The United States v. Schindler.

defendant, to make a point based upon the incompetency of Smith, this implication in the charge should have been made the subject of an objection to the charge, taken at the time, and in such a form as to call the Court's attention to the implication, and that it was complained of by the defendant. The general objection wholly failed to do this, and, doubtless, because the incompetency of Smith was not then thought of. Any other supposition would impute to the counsel for the defendant an intention to conceal from the Court the point of his objection and the reason of his request. But, the implication in the charge, that Smith was competent as a witness for the defendant, was a ruling in favor of the defendant, and certainly, in the absence of an objection made upon that ground, it is not now open to the defendant to contend that the circumstance that Smith was a party to the record rendered it impossible for the defendant to present Smith's testimony to the jury. The defendant's present position, in asking for a new trial, upon the ground that the incompetency of Smith entitled him to have the jury charged as requested, is, in legal effect, the same as if, at the trial, he had offered Smith as a witness, and the Court having, upon his request, ruled Smith to be competent, he was seeking a new trial because that ruling was wrong. Such a position is wholly untenable. As the case stood at the trial, it is plain to see that Smith would have been sworn if the defendant had offered to swear him, and, therefore, the question whether it be error to permit a jury to draw an inference unfavorable to the defendant from his omission to call as a witness a person who could not be sworn in his behalf, which is the question that has been pressed upon this application, was not raised by the objection taken to the charge, or by the request to charge, and could not have been then raised. The only question which then arose was whether the jury, in weighing the testimony of the defendant, when he stood contradicted by two witnesses, had the right to consider the circumstance that he had omitted. to call as a witness one who, as the evidence showed, was fully able to confirm his testimony if it was true, and whose

Pratt v. Rosenfeld.

interest was identical with that of the defendant, without assigning any reason for the omission, it being incumbent on the defendant, in view of the evidence as to Smith, to show that he was not accessible. As to the correctness of the ruling upon that question there appears no room for a reasonable doubt. The jury were not instructed that they were bound to draw an inference unfavorable to the defendant from the omission to call Smith, nor was the weight to be given to this circumstance made the subject of a suggestion to the jury. The fact of the omission was simply called to their attention, and it was left to the jury to attach to it such weight as they might deem it entitled to, under the circumstances. In this there was no error. The motion is denied.

William P. Fiero, (Assistant District Attorney,) for the United States.

Stephen W. Fullerton, for the defendant.

MARSHALL PRATT AND GEORGE P. FARMER

vs.

LAZARUS ROSENFELD AND ISAAC ROSENFELD. IN EQUITY.

Design letters patent No. 7,914, granted December 8th, 1874, to E. C. Pratt, Bro. & Co,, for a design for a card of buttons, divided into spaces covered with foil, by narrow bands, with a dozen pearl buttons, in rows of three by four, to each space, are not valid, as not presenting any patentable subject

matter.

The patent is merely for a change in the mode of keeping and presenting the buttons for sale, without changing the form or appearance of the buttons. (Before WHEELER, J., Southern District of New York, June 14th, 1880.)

WHEELER, J. This suit is brought upon design patent No. 7,914, granted December 8th, 1874, to E. C. Pratt, Bro. & Co., for a design for a card of buttons, divided into spaces

Pratt v. Rosenfeld.

covered with foil, by narrow bands, with a dozen of pearl buttons, in rows of three by four, to each space. The statute (Rev. Stat., sec. 4,929) authorizes the grant of a patent to any person who, by his own industry, genius, efforts and expense, has invented and produced any new and original design for a manufacture, bust, statue, alto-relievo, or bas-relief; any new and original design for the printing of woollen, silk, cotton, or other fabrics; any new and original impression, ornament, print, or picture, to be printed, painted, cast, or otherwise placed on, or worked into, any article of manufacture; or any new, useful and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or production thereof. The subject of this patent is not covered by this statute unless it is included in the term manufacture. The buttons are, however, the principal thing; and they are not changed at all, either in form or appearance, by the patented invention. It affects nothing but the card; and that is not a card for buttons, to be used for successive sets, but a card of buttons, which constitutes a mere method of putting them up for sale, to attract customers, not on account of anything. at all about the thing sold, but wholly on account of the manner of arranging it for sale. In Langdon v. De Groot, (1 Paines' C. C. Rep., 203,) the invention was for folding thread and floss cotton in a manner different from the ordinary mode, whereby it would sell quicker and higher. The Court said: "The article itself undergoes no change; and the whole of the improvement-for it is a patent for an improvementconsists of putting up skeins of it, perhaps of the same size in which they are imported, decorated with a label and wrapper; thus rendering their appearance somewhat more attractive, and inducing the unwary not only to give it a preference to other cotton of the same fabric, quality, and texture, but to pay an extravagant premium for it." "Now, that such a contrivance, for with what propriety can it be termed a useful art, under the Constitution?-may be beneficial to a pat

Pratt v. Rosenfeld.

entee, if he can exclude from the market all other retailers of the very same article, will not be denied; and if to protect the interest of a patentee, however frivolous, useless, or deceptive his invention may be, were the sole object of the law, it must be admitted that the plaintiff has made out a satisfactory title to his patent. But, if the utility of an invention is to be tested by the advantages which the public are to derive from it, it is not perceived how this part of his title is in any way whatever established." "It is said that many ornamental things are bought, of no intrinsic value, to gratify the whim, taste or extravagance of a purchaser, and that, for many of these articles, patents are obtained. This may be so; but, in such cases, there is no deception, no false appearances; and the article is bought to be used with all its decorations and ornaments, which may have been the principal inducements to the purchase, and which will last as long as the article itself." In this case, the buttons are to be used by the purchaser, but the card is not, either with them or by itself. The design does not apply to the manufacture proper, but only to the arrangement of it for sale. Putting an article into a more convenient form for sale, without changing its qualities or properties, is not patentable, as an improvement in the article. (Glue Co. v. Upton, 97 U. S., 3.) So, merely changing the mode of keeping and presenting an article for sale, without changing its form or appearance, will not support a patent for a design. There should be something affecting the article itself.

Further, cards for buttons, faced with foil and divided into spaces by bands, were well known and in common use. Those for pearl buttons may not have been divided into dozens in rows of three by four, but they were divided so that dozens could be readily cut from the card, in two rows of six, and one of twelve, and there were cards divided into spaces for several dozens by such bands as the patent describes, and cards of cloth buttons spaced for dozens in rows of three by four. With these things known there was

Munson v. The Mayor, &c., of the City of New York.

nothing rising to the level of inventive skill in arranging pearl buttons by dozens, on cards, in three rows of four. Let a decree be entered dismissing the bill of complaint, with costs.

George C. Lay, Jr., for the plaintiffs.

Edmund Wetmore, for the defendants.

FRANCIS MUNSON

vs.

THE MAYOR, &c., OF THE CITY OF NEW YORK. IN EQUITY.

The letters patent No. 63,419, granted to Francis Munson, April 2d, 1867, for a bond and coupon register, are valid.

The invention is a book, with a page, or pages, spaced for each bond and its coupons, of any series, and with the spaces numbered and designated to show what bonds and coupons they are for, while any of them are outstanding, and for receiving them for safe keeping as vouchers, or memoranda, when any of them are taken up or paid. The registers are not copies of one another. The invention was not a subject of copyright.

The invention having been used by the officers of the municipality of the city of New York for the bonds of the city, the city is liable in its corporate capacity, for the infringement.

(Before WHEELER, J., Southern District of New York, June 15th, 1880.)

WHEELER, J. This suit is upon a patent to the plaintiff, numbered 63,419, and dated April 2d, 1867, for a bond and coupon register. The defendant sets up and insists that this register is not a subject for a patent within the law; that the invention was known to and used by William E. Warren and John O'Brien, before the plaintiff's invention; and that it is not liable for the infringement shown.