In re Lyon

Mr. Chief Justice Shepard

delivered the opinion of the Court:

This is an appeal [by Elias Atherton Lyon] from the decision of the Commissioner of Patents, rejecting an application for a patent having the following claims:

“1. The combination with a telephone, of a movable advertising device, and connections whereby the placing of the telephone in condition for nse causes the movement of said advertising device.

“2. The combination with a telephone, of a movable advertising device, the connections between said device and the-receiver hook of said telephone, whereby, upon the movement of said hook, said advertising device shall be operated.

“3. The combination with a telephone, of an advertising device having a ■ series of advertisements thereon, connections between the switch of said telephone and said advertising device, whereby, upon the movement of said switch to place said telephone in condition for use, said advertising device shall be operated to bring one of said series of advertisements into view and then to come to rest.

“4. The combination with a telephone, of an advertising device having means for winding up and unwinding a band that has advertisements thereon, and connections whereby, when said telephone is placed in condition for use, said advertising device will be automatically actuated to move said band, first in one direction and then in the opposite direction.

“5. The combination with a telephone, of an advertising device having means for winding up and unwinding a band that has advertisements thereon, and connections whereby, when said telephone is placed in condition for use, said advertising device will be automatically actuated to move said band step by step, first in one direction and then in the opposite direction.” rison, and John Mitchell, requiring each of them to show cause, at a ;time to be fixed by the court in said rule, why the writ of attachment ,'should not issue against him, and why he should not be adjudged by the court to be in contempt of its order and its decree in this cause, and be punished for the same.

The subject-matter of the application is an advertising device attached to the box of an ordinary wall telephone. The device consists of a band of paper carrying a number of advertisements, and a mechanism by which the band is operated to bring the advertisements successively into view. The motor mechanism is set in motion by the receiver hook of the telephone. When one goes to use the telephone an advertisement is in view. When he takes the receiver from the hook, the machine causes the band to make a slight movement, with a sound to attract attention. It then pauses, and when the receiver is hung on the hook again, the band is made to travel the full length of the next advertisement, bringing it into place where it may be observed by the next user of the telephone, whose attention will be attracted by the sound following his removal of the receiver from its hook.

The application was rejected for want of novelty on reference to the following patents: Whitney, October 28, 1902, No. 712,223; Bannan, May 12, 1903, No. 727,880; Sanford, August 23, 1904, No. 768,240.

Whitney’s patent shows an advertising device with an endless band bearing advertisements, and means for moving the band the space of an advertisement at a time. The operating means consists of a spring-retracted hooked arm or lever quite like the hooked support of the telephone receiver, adapted to support a suitable weight, which may be an automatic cigar lighter; also a pawl and ratchet mechanism connected to the lever and one of the wheels over which runs the endless -band, so that each time the weight is released and the lever is retracted by its spring, the pawl .and ratchet are operated one step and a new advertisement is presented to view. Sanford’s patent shows an electric indicator on which a band bearing advertisements, particularly the names of streets and stations, is wound from one drum to another, and then the operation is reversed as in applicant’s device. Its particular use is in street and railway cars, stations, etc. Bannan’s patent is for advertising purposes in connection with telephones. It consists of a sheet metal plate attached to the transmitter on which telephone numbers may be written and advertisements displayed.

The appellant asserts that the great value of his invention is due to two things: 1. The utilization of the telephone receiver and its supporting hook, which are already in existence, thus rendering it unnecessary to construct or provide any special mechanism for causing the operation of the advertising device; 2. As the user must be at a phone, waiting for the desired connection, a splendid opportunity is afforded for the display of advertising matter, so that, almost against his will, he is obliged to read what is presented before him; moreover, the telephone provides the means of at once ordering that which is the subject of an advertisement. He does not claim invention of any one of the elements of the combination, but in the combination of a traveling advertisement carrier, a telephone, and a lever which is the connecting link between the advertising mechanism and the telephone, the one lever coacting with the telephone and also with the advertising mechanism. He states in his brief that “the invention consisted not so much in devising instrumentalities, but in the thought of using an apparatus, or the parts of an apparatus already in existence for one purpose, for another purpose.” And again he states: “The ingenuity of the appellant consists in making one mechanism serve a double purpose. That is to say, appellant takes the telephone that is made for the purpose of telephoning, and compels certain parts of it to do service in working an advertising device. This case is one wherein the invention lies in the conception or thought that the telephone which is provided for one purpose may be rendered useful for another purpose.”

It appears, however, from Bannan’s patent, that this idea of utilizing the telephone for the display of advertisements first occurred to him, though he carried it out in a different way. On the other hand, the idea of operating a movable band advertising device by means of- a lever for switching the electric current, which was set in motion by removing a weight from, or restoring it to, a hook support, first occurred to Whitney. He preferred to make this weight a cigar lighter, which hangs on the hook in the same manner that a telephone receiver does. Knowing, then, that a telephone box had been conceived by Bannan as a suitable place for the display of advertising matter to the users of the telephone, and that Whitney had used the movable band device, controlled by a lever operating in the same way as the lever of the telephone apparatus, did the idea of substituting the Whitney device for that of Bannan, and attaching it to the lever of the telephone box instead of a similar lever attached to some other support, amount to invention ? We agree with the tribunals of the Patent Office that it did not. Millett v. Allen, 27 App. D. C. 70, 76, and cases there cited; Re Mason, 31 App. D. C. 539.

The new use claimed for the telephone itself amounts to nothing more than the use conceived by Barman’; namely, as a place for the display of advertisements. The use of the telephone lever as a means for communicating motion to the movable band device substituted for Bannan’s method of display was not a new, but an additional use for that lever, readily suggested by the method of Whitney’s operation. The ordinary switching lever is made to operate in the same way to perform a similar function. The combination of applicant amounts only to an aggregation of familiar elements which operate in the combination as they formerly did separately.

There was no joint operation productive of a new result. In view of what was already known, the thought which prompted the combination is no more invention than that which produced the combination of pencil and eraser, through the insertion of a piece of rubber in one end of an ordinary lead pencil, a patent for which was held void in Reckendorfer v. Faber, 92 U. S. 347, 23 L. ed. 719.

The cases cited by the appellant are distinguishable from this. Hobbs v. Beach, 180 U. S. 383, 45 L. ed. 586, 21 Sup. Ct. Rep. 409; Wold v. Thayer, 78 C. C. A. 350, 148 Fed. 227; Stilwell-Bierce & S. V. Co. v. Eufaula Cotton Oil Co. 54 C. C. A. 584, 117 Fed. 410; Re McCreery, 12 App. D. C. 517. In Hobbs v. Beach, which is chiefly relied on, the Dennis and York device, claimed as an anticipation, had been used solely for pasting addresses upon newspapers. Neither it nor any other machine had ever been used for pasting paper strips on the corners of boxes. It had to be changed materially to make it capable of such use. The functions of the two machines were analogous, but not similar, and it was said that the Beach machine involved invention, first, to see that the old machine was adaptable to the work of the Beach device, and, second, to make the changes necessary to adapt the old device to tbe new functions. In tbe other cases, changes were made by which new and useful results were achieved.

Nor is there any support for the appellant’s contention in the recent ease of Re Eastwood, ante, 291. There the combination of a mental or skull-cracking weight with a lifting magnet and a traveling crane was held to be new. While a lifting magnet had been used in a combination with a traveling crane, Eastwood was the first to combine the three elements, producing a novel and useful result.

In the present case the Whitney hook, as we have seen, performs the samé functions in his combination that is performed by the telephone hook in the appellant’s. There is such similarity in the mode of operation of the Whitney hook and the telephone hook that one readily suggests the other.

We find no error in the decision, and it will be affirmed. It is so ordered, and that the Clerk certify this decision to the Commissioner of Patents, as the law requires. Affirmed.