In a suit in equity brought under § 4915 of the Revised Statutes
in a circuit court of the United States, there was a decree in
favor of the plaintiff that he was entitled to receive a patent for
certain claims. The decision rested solely on the fact that he was
the prior inventor, as between
Page 132 U. S. 694
him and the defendant. On appeal by the defendant to this Court,
held that this Court must consider the question of the
patentability of the inventions covered by the claims, and that, as
they were not patentable, the decree must be reversed, and the bill
be dismissed.
In equity. The suit was brought under section 4915 of the
Revised Statutes of the United States to determine to whom a
certain patent, yet to be issued, covering certain improvements in
milk setting apparatus belonged. Decree in favor of the plaintiff,
from which the defendants appealed. The case is stated in the
opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity, brought in the Circuit Court of the
United States for the District of Vermont, by Daniel B. Wooster
against Samuel Hill Benjamin B. Prentice, and the Vermont Farm
Machine Company, under section 4915 of the Revised Statutes, which
reads as follows:
"Whenever a patent on application is refused either by the
Commissioner of Patents or by the Supreme Court of the District of
Columbia upon appeal from the commissioner, the applicant may have
remedy by bill in equity, and the court having cognizance thereof,
on notice to adverse parties and other due proceedings had, may
adjudge that such applicant is entitled, according to law, to
receive a patent for his invention as specified in his claim, or
for any part thereof, as the facts in the case may appear. And such
adjudication, if it be in favor of the right of the applicant,
shall authorize the Commissioner to issue such patent on the
applicant filing in the Patent Office a copy of the adjudication,
and otherwise complying with the requirements of law. In all cases
where there is no opposing party, a copy of the bill shall be
served on the Commissioner, and all the expenses of the proceeding
shall be paid by the applicant, whether the final decision is in
his favor or not."
The substance of the allegations of the bill is as follows:
Page 132 U. S. 695
Wooster, on the 17th of January, 1879, filed in the Patent
Office an application for a patent for an "improvement in milk
coolers." The Commissioner of Patents declared an interference
between that application and letters patent No. 207,738, granted
September 3, 1878, to said Hill and Prentice, for an "improvement
in milk coolers," an interest in which patent had been assigned to
the defendant the Vermont Farm Machine Company. Testimony was
taken, and priority of invention was adjudged by the Patent Office
in favor of Wooster in respect to the claim in issue in the
interference, and Wooster, by a separate application for that
purpose, was granted a patent containing that claim, on the 14th of
June, 1881, No. 242,805, for an "improvement in milk coolers." On
the 30th of March, 1880, Hill and Prentice filed an application for
a patent for an "improvement in milk setting apparatus." They also,
on the 10th of November, 1880, filed an application for a reissue
of their patent No. 207,738. Both of the last-mentioned two
applications were declared to be in interference with the
application of Wooster of January 17, 1879. Testimony was taken by
both parties, and the Commissioner of Patents decided to grant a
patent for certain of the claims to Hill and Prentice, or to the
Vermont Farm Machine Company as their assignee, and refused to
grant a patent for them to Wooster. Four of those claims arose on
the application filed by Hill and Prentice on the 30th of March,
1880, and were as follows:
"1. The combination, with a cabinet provided at its top with a
cover or lid and having a door in its side, of an ice receptacle
located in the upper portion of the cabinet, and an elongated milk
receptacle, the upper portion of which is located within the ice
receptacle, and its discharge conduit arranged to extend below the
ice receptacle."
"2. In a milk cooling apparatus, the combination, with a cabinet
or box having its top and side provided with covers or doors, of a
vertically elongated milk receptacle provided with a discharge
regulating valve or stop-cock at its lower end, and a ice
receptacle having an open top and surrounding the upper portion of
the milk receptacle. "
Page 132 U. S. 696
"3. A milk cooling apparatus consisting essentially of a
vertically elongated milk receptacle, provided with a discharge
opening at its lower end, an ice receptacle having an open top and
surrounding the upper portion of the milk receptacle, and a cabinet
having a cover which extends over the milk and ice receptacles, and
with a side door for preventing admission of the outer air to the
lower portion of the milk receptacle, when desired."
"4. A milk cooling apparatus consisting of a cabinet provided
with an upper and lower compartment, an ice receptacle having an
open top and located in the upper compartment of the cabinet, a
vertically elongated milk receptacle, the upper portion of which is
located in the ice receptacle and its lower end constructed to
project downward into the lower compartment of the cabinet, and a
valve or stop-cock connected with the lower end of the milk
receptacle."
The decision against Wooster and in favor of Hill and Prentice
covered three other claims which arose on Hill and Prentice's
application for a reissue, filed November 10, 1880, but it is not
necessary further to allude to them, as there is no contest in this
Court in regard to them.
The bill contains the following statement as to the invention of
Wooster:
"The object of your orator's invention being to provide a milk
cooler of such construction that a milk receptacle of a depth
greater than its width may have its upper portions only subjected
to cold, and thus cause the contained milk to rise and descend in
reverse vertical currents. The upper strata of milk, being
subjected to cold, will part in whole or in part with its cream,
and then descend, its place being supplied by an ascending current
of warmer milk from the lower portion of the vessel. And, further,
to provide the milk cooler with a combined ventilator and filter
whereby the milk may be thoroughly ventilated. And further, to
provide a milk cooler with a transparent education tube, to be
attached to the lower portion of the cooling vessel, whereby the
milk can be easily or readily inspected while being drawn from the
cooler, and the milk and cream accurately separated and deposited
in separate vessels. "
Page 132 U. S. 697
The bill prays for a decree adjudging Wooster to be the first
inventor "of the invention embraced in the claims hereinbefore set
forth, and entitled, according to law, to receive a patent for said
invention." The answer of the defendants denies that Wooster was
the first inventor of either of the claims marked 1, 2, 3, and 4,
and avers that Hill and Prentice were the first inventors thereof,
and are entitled to a patent for those claims.
The cause was put at issue by a replication, voluminous proofs
were taken, and the case was heard by Judge Wheeler. His opinion is
reported as
Wooster v. Hill, 22 F. 830.
In the Patent Office, the examiner of interferences awarded
priority of invention to Hill and Prentice in regard to the above
claims 1, 2, 3, and 4. On appeal to the examiners in chief by
Wooster, they affirmed such decision of the examiner of
interferences. On an appeal by Wooster to the Commissioner of
Patents, the latter affirmed the decision of the examiners in
chief, and afterwards denied a motion for a reconsideration of his
decision.
The opinion of the circuit court discusses the questions
involved solely as questions of fact as to priority of invention as
between Wooster on the one side and Hill and Prentice on the other,
and states that considerable evidence was produced before the court
which was not before the Patent Office. The court was of opinion
that Hill and Prentice were the first inventors of an open-box
creamery standing on legs, with the lower part of the cans
extending through the bottom of the box downward, and the upper
part surrounded by water in the box, for cooling the top of the
milk in the cans, as shown in the patent No. 207,738, granted to
them on September 3, 1878. The "cabinet" mentioned in the four
claims before recited applied to a cabinet creamery closed all the
way down, but having a door in front for access to the lower part
of the can, in contradistinction to an open-box creamery standing
on legs. The court was of opinion, on the evidence, that Wooster
was the first inventor "of the cabinet creamery as an improvement
upon the box creamery, as that is shown in the patent of Hill and
Prentice." It thereupon entered a decree
Page 132 U. S. 698
adjudging that Hill and Prentice were not the original, first,
and joint inventors of the improvements set forth in the four
claims before recited, and that Wooster was the original and first
inventor of the improvement called a "cabinet creamery," set forth
in those four claims, and was entitled to receive a patent
therefor, as set forth in his application filed January 17, 1879.
From this decree the defendants have appealed to this Court.
The provision of section 4915 is that the circuit court may
adjudge that the applicant
"is entitled, according to law, to receive a patent for his
invention, as specified in his claim, or for any part thereof, as
the facts in the case may appear,"
and that if the adjudication is in favor of the right of the
applicant, it shall authorize the commissioner to issue the patent.
It necessarily follows that no adjudication can be made in favor of
the applicant unless the alleged invention for which a patent is
sought is a patentable invention. The litigation between the
parties on this bill cannot be concluded by solely determining an
issue as to which of them in fact first made a cabinet creamery. A
determination of that issue alone in favor of the applicant,
carrying with it as it does authority to the commissioner to issue
a patent to him for the claims in interference, would necessarily
give the sanction of the court to the patentability of the
invention involved.
The parties to the present suit appear to have been willing to
ignore the question as to patentability in the present case, and to
have litigated merely the question of priority of invention, on the
assumption that the invention was patentable. But neither the
circuit court nor this Court can overlook the question of
patentability. The bill claims a patent for what it alleges was
invented by Wooster as a patentable invention, and the answer of
the defendants is founded upon the view that Hill and Prentice were
the first inventors of the improvements covered by the four claims
in question, as patentable inventions.
We are of opinion that nothing in those four claims constitutes
a patentable invention. A cabinet constitutes an element in each of
the combinations covered by the four claims. This
Page 132 U. S. 699
cabinet is nothing more than a boxing or covering in of the open
space forming the lower part of the prior open-box creamery
standing on legs. In the application of Wooster, filed January 17,
1879, in an amendment filed by him March 29, 1879, he says:
"I am aware that long rectangular milk receptacles have been
provided with a water chamber extending around the upper portion
thereof; also that water coolers have been enclosed within a box or
casing, and their upper ends enclosed within an ice receptacle
having a perforated bottom; also that a milk receptacle has been
provided with an ice receptacle extending through the center of the
same, and hence I would have it understood that I do not claim the
construction above referred to."
In the application of Hill and Prentice, filed March 30, 1880,
they say in the specification:
"The lower chamber or compartment serves to protect that part of
the milk vessel which is in contact with this chamber from free
contact with the outer air, preventing the temperature from unduly
varying, and it also serves as a suitable place wherein to store
butter, milk, or dairy appliances, this being practically a
refrigerating chamber."
In the decision of the examiners in chief on appeal, made July
12, 1882, they say:
"The idea of applying a cooling medium to the top of milk cans
while the bottom should be exposed to the ordinary temperature of
the dairy room was old, and Wooster expressly disclaims any broad
pretension to such method, and says that he is aware that milk
receptacles have been provided with a water chamber around the
upper portion, and that water coolers have been boxed, and their
upper parts enclosed in ice receptacles, and the lower end
perforated, and milk receptacles have been provided with an ice
receptacle extending through the center of the same. So, to start
with, we find that whatever either has done is merely to improve
upon means for more effectually carrying out this mode of treating
milk, to obtain the best results in raising and securing cream. As
a structure, the cabinet would seem almost anticipated by the water
cooler of which the parties made a double use; but this is not
before us, except so far
Page 132 U. S. 700
as showing us to what a limited extent the examiner conceded
patentability of matter included in the claims allowed and put in
interference."
The examiners in chief seem therefore not to have considered
that the question of patentability was before them, but that they
were limited to considering the question as to which of the two
parties first made the structure in the form in which it was
presented.
The examiners in chief proceed:
"When the parties came to the office, they undoubtedly supposed,
each for himself, that they had made a great discovery in keeping
the top of the milk cool and the bottom warm. So we find that both
of them seem to have obtained new light in regard to the state of
the art, and, by repeated amendments, came down to quite restricted
claims. We now come down to the material matter: which of the
parties devised and first reduced to practice the box, with lid,
enclosing the cooler tank, having the elongated can extending
through the bottom, etc.? The idea of drawing off the milk from the
bottom was old, and the glass to afford inspection was old. And
which of them conceived of and first reduced to practice the
cabinet form, or the above box and tank and can construction, with
the lower part of the can also enclosed? It is certainly a very
small matter of invention, this enclosing the bottom part, after
the enclosing of the cooler tank, and after what has been done in
refrigerators and water coolers."
In the brief of the defendants, who are the appellants here, it
is stated that the four claims in question "are confined to a
cabinet creamery," and "are simply for adding the lower compartment
to a box creamery on legs." We are of opinion that they are
entitled to have the decree below reversed on the ground that it
was not a patentable invention to add a lower compartment to a box
creamery on legs. The only allusion to this question in the brief
for Wooster, the plaintiff and appellee, is the remark that no
question is made in the answer, but that one party or the other is
entitled to a patent, and that therefore evidence which does not
tend to show which party is entitled to the patent is irrelevant,
and should be suppressed. This Court, however, has repeatedly held
that under the
Page 132 U. S. 701
Constitution and the acts of Congress, a person, to be entitled
to a patent, must have invented or discovered some new and useful
art, machine, manufacture, or composition of matter, or some new
and useful improvement thereof, and that
"it is not enough that a thing shall be new, in the sense that
in the shape or form in which it is produced it shall not have been
before known and that it shall be useful, but it must, under the
Constitution and the statute, amount to an invention or
discovery."
The cases on this subject are collected in
Thompson v.
Boisselier, 114 U. S. 1,
114 U. S. 11-12.
To them may be added
Stephenson v. Brooklyn Railroad,
114 U. S. 149;
Yale Lock Co. v. Greenleaf, 117 U.
S. 554;
Gardner v. Herz, 118 U.
S. 180;
Pomace Holder Co. v. Ferguson,
119 U. S. 335;
Hendy v. Miners' Iron Works, 127 U.
S. 370,
127 U. S. 375;
Holland v. Shipley, 127 U. S. 396;
Pattee Plow Co. v. Kingman, 129 U.
S. 294;
Brown v. District of Columbia,
130 U. S. 87;
Day v. Fair Haven & Westville Railway Co., ante,
132 U. S. 98;
Watson v. Cincinnati, Indianapolis &c. Railway Co.,
ante, 132 U. S. 161;
Marchand v. Emken, ante, 132 U. S. 195;
Royer v. Roth, ante, 132 U. S. 201.
The decree of the circuit court is reversed and the case is
remanded to that court with a direction to dismiss the bill with
costs.