US SUPREME COURT DECISIONS

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. chanrobles.com-red

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."

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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 chanrobles.com-red

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. chanrobles.com-red

Page 77 U. S. 139