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September 8, 1952


The opinion of the court was delivered by: Kirkpatrick, Chief Judge.

  This action is for infringement of Patent 2,397,456 issued to Sirmay, one of the defendants, and assigned by him to the plaintiff. It is for a method of transferring a loop of yarn or other material from one needle to another. Although not in terms directed to any particular kind of operation, its utility is in connection with knitting on automatic machines. Transfer mechanisms are old in the art and are used to obtain fancy effects in the cloth or to permit plain jersey cloth and ribbed cloth, as in sweaters with ribbed cuffs and ribbed bottom portions, to be knitted alternately on the same machine.

The plaintiff states that the object of the patent is to eliminate, or at least reduce, two main difficulties which are met with in transfer operations and which cause loss of time and extra expense. These are, breakage of loops, particularly with the so-called "tender yarns", and dropped stitches, which occur when the receiving needle misses the loop to be transferred. Claim 1 has to do with expanding the loop in a manner which will put the least possible strain on the yarn, and Claim 2 has to do with inserting the receiving needle into the loop in a manner designed to insure the accuracy of the movement and avoid misses. The validity and infringement of both claims are in issue.


Claim 1 calls for the following steps:

    "1. Placing the loop back of the needle hook in
  position to be cast off over the hook, then
    "2. Enlarging the loop, by carrying the end of
  the loop forwardly and thereby drawing into the
  loop yarn from an adjacent loop or loops, and
    "3. (a) Swinging one leg of the loop away from
  the adjacent side of the needle and
    "(b) Swinging the forward end of the opposite
  leg of the loop across the

  needle to open the loop to admit the
  loop-receiving instrument".

In order to get the loop into the proper shape to be taken by the receiving needle it must, unless already large enough, be made larger — a step which entails pulling more yarn into it — and widened out. In some prior art mechanisms these two steps are simultaneously accomplished by a clip on the delivery needle. However, according to the plaintiff's interpretation of the claim, enlargement is a preliminary step, accomplished when the delivery needle rises and the loop rides over the projection, or "bump", on the needle (step 2, above) before the clip reaches the loop. This gives a direct forward pull upon the loop and draws yarn from the adjacent loops (the patent assumes that the loop has not previously been made large enough not to require additional yarn), the result being that the strain on it will be less than if enlarging and sidewise opening took place simultaneously, as would be the case if the whole thing were done by the clip alone. The needle of the Foster U.S. Patent No. 885,150 does precisely the same thing (see particularly the needle of Fig. 7 of that patent). It will be noted however that, although the claim does not call for any further enlargement of the loop or for the clip to pull any more yarn into it after it has passed the bump, the specification states "Continued movement of the clip passes the bulge of the clip into or further into the loop, with perhaps further enlargement of the loop * * *."

The effect of the clip upon the shape of the loop in opening and widening it as the clip moves through it upwardly with the rise of the delivery needle is what is set out in Claim 1 as the next step of the method (step 3, above). It is really nothing but a description of what happens to a loop when a delivery needle shaped like that in the patent drawings is used, but it is the point at which the plaintiff attempts to distinguish the patent in suit from Foster and the point at which the plaintiff contends the virtue of the patent resides.

The loop is spoken of as having two "legs" and a "crossbar", the legs being its sides and the crossbar its end. As you stand facing the machine the upward movement of the clip expands, pushes out, or "swings" out, the right-hand leg of the loop. In the drawing accompanying the patent in suit the needle below the bump is cut away or thinned down so that a portion of the left-hand leg of the loop also "swings" across the shank of the needle thus being drawn into and making part of the crossbar, which is now considerably lengthened. The Foster needle is also cut away to some extent, in that the projection recedes considerably below its high point, but it does not recede to an extent which will permit as much of the left-hand leg to swing across the needle and go into the crossbar as in the patent in suit. However, the claim calls for swinging only the "forward end" of the loop across the needle. Necessarily, as the needle of the Foster patent rises, yarn constituting the forward end of the left-hand leg has to be pulled across the back of the needle. As a matter of fact, the forward end of one or both legs of the loop is laid, slid or pulled across the needle by practically every clip needle of the prior art. The plaintiff makes something of the fact that the crossbar of the loop as formed by the Foster needle is very nearly at a right angle with the left-hand leg which, the plaintiff contends, is likely to cause breakage. This feature can be incorporated in the claim only by reference to the specification and drawing. The needle of the patent drawing is exactly that of the plaintiff's earlier patent No. 2,326,694, and the Claim thus becomes open to the objection that it is merely stating what happens when a needle of the type shown in the two patents is used, in other words, merely a description of the function of a machine. At any rate, the edge of the needle need not be a sharp or cutting edge and one would assume that in practice the Foster needle would be sufficiently rounded or beveled to avoid that difficulty. It might also be noted that in the drawing of the patent in suit the angle at the edge of the clip between the crossbar and the right-hand leg is much sharper than a right angle. It is also true that the greater height of Foster's bump and its marked recession make the loop quite loose when the clip reaches it so that the forward end of the leg can be pulled across the needle without undue strain.

However, the matter of anticipation does not depend upon whether the drawings of the needle shown in the patent in suit can be differentiated from the drawings of the earlier Foster needle. The patent in suit is for a method, and the drawings and specification do no more than illustrate one way of practicing it. In fact the plaintiff asserts (and, I think, correctly) that Claim 1 is so broad that the method could be practiced by a machine which substitutes entirely different loop-opening devices for the clip, or by hand. He really must take that position for, if his method claims are limited to practice by the needle shown in the drawing, it would be no more than a description of the function of a machine. A method patent will not be sustained if it is merely a description of the way in which a machine works.

The only question is whether the operation of Foster's needle produces the method of the patent, and it is immaterial that the Foster needle was designed (if such be the fact) with an entirely different object in view, namely, to overcome the loss of lateral support which occurred in earlier transfer needles in which the clip was attached near the front edge of the needle staff. Taking the claim to mean what the plaintiff says it means and assuming that it is a genuine method claim, every step called for and described will occur when the Foster needle is used, and the claim is fully anticipated by Foster's disclosure.

What has been said is upon the theory that in the method of Claim 1 most, if not all, of the enlargement of the loop takes place when the bump on the shank of the needle passes through it. Actually, the claim does not say so and, as has been seen, the specification suggests that there may be further enlargement by the clip. If, in order to avoid anticipation by Foster, the claim should be read to mean that most of the enlargement may be accomplished by the clip after the loop has passed the bump (and, incidentally, this is the only construction which could possibly bring in the method of the defendant's machine as an infringement), then the patent simply would not produce the result which the plaintiff considers the great contribution of Claim 1 to the art, namely, the extensive forward enlargement of the loop by the bump so that a sidewise pull from the clip will put a minimum of strain on the yarn. So construed, the claim would add nothing to the method of several of the prior art needles, there would be no advance and the patent would lack inventive novelty.

This makes it plain that the claim is too indefinite to comply with the requirement of the patent statute in respect of particularity and distinctness in claims. As has been pointed out, with the defendant's needle the preliminary enlargement of the loop by the bump is so slight as to be practically negligible, almost the entire enlargement being accomplished by the bridge. Whether or not the defendant infringes depends entirely upon a factor as to which the claim is silent and which the specification, in effect, says is of little importance. "The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field." United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236, 63 S.Ct. 165, 170, 87 L.Ed. 232.

The method of Claim 2 combines the following steps:

"1. Opening the loop, then

    "2. Placing the loop-receiving instrument across
  one leg of the loop, then
    "3. Advancing the end of the loop to definitely
  place said end at the opposite side of the
  loop-receiving instrument from said leg,
    "During such movement of the loop the position
  of the loop-receiving instrument nullifying any
  tendency of such loop-positioning movement to
  place the said leg at the same side of

  the loop-receiving instrument as the end of the
  loop, and then
    "4. Projecting the loop-receiving instrument to
  place its end beyond the end of the loop whereby
  the loop-receiving ...

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