[46] [47] HEIRS OF JOHN F. BENJAMIN, Deceased, | dell and George H. Benjamin, one of the heirs, answered, and in the answer of Benjamin the Argued, on motion to dismiss, Apr. 14, 1886. eral term. Afterwards a final decree was en Decided Apr. 15, 1886. tered, notwithstanding this appeal, approving APPEAL from the Supreme Court of the Dis- to pay over the funds in his hands as provided Columbia. The facts are stated in the opinion. Mr. Chief Justice Waite delivered the opin- When this case was called for argument a motion to dismiss was interposed, because the decree appealed from was not a final decree in the suit. The facts are these: for in his account. This order George H. Ben- As was said in Bostwick v. Brinkerhoff, 106 On the 8th of March, 1877, John F. Benja- jurisdiction of the court to make the decree It follows that we have no jurisdiction, and True copy. Test: James H. McKenney, Clerk, Sup. Court, U. 8. [48] [22] UNITED STATES RIFLE AND CART- cation, which was rejected by the examiners, RIDGE COMPANY AND E. REMING- on the ground of abandonment. On June 9, [24] 1869, Mr. Commissioner Fisher, on appeal, afTON & SONS, Appts., firmed their decision. His opinion is published in the Decisions of the Commissioner of Pa 0. WHITNEY ARMS COMPANY, ELI WHIT- tents for 1869, p. 30. On appeal to the Supreme NEY, Pres., ET AL. (See S. C. Reporter's ed. 22-25.) Court of the District of Columbia, his decision Patent law-rejection of application-abandon- the Act of July 8, 1870, chap. 230, § 35, and ment. on May 7, 1872, the patent sued on was granted During the time between the applications of 1. There may be an abandonment of an invention been abandoned, is not conclusive, but may be con 3. Where the first application for a patent had been rejected and withdrawn, a delay of eight years in renewing the application, because the applicant regarded the invention as of less value than others for which he took out patents, will be held an abandonment, when the subject matter of the invention has been incorporated into the substance of many other subsequent inventions. [No. 157.] Argued Mar. 10,11,1886. Decided Apr. 19, 1886. The circuit court was of opinion that the invention had been abandoned before May, 1868, and therefore entered a decree dismissing the bill. 14 Blatchf. 94; S. C. 2 Bann. & A. 493. From that decree this appeal is taken. The renewal of Cochran's application on December 5, 1870, was under the provision of the Act of July 8, 1870, chap. 230, § 35, which al APPEAL from the Circuit Court of the United lowed any inventor whose application for a States for the District of Connecticut. Affirmed. The case is stated by the court. pátent had been rejected or withdrawn before Messrs. J. E. Hindon Hyde and F. H. upon the hearing of such renewed application Betts, for appellants. Mr. B. F. Thurston, for appellees. [23] Mr. Justice Gray delivered the opinion of ་ ་ e court: This was a bill in equity for the infringement of letters patent granted May 7, 1872, to John W.Cochran for an improvement in breechloading firearms, of which one of the plaintiffs was the owner, and the others were the exclusive licensees. The answer denied that Cochran was the original inventor, and alleged that his application, upon which the letters patent were issued, was made and filed in the Patent Office, on May 6, 1868; that for more than two years before that date the thing patented had been in public use and on sale with his consent and allowance; and that long prior to that date the invention had been abandoned by him to the public. A general replication was filed, and evidence taken, by which the material facts appeared to be as follows: abandonment should be considered as a ques- The rules of law which must govern this On January 10, 1859, Cochran filed an application for a patent for this invention, which on February 8, 1859, was rejected by the Commis- In the case at bar, the first application was sioner of Patents, for want of novelty; and on both rejected by the Commissioner and withFebruary 20, 1860, was withdrawn by Cochran, drawn by the applicant; and the question preand $20 refunded to him, at his request, agree-sented is well put in the opinion of Mr. Comably to the Act of July 4, 1836, chap. 357, § 7. 5 Stat. at L. 120. At various dates from November 19, 1861, to February 11,1868, eighteen patents were granted to other persons for the same devices or their equivalents, and the defendants bought some of those patents, and afterwards manufactured firearms under them. On May 6, 1868, Cochran filed a new appli missioner Fisher, above referred to: "Can an [26] It appears from the bill of exceptions that the plaintiffs read in evidence the patent sued on, the substantial part of the specifications attached to which was as follows: "The object of this invention is to provide a novel, simple, and improved method of tapping or withdrawing lead and other metals when in a molten state, from the bottom of a smelting furnace, so that the metal may be obtained therefrom in a clean state, and also that the formation of hard matters or incrustations on the sides and bottom of the furnace may be avoided. The nature of this invention consists in the use or employment of a basin of suitable side of the furnace and at a suitable elevation above the bottom of the furnace; which said basin is connected with the furnace by means of a tube which extends from the bottom of the basin to the bottom of the furnace. As the molten metal fills the lower part of the furnace it rises to the same level in the tube until it reaches the basin, from whence it may be removed as clean metal. Patent law-whether invention is anticipated is dimensions, located a short distance from one question for jury. Where the defense to an action at law for Infringement of letters patent for an improvement in furnaces for smelting ores relied on a prior publication containing an alleged description of plaintiffs' pretended invention" and the differences were obvious in the arrangement of the parts and the relation of the basin in one, and the Forehearth in the other, to the interior of the furnace, and the mode of connecting the one with the other for the purpose of drawing the metal from the furnace, so that it was not a matter of mere judicial knowledge, that these differences were either not material in any degree to the result or, if material at all, were only such as would not require the exercise of the faculty of invention, but would be suggested by the skill of an experienced workman In the application of the well known arrangements of the furnace and there was evidence of experts upon both sides of the issue presented, it was error to withdraw the case from the jury. [No. 208.] Argued Apr. 2, 1886. Decided Apr. 19, 1886. IN ERROR to the Circuit Court of the United States for the District of Colorado. Reversed. The case is stated by the court. Messrs. George Harding, G. G. Symes and Francis T. Chambers, for plaintiffs in error. Messrs. B. F. Thurston, E. T. Wells, Thomas Macon, B. T. McNeal, and Whit. M. Grant, for defendants in error. Mr. Justice Matthews delivered the opinion of the court: This was an action at law to recover damages for an alleged infringement of letters patent No. 121385, issued November 28, 1871, to the plaintiffs for an improvement in furnaces for smelting lead and other ores. There were several defenses set up by way of pleas, but the two chiefly relied on were that "the plaintiffs' pretended invention" had been described "in a certain printed publication entitled System der Mettallurgie,' von Dr. J. B. Karsten, published at Berlin, Prussia, in 1831-2, in 5 volumes, with an atlas of plates, I, at pages 315, 316, 817, 318, 319, 320, 821 and 322, of Volume III, and pages 150 to 166, both inclusive, and 166 to 180, both inclusive, of Volume V, and figures 479, 480, 481, 482, 483, 484, 473, 474, 475 on plate XXI, and figures 850 to 868, both inclusive, of plate XLI of the atlas accompanying said work;" and secondly, that, in view of the state of the art at the date of the alleged invention, the improvement was not patentable as not requiring the exercise of invention. The issues came on for trial before a jury, and there was a verdict for the defendants and judgment thereon, to reverse which this writ of error is brought. "To enable others skilled in the art to make and use our invention we will proceed more particularly to describe the same. "The figure represents a sectional elevation of a portion of a smelting furnace with our im. provements. "A represents the furnace which may be of ordinary or common construction. B is a basin of suitable dimensions, located at the top of an extension built on one side of the furnace and at a suitable elevation above the bottom of the furnace. The basin may be constructed of any material suitable for receiving and holding the molten metal. Extending from the bottom of the basin B, to the bottom of the furnace A, through the above mentioned extension, is a tube, which connects the basin with the furnace, and which may be made of iron, clay or other material suitable for the purpose. "The metal as it melts falls to the bottom of the furnace; as the surface of the molten metal rises within the furnace it rises to the same level in the tube C until it reaches the basin B, from which it may be removed with a ladle. "The advantages of this invention are obvious, as by this means the metal is tapped or withdrawn from the furnace free from impurities; and it will also be seen that the difficulties arising from the formation of hard matter or incrustations on the bottom or sides of the furnace, occasioned by the usual method of drawing off a large quantity of molten metal at one time, are obviated. "Having thus described our invention, what we claim as new, and desire to secure by letters patent of the United States, is: [27] The method of tapping or withdrawing [28] molten lead or other metals from a smelting furnace by means of the basin B and tube or connection C, in combination with the furnace substantially as shown and described." The drawing referred to is as follows: Albert Arents, one of the plaintiffs, testified to his own qualifications as an expert in the art of smelting, and also "that the obtaining of clean metal from the side of a furnace of ordinary construction automatically by the means described in the specifications in the patent was novel and useful, and a great improvement [29] over the old method of withdrawing clean metal from smelting furnaces; that the specifications were sufficiently full, clear and precise to enable persons skilled in the art to which they appertained, to wit: the art of smelting, to construct a furnace which would produce the useful result claimed by the patent, to wit: the obtaining clean metal automatically from a smelting furnace when in operation of ordinary construction; that a furnace of ordinary construction, as it existed at the date of plaintiff's patent, as defined by the art of smelting, so far as is material to this case, consisted of an inner hearth with an open breast or sump, into which the molten masses of the furnace, when fused, collected and settled, according to their specific gravities; that the front of a smelting furnace was that part of the furnace where the slag ran and was handled by the smelter; that the back of the furnace was opposite to the front, and that those parts of the furnace to the right and left were known and called the sides; that the slag ran off through a spout over the open breast of the furnace in front, and the clean metal was tapped periodically from a taphole at the bottom of and from the side of the furnace; that each part in the construction of the furnace had its particular functions, which were important as understood and known and taught in the art of smelting at that time, to wit: the front was the working door of the furnace, and was where the slag ran off and was handled; the back and sides where the tuyeres were situated, through which the blast was forced into the furnace, and the clean metal was periodically drawn or tapped from one side or other of the furnace." The plaintiff then introduced a model on the scale of one inch to the foot, in sections, showing what a furnace of ordinary construction was at the date of the patent, as known in the art of smelting, showing the improvement of the plaintiffs and the old mode of tapping, of which the following are drawings: A-Section of furnace of ordinary construction in 1871, showing pl'ff's device. B-Basin similar to that shown in pl'ff's patent. C-Tube connecting bottom of basin with bottom of furnace. D-Section of same furnace. E-Basin to receive clean metal when furnace was tapped. F-Tap hole through which clean metal was pe riodically tapped by the old method into basin E. G-Section of same furnace. H-Inner hearth. I-Fore hearth or sump. K-Slag spout or exit. L-Tuyere holes. The plaintiffs then corroborated this testimony of Arents, by that of numerous experts, [30] [31] and gave evidence tending to prove infringement by the defendants, and rested their case. The defendants put in evidence certain extracts from the text and illustrative drawings of smelting furnaces of the treatise upon Metallurgy by Dr. J. B. Karsten, published at Berlin in 1831-32, mentioned in the plea, translated as follows: "(318) The forehearth is that part of the crucible projecting in front of the fire walls of the furnace. Crucible furnaces are those shaft furnaces in which the crucible is entirely on the inside. They are divided into eye-crucible furnaces and tap-crucible furnaces. The former have an eye in the front wall from which the slag flows continuously, the metal and matte being tapped off at intervals into basins. "The tap-crucible furnaces are those in which the metal, matte and slag are all tapped off from time to time. "Sump furnaces are those shaft furnaces in which the crucible is partly in the furnace and partly in front of the furnace. The slag runs off continuously over the fore hearth. The metal and matte are tapped off into receiving vessels or tap basins. Sometimes the sump furnaces are not provided with tap basins, and the metal in them is dipped with ladles direct from the fore hearth. "Spur or channel furnaces are shaft furnaces without a crucible. The molten contents flow through the eye directly from the furnace hearth into receiving vessels. These different furnaces can be more advantageously studied from the drawings than from written descriptions. "(819) In some countries the crucible furnace is preferred; in others, the sump furnace. It is not advisable to use the channel furnace when clean metal is produced. With this furnace the metal is not protected from oxidation. It is used chiefly in smelting copper ores, with a view to producing copper matte. "The drawings, figures 461 to 463, represent an eye-crucible furnace. The slag runs continuously through a hole in the front wall. The metal and matte are tapped off at intervals through a hole in the side of the crucible. "The drawings, figures 464 to 466, represent an eye-crucible furnace, which differs from the former, in that the tap hole is in the front wall and at the bottom of the crucible. to dip the clean metal with ladles from the fore "The drawings, figures 479 and 480, repre- "In smelting operations, where little or no slag is produced, the upper eye is dispensed with entirely." The following are figures 858-860 and their scale from Plate XLI of Karsten's Atlas: The furnaces thus figured by Karsten are planned for withdrawing the reduced metal continuously, and as fast as possible, from the oxidizing action of the blast and the intensely heated part of the slag. So the metal is made "The drawings, figures 467 to 469, represent a tap-crucible furnace. The metal, matte and slag are tapped off from time to time into re-to flow constantly outward and upward through ceiving basins. "The drawings, figures 470 to 472, represent an eye-crucible similar to the one represented by drawings, figures 464 to 466; it is provided with two tap basins. The slag also passes through a basin, for the purpose of allowing the small particles of metal and matte mixed with it to settle. the open eye into the fore hearth, which is made as high as the inner crucible; and generally, the clean molten metal alone is passing through this bottom eye. When much slag is formed it is run off separately by another eye placed higher up; when very little slag is produced, it accumulates for a long time on the top of the molten metal in the inner crucible, and the "(320) The drawings, figures 473 to 475, rep-clean metal in the fore bay may be partially reresent a sump furnace with a covered eye, in moved many times without allowing any of the which the brasque (a mixture of fire clay and slag to escape through the eye." coke dust) under the front wall divides the sump into two communicating vessels. "The slag runs off continuously through the eye between the bottom of the front wall and the top of the brasque partition. "This arrangement is used when it is desired One of the defendants, James Grant, was called to prove that he had constructed an experimental furnace of small size, according to the description and drawing of figure 860 of Karsten's publication, and worked it successfully. A model was exhibited, the proportions [32 |