A claim for arranging an elastic bed for printing designs, is
not a claim for a design under the eleventh section of the Act of
March 2, 1861, entitled "An act in addition to an act to promote
the progress of the useful arts," but is a claim for a device.
The Patent Act of July 4, 1836, "to promote the progress of the
useful arts," authorized the patenting of any "new and useful art,
machine, manufacture or composition of matter," and gives
an exclusive right to the patentee for a term of fourteen years,
with a privilege of renewal for seven in certain cases, but this
act did not allow a patent for mere
designs.
Page 77 U. S. 134
The eleventh section of an Act of March 2, 1861, entitled "An
act in addition to an act to promote the progress of the useful
arts," extends this privilege of patent.
It secures to the
inventor or producer of any original
design &c., or
any new and original impression or ornament, to be placed on any
article of manufacture &c.; or any new and useful pattern, or
print, or picture, to be either worked on, or printed, or painted,
on any article of manufacture; or any new and original shape or
configuration of any article of manufacture, not known or used
before &c., a patent for the exclusive property therein; and it
gives this right for a term of years, different from the term
granted by the act of 1836 to the inventor of a machine &c.
With both acts in force, R. & A. Cross obtained, December
27, 1864, a patent for a new and useful improvement in machines for
graining pails and other analogous uses. [
See the diagram,
page
77 U. S. 135.]
The nature of it, as declared by them in the schedule to the
letters patent, consisted in constructing an elastic bed containing
the impression or impressions of the device to be grained upon the
pail in separate panels, each panel to be of different design, so
that by moving the pail over the same, the various designs would be
stamped upon the pail, thus producing a pail whose staves were
painted in imitation of different kinds of wood. The patentees then
described the instrument or machine, which they stated to be a box,
into which the elastic material, with the required designs to be
grained upon the pail, is placed, and which might, according to
their statement, be constructed of wood or iron, or any other
suitable material, and so shaped (describing the shape minutely),
that when the pail was adjusted properly upon the bed, and rolled
upon and over it, the upper or larger end of the paid should follow
the outer curve of the bed, and the lower or smaller should follow
the interior or smaller curve with exactness and precision. "The
elastic bed," they say,
"may present one continuous or uniform design if desired, or it
may be arranged in blocks or staves, each of different designs, so
that the pail grained thereon or thereby shall present the
appearance of
Page 77 U. S. 135
being constructed of different kinds or species of wood. The
elastic bed may be composed of any suitable impressible material,
as rubber or leather; but a compound of glue and molasses, such as
is used for printers' rollers, is preferred."
image:a
The patentees then described the contrivances for working the
elastic bed in connection with the pail, so as to effect the
graining of the latter. By this contrivance, the pail, they state,
is readily rolled by hand across the bed, leaving upon
Page 77 U. S. 136
it the desired design or figure, or the pail may be suspended on
handles, and the elastic bed itself moved beneath it, in a suitably
arranged groove or track, producing the same result.
* The patentees then set forth their claims, the
first two of which only are material:
"
First. We claim constructing the bed of the elastic
material used in graining machines, in the form herein shown,
substantially as and for the purposes specified."
"
Second. We claim arranging the elastic material
aforesaid, whether curved or rectangular in form, in a series of
distinct
Page 77 U. S. 137
staves or designs, substantially as and for the purposes herein
shown and set forth."
On a suit below, by Clark and others, assignees of Cross, the
patentees, against one Bousfield, for infringement, it was
suggested on behalf of the defendant that the second claim was for
nothing more or other than a design to be impressed on the bed, and
if this was so, that the claim would be void, as a patent could not
properly contain a valid claim for a machine, and contain also a
claim for a design; that the two things were patentable under
different acts and for different terms of time.
The judges of the circuit court were accordingly divided upon
the question whether this second claim in said letters patent was
for anything patentable other than under the already mentioned
section eleven of the act of March 2, 1861? And if not, whether the
patent was not void.
Page 77 U. S. 139
MR. JUSTICE NELSON delivered the opinion of the Court.
It will be seen by reference to the eleventh section of the act
of 1861 that if the second claim is patentable under this section,
it must be a claim for an original design or impression, or
ornament, or pattern, or picture and the like, wholly irrespective
of the means of producing it. The patent is simply for the design
&c., itself.
In order to understand the full meaning of this second claim, it
will be useful to settle the meaning of the first, as the two are
intimately connected.
The first, as we have seen, is for constructing the bed for the
elastic material used in graining machines in the form shown and
for the purposes specified. The patentees describe it as a box or
bed, and which may be constructed of wood or iron or of any other
suitable material. This box or bed is made for the purpose of
holding the elastic material, whether of rubber or leather or the
compound of glue and molasses, which is preferred. Now the second
claim is for arranging the elastic material, when placed in this
box or bed, whether curved or rectangular in form, "in a series of
distinct staves or designs" for the purpose specified -- that is,
for the purpose of graining pails in the variety of colors or
figures described. The elastic bed may be arranged, as is stated in
the specification, so as to present one continuous or uniform
design, or it may be arranged in blocks or staves, each of
different designs, so that the vessel shall present the appearance
of different kinds of wood, as rosewood,
Page 77 U. S. 140
oak, walnut, and others. It may also be constructed of separate
pieces or blocks, as shown in the drawing, or the material may be a
single united mass, impressed by different designs arranged in
staves so as to produce the same effect as when constructed in
separate blocks. The two claims, as we see, are closely connected
and each essential to the complete construction of the instrument
or apparatus, which, when put into practical operation by the
contrivances pointed out in the specification, can accomplish the
desired result, which result is the graining of the exterior body
of the pail with a variety of colors and figures.
The learned counsel for the defendants below insists that this
second claim is only an arrangement of designs, and in a limited
sense he is no doubt right, but in its connection with the first
claim and with the machine for transferring the design to pails, it
is more -- it is a part of the machine or instrument, and an
indispensable part; it is the elastic bed of rubber, or of leather,
or compound of glue and molasses, of any arranged figure or design,
that constitutes an element in the machine, and which, with the
curved box and contrivances for working the instrument, produces
the desired result. The figure or design is but incidental, and, as
such, has no other protection than that which the patent secures to
the inventor of the machine. The right to the use of the machine
carries along with it the right to use the designs.
The arranged figure in the elastic bed is not the one protected
by the eleventh section of the act of 1861 -- that is the one which
is transferred to the pail or wares, where its beauty is first
visible to the eye. While it remains in the elastic material, it
exhibits no more beauty than if engraved on stone or metal.
It may be that the inventors of the machine for impressing
figures or designs upon pails or other wares would not be protected
from using figures or designs, the right of property in which had
been secured to the original inventor under this eleventh section,
but they may clearly use any and all not thus protected. The
machine in question is invented for reducing to practical use these
figures and
Page 77 U. S. 141
designs, and will make them profitable to the original inventors
or owners of them, if they choose to employ it.
We are of opinion that the first question should be answered in
the affirmative, and the second in the negative.
* The reader to whom the foregoing description of the instrument
and of its mode of operation may not be sufficiently specific may
derive more precise ideas from the following account, referring by
letters to the different parts of the invention:
"
DESCRIPTION OF THE INVENTION"
"
A, box or bed into which the elastic material,
impressed with the required designs to be grained upon the pails,
is placed or framed."
"
a, b, c, d, e, f, g. Blocks or staves, each of
different designs, into which the elastic bed may be arranged so
that the pail or vessel grained shall present the appearance of
being constructed of different kinds of woods, as rosewood, oak,
walnut, and others -- this in case only, however, that the
manufacturer does not prefer one continuous design."
"
C, E, and
F, the handles and other devices
for affixing or attaching the handles
C and
F to
the pails, to facilitate the operation of graining."
"
E E, a circular plate divided in two parts, to each of
which is rigidly attached the handles
F F."
"The handles
F F are connected by a hinge at
h, and between them is arranged a spring
s, to
throw said handles apart when not confined by the ring
r
upon the ends of the same."
"
MODE OF OPERATION AND APPLICATION"
"The ring
r being removed from the end of the handle
F F, the opposite ends thereof approach each other, being
forced together by the operation of the spring
s and hinge
h; and thus the two parts of the plate
E E are
drawn together, diminishing its size, so that it can be introduced
within the chime of the bottom of the pail, when by pressing the
ends of
F F together and replacing the ring
r,
the plate
E E is expanded and adjusted within said chime
so as firmly to fasten the handle
F to the pail. The
handle
C is then inserted and adjusted within the pail,
when the operator grasps the handles
C F, and adjusts the
pail upon the elastic bed, as shown; the paint or coloring matter
having been previously applied thereto by means of a roller, or in
any other suitable and convenient manner. The pail is then readily
rolled across the bed and grained."
