Opinion of the court.

as a whole; with the new operation in consequence of the change; with the increased utility and beneficial results, thus incontestably proved, bring this patent within the principle of all the cases as a patentable invention.

There are many cases in which the materiality of an invention, whether it be a machine or a process, can be judged of only by its effect on the result, and this effect is tested by the actual improvement in the process of producing an article, or in the article itself introduced by the alleged invention.*

No opposing counsel.

Mr. Justice BRADLEY, having stated the case, delivered the opinion of the court.

The question is whether the mere change of material— making the curve of iron instead of wood and iron-was a sufficient change to constitute invention; the purpose being the same, the means of accomplishing it being the same, and the form of the reach and mode of operation being the same. It is certainly difficult to bring the case within any recognized rule of novelty by which the patent can be sustained. The use of one material instead of another in constructing a known machine is, in most cases, so obviously a matter of mere mechanical judgment, and not of invention, that it cannot be called an invention, unless some new and useful result, an increase of efficiency, or a decided saving in the operation, is clearly attained. Some evidence was given to show that the wagon-reach of the plaintiff is a better reach, requiring less repair, and having greater solidity than the wooden reach. But it is not sufficient to bring the case out of the category of more or less excellence of construction. The machine is the same. Axe-helves made of hickory may be more durable and more cheap in the end than those made of beech or pine, but the first application of hickory to the purpose would not be, therefore, patentable.

* Roberts v. Dickey, 4 Fisher, 532, per Strong, J.; and see McCormick v. Seymour, 2 Blatchford, 243—definition of a patentable subject, by NelBon, J.

Opinion of the court.

Cases have frequently arisen in which substantially the question now presented has been discussed. Perhaps, however, none can be cited more directly in point than that of Hotchkiss v. Greenwood, in which it was held that the substitution of porcelain for metal in making door-knobs of a particular construction was not patentable, though the new material was better adapted to the purpose and made a better and cheaper knob-having been used for door-knobs, however, before. So, in a case at the circuit, referred to by Justice Nelson in the last-named case,† the substitution of wood for bone as the basis of a button covered with tin was held not patentable.

In Crane v. Price, it is true, the use of anthracite instead of bituminous coal with the hot-blast in smelting iron ore was held to be a good invention, inasmuch as it produced a better article of iron at a less expense. But that was a process of manufacture, and in such processes a different article replacing another article in the combination often produces different results. The latter case is more analogous to the cases of compositions of matter than it is to those of machinery; and in compositions of matter a different ingredient changes the identity of the compound, whereas an iron bar in place of a wooden one, and subserving the same purpose, does not change the identity of a machine.§

But the plaintiff's counsel alleges that his invention does not consist of the mere substitution of a particular material for another material which had been previously used for the same purpose in the same way, but consists in the production of a certain described article by a certain described mechanical process, which process, viewed as a whole, is new and useful; and then he describes what he supposes to be such new mechanical process. This is his argument; but the facts do not bear out such a view of the case.

In our judgment, the patent in this case is void for want of novelty in the alleged invention.

DECREE AFFIRMED.

Webster's Patent Cases, 409.

* 11 Howard, 248.
? See Curtis on Patents, 3d edition,

+ Ib. 266.

70-73.

INDEX.

ACCEPTANCE.

Where a party authorized another to draw different drafts on him upon
different consignments to be made, and this other made different con-
signments and drew different drafts, the party authorizing the drafts
accepts them in advance, and is bound to set aside and hold enough
money from the proceeds of the consignments to pay them, come in
for payment when they may. If he settle an account and pay over
his balance without doing so, it is at his own risk. Miltenberger v.
Cooke, 421.

ACTION. See District of Columbia, 2, 3; Ex turpi causâ non oritur actio;
Official Negligence.

ACTUAL SETTLER. See Oregon Donation Act.

Unless forbidden by positive law, contracts made by actual settlers on the
public lands concerning their possessory rights, and concerning the
title to be acquired in future from the United States, are valid as be-
tween the parties to the contract, though there be at the time no act
of Congress by which the title may be acquired, and though the gov-
ernment is under no obligation to either of the parties in regard to
the title. Lamb v. Davenport, 307.

ADMIRALTY. See Collision; Demurrage.

1. Rule of, that damages in collision cases are to be divided, is applicable
only to cases where both vessels are injured. The Sapphire, 51.

2. Costs in, are wholly under the control of the court giving them. Ib.
3. When a vessel libelled for collision means to set up injury to herself and
to set off damages therefor against damages claimed for injury which
she has herself done, the injury done to her ought to be alleged, either
by cross libel or by answer. If not somewhere thus set up below,
such damages cannot, and for the first time, be set up in the Supreme
Court. Ib.

4. An entry on the record of an admiralty case, that on the return of a
process of attachment Mr. B. "appears for the respondent, and has a
week to perfect an appearance and to answer," is an appearance; the
entry being followed by the execution by the respondent or his agents
of different bonds, reciting "that an appearance in the case had been
entered." Atkins v. The Disintegrating Company, 272.

5. A District Court of the United States, when acting as a court of admi-
ralty, can obtain jurisdiction to proceed in personam against an in-
( 675 )

ADMIRALTY (continued).

habitant of the United States not residing within the district (within
which terms a corporation incorporated by a State not within the
district is meant to be included), by attachment of the goods or prop-
erty of such inhabitant found within the district. Atkins v. The Dis-
integrating Company, 272.

AGENCY. See Ratification.

ALABAMA.

1. Prior to the act of March 3d, 1873, the District Court of the United
States for the Middle District of Alabama was possessed of circuit
court powers, and among these was the right to hear and decide cases
properly removable from the State courts within the limits of that
district. Ex parte State Insurance Company, 417.

2. An order of a State court within those limits ordering the removal of
a case into the Circuit Court for the Southern District of Alabama was,
therefore, void, and that court was right in refusing to proceed in
such case when the papers were filed in it. Ib.

APPEARANCE.

An entry on the record of an admiralty case, that on the return of a pro-
cess of attachment Mr. B. "appears for the respondent, and has a
week to perfect an appearance and to answer," is an appearance, the
entry being followed by the execution by the respondent or his agents
of different bonds, reciting "that an appearance in the case had been
entered." Atkins v. The Disintegrating Company, 272.

ARKANSAS. See Statute of Limitations, 1.

ASSIGNMENT.

Of a debt carries with it in equity an assignment of a judgment or mort
gage by which it is secured. Batesville Institute y. Kauffman, 151.
ASSIGNMENT OF ERROR. See Practice, 3, 5.

ATTORNEY. See California, 7; Notice.

AUTREFOIS ACQUIT. See Judgment.

AUTREFOIS CONVICT. See Judgment.

BANK CHECK.

1. Where money is paid on a "raised" check by mistake, neither party
being in fault, the general rule is that it may be recovered back as
paid without consideration. Espy v. Bank of Cincinnati, 604.

2. Where a party to whom such a check is offered sends it to the bank
on which it is drawn, for information, the law presumes that the
bank has knowledge of the drawer's signature and of the state of his
account, and it is responsible for what may be replied on these points.
Ib.

3. Unless there is something in the terms in which information is asked
that points the attention of the bank officer beyond these two mat-
ters, his verbal response that the check is "good or all right," will
be limited to them, and will not extend to the genuineness of the
filling-in of the check as to payee or amount. Ib.

BANK STOCK.

Bullard

Is not, in National banks organized under the National Banking Act of
1864, subject to lien for discount by the bank to the owner.
v. Bank, 589.

BANKRUPT ACT. See Wife's Separate Property.

1. Nothing short of a clear, distinct, and unequivocal promise will revive
a debt once barred by the. Allen & Co. v. Ferguson, 1.

2. A payment by one insolvent, which would otherwise be void as a pref-
erence under sections thirty-five and thirty-nine of the Bankrupt law,
is not excepted out of the provisions of those sections because it was
made to a holder of his note overdue, on which there was a solvent
indorser whose liability was already fixed. Bartholow v. Bean, 635.
3. An exchange of values may be made at any time, though one of the
parties to the transaction be insolvent. There is nothing in the Bank-
rupt Act which prevents one insolvent from dealing with his property
at any time before proceedings in bankruptcy are taken by or against
him, provided such dealing be conducted without any purpose to de-
fraud or delay his creditors or to give preference to any one, and do
not impair the value of bis estate. Cook v. Tullis, 332; Tiffany v.
Boatman's Institution, 376.

4. Where a bankrupt owes a debt to two persons jointly, and holds a joint
note given by one of them and a third person, the two claims are
not subject to set-off under the Bankrupt Act, being neither mutual
debts nor (without more) mutual credits. Gray v. Rollo, 629.
BAY OF SAN FRANCISCO. See California, 1, 2; San Francisco, City of.
BOOK ENTRIES. See Evidence, 6, 7.

BUILDER'S LIEN. See Montana.

Held not to have attached where a builder took a real security for payment
of the work which he was to do, and afterwards the work being all
done, gave it up and took a mere note. Grant v. Strong, 623.

BURDEN OF PROOF. See Legal Presumptions.

It is error to instruct a jury, in an action for penalties for alleged frauds
upon the revenue, that after the government has made out a primď
facie case against the defendants, if the jury believe the defendants
have it in their power to explain the matters appearing against them,
and do not do so, all doubt arising upon such primâ facie case must
be resolved against them. The burden rests upon the government to
make out its case beyond a reasonable doubt. Chaffee & Co. v. United
States, 516.

CALIFORNIA. See San Francisco, City of.

1. The subject of the rights of the city of San Francisco and her grantees
in and to lands in front of the city, covered with tide-waters of the
bay and within certain designated lines, considered in reference to
the rights of the State to the lands on her admission into the Union,
and the acts of her legislature passed March 26th and May 1st, 1851,
giving to the city certain rights in the said lands. Weber v. Harbor
Commissioners, 58.