US SUPREME COURT DECISIONS

1. It is the duty of the court to dismiss a suit brought to restrain the infringement of letters patent where the device or contrivance for which they were granted is not patentable, although such defense be not set up.

2. The invention described in reissued letters patent No. 4240, granted to Jolm B. Slawson, Jan. 24, 1871, is not patentable, as it is confined to putting in the ordinary fare box used on a streetcar an additional pane of glass opposite to that next the driver, so that the passenger can see the interior of the box. The letters are therefore void.

3. Letters patent No. 121,920, granted to Elijah C. Middleton, Dec. 12, 1871, are void. The fare box, the headlight of the car, and the reflector are the elements of the contrivance described in the specification and claim for lighting the interior of the box at night, and they are old. What is covered by the letters is not patentable, as it is simply making in the top of the box an aperture through which the rays of the headlamp are turned by means of a reflector.

This was a suit brought by John B. Slawson against the Grand Street, Prospect Park, and Flatbush Railroad Company to restrain the infringement of two patents, one granted to him as inventor and the other held and owned by him as an assignee.

The one first mentioned is a reissue, No. 4240, dated Jan. 24, 1871. The invention therein described is an improvement in fare boxes for receiving the fares of passengers in omnibuses and streetcars.

The specification describes the ordinary fare box used in streetcars and omnibuses, consisting of two apartments, the one directly above the other. This well known contrivance, the specification declares, was so arranged that the passenger deposited his fare in an aperture in the top of the upper apartment. It fell upon and was arrested by a movable platform, which constituted at the same time the bottom of the upper apartment and the top of the lower. This platform turned on an axis acted on by a lever. When turned, the fare fell into the lower apartment, which was a receptacle for holding the fares accumulated during the trip. Upon withdrawing the lever, the platform resumed its horizontal position, ready to chanrobles.com-redchanrobles.com-red

Page 107 U. S. 650

arrest the next fare deposited. The upper apartment had a glass panel on the side next the driver, so that he could see the fares as they were deposited by the passengers. This contrivance enabled the passenger to pay his own fare, and furnished a place of safe deposit for it, so that it could not be abstracted by the driver. It enabled the driver to scrutinize the fare after it was deposited by the passenger, and see that it was the proper amount and in genuine coin or tickets before it was passed into the general receiving box. The improvement described in the patent consisted in the insertion of a glass panel on that side of the upper apartment of the box next to the inside of the car or omnibus, and opposite to the glass panel next the driver, so that when the fare was temporarily arrested in the upper apartment, the passenger could see and examine it before it was passed into the lower or receiving apartment. The specification declared:

"By this means, disputes and contentions are prevented as to the sufficiency of the amount deposited to pay the fare or as to the genuineness of the money or tickets used for that purpose. It also enables the passenger, when he has unintentionally deposited more than the amount of his fare, to call the attention of the driver to that fact, so that he, should the passenger require the difference to be paid back to him, may report the case to the proprietor or his agent on reaching the end of the route, who will then pay the difference to the passenger, who, for this purpose, must ride to the office at the end of the route."

The claim of the patent was thus stated:

"A fare box having two compartments, into one of which the fare is first deposited and temporarily arrested, previously to its being deposited in the other, when the former is provided with openings, covered or protected by transparent media or devices, so arranged that the passengers can see through one and the driver or conductor through the other, in the manner substantially as and for the purposes set forth."

The other patent set up in the bill of complaint was granted to Elijah C. Middleton, assignee of James F. Winchell, and by the former assigned to complainant. It bore date December 12, 1871. It also was for an improvement in fare boxes. The specification declared as follows:

"This improvement relates to the mode of illuminating

Page 107 U. S. 651

the interior of a fare box in street railway cars or other vehicles, when used during the night, and it consists in the construction of the fare box with suitable openings and reflectors, arranged and adapted to receive light from the ordinary headlamp placed above the fare box, instead of requiring a separate lamp to illuminate it as heretofore."

The specification then described the improvement substantially thus:

The ordinary fare box, consisting of two apartments, one above the other, is constructed with an orifice in the top of the upper department, said top forming the floor of the lamp chamber. The orifice is closed with a sheet of glass to prevent any access to the fare box by that way. Immediately above the orifice there is placed in the roof of the lamp chamber a reflector in such an oblique position that will cause the light which falls upon it to be thrown through the orifice into the upper apartment of the fare box, in which the fare is temporarily deposited. The claim was stated as follows:

"Lighting the interior of a fare box at night by light obtained from the headlamp of the car thrown by a reflector I through an opening H in the headlamp box, into the chamber for the temporary detention of the fare for inspection, substantially in the manner and for the purpose set forth."

The answer denied infringement of either of the improvements described in the letters patent, denied that the persons therein named as the first inventors of said improvements were in fact the first inventors thereof, and averred that said improvements had been in public use and on sale in this country for more than two years before the applications for patents therefor were respectively made.

Upon final hearing, the circuit court dismissed the bill on the ground that the improvements described in the patents were void because they did not embody invention within the meaning of the patent laws. From this decree the complainant has appealed to this Court. chanrobles.com-redchanrobles.com-red

Page 107 U. S. 652