"What I claim herein as new and desire to secure by letters patent is: As an improvement in the art of manufacturing compounds of pyroxyline or nitro-cellulose, the use of the hereinbefore specified new group of active liquid solvents or converting agents, substantially as described."

The patent being set forth in the bill by way of profert, the defendant demurred, and for cause of demurrer stated that the alleged invention in the patent set forth and claimed is not a patentable invention for which letters patent could lawfully issue. It is argued, among other things, that the thing patented is neither an art, machine, manufacture, or composition of matter, but only a principle of nature, namely, the quality or power which certain substances have of dissolving pyroxyline; that the patentee professes to have discovered this power in these substances, and claims the exclusive right to use it, which is contrary to the wellsettled rule that a principle cannot be patented; that the claim is quite as objectional as that of Prof. Morse to the exclusive use of electro-magnetism for making or printing intelligible characters at a distance, which was rejected by the supreme court of the United States. To this it may be answered that natural principles and forces (so far as they are used) may form constituent elements of a process of manufacture which is clearly patentable. Morse discovered a certain method or process by which he could utilize the force of electro-magnetism in transmitting intelligible signs to a distance. Of this process he was entitled to a monopoly, even though the particular instrumentalities might be varied; but he was not entitled to a monopoly of the force itself applied by other processes essentially different from his. The application of this rule was illustrated in Neilson's patent for the use of the hot blast in smelting. The effect of a hot blast in smelting iron ore is due to a principle of nature; but the mode of employing it by heating it in a receptacle between the blowing apparatus and the furnace was held to be patentable. Neilson v. Harford, Webst. Pat. Cas. 275, 371, 8 Mees. & W. 806. The use of a new material in a process has been held patentable when a better or cheaper result is produced, as pit coal instead of charcoal in smelting iron, (Dudley's Patent, Webst. Pat. Cas. 14;) and anthracite instead of pit coal, (Crane v. Price, Id. 375, 5 Scott, N. R. 338, 4 Man. & G. 586; Curt. Pat. §§ 16, 18.) In certain cases, it is true, the substitution of one material for another in the same implement or machine has been - held not to be patentable, where it was clear that the alteration required: no invention, but merely the exercise of mechanical skill and judgment. Such was the case of Hotchkiss v. Greenwood, 11 How. 248, where porcelain doorknobs (which were old) were affixed to the shank or spindle in the same manner as metallic knobs, the court held that this substitution was not a patentable invention. So in another case, tried before Justice NELSON, a patent was granted for covering a wooden button. with tin, when the same thing had been done to a horn button half a century before, the use of wood instead of horn was held not to be a patentable invention. Anon., Id. 266. So in Hicks v. Kelsey, 18 Wall. 670, the court held that the substitution of an iron wagon-reach for a wooden one of the same shape and form was no invention; that the ma

chine remained the same, and the adoption of a stronger material was a mere matter of mechanical judgment, and not of invention. These cases depended on their own circumstances. There is no rule of law that the substitution of one material for another is not patentable. In processes of manufacture, and in compositions of matter, such a substitution often effects material changes in the result, either as to the product or the expense.

Now, we are not willing to say that there was no ingenuity or invention on the part of Mr. Stevens in discovering that the substances named in his patents are solvents of pyroxyline, and good substitutes for camphor. On the contrary, from the language of the specification, we infer that it was the result of much experiment and investigation. It is true that the mere discovery of the qualities possessed by these substances is not patentable; in other words, the qualities themselves cannot be patented. But the patent in question is not granted for the discovery, nor for the solvent quality, of the substances; it is granted for the "use" of the substances "in the art of manufacturing compounds of pyroxyline, substantially as described," that is, as described and pointed out in the specification. The method there described is that, after the pyroxyline has been reduced to a fine pulp by grinding in some of the known machines, and freed from aqueous moisture in the usual way, and after the addition of any coloring matters or other ingredients desired, the solvents (which are liquid) are to be applied to the pyroxyline (preferably by sprinkling or spraying over the mass) in the proportion of about two or three parts of solvent to two parts of pyroxyline; then left in a tight vessel for 12 hours or thereabouts, in order that the solvents may thoroughly permeate the mass; then to be worked or masticated in heated rolls, and thus formed into a homogeneous compound, which compound is then pressed into blocks or sheets, and subjected to the seasoning or curing process, as is well understood. The product thus obtained will be susceptible of use in the manufacture of utensils and ornaments of different kinds, in the manner pointed out in the specification. This is the general process of manufacture with the new solvents discovered by the patentee, pointed out in the patent. Such a process is certainly susceptible of security by patent, if it be novel and useful, and if the process is patentable. The employment of the newly-discovered solvents as a part of the process (being a still narrower claim) is also patentable. And it would seem that the result of the process is a different substance from that produced when camphor is the solvent used. The specification, it is true, intimates and concedes that certain parts of the process were well known; but exactly what was well known, and what was not, does not appear. No former patents are exhibited in the bill. Perhaps, by the answer of the defendants and proofs taken in the case, it may be made to appear that every part of the process, as a process, was known and used before, and that the only originality on the part of the patentee was the discovery of the fact that oil of spearmint and the other substances named are solvents of pyroxyline. Should this be so, the question would then be fairly presented whether the mere discovery of

this fact was patentable, and whether the case would be governed by the rule laid down in O'Reilly v. Morse, 15 How. 62, and so beautifully and clearly illustrated by the opinion of Judge SHIPMAN in Morton v. Infirmary, 5 Blatchf. 116. As the case stands, we do not think that this question is fairly presented; but think that the patent on its face exhibits an art or process which may or may not be anticipated by prior patents, or by the previous state of the art.

The objection that the patent is multifarious, and for that reason void, we do not regard as tenable. We have never understood that the adaptability of many substances or instrumentalities, for effecting the object of an invention, vitiated a patent. The conversion of pyroxyline into a compound suitable for certain purposes by means of applied solvents, manipulated in a certain way, has a unity of purpose and effect sufficient to answer the objection.

We do not deem it necessary to follow the reasons assigned for the demurrer in greater detail. We are satisfied that the demurrer should be overruled, and that the defendants should be required to answer the bill of complaint, and it is so ordered.

THE VERNON.

(District Court, E. D. Michigan. July 19, 1888.)

1. ADMIRALTY - SALE OF VESSEL - LIMITED LIABILITY ACT - DISTRIBUTION CLERK'S COMMISSIONS.

Where a vessel is sold by a trustee under the limited liability act, and the proceeds of sale are paid into court, the clerk's commission is payable from such proceeds, even though the owner appears and contests the liability of the vessel for her losses.

2. SAME-COSTS-STIPULATION-LIABILITY OF CLAIMANT.

A claimant who desires to contest the liability of the vessel, and gives a stipulation for costs, under Gen. Adm. Rule 26, is liable only for the costs properly incident to such contest.

3. SAME-MARSHAL'S COMMISSION.

Where a vessel is sold by a trustee under the limited liability act, the marshal is not entitled to a commission.

4. SAME-WITNESS-NON-RESIDENT-MILEAGE.

Where a witness attends from out of the district, mileage can only be taxed to the extent of 100 miles.

5. SAME-DOUBLE MILEAGE.

Where two libels were filed against the same vessel for two losses occasioned by the same disaster, but the two causes were never consolidated, held, that double mileage and attendance should be allowed, though the witnesses were sworn but once, and their testimony was read in both cases.

6. SAME-COSTS-COLLISION-PREPARATIONS OF MAPS.

The charges of a person employed to make soundings, and prepare a map of the locality of a collision, cannot be taxed as disbursements.

In Admiralty. On appeal from taxation of costs.

The Vernon was arrested upon two libels for negligence in towing the schooners Senator and Watson upon the rocks at the mouth of Detour v.36F.no.2-8

river. Damages were claimed in the aggregate sum of $35,000. The Vernon was released upon the usual stipulation to answer judgment, and subsequently her owners, the petitioners in this case, instituted proceedings for a limitation of their liability. Under the statute, section 4285, they elected to transfer the Vernon to Henry A. Harmon, as trustee, and thereafter the said trustee proceeded to take possession and sell the vessel. She brought $23,150. The proceeds of the sale, less the trustee's costs and expenses, were paid into court, and petitioners thereupon proceeded to take issue with and to contest the claim of liability for the loss of the schooners; but a decree was finally rendered in favor of the owners of the Senator in the amount of $12,000 and costs, for the damages suffered by the Senator and her cargo. To the owner of the

Watson the court decreed $22,156 and costs.

H. C. Wisner, for petitioners.

H. H. Swan and F. H. Canfield, for libelants.

BROWN, J. Petitioners appeal from the clerk's taxation of the following items:

1. The clerk's commission upon the proceeds of sale. By Rev. St. § 828, the clerk is entitled to a commission of 1 per cent. "for receiving, keeping, and paying out money in pursuance of any statute or order of court." As the proceeds of sale to the amount of $23,150 were paid into the registry of the court by the trustee, no objection is made to the taxation of the commission. The only question is by whom it should be paid. Ordinarily, where money is collected upon an execution, it is the duty of the marshal to add the clerk's poundage as well as his own to the amount of the judgment, and collect it of the defendant, as the plaintiff is entitled to the whole amount of his judgment. Fagan v. Cullen, 28 Fed. Rep. 843; In re Goodrich, 4 Dill. 230; Upton v. Triblecock, Id. 232; Kitchen v. Woodfin, 1 Hughes, (U. S.) 340, 342; Blake v Hawkins, 19 Fed. Rep. 204. Such is undoubtedly the rule in admiralty, where an ordinary stipulation is given to answer the decree of the court, and execution is issued against the claimants and their stipulators. By the limited liability act, (Rev. St. § 4285,) a new right is given to the owner of the ship, viz., the right to transfer her to a trustee, "from and after which transfer all claims and proceedings against the owner shall cease." This transfer being effected, proof of all claims, (Gen. Adm. rule 55,) shall be made before a commissioner, and upon completion of the proofs the commissioner shall make report, and upon the confirmation of such report, the proceeds of the ship or vessel and freight, "after payment of costs and expenses," shall be divided pro rata among the several claimants. This, no doubt, contemplates the payment of all costs and expenses necessarily incident to the sale of the vessel and the proof of the claims, including the clerk's commission upon the money paid into court. If, however, the owner chooses to contest the liability of the ship for the losses, as he may do under rule 56, he is bound under rule 26 to give the usual stipulation for the costs incident to that contest, including the fees of the clerk, marshal, proctors, witnesses, etc.; but not, I think, including the clerk's

commission, which is payable whether he contests or not. Costs are within the discretion of a court of admiralty, and I think equity demands that where a party contests a claim for damages he ought to be mulcted only in the interest upon the fund, and in such costs as necessarily arise from that contest. Costs which, but for such contest, would be paid from the fund, ought, I think, to remain chargeable against the fund. If the petitioner had been successful in contesting his liability for the loss, he would undoubtedly be bound to pay this commission himself, when he withdrew the proceeds of the sale from the court, since it attaches to the fund itself, and not to the litigation out of which the fund. arises.

2. The marshal's commission upon the fund in court. By section 829 the marshal is entitled to a commission in admiralty cases in two contingencies: First, where the debt or claim is settled by the parties without a sale of the property, he is entitled to a commission of 1 per cent. on the first $500, and one-half of 1 per cent. on the excess. This contemplates a settlement of the case between the parties before trial, in which case the marshal is entitled to his commission upon the amount paid in settlement; but as the cases under consideration were never settled, but were contested through to a final decree, it is evident that the marshal is not entitled to a commission under this clause. Second, or the sale of vessels ́or other property under process in admiralty, or under the order of the court of admiralty, and for receiving and paying over the money, he is entitled to a larger commission. But as the vessel was never sold by him, it is clear that he is not entitled to a commission under this subdivision. That it would be inequitable to allow him this commission is apparent from the fact that the trustee who makes the sale, either receives a commission or compensation in the nature of a commission upon such sale. Indeed, I understand this item to be practically abandoned upon the argument.

3. Mileage of witnesses from out of the district. Libelants claim the right to charge the full mileage of witnesses from out of the district, though there is no doubt their depositions might have been taken. Petitioners, upon the other hand, claim that, under the construction given to this statute by this court, they are entitled to charge only for the distance of 100 miles. Probably there is no question connected with costs in the federal courts upon which there is a greater conflict of authority. In the First circuit it has been uniformly held from 1842 to the present day that the successful party was entitled to the mileage of his witnesses, regardless of the distance, or of the fact that they came from out of the district. The rule was first announced by Mr. Justice STORY in Prouty v. Draper, 2 Story, 199, was reiterated by the same judge in Whipple v. Manufacturing Co., 3 Story, 84; was recognized and approved by Mr. Justice WOODBURY in Hathaway v. Roach, 2 Woodb. & M. 63, 73, and was finally again exhaustively considered and reaffirmed by Mr. Justice GRAY, in U. S. v. Sanborn, 28 Fed. Rep. 299. It was admitted, however, by Mr. Justice STORY that under the state practice in Massachusetts the travel of the witness could only be taxed from the line of the state. Melvin v.