mechanism or located on the rotary feed-wheel, while the former cover broadly a construction actuated by a cam or device rotating in unison with the clamp-operating cam or disk for throwing the cutter or depressor into action.

While it is true that the device of defendant is so constructed that it is not dependent upon the jogging motion of the feed-wheel mechanism for the determination of the number of strokes of the cutter, and while it is true that the complainant's device is thus dependent, yet the specifications do not necessarily describe a controller which thus determines the engagement, or, if they do, they also describe a pin on the feed-wheel which operates, as aforesaid, to start such engagement, and the claims 21 and 22 cover the finger device used merely as a starter and nothing more. They do not claim or refer to any control thereafter. I think defendant, by means of its modified or added devices, may have constructed a better machine than that of complainant, and the later Osterhout and Hallenbeck construction confirms this view; but from a comparison of the two machines it appears that in the features which are common the defendant has appropriated devices first conceived and created by Osterhout and unlike anything in the prior art.

The features comprised in claims 21 and 22 of a normally-elevated cntter positively connected with and unyieldingly actuated and depressed at a certain time by a depressor operated through or by means of the needle-bar-actuating mechanism, and a cam or device operating or rotating in unison with the feed-cam, whereby the cutter is thrown into action, are found both in complainant's and defendant's machine. If, therefore, it be necessary to limit certain claims of the patent to a cutter-controller which determines the duration of the cutting period, as is claimed by defendant, yet inasmuch as the specification describes, and claims 21 and 22 broadly cover, such combination used as a starter and nothing more, I think these claims are infringed by defendant. These claims were put in interference with the Tebbetts and Doggett patent, and the applicants for the latter made default, whereupon the Patent Office awarded said claims priority over Tebbetts and Doggett. Counsel for complainant argues that defendant thereby conceded patentability of its invention, and that defendant's patent infringed said claims. I do not so understand the law. The object of the interference proceedings is to determine priority, not patentability; and while the decision in interference proceedings may be res adjudicata as to this question it does not preclude defendant from raising other questions not in issue in said proceedings. (Holliday v. Pickhardt, 29 Fed. Rep., 853; Christie v. Seybold, C. D., 1893, 515; 640. G., 1650; 6 U. S. App., 520; Electric Ry. Co. v. Jamaica & B. R. Co., C. D., 1894, 406; 68 O. G., 769; 61 Fed. Rep., 655; Reece Button-Hole Mch. Co. v. Globe Button-Hole Meh. Co, C. D., 1894, 360; 67 O. G., 1720; 61 Fed. Rep., 958.) But the decision of the Patent Office effectually disposes of defendant's claims

of priority so far as they are based upon the Tebbetts and Doggett patent. Claims 21 and 22 were originally drawn by counsel for defendant as part of the Tebbetts and Doggett application. The Patent Office adopted them as a basis for interference with the patent in suit. All the prior patents, except the Ostrom corder patent, were cited as references in said interference. Defendant's counsel did not move to dissolve, but defaulted and acquiesced in the decision of the Patent Office awarding priority of invention to Osterhout. The Osterhout and Tebbetts and Doggett machines are the only practical buttonhole stitching and cutting machines now in practical operation, except the Reece machine, which is not relevant in this connection, owing to its totally different construction.

The considerations already suggested apply to defendant's argument that the application was improperly enlarged during its pendency in the Patent Office. That the invention infringed by defendant was disclosed in the original application and covered in its claims, and that it was not limited to a dependence upon the jogging movement, is clear from the language thereof. That claims 21 and 22 were not inserted to subordinate defendant's prior machine has been adjudicated by the Patent Office. It has not been proved that Egge was prior to Osterhout. Irrespective of the fact that his machine was defective and nonautomatic, its construction was so unlike the combination covered by claims 21 and 22 that there was manifestly no enlargement to cover it; but in further support of the defense of non-infringement of any of the claims defendant contends that the original Osterhout application contemplated a cutter actuated only when the finger is thrown into coaction with its follower; that the snail-cam on defendant's device positively throws its vertical rocker-shaft out of engagement with the startingpin as soon as the cutting operation is set in motion; that Osterhout in his patent says: "I control by a controller on the feed-wheel," while Tebbetts and Doggett say

we do not control by a controller on the feed-wheel, but merely push the button so as to put the controller in engagement with the train of operative mechanism and subsequent operation, and eliminate all control from the pin or controller on said wheel;

that in the present operative machine of complainant it has been obliged to take away the control of the cutting operation from the controller, in order to get the best results, and that although a machine can be devised which shall be operative, as already stated, in the hands of an expert or skilled operator, when constructed on the principle of the original Osterhout machine, yet that it requires such nice adjustments as not to be capable of use in the ordinary factory, as shown by the patent granted to said Osterhout and one Hallenbeck as joint inventors, and, finally, counsel for defendant insists that if the claims of the patent in suit are to be so broadly construed as to make defendant's machine an infringement they also cover the invention in said prior

patent to Osterhout and Hallenbeck, and that therefore within the rule laid down in Miller v. Eagle Mfg. Co. (C. D., 1894, 147; 66 O. G., 845; 151 U. S., 186) the patent in suit is void, because the invention therein claimed has been shown, described, and claimed in said Patent No. 402,610, granted to said Osterhout and Hallenback May 7, 1889. But while it may be true that the cutter is actuated only when the finger is thrown into engagement with its follower, said finger does not determine the period of any one engagement of the cutter-bar and depressor, but only the number of engagements, as already stated. The same function is performed by defendant's snail-cam. As this is a different mechanical construction, I think its substitution supports the defense as to all the claims except Nos. 21 and 22. The same may be said as to the above language used by the respective patentees.

The machines now used by complainant are manufactured in accordance with said Osterhout and Hallenbeck patent. This has a lug or controller, called in the patent a "trip," which is similar to the controller of the original Osterhout machine; but when said lug engages with said lever it causes another vertical lever to rock and permit a parallel bar to engage with an oscillating stud or follower for the purpose of connecting the two members of the clutch device upon the needle bar and cutter-bar, respectively. Thereupon the descent of the needle-bar causes a descent of the cutter. The backward movement of the switch-cam on the main shaft causes a movement of the parallel bar, which disengages the clutch, and thus the bar is caused to ride up an incline of an auxiliary lever attached to said vertical lever, thus positively preventing any further connection with or operation of the cutter. When the lug on the feed-wheel disk passes out of engagement with the primary lever, the vertical lever assumes its normal position. Assuming that complainant's original device was somewhat defective, yet it is admitted that it was capable of continuous successful practical operation. Osterhout and Hallenbeck have made improvements on it in one way and have obtained a patent therefor. Tebbetts and Doggett have made and patented other improvements; but notwithstanding the doubts cast upon some of Osterhout's early experiments the evidence strongly confirms the view that he first discloses the combination and certain valuable features thereof described in his original application. So far as said combination is concerned I concur with complainant's expert in his statement that

It is clear from the records of both parties that Osterhout was the first man to produce a buttonhole stitching and cutting machine which had a cutter normally elevated and out of use; a depressor for positively and unyieldingly forcing the cutter through the work; a controller for effecting the engagement of the depressor with the cutter-carrier, aud connections intermediate the controller and the cutter-carrier for engaging the latter with the depressor.

The distinctive features of the Osterhout and Hallenbeck machine, already, stated, show that it embodies specific and distinct devices adapted to carry out the generic invention of the patent in suit in certain special classes of machines.

In Miller v. Eagle Co., supra, it appears from the opinion of the court and the disclaimer of the patent that the court had before it a compar atively narrow and limited invention, and it found that the entire invention, including the part or function claimed in the second patent, was described and claimed in the first patent. The Court says:

The broad idea sought to be reserved is embodied in identically the same mechanical device constituting the invention and covered by the first patent.

The question of identity of invention depends upon the scope of the claims. Mr. Walker, in the last edition of his work on patents, tersely and accurately states the rule deducible from the Miller v. Eagle Co. case and applicable herein, as follows:

Claims are coextensive which specify the same combination, of the same number, of the same parts with the same features, though the functions which are mentioned in the claims are not coextensive. That was held to be the character of the respective claims of two patents to the same inventor, in the case of Miller v. Eagle Co., and therefore the second of these patents was held to have been granted for the same invention as the first, and to be void. But two claims are not coextensive which specify different combinations of parts of a process, machine, or manufacture, even where some of those parts are in each of the combinations.

The inventions here claimed are distinct and are distinctly patentable; but defendant further urges that the effect of sustaining these claims would be to prolong the monopoly of the Osterhout and Hallenbeck patent beyond the statutory period of seventeen years.

In several recent cases in this court in which Miller v. Eagle Co. has been cited, this argument has been pressed as a ground for extending the scope of said case beyond the actual decision of the court, and for declaring a new interpretation of the law. But this would not only be violative of the express declaration of the Supreme Court that its decision therein was in accordance with the rule settled by its previous decisions, but such a construction would amount to judicial legislation. It is not the duty of the court to thus change the law, but only to interpret it as it exists. (Bate Refrigerating Co. v. Sulzberger, C. D., 1895, 233; 70 O. G., 1633; 157 U. S., 1.)

The same questions as are involved herein were carefully considered by me in the case of Thomson-Houston El. Co. v. Winchester Ave. Railroad Co. (C. D., 1895, 788; 73 O. G., 2155.) The material facts bearing on this issue are practically the same, except that in that case both patents were granted to the same inventor. The application for the patent in suit herein was filed in December, 1885. While this applica tion was delayed by interferences, the Osterhout and Hallenbeck application was filed. Even if it be admitted, as defendant contends, that the same rules are applicable in the present case, where the subsequent patent issued to joint inventors, I see no reason to modify the following language of my former opinion:

This patent for this specific combination adapted and claimed only for this specific purpose, applied for October 22, 1888, after the original application had been allowed, but before the patent thereon was granted, was earlier in the date of issue. The original application was delayed by interference proceedings in the Patent Office. H. Doc. 354--18

Whatever may be the rule as to cases where the application for the generic patent was filed subsequent to the application for the specific patent, I do not think the patentee should be deprived of his broad patent where the application for such patent was made first and was delayed in the Patent Office through no fault of the inventor. Such a ruling would be a reproach to the law.

It is not necessary for the decision of this case to extend the principle of said decision in said case of Thomson-Houston El. Co. v. Winchester Ave. Railroad Company-namely, that when a prior application for a generic patent has been delayed in the Patent Office without the fault of the applicant the grant of a subsequent patent for a specific, distinct, and separate improvement upon the principal patent will not invalidate a patent subsequently issued upon the original application. Let a decree be entered for an injunction and accounting as to claims 21 and 22 of the patent in suit.

[Supreme Court of the United States.]

DURHAM v. SEYMOUR, COMMISSIONER OF PATENTS.

Decided March 2, 1896.

74 O. G., 1731.

APPEAL TO SUPREME COURT From Court of APPEALS-APPLICATION FOR Patent

MONEY VALUE-JURISDICTION.

The Supreme Court of the United States will not take jurisdiction on appeal of applications for patents in view of the provisions in relation to appeals from the Circuit Courts of Appeåls under the act of March 3, 1891, as the right to apply for a patent and the invention cannot be regarded for jurisdictional purposes as in itself property or a right of property having an actual value susceptible of estimation in money.

APPEAL from the Court of Appeals for the District of Columbia.

Mr. Don M. Dickinson and Mr. J. Nota McGill for the appellant.
Mr. Levin H. Campbell for the appellee.

STATEMENT OF THE CASE.

This was a bill brought by Caleb W. Durham, under the provisions of section 4915 of the Revised Statutes, in the Supreme Court of the District of Columbia, to obtain a decree authorizing the Commissioner of Patents to issue a patent to him for an improved drainage apparatus for buildings. The Supreme Court adjudged on the evidence that Durham was not entitled to a decree, and dismissed the bill, whereupon he carried the case by appeal to the Court of Appeals for the District of Columbia, and that court affirmed the decision of the court below. From this decree an appeal was taken to this Court, and a motion was made to dismiss the appeal for want of jurisdiction.

Section 4915 is as follows:

Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court