularity appears to be utterly uncontrollable in the apparatus as shown.” That an effect will remain unless the cause he removed hardly needed to have been said. It was more important that the witness should have expressed bis opinion whether the apparatus might readily be changed so as to correct the irregularity.
*960Recalled in rebuttal, Shuman testified:
“In 1894 I was sent to Europe for the purpose of disposing of my European patents to some of tbe glass makers over there. In the course of my travels I visited most of the large glass works in England, Belgium, France, and Germany, — among others, the works of Pilkington Bros., at St. Helens, England; the St. Gobain Works at Paris, Franco; and the works of the Societe Anonyme des Glaces at Charleroi, in Belgium; and others, the names of which I cannot at present recall. * * * I made special efforts during my travels to find out all about the state of the art in making wire-glass, and whether any was on the market. I found no wire-glass for sale anywhere, although every one of the glass works mentioned had made experiments towards making wire-glass for some years hack. They were entirely unsuccessful in a commercial sense, and I had no difficulty in disposing of my European wire-glass patents there.”
This, so far as material, is hearsay, and not competent evidence. Was that journey abroad before or after tbe construction and experimental use of the Armstrong machine? It is not shown. What were the experiments that had been made, and what were the causes of failure? Were the experiments original and independent, or were they made in the direction of the patents to Hewton, Hyatt, Lake, and Sievert, and especially were they made with a knowledge and according to the specification of the Armstrong patent? These questions unanswered, there can be, in my opinion, no justification for finding in the fact that the Armstrong patent expired in 1891 through nonpayment of the renewal fee, or in any circumstance mentioned, “cogent evidence that the patent was found to be valueless and inoperative.” Excepting tbe experiments made under Shuman’s supervision, no test of the value or operativeness of that machine seems to have been made, and there is no evidence that experiments “towards making wire-glass” were attempted by competent men, possessed of an adequate knowledge of the prior art. Armstrong’s patent was in force for four years. It was confessedly a clever attempt, — the first attempt in a direction which Shuman followed, — and, as the experts of the Franklin Institute were able to see without the aid of experiments, came “nearer to the practical solution of the problem than any which preceded.” Why did not Armstrong keep his patent alive, and demonstrate its value? In the absence of evidence on the point, a number of inferences are possible, and quite as justifiable as that stated. He may have died, have been in ill health, or unable to pay tbe renewal fee; or, good as his conception was, be may have been absorbed in other things, and may not have suspected the possibilities of his invention. He was in advance of the market, and doubtless the publication of his patent tended to create for wire-glass the strenuous demand which, within a year after its lapse, gave assured success to the efforts of Shuman. That success, attributable primarily to the merits of wire-glass, and not to the means or manner of producing it, is amply accounted for by extensive advertising, by the sudden demand, for which there was no other supply, and by other causes, and therefore affords no ground for a more ready conclusion that the Shuman patents, which confessedly infringe the patent of Armstrong, contain patentable improvements because of the introduction of the third *961roller for smoothing the glass to a uniform thickness before the wire is delivered and the corrugated roller for embedding the wire-netting in the molten mass.
Extrinsic and unessential considerations aside, what is the case on its merits? The art of making plate-glass was already well known, and the object which Armstrong proposed to accomplish was simply an addition to that art, stated in the specification of his patent to be “to insert wire-work into the interior of sheets of glass while being rolled,” and this he proposed to do by adding to the rolling table and the single roller already in use for rolling plate glass another small roller, with an apparatus for carrying it and a bundle of wire wound upon another roller, supported above, from which it should he delivered beneath the rollers below as they should pass over the molten metal on the table. The device is illustrated by the following cut:
The following cut presents a corresponding view of the Shuman devise:
*962The Walsh patent, No. 346,695, issued in 1886, and the Gray patent, No. 510,378, issued in 1893, disregarding special improvements therein claimed, afford good illustrations, according to the testimony of the expert Dayton, of the ordinary apparatus and method employed for many years in making 'what is known as “rough” or “ribbed” plate-glass; the “rough” being plain glass, without polish, as it comes from the machine, and the “ribbed” being the plate as it comes from a machine provided with a ribbed surface or surfaces, either of table or roller. The roller rests upon metal strips called “strangs,” which, lying on the table, determiné the thickness of the plate, the width being determined by the “gun,” which is a detachable device, composed of parallel plates connected to each other by crossbars, which hold them a suitable distance apart to receive one or more ladlefuls of molten glass between them. The gun slides along in front of the roller as the latter is turned by the operators by hand through the medium of the pilot wheels, and simultaneously is made to advance by means of the cogwheels and racks. In the use of the machine thus described the roller is brought into position at one end of the table, the gun is placed in front of it, and the mass of molten glass is dumped upon the table within the gun and in front of the roller. The mass retains measurably the form of the ladle, but settles or flattens slowly. The roller is at once advanced against this mass of glass, and over such portion of it as the roller will accommodate beneath it. As the roller advances, the plate is formed; first with a narrow rounded end, until the glass has spread out to the width of the gun.
It is obvious, as suggested by Dayton, that no gun can be employed with Armstrong’s apparatus, if arranged and operated in precise conformity with the specification of the patent, because the roller’ D, continually changes its distance from the table, and because that roller stands in the way of a gun in front of the rear roller; but the inclined tracks, F, which cause the continual change in the distance of the roller, D, from the table are adjustable, and, without change in the construction of the device, may be made horizontal, causing a horizontal movement of the roller, D, and so admitting of the use, if found desirable, of a gun in front of it. Another roller or bar might be adjusted in front of D, and the gun introduced in front of that. The gun being already a well-known adjunct of such devices, there could be no invention in introducing it into the Armstrong machine. The old machines were readily adjustable for the making of plates of different thicknesses, and it therefore seems entirely probable that they might have been employed for the production of wire-glass by first rolling a sheet of one-half the thickness desired, placing thereon the wire-netting, and then rolling thereon another sheet in time to fuse with the first. That would have been according to the “sandwich process,” so called, of the patents of Newton, Hyatt, and others; but only for its bearing upon the devices of Armstrong and Shuman‘need the old art of making ordinary plate-glass be considered here. In that art the roller, both smooth and ribbed, was familiar, and mani*963festly it could not have been invention to employ a. second or third roller, one to follow another, whether moved separately or so framed together as to be controlled by a single force. It could not, therefore, have been a feature of novelty and invention to introduce a second or third roller into the old machine for the purpose of adapting it to the introduction of wire-netting into the product; or, if that was invention, Armstrong is entitled to the credit of introducing the second roller, and it was certainly not a patentable novelty thereafter, on the part of Shuman, to introduce a third roller for the same or like purpose. Indeed, there is in evidence a specimen of wire-glass, designated “Dayton’s Specimen A,” which was made on the Shuman machine by talcing the plate “from behind the corrugated roller, and after the impression [embedding] of the wire-netting, but before being flattened and welded by the rearmost roller of that apparatus, the machine having been stopped before completing the sheet to afford this sample.” That sample bears some analogy to the design shown in the patent of Sievert. It is a plate of embossed glass, evidently merchantable, in which the embedded wire seems to be well covered, even at the places of deepest impression. It is an article which, though it did not pass under the third roller, is certainly within the process of the patent. It needed no invention to produce it without using the third roller, and, by the same reasoning, no change in the Armstrong device being necessary for the purpose, it could have involved no invention to pass the wire-netting under the second, or íarge, roller thereof only, which, as already explained, would have obviated, the contact of the wire with a molten mass of metal in front, and, the large roller of that device having but two, or at most a small number, of ribs, the product would be less embossed, and, to that extent, better, than the specimen in evidence. Dayton, if present at the experiments with the Armstrong machine, could not have failed to perceive, aud, presumably, would have verified, this possibility. And when, in the Armstrong machine, the plate had been passed under the large roller with its two or three ribs, it would not have been outside of the known art or of ordinary skill to close up the openings made by the ribs by means of another roller following the first. But it is said, or implied, that Armstrong’s ribbed roller does not anticipate the ribbed roller of Shuman, because of the statement in Armstrong’s specification that “the large roller may be ribbed with large divisions to cut the glass nearly through, if found necessary, to make the sheets of smaller size,” etc. This ignores the doctrine of double use. It is clear beyond question that a sheet of taut wire laid upon a sheet or layer of molten metal, and passed therewith under a roller ribbed at each end, would thereby be embedded in the metal as it passed between the ribs, and, if a third rib, or more, between the others, were added, the embedding would be correspondingly more nearly uniform and complete. The ribs on the Armstrong roller and upon that of Shuman necessarily were effective to embed the wire in the passing sheet of metal, and it is not material that Armstrong did not mention that obvious *964result. The ribbed roller or table was already familiar in the plate-glass art, and in itself an impossible feature of novelty in the modifications made of the old mechanism for the purpose of introducing wire into the product. Whether the memoranda upon the drawings of the Armstrong patent were put there at one time or another is manifestly an immaterial question. The body of the specification contains enough on the subject, if anything at all was necessary when ribbed rollers were well known.
The experts against him are agreed in condemning Armstrong because he “sought to take a quick cut to the end by passing the wire into the unformed glass, and then rolling it into a sheet”; while they point out that the'process of Shuman consists in four steps: “First, preparing a sheet of molten glass, which is rolled to a definite predetermined width and thickness; second, mounting or placing thereon wire-gauze, smoothly, evenly, and in a definite position; third, pressing the said wire-gauze or wire into the glass definitely into a predetermined depth; and, finally, closing over the glass and smoothing and finishing the plate to a definite predetermined thickness.” This is an attempt to give importance to distinctions which at most are improvements merely of form, and have no bearing upon the question of invention. When the “quick cut to the end” has been devised, it is not invention to construct a longer way out of the old materials, and over familiar ground. Especial stress, however, is laid upon the first step of Shuman.— the preparing of a sheet of molten metal on which to place the wire-ganze; but that is just what was done in the old art of making plate-glass. The first roller of Armstrong prepares such a sheet, and when it was found necessary to prevent the contact of the gauze with the piled-up metal in front of that roller it needed no new conception or extraordinary intelligence to place another roller, or bar, in position to smooth down the mass in front of the first roller. In the Shuman device and process, as I see them, there is nothing which is not embodied and clearly revealed in the patent to Armstrong, when intelligently considered in the light of the prior art, and I Cannot agree that either of the patents in suit is valid. “In the law of patents it is the la.st step that wins,” if it be an act of invention, but certainly not if it be an obvious correction of the defects of a known mechanism.