[108] [22] to supersede previous Acts conferring jurisdic-| bacco plugs, are invalid, as the evidence shows that the Circuit nor District Court of the United States would have jurisdiction when the amount The Act of 1875, it is clear, was not intended Its purpose was to give to the circuit courts a jurisdiction which the federal courts did not then possess, by enlarging their jurisdiction in suits of a civil nature at common law or in equity, and not to take away from the circuit or district courts jurisdiction conferred by prior statutes, or to divide the jurisdiction which had for so long a time been vested exclusively in the district courts. Price v. Abbott, 17 Fed. Rep. 506. Argued Nov. 2, 1885. Decided Dec. 14, 1885. APPEAL from the Circuit Court of the United States for the District of Kentucky. The facts and case are stated by the court. Messrs. Arthur Stem, George_Hard. ing, James A. Beattie and Francis T. Cham bers, for appellants. Mr. Benjamin F. Thurston, for appel lees. Mr. Justice Bradley delivered the opinion [2 of the court: This is a suit brought by the appellants against the appellees, complaining of the infringement of a certain patent granted to Anton Miller and Christian Worley, two of the complainants, for an alleged improvement in finishing tobacco plugs and in marking the same. A patent was applied for September 23, 1876, and was granted on the 5th day of December, 1876. It was subsequently surrendered and reissued on the 29th of January, 1878. The improvement, as declared in the specification, consists in pressing in the side of the plug, during the process of manufacture, letters or marks, so as to be ineffaceable. The description contained in the reissued patent, which does not differ materially from that contained in the original, after referring to the illustrative drawings, which are not necessary to the understanding of the invention, proceeds as follows: "In carrying out our process, the plugs are packed with alternating plates in the finisher, so that they take their permanent set with the impression in them, whereby said impression is Thus construed, there is no conflict between "We have used the process of finishing tobacco as described in patent No. 181512, issued to Worley and McCabe, on the application of Christian Worley, and dated August 22, 1876; but this system of marking may be used in conjunction with the ordinary finishing process by James H. McKenney, Clerk, Sup. Court, U. 8. having the devices in relief on pressure plates True copy. Test: ANTON MILLER AND CHRISTIAN WOR- v. SAMUEL J. FOREE AND EDWARD J. (See S. C., Reporter's ed., 22-28.) used in the last pressing. "Our preferred manner of forming the letters on the plates A' is by stamping them therein, and then making the letters solid by filling metal, such as solder, so that said letters will in the concave side of the letters with melted withstand the extreme pressure to which they are subjected in the finishing box. "In constructing said compress plate, however, any projecting surfaces in relief, either formed upon the plate or loose from the same, would secure the same result and may be employed." From this description it appears that the process consists simply in attaching or placing Validity of letters patent—application of old raised characters on the metallic plates which process. 1. The application of an old process or machine to a similar or analogous subject, with no change in the manner of applying it and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result has not before been contemplated. 2. Letters patent and the reissue thereof, for an alleged improvement in finishing and marking to are interlaid between the layers of tobacco to give it a smooth surface in its final compression, which characters leave their imprint in the side of the plugs. The claim of the original patent was for, 'The mode of simultaneously stamping and finishing tobacco, consisting of tightly com pressing the plugs between plates having in re I 1581. MILLER V. FOREE. lief letters in alternating series, substantially in | lets, the rest of its surface having the impression the manner described." The claim of the reissued patent is for, "1. The described process of marking plug tobacco, which consists in impressing letters or other marks directly into the side of the plug during the process of manufacture, and by the pressure employed in making the plug, substantially as described. of the wooden disc, smooth, or showing the grain of the timber. The tobacco, then thorCharles Siedler obtained a patent of the Unitoughly cured and pressed, is fit for sale." ed States, dated January 12, 1875, reissued October 24, 1876, on application filed April 26, of tobacco metallic labels with raised letters, 1875, for impressing into the body of the plugs "2. A tobacco plug marked with an impres-etc., either covered or not covered by the outside dion, substantially as described." The second claim of the reissue was afterwards abandoned and formally disclaimed in the patent office. The first claim is, in its terms, broader than the claim of the original patent. It is a general claim for the described process of impressing letters or marks directly into the side of the plug during the process of manufacture. This embraces the application of the process at any stage of the Lanufacture, either in the molding process or the finishing process. But if it should be conEned by construction to the latter, as in the caim of the original patent, it would still apply to every kind of finishing process, whether *parate from the molding process or not. The question then will be, whether this claimed invention was anticipated by prior invention or use in the art. wrapper, whereby he obtained distinct and du- In 1867 or 1868 Fisher and Harris of St. Louis fitted into a mold for plug tobacco a metallic plate, having on its face the word "Blackberry" Blackberry." in raised letters, in the form of types, which produced on the surface of the plug, as it was pressed in the mold, the word " Many plugs were made in this mold and received the said impression, from the time of its construction until 1876, and were sold in the market. Boyce and Brothers bought out Fisher and Harris in 1869, and continued to use the same mold. It is true that this mold was only one in a block or frame of fifteen molds; and eleven other frames were used in connection with this frame, without any such types in them, in making up boxes of tobacco. But in view of the fact that the mold having the types continued 'Blackberry" was invariably printed on the toto be used for many years, and that the word bacco, the process, though somewhat imperfectly applied, cannot be regarded as an abandoned experiment. The impression, being made in the mold whilst the tobacco was moist, might not remain as clearly defined as if it were made in the finishing process (when a further finishing process was used); but it continued to appear quite distinctly and remained as a permanent mark on the tobacco, as is seen in the specimen which has been preserved and made an exhibit in the cause. Impressions of letters, figures and other rks have for a long period been made by Compression upon plastic substances, such as akes of soap and chocolate, bars of lead, balls bitter, sealing wax, the leather covers of ks, etc. It was not strange, therefore, that same process for producing a like result od have been applied to tobacco when moldand compressed into solid plugs of definite fm. An English patent was granted to Thomas George Cope in April (specification filed ber, 1869, for improvements in machinery moding, pressing and stamping Cavendish 151ther tobacco into any desired form by suitetes. These dies have any desired form and d; and, when filled with tobacco a powerf. pressure is applied by means of a metallic febere, which gives to the tobacco a'durable Am and solidity, with the impression of the ⚫ and design of the dies. In describing the Litre and its operation, the patentees say: machine is useful for various purposes anufacturing tobacco; it can be advanLevy employed in stamping or forming rves of various kinds on tobacco." Asther patent was granted to Gibson and - April (specification filed October), There is also evidence in the case of a zinc for a mode of heating, pressing and curand coil tobacco, in the course of which con (in the case of coil) is alternated plate with raised characters, forming the name metallic plates, between which and the of the maker, one "E. F. Smith," being used is are placed thin wooden discs of a size to by him in the summer of 1875, both in the the plates, and between these and the molding and in the finishing process, for the of tobacco a thin metal plate, bearing the purpose of imprinting the name upon plug tofacturer's name, abode, trade mark, etc. bacco which he was then manufacturing in a atten heated, and afterwards submitted to small way in Evening Shade, a village in Artremure. And the inventors add: "When kansas. The plate was used in substantially the rero has cooled down sufficiently it is re- same way as that described in the patent of the ed, and the sheath pipe being withdrawn complainants; and if the evidence is to be beise pressure, the metallic discs, scale lieved, the fact of prior anticipation is clearly Lucs, and name tablets are separated from established. The circuit judge who decided this Le barro, and the tobacco is found to be im- case in the court below, after a careful exampsed with the name or marks from the tab-ination of the testimony on the subject, came E. U. S., Book 29. 35 553 [26] [27] [28] The decree of the Circuit Court is affirmed. James H. McKenney, Clerk, Sup. Court, U.S. SAXONVILLE MILLS, Pilff. in Err., 0. THOMAS RUSSELL, Late Collector of Bee S. C., Reporter's ed., 13-21.) to the conclusion that it was to be believed, and | principle involved in it is fatal to the patent now plugs with Smith's name impressed on it, which We think that the alleged process of Smith is laws. garded in the construction of each alteration, and 1. The whole tariff revenue system must be reno disturbance allowed of existing legislative rules of general application beyond the clear intention of Congress. sario showed the value to be above twelve cents Argued Dec. 4, 1885. Decided Dec. 14, 1885. Statement of the case by Mr. Justice Matthews: This is an action brought by the plaintiff in error to recover duties on certain importations of wool, alleged to have been illegally assessed, in which judgment was rendered for the defendant, brought here for review by this writ of error. In the circuit court judgment was rendered upon an agreed statement of facts, set out in the record, as follows: The plaintiff, in August, 1873, imported into the Port of Boston from Rosario, by the bark But it is not necessary to rely on this branch Velox, 324 bales of unwashed Cordova wool of the case alone. Leaving the evidence in and entered it in bond. It subsequently withrelation to Smith's process out of the case, the drew the same for consumption. The defendstate of the art at the time of Miller and Wor-ant, as Collector of Customs, assessed and exley's application for a patent, as already pointed out, was such as to leave no ground for its issue. What more did they do, at most, than to apply a process of stamping tobacco, which was already well known, to the same tobacco at a later stage in the process of manufacture? Did this entitle them to a patent? According to the ruling of this court in Pa. R. R. Co. v. Locomotive, etc. Truck Co. 110 U. S. 490 [Bk. 28, L. ed. 222], this question must be answered in the negative. That case is precisely in point The contrivance for allowing the cars, in rounding a curve, to have a lateral motion so as to counteract the tendency to depart from the track, had been applied to passenger cars but not to locomotives. Smith, the patentee in that case, obtained a patent for applying that same device to locomotives. We decided the patent to be void and held, in general terms, that "The application of an old process or machine to a similar or analogous subject, with no change in the manner of applying it and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result has not before been contemplated." We adhere to that ruling; and the acted of the plaintiff a duty of six cents per pound less 10 per centum on this wool upon the appraisement as hereinafter set forth. The plaintiff claimed that this wool was only legally liable to a duty of three cents per pound less 10 per centum, and paid the extra three cents per pound under due protest, and seasonably appealed to the Secretary of the Treasury, who affirmed the decision and action of the defendant. In due time and in conformity to law plaintiff brought this action to recover the extra three cents per pound less 10 per centum. The pleadings may be referred to. As it ap pears by the invoice, this wool was bought in Rosario on the 28th day of March, 1873, and was shipped at Rosario on board The Velox for Boston on the 5th day of June, 1873, and the invoice was sworn to before the acting United States Consul on the 9th day of June, 1873. Rosario was the last port from whence it was exported to the United States, and it was invoiced there and entered at the custom house in Boston at the price paid for it in the currency and weight in which it was bought, which, upon being reduced to United Stats of the same class, the value whereof at the last port or place whence exported to the United States, including charges in such port, shall exceed twelve cents per pound, the duty shall be six cents per pound. " currency and weight, showed the cost to be "U. S. Consulate, Rosario, June 10, 1873. "Given under my hand and seal, this day. Acting U. S. Consul." assessor to be appointed by the court, and Mr. Charles Levi Woodbury, for plaint- Mr. Wm. A. Maury, Asst. Atty-Gen., for defendant in error. Mr. Justice Matthews delivered the opinion of the court: The duties chargeable upon the importations Which, being reduced to United States portation, inasmuch as the invoice showed the As the value of the wool in question, at the last port or place whence exported into the [17] [17] [18] We The decree of the Circuit Court is affirmed. James H. McKenney, Clerk, Sup. Court, U.S. SAXONVILLE MILLS, Piff. in Err., [13] v. THOMAS RUSSELL, Late Collector of Bee S. C., Reporter's ed., 13-21.) lars. garded in the construction of each alteration, and 1. The whole tariff revenue system must be reno disturbance allowed of existing legislative rules of general application beyond the clear intention of Congress. to the conclusion that it was to be believed, and | principle involved in it is fatal to the patent now We think that the alleged process of Smith is But it is not necessary to rely on this branch of the case alone. Leaving the evidence in relation to Smith's process out of the case, the state of the art at the time of Miller and Worley's application for a patent, as already pointed out, was such as to leave no ground for its issue. What more did they do, at most, than to apply a process of stamping tobacco, which was already well known, to the same tobacco at a later stage in the process of manufacture? Did this entitle them to a patent? According to the ruling of this court in Pa. R. R. Co. v. Locomotive, etc. Truck Co. 110 U. S. 490 [Bk. 28, L. ed. 222], this question must be answered in the negative. That case is precisely in point The contrivance for allowing the cars, in rounding a curve, to have a lateral motion so as to counteract the tendency to depart from the track, had been applied to passenger cars but not to locomotives. Smith, the patentee in that case, obtained a patent for applying that same device to locomotives. We decided the patent to be void and held, in general terms, that "The application of an old process or machine to a similar or analogous subject, with no change in the manner of applying it and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result has not before been contemplated." We adhere to that ruling; and the 2. Where the invoice of wool shipped from Rosario showed the value to be above twelve cente per pound, it is held to be subject under the stat utes to a duty of six cents per pound, less 10 per market value was less than twelve cents per pound. centum, although at the time of shipment the [No. 81.] Argued Dec. 4, 1885. Decided Dec. 14, 1885. INERRCR to the Circuit Court of the United States for the District of Massachusetts. Statement of the case by Mr. Justice Matthews: This is an action brought by the plaintiff in error to recover duties on certain importations of wool, alleged to have been illegally assessed, in which judgment was rendered for the defendant, brought here for review by this writ of error. In the circuit court judgment was rendered upon an agreed statement of facts, set out in the record, as follows: [13] The plaintiff, in August, 1873, imported into the Port of Boston from Rosario, by the bark Velox, 324 bales of unwashed Cordova wool and entered it in bond. It subsequently with drew the same for consumption. The defendant, as Collector of Customs, assessed and exacted of the plaintiff a duty of six cents per pound less 10 per centum on this wool upon the appraisement as hereinafter set forth. The plaintiff claimed that this wool was only legally liable to a duty of three cents per pound less 10 per centum, and paid the extra three cents per pound under due protest, and seasonably appealed to the Secretary of the Treasury, who affirmed the decision and action of the defendant. In due time and in conformity to law plaintiff brought this action to recover the extra three cents per pound less 10 per centum. The pleadings may be referred to. As it ap pears by the invoice, this wool was bought in Rosario on the 28th day of March, 1873, and was shipped at Rosario on board The Velos for Boston on the 5th day of June, 1873, and the invoice was sworn to before the acting United States Consul on the 9th day of June, 1873. Rosario was the last port from whence [15] it was exported to the United States, and it was invoiced there and entered at the custom house in Boston at the price paid for it in the cur rency and weight in which it was bought, which, upon being reduced to United Stats 116 U.S. [14] |