564

FEDERAL REPORTER,

vol. 45.

unlawful business.. Without stopping now to inquire whet}.er the word "business II is here employed in the sense of open and regulare.-nployment, or comprehends an isolated unlawful transaction, it is suffi(Jient to say that the count charges no business of any kind. It avers the devising of a scheme, embracing the design to engage apartments to be fitted up in keeping with the role to be assumed,-that of a Chinese physician; the contemplated assertion of the possession and curative power of certain Chinese herbs, and thereby to fraudulently procure the money of others. But all this rested in intent. An unexecuted scheme is not a business. The court is not advised by the pleading that any part of the scheme was e\'er executed in whole or in part; no apartments engaged, fitted up·as designed, or opened to the public; no assertion of the profession to be assumed; no assertion oi the possession or curative power of rare Chinese herbs, or of any act or series of acts that might fitly be. characterized as a business. The single overt act asserted is the ·assumption of and a re. quest to be addressed by a false and fictitious title or name. That act must, however, be done in the conduct of a business, and of a business which isuulawful, if the offense, as charged, can be sustained under this subsection. The business must be specifically charged, and its unlawful character disclosed, for it is not an offense within the statute to assume a fictitious name in a lawful business. In the absence of direct averments, a business or its character may not be inferred from the letterset forth. U. S. v. Hess, supra. The count was intended to charge the offense in execution of a scheme mentioned in the principal section, and not of other unlawful business comprehended in the subsection. However intended, it fails to charge an offense in respect of either. The demurrer will be sustained.

CAMPBELL

et al.

tI. BAILEY

et ale

(Otrouit Oourt. E. D. Wisconsin. March 28.1891.)
1.

PATENTS FOR INVENTION-COMBINATION-PATENTABILITY.

A device consisting of a combination of several well-known separate elements, each of which serves the use to which it has previously been applied, and, in conjunction with the other parts, operates not differently, and pel"forms no othel" function, and in which no new result is the product of their co-operative action, is not invention, but falls within the range of mere mechanical skill.

ll.

SAME-CATOB-BASIN COYnns.

Claim 1 of letters patllnt 204,882, June 18. 1878, to George G. Campbell. of a catchbasin covel", (',onstructed with slanting front, with grate base, and raised stop or partition, as described, is illvalid, as being an aggregation of well-known separate elements, eaoh opel"ating in its old way. in whioh no new result is the produot of their oo-opel"ative action.

In Equity. Bill fOf injunction. a. T. Benedict, for complainants. G. Underwood. for defendants.

CAMPBELL V. BAILEY.

565

JENKINS, J. The bill is filed to enjoin the alleged infringement of letters patent of the United States No. 204,882, issued June 18, 1878, to George G. Campbell for "improvement in catch-basin covers." The device consists of a vertical curved wall or body, having a horizontal base projecting beyond the opening; an oblique grate over the opening, admitting the flow of surface water into the basin, and preventing the ingress of rubbish; flanges secured to the body, to hold back to the sidewalk the material used in setting the cover; a raised stop or partition in front of the grate, against which faces the pavement of the street, laid upou the projecting base, and holding it firmly in place; a flange projecting below on the under side of the cover, to protect the mortar from the action of water; and a circular opening, with cover at the top, per-. mitting access to the basin. The device is intended to be placed at street corners, jutting back into the sidewalk, the front slanting outwardly to the bottom of the gutter so that the wheels of a passing vehicle hugging the sidewalk, and coming in contact with the oblique grate, will slide off therefrom. The claims of the patent are two: (1) A catch-basin cover, constructed with slanting front, with grate, base, and raised stop or partition, as described. (2) A catch-basin cover, with body and flanges as specified. The first claim of the patent is alone here involved. The claim is challenged for want of invention. The distinction between aggregation and patentable combination is settled. A combination of well-known separate elements, each of which, when combined, operates separately, and in its old way, and in which no new result iSethe product of their co-operative action, is not invention. :But if to adapt the several elements to each othor, to effect their co-operation in one organization, demands the use of means without the range of mere mechanical skill, then the invention of such means to effect the mutual arrangement of the parts would be patentable. Hailes v. Van Wormer, 20 WaU. 353; Reckendorfer v. Faber, 92 U. S. 347; Picker"ing v. McOullough, 104 U. S. 310; PennffYlvania R. Co. v. Locomotive. etc., Truck 00., 110 U. S. 490, 4 Sup. Ct;' Rep. 220; Heating Co. v. Burtis, 121 U. S. 286, 7 Sup. Ct. Rep. 1034; Hendy v. Iron- Works, 127 U. S. 370, 8 Sup. Ct. Rep. 1275; Aron v. Railway Co., 132 U.S. 84,10 Sup. Ct. Rep. 24; Wat80n v. Railway Co., 132 U. S. 161,10 Sup. Ct. Rep. 45; Howe Machine Co. v. National Needle Co., 134 U. S. 388, 10 Sup. Ct. Rep. 570; Florsheim v. Schilling, 137 U. S. 64, 11 Sup. Ct. Rep. 20; County of Fond du Lac v. May, 137 U. S. 395, 11 Sup. Ct. Rep. 98; Trimmer 00. v. Stevens, 137 U. S. 423,11 Sup. Ct. Rep. 150. It was said by Mr. Justice CLIFFORD in Bates v. Coe, 98 U. S. 31, 48, reiterated by him in Imhaeuser v. Buerk, 101 U. S. 647,660, that when the thing patented is an entirety, ofa single device or combination of old elements incapable of division or separate use, it will not answer to assert that a part of the .entire thing is found in· one prior patent. printed publication, or ma.chine, 'and another part in another prior exhibit, and still another part in a third one, and from the three, or any greater number of such exhibits, to draw the conclusion that the patentee is not the original aud

566"

FED]j)RAL REP.QR'I:mR,: Yol.

45.

firstinventoi'Of the patented improvement. The stat¢ment, I take it, must be read subject to the qualification stated in .the latter case, that thearmngement of the parts is new, and will produce a new and useful result;· and ,to the further qualification, inferable from, ifnot.expressed iu, the statement, that the new result is the product of theco-operati va action of the parts;. each part, by reason of combination, performing some new function foreign to ,its separate action. So read, there is no conflict in the decisions. Prior totbe. alleged invention, catch-basin covers were in use with horizontal base, projecting beyond the throat, of the sewer, and upon which the pavement rested. Other prior devices exhibit the raised partition for the pavement to face against. Others exhibit gratings in the throat of 'the sewer, to prevent the ingress of rubbish. The bars of the grating were usually vertical. In the Smith device they. were slightly inclined outwardly, resulting from the construction' of tbedevice, and preventing, to a certain extent, the ingress of foreign substances, but not so inclined that rubbish would be forced upwardly upon the grate by the force of the flowing water, and a dam thereby prevl"nted. In the British patent No. 225, of 1874, to M. H. the gratillgs are curved outwardly, inclining downwards and outwards, to keep back matter tending to impede the flowing of surface water. The complainants' device is in form quite like the Menzel catch-basin cover, in use long prior, to the alleged. invention in question, difierihg therefrom in this: that the grating is oblique, not vertical; the Metizel. device having also a depression or pan in the base, and in front. oHhe grating, thepaV'etnent facing against the outer edge of the pan, instead of directlyagninst a raised partition in front ofthe grate. No one of the prior designs comprehend all of the compon'ent parts of the complainants' device, unless it be the Synge patent, which. discloses an oblique grating of curved bars, instead: ofstraight bars, as in complainants' cover. In the state of the &11t at the time ofthe alleged invention here involved, can the device be deemed an invelltion? If a skilled mechanic, with the various prior devices before him, would conceive oOhe combination, it is not invention. Dunbar v. MYeJi'8, 94 U. S. 187;. v. Railroad 0>., 107 U. S. 649, ,653, 2 Sup. Ct.. Rep. 663. ,This device differs from those. preceding mainly in this: that ,the bars of the grating are placed aslant, instead of vertically. ·where straight \?ars were used, and straight, instead of curved, where curved bars were placed obliquely. Such change is not invention. "It invQlvee merely the skill of the work. man, not the genius of the invelltor.!' : Originality is the lest. In Mor. N v. McMillin, 112U. S. 244,5 Sup. Ct. Rep. 218, the. improvement involved. was in the applioation of steam poWer to fj,;vertical capstan, by means of the same agencies by whi<lhii had been previously applied .to a horizontal windlass. "The use of a vertical, instead of a horrequire no ,suchiogenuity as merited, Izontal, .barrel or shaft was So here; the substitution of oblique fQr,vE:lrtica! bars, or. straight for curved bars, is fJucb:change as would stiggestltself to the ordinary judgment and skill ora,trained mechanic, and is without the realm of

rtlURPH+t"V. TRENTON RUBBER CO.

567

invention. It was W'Orks v. Brady, 107 U. S. 192, 2· Sup. Ct. Rep. :22.5, that ihe design of the patent law was to reward those who il'l'ake somesuhstantial discovery or invention which adds to our knowll:idge, or makes a step in advance in the useful arts; and that it was nevel' the object of those laws to grant a monopoly for every trifling device, every shadow of a: shade of an idea which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures, and that to grant a monopoly for every slight advance made, except where the exercise of invention somewhat above ordinary,mechanical or engineering skill is distinctly shown, is unjust in principle., and injurious in its consequences; See, also, Hill v.Woaste'r,132 U. S. 693, 700, 10 Sup. Ct. Rep. 228. There e.x!ists another, aud,to my thinking, a fata]., objection. Each part of the device \vithin the first claim 'of the patentis related to the use OOwhioh it had been previously applied,and, in conjunction with the other parts, operates not differently, 'and performs no other function. The, horizontal base, the raised stop or partition,and' the grating each perform the same, and no other or different, office that it did before. Each elemeQ't oftha comhination openi.tesseparately rperforming its separateftniction, a,nd in its old way. There is nO neW r,esultas the uctof the co-operative of the parts. Theobli<iue gratingIllay prOduce better results because oblique, but not by, reason of combination with tlle other Pl1rts. Failing therein, within theprindple established, there is lack of patentable ,combination. The device is a mere aggrega" tion. BUJ't v. Evory, 133U. S. 349, 10 Sup. Ct. Rep. 394. The bill 'be' dismissed. '

MURPHY". TRENTON RUBBER CO.

(CirC1lll.t Cowrt, D. New JerB6/J.

PA'l.IBNT8 POll INVENTION-ANTIOIPATION.

March 24, 1891.)

Clahns 2 and 8 of reissued letters patent No. 10,953, June 19, 188R, covering a method fer stretching uncured rubber belting during the application of heat and pressure in the process of vulcanization, whieh consisted· of a fixed clamping de,vice at one end of .the machine, and a combined clamping and stretching device ·at its 9Pppsite end, is, anticipatEld by the process described in letters patent granted to Gattily arid Forsyth in 1873, in which, though the clamps are not identical in form or construction, the function is the salne,and the act of performance is lIubstantially similar. ..'. .

In 'Equity. Bill for injunction. ,(}ifford, for complainant. E. q. Lowthorp, foqlefendant.
f,l , 'I

,GREEN,

.J. .ThisbiU is filed,to rest;rain an alleged infringement by the

defendantoHetters patentNo.10,938;(reissued,ydated June 12, 1888, grilntedto the' complainant, J ohri Murphy,'for &' "machine' 'for mahu-