Opinion of Clifford, J., dissenting.

the issue in favor of the plaintiff. Questions of fact are certainly for the jury, and it is too plain for argument that the finding of the jury cannot be revised here under a bill of exceptions. Suppose, however, it were otherwise, still it would be impossible to come to any other conclusion than that their finding is right.

Take the Garnar machine, which is the first in order as the evidence is exhibited in the bill of exception. Evidence was introduced by the plaintiff, showing not only that the machine differed from the machine of the plaintiff, but that it operated in a substantially different manner, and produced a substantially different effect upon the leather, which must be obvious, upon comparing the two machines, to every one having any acquaintance with the subject. Equally decisive evidence was also introduced by the plaintiff showing that the Green machine did not supersede his patent. Among other things the plaintiff proved that the figuring instrument described in that patent was not a revolving instrument, but an instrument for rubbing the leather, as appears by the model; that the adaptation of the pebbling roller to that machine, so that the same could be practically used therein, would require invention and was not within the common knowledge and skill of a mechanic, and that a figured, rotating cylinder, such as is described in the plaintiff's patent, had not in fact been introduced and operated in that machine prior to the plaintiff's invention.

Remark upon the question of infringement is not necessary, as that issue was found by the jury for the plaintiff, and there is no exception calling for any review of the instructions given by the

court.

Suggestion is made in the opinion just read that perhaps the judgment might be reversed upon the ground that the invention was not patentable. Many v. Jagger, 1 Blatchford, 372; Wilbur v. Beecher, 2 Id., 132. Patented inventions which are not new and useful, or which did not require any invention as compared with what existed, and was in use before, may doubtless be held invalid on that account, but the question whether a particular invention is new and useful, or whether it did require any invention to produce it, as compared with what existed before, are everywhere admitted to be questions of fact for the jury, and certainly no such question is open here for the determination of this court under this bill of exceptions. Curtis on Patents, § 41; Lowell v. Lewis, 1 Mason, 182; Winans v. Railroad, 2 Blatchford, 297; Bedford v. Hunt, 1 Mason, 302; Hall v. Wiles, 2 Blatchford, 194. Such a remark cannot have been well considered, as the authorities are all the other way; but

Syllabus.

if it were otherwise the bill of exceptions shows that the finding of the jury was right, as it appears that the pebble finish can be made cheaper and better by the plaintiff's machine than by any other machine or instrument known in the trade, which is a complete answer to both suggestions.

Valuable as the property of the plaintiff in this invention is, I cannot concur in the judgment which assigns it to an infringer. Most modern patents are for new combinations of old elements, just like the present one, but many of them are of great utility, and they are as much within the protection of the patent law as those of any other class. Union Sugar Refinery v. Matthiessen, 2 Fisher, 605. Such patents being for the combination only, no one can be held liable for infringing the invention, unless it be shown that the infringer uses all of the elements which compose the combination, showing that the public have the most ample security that nothing will be protected by the patent, except what was in fact invented by the patentee. Prouty v. Ruggles, 16 Peters, 341; Carver v. Hyde, Ib., 520; Stimpson v. Railroad, 10 Howard, 346; Barrett v. Hall, 1 Mason, 477; Howe v. Abbott, 2 Story, 194.

Where an invention is for distinct combinations which are separable, and where it embraces two distinct improvements, one having respect to the operative part of the machine and the other to the motive power, it is entirely competent for the Commissioner to grant separate claims for the two combinations in the same patent, or he may, under existing laws, grant separate patents for each combination, if it is new and produces a new and useful result.

Two combinations are embraced in this patent: one consisting of a combination of certain described mechanical devices with the roller to do the work of pebbling the leather, the other consists of the described combination to raise and lower the table; and the one last named is admitted to be new and useful, and therefore valid, but the opinion of the court surrenders the first one to infringers, and of course the property of the inventor is rendered of no value.

CLARK V. BOUSFIELD.

(10 Wallace, 133.)

A claim for arranging an elastic bed for printing designs, is not a claim for a design under the eleventh section of the act of March 2d, 1861, entitled "An act in addition to an act to promote the progress of the useful arts""-but is a claim for a device.

Statement of the case.

ON certificate of division between the judges of the Circuit Court for the Northern District of Ohio, the case being this:

The Patent Act of July 4th, 1836, to promote the progress of the useful arts," authorized the patenting of any "new and useful art, machine, manufacture, or composition of matter," and gives an exclusive right to the patentee for a term of fourteen years, with a privilege of renewal for seven in certain cases, but this act did not allow a patent for mere designs.

The eleventh section of an act of March 2d, 1861, entitled "An act in addition to an act to promote the progress of the useful arts," extends this privilege of patent. It secures to the inventor or producer of any original design, &c.; or any new and original impression or ornament, to be placed on any article of manufacture, &c.; or any new and useful pattern, or print, or picture, to be either worked on, or printed, or painted on any article of manufacture; or any new and original shape or configuration of any article of manufacture, not known or used before, &c., a patent for the exclusive property therein; and it gives this right for a term of years, different from the term granted by the act of 1836 to the inventor of a machine, &c.

With both acts in force, R. & A. Cross obtained, December 27th, 1864, a patent for a new and useful improvement in machines for graining pails, and other analogous uses. [See the diagram, page 269.] The nature of it, as declared by them in the schedule to the letters patent, consisted in constructing an elastic bed, containing the impression or impressions of the device to be grained upon the pail, in separate panels, each panel to be of different design, so that by moving the pail over the same the various designs would be stamped upon the pail, thus producing a pail whose staves were painted in imitation of different kinds of wood. The patentees then described the instrument or machine, which they stated to be a box, into which the elastic material, with the required designs to be grained upon the pail, is placed, and which might, according to their statement, be constructed of wood or iron, or any other suitable material, and so shaped (describing the shape minutely) that when the pail was adjusted properly upon the bed, and rolled upon and over it, the upper or larger end of the pail should follow the outer curve of the bed, and the lower or smaller should follow the interior or smaller curve with exactness and precision. "The elastic bed," they say, "may present one continuous or uniform design if desired, or it may be arranged in blocks or staves, each of different designs, so that the pail grained thereon or thereby shall present the appearance of being constructed of different kinds or

Statement of the case.

species of wood. The elastic bed may be composed of any suitable impressible material, as rubber or leather; but a compound of glue and molasses, such as is used for printers' rollers, is preferred."

The patentees then described the contrivances for working the elastic bed in connection with the pail, so as to effect the graining of the latter. By this contrivance the pail, they state, is readily rolled by hand across the bed, leaving upon it the desired design or figure, or the pail may be suspended on handles, and the elastic bed itself moved beneath it, in a suitably arranged groove or track, producing the same result.* The patentees then set forth their claims, the first two of which only are material:

* The reader to whom the foregoing description of the instrument and of its mode of

Statement of the case.

First. "We claim constructing the bed of the elastic material used in graining machines, in the form herein shown, substantially as and for the purposes specified."

Second. "We claim arranging the elastic material aforesaid, whether curved or rectangular in form, in a series of distinct staves or designs, substantially as and for the purposes herein shown and set forth."

On a suit below, by Clark and others, assignees of Cross, the patentees, against one Bousfield, for infringement, it was suggested on behalf of the defendant that the second claim was for nothing more or other than a design to be impressed on the bed and if this was so, that the claim would be void, as a patent could not properly contain a valid claim for a machine, and contain also a claim for a design; that the two things were patentable under different acts and for different terms of time.

The judges of the Circuit Court were accordingly divided upon the question whether this second claim in said letters patent was for anything patentable other than under the already mentioned

operation may not be sufficiently specific, may derive more precise ideas from the following account, referring by letters to the different parts of the invention:

DESCRIPTION OF THE INVENTION.

A, box or bed into which the elastic material, impressed with the required designs to be grained upon the pails, is placed or framed.

a,

b, c, d, e, f, g. Blocks or staves, each of different designs, into which the elastic bed may be arranged, so that the pail or vessel grained shall present the appearance of being constructed of different kinds of woods, as rosewood, oak, walnut, and others; this in case only, however, that the manufacturer does not prefer one continuous design.

C, E and F, the handles and other devices for affixing or attaching the handles C and F to the pails, to facilitate the operation of graining.

E E, a circular plate divided in two parts, to each of which is rigidly attached the handles F F.

The handles FF are connected by a hinge at h, and between them is arranged a spring s, to throw said handles apart when not confined by the ring upon the ends of the same.

MODE OF OPERATION AND APPLICATION.

The ring r being removed from the end of the handle F F, the opposite ends thereof approach each other, being forced together by the operation of the spring s and hinge h; and thus the two parts of the plate E E are drawn together, diminishing its size, so that it can be introduced within the chime of the bottom of the pail, when by pressing the ends of F F together and replacing the ring r, the plate E E is expanded and adjusted within said chime so as firmly to fasten the handle F to the pail. The handle Cis then inserted and adjusted within the pail, when the operator grasps the handles CF, and adjusts the pail upon the elastic bed, as shown; the paint or coloring matter having been previously applied thereto by means of a roller, or in any other suitable and convenient manner. The pail is then readily rolled across the bed and grained.