In Iron Works v. Fraser, supra, the supreme court considers the integrity of the Brown and Scoville unpatented machines, hereinbefore referred to, and finds them to be older than the inventions set forth in any of the Gates patents. The testimony concerning these machines is the same here as it was before the supreme court. The claims above quoted, under the present patent, appear to be sub stantially shown and described in the earlier Gates patent, No. 243,545. We are of opinion that everything valuable found in the two above-quoted claims under patent 272,233 are found either in the Brown and Scoville machines, or in the specifications of Gates' patent, No. 243,545.

The foregoing attached cut is a reproduction of the machine shown in the Brown drawing No. 2, and of the upper end of the machine shown in the Brown drawing No. 1. The black letters [capitals in the above cut] are mainly from the Gates patent, No. 243,545; the red letters [small letters in above cut] on No. 2 are copied from the Gates patent, No. 272,233, and on No. 1 they are copied from the Gates patent, No. 259,681. All the parts and construction in these drawings unquestionably relate to the prior art.

In Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310, where it is held that no patent can issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ, Mr. Justice Jackson, after reviewing the authorities, says:

"The result of the foregoing and other authorities is that no patent can issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ; that the second patent, although containing a broader claim, more generical in its character than the specific claims contained in the prior patent, is also void; but that where the second patent covers matter described in the prior patent, essentially distinct and separate from the invention covered thereby and claims made thereunder, its validity may be sustained. In the last class of cases it must distinctly appear that the invention covered by the later patent was a separate invention, distinctly different and independent from that covered by the first patent; in other words, it must be something substantially different from that comprehended

in the first patent. It must, consist in something more than a mere distinction of the breadth or scope of the claims of each patent. If the case comes within the first or second of the above classes, the second patent is absolutely void."

Under this decision the contention of the appellee that the patent No. 272,233 is an older patent than No. 243,545, because it has a prior file date, is untenable; but, even if this was not ordinarily the case, an examination of the file wrapper and contents shows that although the original application for the patent was filed on February 17, 1879, it was not until October, 1882, that the applicant attempted to make claims and specifications covering the parts now covered by the first and second claims of the patent, and it was only then that the applicant gave specifications describing a base plate and step box which are the particular parts in regard to which appellee's counsel undertakes to differentiate the first claim of the patent from the Brown machine. Counsel for appellee contends that claim 1 of the patent under consideration is virtually for the loose, dust-excluding collar. He says "that the Brown patent, No. 201,646, has no cap or loose collar around the crushing cone on the uprising tube of the diaphragm which surrounds the gyrating shaft." In view of the fact that in the first application for the patent under consideration the applicant disclaimed the invention of this loose, dust-excluding collar, the contention of counsel does not appear to merit serious consideration.

This disposes of all the specific assignments of error. The others need not be considered.

Counsel for appellee concludes his very ingenious and elaborate brief as follows:

*

"The stone-breaking machine known as the 'Gates Stone Breaker' was the first stone breaker of this gyratory type that was ever made, and worked as a successful, valuable machine. The first patent showing a machine of this type was the Pearce patent, a copy of which is on page 238, vol. 2, printed record. This patent the Gates Iron Works purchased, and still owns: In this machine the crushing arbor or shaft gyrated at the top, instead of at the bottom; the driving wheel that drove it was located at the top; the lower end of the shaft was supported in a step in a crossbar held up by rods. The next patent in the art showing a machine of this character of construction was the Rutter patent, shown on page 266, vol. 2, printed record. The crushing shaft in that patent was suspended from the top by a ball, E, while the lower end of the shaft passed into an eccentric box in the gear wheel, the gear wheel being below the bottom plate of the machine. The crusher shaft was rigidly fixed in the gear wheel, and the machine simply ground and rubbed the stone, instead of crushing it. * The next patent in the order of the development was the Brown patent involved in this suit. That was really the first stone-breaker machine of this type in which the arbor of the crushing cone was gyrated at its lower end, and would break the stone by impingement, without rubbing or grinding the stone. The machine was in the shape of the Brown patent when Mr. P. W. Gates, who had had a lifelong experience in the manufacture of other kinds of stone crushers, as well as general machinery, took hold of this machine. It was not in practical shape at that time. Brown had put into the machine the important feature of a diaphragm, and certain bearing boxes and adjusting screws. All the witnesses agree that these machines were not a success. Gates improved this machine, overcoming one objection after another, investing upwards of $40,000 in making his improvements before he succeeded in getting a thoroughly practical machine. His various improvements resulted in making this machine one of the most valuable machines made in the country. They have gone into use throughout the world, wherever there is stone to be broken or quartz to be crushed. It is certain that, had it not

been for Mr. Gates' persistency, this machine would never have become a success. What he did to the machine in making the improvements is delineated in his patents above discussed. Whatever merit the machine possesses as a practical operating machine was added to it by Gates, excepting the diaphragm feature in the Brown patent. Some of the Gates improvements may be on the border line between the skill of a mechanic and the ingenuity of an inventor; but, when considered in connection with his complete line of improvements, from the time that he took hold of the machine until it was a great success, there are certainly displayed marked and important changes in the machine, which could have been produced only by a superior quality of inventive ingenuity."

Our examination of the record leads us to substantially agree with all of this, except the last sentence, in its entirety. The gyrating crushing shaft and the inclined diaphragm chute were inventions in the construction of a successful stone-crushing machine. All the other improvements, in our judgment, were within the domain of skill. As Gates was not the pioneer inventor of either the gyrating crusher shaft or the inclined diaphragm chute, he can take nothing by his claimed invention of details, although, through his pertinacity, diligence, money, and skill, the stone-breaking machine has been made a success. In Atlantic Works v. Brady, 107 U. S. 199, 2 Sup. Ct. 231, it is said:

"The process of development in manufactures creates a constant demand for new appliances, which the skill of ordinary head workmen and engineers is generally adequate to devise, and which, indeed, are the natural and proper outgrowth of such development. Each step forward prepares the way for the next, and each is usually taken by spontaneous trials and attempts in a hundred different places. To grant to a single party a monopoly of 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. The design of the patent laws is to reward those who make some such substantial discovery or invention which adds to our knowledge, and makes a step in advance in the useful arts. Such inventors are worthy of all favor. It was never the object of those laws to grant a monopoly of 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. Such an indiscriminate creation of exclusive privilege tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers, who make it their business to watch the advancing wave of improvement, and gather its foam, in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens, and unknown liabilities to lawsuits, and vexatious accountings for profits made in good faith."

The decree appealed from is reversed, and the cause remanded, with instructions to dismiss the bill.

(78 Fed. 395.)

BLANKS et al. v. KLEIN et al.

STARCKE et al. v. KLEIN et al.

(Circuit Court of Appeals, Fifth Circuit. December 1, 1896.)

No. 464.

APPEALABLE DECREES-DECREE FOR COSTS.

An appeal from a mere decree for costs of the court below must be dismissed. as a matter within that court's discretion. But, where one item included in the decree is for clerk's fees in making and certifying the transcript on a former appeal, the appellate court may review the same on the merits.1

Appeal from the Circuit Court of the United States for the Western Division of the Southern District of Mississippi.

Wade R. Young, for appellants.

M. Dabney, for appellees.

Before PARDEE and McCORMICK, Circuit Judges, and MAXEY, District Judge.

PARDEE, Circuit Judge.

This appeal is from a decree of the cir cuit court taxing costs in two equity causes which were decided in the circuit court July 16, 1891. Both causes were afterwards appealed to this court, where Blanks v. Klein was affirmed (3 C. C. A. 585, 53 Fed. 436), and Starcke v. Klein was dismissed for failure to file the record within the proper delay (14 C. C. A. 672). The contested items of costs, with one exception, are costs incurred in the circuit court in the trial of the causes, and were approved by the judge who rendered the decrees, apparently in compliance with section 983, Rev. St. U. S. The proceeding in which the decree under consideration was rendered appears to have been provoked by a motion of the appellants to retax costs. Proceeding under this motion, the court, on the application of movers, referred the matter to a special master, with directions to tax the costs of said suits due by movers, and to make report to the judge of the court in vacation. The special master made an investigation, hearing evidence of several parties by way of deposition, and reported that the items complained of were properly and lawfully taxed. Exceptions were filed to this report, complaining of the special master's findings both of fact and of law. The decree of the court overruled the exceptions to the master's report, confirmed the same in all respects, and declared as follows:

"And it is further considered by the court that inasmuch as nothing is involved in said motion and report except costs in said causes, and that both of said causes have heretofore been appealed to the court of appeals, and said appeals finally disposed of in that court, no appeal lies from this decree."

It seems to be settled that no appeal will lie from a mere decree for costs. Clarke v. Warehouse Co., 10 C. C. A. 387, 393, 62 Fed.

1 As to the allowance of costs in equity both by the court below and upon appeal, see note to Salt Co. v. Brigel, 17 C. C. A. 368.