Opinion of the court.

if it be maintained, it matters not by what process or machinery the result is accomplished. Another may possibly discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in plaintiff's specification. Yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it, &c. The court is of opinion it is too broad and not warranted by law."

In this case we have an attempt to convert an improved machine into an abstraction, a principle or mode of operation, or a still more vague and indefinite entity often resorted to in argument, an "idea." Those who use the latter term seem to have no fixed idea of what they mean by it. But it may be used as successfully to mystify a plain matter as the words used in the specification.

The Patent Bureau in this country is composed of men of scientific attainments, who examine the merits of every claimant of a patent, and decide whether in their opinion it attempts to claim a monopoly of things before known or invented. They are not expected, as formerly, to grant a patent without inquiring, to every applicant who is ready to pay the fees. Such a course of conduct would be highly injurious to the public, by furnishing means to impose on the public by false pretenses, and with threats of expensive and ruinous litigation.

The surrender of valid patents, and the granting of reissued patents thereon, with expanded or equivocal claims, where the original was clearly neither "inoperative nor invalid," and whose specification is neither "defective nor insufficient," is a great abuse of the privilege granted by the statute, and productive of great injury to the public. This privilege was not given to the patentee or his assignee in order that the patent may be rendered more elastic or expansive, and therefore more "available" for the suppression of all other inventions.

We concur, therefore, in the decision of the Circuit Court, that the machine of Boyden is not an infringement of the invention of Wells; and if it be an infringement of the reissued patent, that patent is void.

2. The bill claims, also, for an infringement of Wells's reissued patent for his process. This has not been much insisted on. The respondents contend that it is void, being for the same invention patented to Ponsford, in England, in 1839, and known to Wells, who was at the time in England. This allegation we find to be fully supported by the evidence, and decide accordingly.

DECREE AFFIRMED WITH COSTS.

Statement of the case.

NOTE.

At the same time with the preceding cases, or rather immediately afterwards, two other cases, appeals from the New Jersey district, between the same parties and relating to the same general subject of hat-bodies, were heard; the same counsel who had argued the first and principal case, arguing these two also; though not at length, as from the fact already mentioned, to wit, that the principles involved were the same, it was understood that the decision of these two would follow the decision of the first and principal case. The first of these two cases decided simply a point of fact, to wit, that the machine known as the "Boyden machine," and so largely discussed in the principal case, was not an infringement of a patent granted in the same department of manufacture to a certain Hopkins: no reasons being assigned; GRIER, J., who delivered the opinion of the court, remarking that, while their honors had come to a conclusion satisfactory to their own minds, it was impracticable to "vindicate" it without the use of the "large museum of exhibits in the shape of machines and models" which had been presented on the argument of all these three cases, and which were absolutely necessary to give the court a proper understanding of the merits of the controversy." The result, therefore, was stated; the curious being referred for reasons to those given by the defendant's witness, Mr. Tred well, examined in the case. This decree, too, was affirmed with costs.

The other of the two cases admits of a certain kind of report, now given, as on the three pages which follow.

SAME V. SAME.

No. 231.

The "Boyden machine" does not infringe the patent of A. B. Taylor. The practice of reissuing patents for the purpose of interpolating abstract generalizations, so as to cover subsequent inventions made by others, is condemned.

BILL in chancery, by which the complainant charged that the defendants were using a certain machine for the manufacture of hat-bodies, which infringed a patent originally granted in 1856 to a certain A. B. Taylor, and subsequently, in 1860, reissued, for hardening the bodies of hats by means of rollers while on the perforated cone upon which they had been formed, with a contrivance to give them the reciprocating motion required in the operation of being hardened. In the original patent of Taylor, of 1856, the

Opinion of the court.

claim was limited to his "arrangement" for hardening the body in a dry state, by "machinery operating substantially as set forth.” The complainant, who had purchased this patent, afterwards, however, saw the machine known as Boyden's, and more particularly described in the preceding case. He then (1860) surrendered his patent and obtained a reissue, in which he altered his claim of invention from an "arrangement of machinery" to a claim for a "vibrating concave surface."

The difference between the invention as claimed in the original patent, and as subsequently set forth, as well as the general nature of his invention and claim, will appear more minutely by the juxtaposition of them in parallel columns.

Original Patent, 1856.

The object of my improvements is to harden the bat sufficiently to permit it to be removed from the perforated cone without the application of water, and to facilitate the removal of the bat from the cone without requiring the latter to be taken from its position in the machine. These improvements consist in a mechanical process of hardening the bat before it is removed from the cone, and in facilitating the removal of the bat from the cone by means of a blast of air forced through the cone. There are also various improvements in the arrangement and construction of the machinery devised by me, as will hereinafter more fully appear.

Claim.

What I claim as my invention and desire to secure by letters patent, is the arrangement for hardening the hat-body in a dry state, by machinery operating substantially as herein set forth.

Reissue, 1860.

My said invention, which relates to the hardening of the bat on the pervious cone on which it is formed, and while the fibres constituting the bat are held to the surface of the cone by the pressure of the surrounding air, consists in combining with a perforated cone, on which the bat of the fibres is held by the pressure of the surrounding air, a vibrating concave surface, held by pressure, so as to act on the convex surface of the bat as it is vibrated, by means of which combination a large segment of the bat, along its entire length, is acted upon at once by the concave surface, while, by the rotation, every part of the circumference is brought, in succession, under the hardening operation.

Claim.

What I claim as my invention is, the combination of a vibrating concave surface, substantially as described, with an exhausted pervious cone, on which the bat of flocculent fibres is held by the pressure of the surrounding air, substantially as and for the purpose specified.

The argument was chiefly upon the points, how far the reissue was for a principle or function as distinguished from a machine, and how far such a patent was valid; and also whether the reissue was or was not for the same thing granted in the original patent; matters discussed much more fully in the principal case.

Mr. Justice GRIER delivered the opinion of the court. After the observations made in the preceding and principal case, it is not necessary to make further remarks on the art of extending

Opinion of the court.

patents. It may be ranked "INTER INGENUAS ARTES," and may have the claim of novelty, if not of usefulness.

In this case the invention of Taylor was the application of pressure by means of rollers, with a contrivance to give them the reciprocating motion necessary to this process of hardening. He was not the inventor of the conical cover used in hardening hat-bodies formed on a cone, nor of rubbing them by a reciprocating motion, but merely of a certain combination of devices to produce a certain effect. Both the operation and the result were well known, and the invention consisted only of the devices combined to perform the operation and produce the result. It was open to every other person to make any other combination of devices to perform the operation, which was not a mere colorable adoption of the patentee's combination. The original specification of Taylor is drawn with sufficient care and judgment to cover all the patentee knew he had invented, and the whole machine as described therein.

A comparison of the devices used in the two machines would be unintelligible without models or drawings. The Taylor patent is but for a form, or rather a combination of known devices, to perform a certain operation and produce a certain desirable effect. The combination used by Boyden is not a mere colorable or substantial adoption of the same combination of devices. It has as much claim to originality as that of Taylor; but it has a vibrating concave surface of cloth, pressing against the cone. Accordingly, the reissued patent to Taylor, or rather to Burr, got up after an examination of Boyden's machine, contained this interpolation in the description of his invention, "A vibrating concave surface held by pressure," &c., &c.; and the claim extended to the "combination of a vibrating concave surface;" then follow the words, "substantially as described." In a contest with a previous patent, the last words can be called in to qualify the first, and narrow it down to the peculiar combination of devices described; while, in assaulting a new combination, for the purpose of suppressing it, the claim may be stretched to cover every machine having a "concave vibrating surface," by calling all the other parts "equivalents."

It is plain that this interpolation of an abstract generalization, to render the specific description of the concrete machine more elastic, was suggested by an examination of the Boyden machine. If the same construction be given to the claim of Taylor, as it would necessarily invoke a contest with preceding inventions, to save it from the charge of being too broad, the Boyden machine would be properly pronounced as no infringement: on the contrary, such a construction of it as would include the Boyden machine, would

Argument in favor of the motion.

make it void for being too broad.

It matters little on which horn

of this dilemma the case be put, the result must necessarily be the

same.

DECREE AFFIRMED WITH COSTS.

HUMISTON V. STAINTHORP.

(2 Wallace, 106.)

A decree in chancery, awarding to a patentee a permanent injunction, and for an account of gains and profits, and that the cause be referred to a master to take and state the amount, and to report to the court, is not a final decree, within the meaning of the act of Congress allowing an appeal on a final decree to this court.

STAINTHORP and Seguin had filed a bill in the Circuit Court for the Northern District of New York, against Humiston, for infringing a patent for moulding candles; and had obtained a decree against him.

The decree was that the complainants were entitled to a permanent injunction, and for an account of gains and profits, and that the cause be referred to a master to take and state the amount and report to the court.

A motion was now made to dismiss the cause for want of jurisdiction.

Mr. Gifford, in favor of the motion of dismissal: An appeal lies only from a final decree; this is an interlocutory one. A final decree in equity is one which finally decides and disposes of the whole merits of the case, and reserves no questions or directions for the future judgment of the court from which an appeal could be taken. This court will not allow a case to be divided up into a plurality of appeals.

In The Palmyra, 10 Wheaton, 502, restitution with costs and damages was decreed, and an appeal taken before the damages had been assessed. The court held that the decree was not final, and dismissed it. They say, "The decree of the Circuit Court was not final in the sense of the act of Congress. The damages remain undisposed of, and an appeal may still lie upon that part of the decree awarding damages.

The case of Barnard et al. v. Gibson, 7 Howard, 650, was one on letters patent. The decree referred it to a master to ascertain and report the damages. An appeal was taken; a motion made to dismiss it, and the motion was granted. The court say, "The decree