T. M. Wheeler, for bankrupt.

C. W. Bangs, for opposing creditor.

CHOATE, D. J. This is an application for the discharge of George M. Wheeler, one of the bankrupts. Several specifications have been filed in opposition to the discharge. A preliminary objection is taken that the petition for discharge was prematurely filed, and must be therefore dismissed. Wheeler was adjudicated a bankrupt on his own petition, August 14, 1877. The petition for his discharge was filed on the twentieth of December, 1877. Under this adjudication a first meeting of creditors was called and held, but it did not result in the appointment of an assignee, because, meanwhile, proceedings had been taken for including William Bailey Lang, who had been a copartner of Wheeler, in the adjudication; and, on the seventeenth of November, 1877, Lang and the firm of W. Bailey Lang & Co. were also adjudicated, and thereupon a warrant issued to call a meeting of the creditors of both bankrupts, which was held on the twentieth of December, 1877, at which an assignee was elected, who qualified and received an asssignment on the twenty-sixth of December, 1877. There was, therefore, no assignee at the time the petition was filed. Prior to the filing of the petition for discharge debts had been proved against the bankrupt. The statute provides (Rev. St. 5108) that "at any time after the expiration of six months from the adjudication of bankruptcy, or if no debts have been proved against the bankrupt, or if no assets have come to the hands of the assignee at any time after 60 days, the bankrupt may apply to the court for a discharge." I think it is clear that no application for a discharge can properly be made within six months after the adjudication, if debts have been proved, unless there is an assignee duly qualified to act; because, until there is an assignee, it cannot be ascertained that no assets have come to his hands within the meaning of the statute. The form of the petition prescribed by the supreme court, in case it is presented within less than six months, shows clearly that this was the view entertained by

the court, (form 51.) It is there noted that in such case the petition should itself state that "no debts have been proved against the bankrupt, or that no assets have come to the hands of the assignee." If, however, it were regular to file the petition within six months after adjudication in case debts have been proved, and without the appointment of an assignee, I think the proof in this case is that, if there had been an assignee at the time of the filing of the petition, there would have been assets in his hands. The petition having been filed before the statute permitted it to be filed, no discharge can be granted. It is suggested that the opposing creditor has waived this objection by proceeding with the taking of testimony under the specifications, but the opposing creditor took the objection in his specifications, and I do not think he can waive the objection if he wishes to do so. For the protection of all the creditors, the court is bound to see that the bankrupt has complied with the conditions of the statute which are requisite to the granting of his discharge; and, if the record shows that he has not done so, the discharge cannot be granted. Either party could have brought · this point to the attention of the court before expending so much time and money in the taking of testimony. It is certainly no more the fault of the opposing creditor than it is of the bankrupt that the matter was not sooner brought to the attention of the court. It becomes unnecessary, therefore, to consider the other questions which arise under the specifications to the merits, since they may not arise in the case again if a new petition should be filed.

Petition dismissed, without costs to either party as against the other.

STEWART v. MAHONEY.

(Circuit Court, D. Massachusetts. January 28, 1879.)

1. INVENTION-NEW RESULT.-Where an invention involves a new result first thought of by the patentee, the fact that the mechanical changes by which the result is produced are not difficult is not necessarily important.

2. DEVICE PATENTABLE AS PART OF COMBINATION-GENERAL CLAIM.— Where a device is patentable only as used in connection with a particular combination, the claim for such device must limit it to the particular combination of which it so forms a part.

3. PATENT-RE-ISSUE NO. 6,076-IMPROVEMENT IN FOLDING CHAIRS— CLAIM TOO BROAD.-In a re-issued patent for improvements in folding chairs two claims were made-the first being for the combination with the leg frames of a folding chair, in which the front leg frame was independent of the seat, of a back frame connected at the lower end to the rear legs and at the upper end of the front legs frame by means of pivots, whereby the legs were prevented from spreading when the chair was opened, and admitting of being folded compactly together when closed; and, second, for a combination with the back frame of a folding chair, provided with an independent back section, of a stretcher attached thereto for supporting the rear of the seat, whereby the strain of the seat was received directly on the back. The simple device of a stretcher in the back of folding chairs as a support for the seat was not novel. Held, that the second claim, as made in the patent, would not, for the purpose of sustaining it, be construed as confined to the class of chairs described.

4. INFRINGEMENT-PATENT INVALID IN PART-Costs-REV. ST. § 4922. In a suit for infringement, a patent containing two claims was, as to one claim, held invalid, and as to the other sustained. Held that, under Rev. St. § 4922, complainant was not entitled to costs.

In Equity.

James E. Maynadier, for complainant.

Thomas H. Dodge, for defendant.

Suit for infringement of letters patent No. 102,179, dated April 19, 1870,-re-issue No. 6,076, dated October, 1874,— for new and useful improvement in folding chairs.

This was a patent for a folding chair made by a combination of two frames formed by two pairs of crossing legs, with connecting stretchers, and pivoted at point of crossing; and a

*Published by request. Reported by Homer C. Eller, Esq., of the St. Paul bar

back frame, consisting of two parts, with connecting stretchers, the posts forming the back being hinged or pivoted to the frame and forming the rear legs, and pivoted to the upper end of the frame forming the front legs, so fastened and arranged as to readily fold up, and when opened to prevent the legs from spreading, a connecting stretcher in the back frame being so placed as to form a support for the rear of the seat. The claims were as follows:

First. The combination with the leg frames of a folding chair, in which the front leg frame is independent of the seat, of a back frame connected at its lower end to the rear legs, and to the upper end of the front legs frame by means of a pivot, whereby the legs are prevented from spreading when the chair is opened, and admit of being folded compactly together when closed, as and for the purpose specified.

Second. The combination with the back frame of a folding chair, provided with an independent back section, of a stretcher attached thereto for supporting the rear of the seat, whereby the strain of such seat is received directly upon the back, substantially as described.

LOWELL, C. J. The patentee and complainant relies on both claims of his patent, and upon an infringement of both by the defendant.

His second claim is: "The combination with the back frame of a folding chair, provided with an independent back section, of a stretcher attached thereto for supporting the rear of the seat, whereby the strain of such seat is received directly upon the back, substantially as described." A chair is produced and made an exhibit, as "George Hunzenger's folding chair," which the complainant admits was made and sold before the date of his invention, which contains the combination of the second claim, unless that claim should be construed as confined to a chair having an arrangement not described in the claim itself; that is, to such chairs, and only such, as are the subject of the first claim. I see no ground for thus limiting the second claim, which would seem to have been made broad on purpose to include a class or classes of chairs not included in the first claim. If this were not the purpose, it

would have been more convenient and obvious to say so, instead of giving a description of folding chairs, which embraces a larger number.

It was said at the hearing that Judge Shepley had pronounced an unhesitating opinion that this claim was void. I so hold.

Unfortunately my predecessor, though he heard a reargument upon the first claim, did not decide that part of the case. His impression, perhaps, was that this claim was likewise void; but he gave no opinion, and rendered no general decree in the case.

I have examined the evidence and the arguments with care, and I am of opinion that there was both novelty and utility in the subject of the first claim, and that it has been infringed. Many chairs had been made that resembled the plaintiff's in many particulars, and which might easily have been so modified as to embody his invention; but they do not appear to have been so modified before his time.

The question of novelty, including in that word the discovery or invention which will be sufficient to support a patent, is often a very difficult one to decide. Invention often involves a new result, first thought of by the patentee; and in such cases the fact that the mechanical changes he has made are not difficult, is often unimportant. The cases in which invention is wanting are usually those in which the result is old in kind, and the change of means is obvious, or has been used in analogous machines or articles, and then the smallness of the change is very likely to be decisive against the patent.

This case seems to me to fall within the former class.

By Rev. St. § 4922, the complainant cannot recover costs. Decree for the complainant, without costs.