art, Chandler patent, No. 874,005, is designed to move a pile of checks sequentially into a field of vision, to hold each check there for a brief time, and then pass it on and discharge it. Granted that the Chandler machine was not intended for photographing the checks, but merely to display them so that a clerk could note their numbers and amounts or record them upon an adding machine, and granted further that to be photographed the checks would have to be held closer to the glass plate behind which they are displayed, nevertheless, the device certainly anticipates the broad claims for the plaintiff's conveyor means (as in claim 21) or document driving mechanism (as in claim 27). Take, for example, Chandler's first claim -- "means for successively passing checks from the hopper and bringing them into alinement with the sight opening, holding means adapted to retain the check before the sight opening * * * and means for automatically withdrawing the holding means after a predetermined interval of time."
I do not say that claims could not be drawn on the plaintiff's actual commercial device which would escape anticipation (as to the conveyor element) by Chandler and the other prior art patents cited. I hold only that the claims as drawn do not.
A combination, though each separate element is old, may still be patentable if the combined function of its elements constitutes a new and inventive advance in the art. But the Jansen and De Khotinsky patents (Nos. 655,977 and 708,813) are combinations which accomplish exactly the same result as the patent in suit. The Jansen patent states its object as "recording checks, drafts and other writings or evidences of value in such manner that the record shall show a photographic facsimile of each paper to be recorded, the object being to afford for the use of banks * * * a method and means by which an exact record may be kept of the commercial paper which passes through the bank. * * *" A glance at the specification will show that the combined function of the elements of the Jansen combination is exactly the same as that of the plaintiff's patent.
Nor does plaintiff, using old elements to accomplish a result already attained, do it in any new way which entitles his patent to the rank of an invention. In fact the patents just referred to would be complete anticipations were it not for the fact that the plaintiff has substituted, for Jansen's hand operation of inserting each check in a kind of glass easel in order to present it to the camera, an automatic conveyor feed, which, as has been seen, is not in itself a new idea. The general rule is that supplanting a hand operation by an automatic device does not constitute invention. Of course there are cases in which it may, but I do not think this is one of them.
The commercial history of this device confirms rather than impairs this conclusion. It seems to me that the real problem was not to get a machine which would photograph checks, but to convince the banks that it would pay them to have it. The machines are by no means essential to ordinary banking operations. The record obtained is likely to be of greater use to the depositors than to the bank. In fact, it is largely as an additional service by the bank to its depositors that the machines are advertised and sold.
Once given the demand, or once having envisaged a potential demand, to create an automatic machine which would perform the work of the Jansen and De Khotinsky machines with greater speed and less time and trouble was a step which surely could have been taken by any one having an ordinary knowledge of mechanical principles. The automatic conveyor feed has long been in use in countless forms, and, in the Chandler patent, this particular art furnished an example of it applied to the displaying of checks under a transparent shield.
The plaintiff's device has made a fair commercial showing. He has since 1925 or 1926 sold approximately seven hundred machines to about five hundred banks -- this out of a total of some fifteen or twenty thousand banks. However, I should say that whatever measure of success has come is a tribute rather to salesmanship than to invention.
The claims of the patent in issue are therefore held invalid, and the bill may be dismissed with costs.
The statements of fact and law in this opinion may be taken as specific findings and conclusions. If separate findings are desired, requests may be submitted in accordance with this opinion.
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