corner.

Opinion of the Court.

G is a loose block of iron, between which and the side of block E the uncut web A is clamped by screw F, the other web, B, resting on the block, the cut-away part over the rounded corner; by force applied to the projecting end of the bar it is bent around until the severed edges meet in a close joint. The angle bar herein shown is not claimed here, as it is the subject of a pending application.'

"The safes described in these patents are filled through the bottom opening with fire-proof cement. The bottom is then secured in place and the casters attached. The patentee states, in the specification forming part of letters No. 281,640, that before his invention safes were filled from the back, and that his safe can be completely finished before the filling is put in. The filling adds greatly to the weight. Much labor in handling is therefore saved.""

The opinion of the Circuit Court then proceeds to say: "For the purposes of this suit these three patents may be considered as one, containing all the claims involved. As counsel for complainant suggests, the claims are for separate and distinct but not for independent inventions, at least so far as the manufacture of safes is concerned. They might have been all included in one application had the patentee chosen to so present them.

"The first and second claims in letters patent No. 281,640 are for an angle bar for safe-frames, consisting of a rightangled iron bar, one of the sides of which is cut away, (the cuts being curved and meeting a right-angled cut,) leaving a curve facing the uncut side, whereby said uncut side may be bent to form a rounded corner. The patentee states, in the specification, that he is aware that it has been proposed to make protecting corner pieces for safes from angle iron, from one side of which a triangular piece was cut out to permit the opposite side to bend.' He also states that 'the shape of the cut to permit the angle bar to be bent to form rounded corners may be varied without departing from the principle of my invention,' etc.

"In the drawings accompanying the specification forming part of letters patent No. 283,126, Figure 5 represents a templet

Opinion of the Court.

of card-board or thin sheet metal, which the patentee states he uses to determine about the shape and size of the notch or cut which it is necessary to make to admit of the bar being bent to any desired angle and to make a corner of any desired. curve. The templet is of the shape and size of a section of the angle bar. One web is severed by a cut at right angles to its edge; the two webs are then severed at their junction for some distance upon each side of the cut; then, by bending the web so that the cut edges will pass each other, the templet may be bent to any curve or angle desired, and the lines of the cuts required to make the proper shape of opening in angle bars to be bent to the same curve or angle, marked and fixed upon. Such use of the templet as a pattern is nothing new. It is clearly shown by the testimony, that cutting an opening in one web of an angle bar to permit the bending of the bar to an angle or curve, was known and used before the date claimed by complainant's assignor for his invention. Different shapes of cuts and openings are shown in exhibits put in evidence by respondents. Unless the precise cuts and shape of opening shown in the drawing attached to the specification forming part of the letters patent are patentable, the claims are worthless. But the patentee shows how, by the use of a pattern of flexible material—an old method, and familiar as the use of the carpenter's mitre box-he determines the lines of the cuts and the shape of opening. In this there is no exercise of the inventive faculty; it is only what would occur to a mechanic of ordinary skill. Moreover, if the precise lines of cuts and shape of opening shown in the drawings were patentable, the patentee does not, as we have seen, so limit his claim, but seeks to cover variations, which he says may be made without departing from the principle of his invention. Claims 1 and 2 in letters patent No. 281,640, and the claim in letters patent No. 283,136, are, therefore, adjudged to be invalid.

"As to the combination claim, being the only claim in letters patent No. 273,585, and claim 3 in letters patent No. 281,640, they are old, excepting only - and this is not material

that the precise lines of cuts and the shape of the opening

Opinion of the Court.

When the

of the angle bar are not found in safes of prior manufacture. The sheet-metal cover is old. It is shown in respondent's exhibit, St. Louis Safe.' The bars C and lower removable plate D, claimed in No. 273,585, are old. See respondent's exhibit A and the deposition of John Hurst. The safes in the manufacture of which they were used were square-cornered, as was then the fashion, but that is not material. angle frames were bent the corners were round, and then heated and hammered upon both sides of the corners, to make them square. Respondent's testimony also establishes that fire-proof safes were filled from the bottom as early as 1879, by the Cincinnati Safe and Lock Company, and in that year, probably also in 1878, by Hall's Safe and Lock Company. The complainant was the first to employ the combination. claimed in the manufacture of round-cornered safes, but the change from square-cornered safes was only a change in form. The combination is nothing more than an aggregation, and falls by the application of the rulings in Hailes v. Van Wormer, 20 Wall. 353, 368; Reckendorfer v. Faber, 92 U. S. 347; and Pickering v. McCullough, 104 U. S. 310, 318. The bill is dismissed at complainant's costs."

It is apparent that the claim for the process, in No. 283,136, is merely for the process or method of cutting away and removing the metal, so as to permit of the bending, and of doing the bending, and of producing the close joint as the bending takes place, such process or method being merely the process or method involved in making the article covered by claims 1 and 2 of No. 281,640. In other words, claims 1 and 2 of No. 281,640 are each for an article produced by a described method or process, and the claim of No. 283,136 is for such method or process of producing such article. The method is a purely mechanical method. No. 281,640 was applied for more than eleven months before No. 283,136 was applied for, and was issued 28 days before No. 283,136 was issued. There was no patentable invention in No. 283,136, when it was applied for, in view of what was applied for by claims 1 and 2 of No. 281,640. After a patent is granted for an article described as made by causing it to pass through a certain method of

Opinion of the Court.

operation to produce it, as, in this case, cutting away the metal in a certain manner and then bending what is left in a certain manner, the inventor cannot afterwards, on an independent application, secure a patent for the method or process of cutting away the metal and then bending it so as to produce the identical article covered by the previous patent, which article was described in that patent as produced by the method or process sought to be covered by taking out the second patent.

The Circuit Court, in its opinion, said that the use of the templet shown in Figure 5 of No. 283,136, as a pattern, was not new; that cutting an opening in one web of an angle bar, to permit the bending of the bar to an angle or curve, was known and used before the date of the patentee's invention; that different shapes of cuts and openings were shown in exhibits put in evidence by the defendant; that the claims in question, namely, claims 1 and 2 of No. 281,640, and the claim of No. 283,136, were invalid, unless the precise cuts and shape of opening shown in the drawings were patentable; that there was no exercise of the inventive faculty in using a pattern of flexible material, in an old and familiar method, to determine the lines of the cuts and the shape of the opening; and that the patentee had not limited his claims to the precise lines of cuts and shape of opening shown in the drawings, but had stated, in the specification of No. 281,640, that the shape of the cut to permit the angle bar to be bent to form rounded corners might be varied without departing from the principle of the invention. We concur in the view that claims 1 and 2 of No. 281,640 and the claim of No. 283,136 are invalid for the reasons thus given.

As to the claim of No. 273,585 and claim 3 of No. 281,640, which are claims to combinations, the opinion of the Circuit Court states that those claims are old, except in the immaterial point, that the precise lines of cuts and the shape of the opening in the angle bar are not found in safes of prior manufacture; that the sheet-metal cover is old, being shown in defendant's exhibit, "St. Louis Safe;" that the bars C and lower removable plate D, forming part of the claim of No. 273,585,

Statement of the Case.

are old, it being immaterial that the safes in the manufacture of which they were used were square-cornered, the corners of the angle frames, when bent, having been round, and having been then made square by heating and hammering the metal on both sides of the corners; that fire-proof safes had been filled from the bottom as early as 1879; that, although the patentee was the first to employ the combination claimed in the manufacture of round-cornered safes, the change from square-cornered safes was only a change in form; and that the combination was nothing more than an aggregation, and fell within the rulings of this court, in the cases cited, that such an aggregation was not patentable. We think these views are correct.

The decree of the Circuit Court is affirmed.

HERRMAN v. ARTHUR'S EXECUTORS.

ERROR TO THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

No. 250. Argued April 25, 1888.- Decided May 14, 1888.

Goods made of calf hair and cotton were imported in November, 1876. The collector assessed duties on them at 50 cents a pound, and 35 per cent ad valorem, as upon goods made of wool, hair, and cotton, under Schedule L of § 2504 of the Revised Statutes (p. 471, 2d ed.). The goods contained no wool. The importer protested that the goods were liable to less duty under other provisions. In an action to recover back the alleged excess paid, the defendant, at the trial, sought to support the exaction of the duties under the first clause of § 2499, commonly called the similitude" clause. Held, that this was a proper proceeding under the pleadings in the case.

The court below having directed a verdict for the defendant, this court reversed the judgment, on the ground that the question of similitude was one of fact, which should have been submitted to the jury, as it appeared that the imported goods were of inferior value and material as compared with the goods to which it was claimed they bore a similitude. The case of Arthur v. Fox (108 U. S. 125) commented on.

THIS was an action brought to recover duties alleged to have been illegally exacted. Verdict for defendant and judgment