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653*] *EDWIN W. PARCELS, Piff. in Err., | sale in lieu of dower in the land, was not prov

v.

PRISCILLA JOHNSON and Her Husband, Henry Johnson.

(See S. C., 20 Wall., 653-655.)

en. On a new trial that proof may be supplied and a judgment rendered thereon satisfactory to the now complaining party. In that manner the present supposed federal question may be put out of the case. So, too, the present pleadings may be amended and a new case made, which

Writ of error, to what state courts issued will render unnecessary the consideration of

final judgment.

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The petition in this case was filed in the Circuit Court of Adair County, Missouri, by the defendants in error, for the alleged right of dower of Priscilla Johnson to certain lands. Judgment having been given for the defendant, the plaintiffs took an appeal to the Supreme Court of the State of Missouri, by which the said judgment was reversed. Whereupon the defendant sued out this writ of error. The case is further stated by the court.

Messrs. John F. Benjamin, Ellison & Ellison and Harrington & Cover, for defendants in error.

Messrs. Matt. H. Carpenter, Jas. Caw and B. G. Barrow, for plaintiff in error.

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Argued Oct. 30, Nov. 2, 1874. Decided Dec. 14, 1874.

Mr. Chief Justice Waite delivered the opin-/A PPEAL from the Circuit Court of the Unit

ion of the court:

This writ of error is dismissed upon the authority of Moore v. Robbins, 18 Wall., 588, 21 L. ed., 758; St. Clair Co. v. Lovingston, 18 Wall., 628, 21 L. ed., 813; Tracy v. Holcombe, 24 How., 426, 16 L. ed., 742; Pepper v. Dunlap, 5 How., 51; Brown v. Union Bk., 4 How., 465. A writ of error can only issue from this court to the highest court of a State for a review of the final judgment or decree of that court in a suit. In other words, it is only the last judgment or the last decree which the state courts can give in a suit, until that judgment or decree is set aside or reversed, that this court can, even in the prescribed cases, bring here for re-examination.

The judgment of the Supreme Court of Missouri, brought up in this case, is one of reversal only and remanding the suit to the inferior court for further proceedings in accordance with the opinion delivered and filed. The cause was sent back, therefore, for a new trial or a new hearing. Upon such trial or hearing the inferior court can proceed to render a new judgment, not inconsistent with the opinion, 655*] and *that judgment may in its turn be taken to the Supreme Court for examination.

From the record it appears that one of the defenses set up in the answer, to wit: that which was based upon the implied acceptance of one third of the proceeds of the guardian's

NOTE. What is "final decree" or judgment of state or other court, from which appeal lies-see

York.

ed States for the Southern District of New

The bill in this case was filed in the court below by the plaintiff in error, for an injunction against infringing a certain patent. A decree of dismissal having been entered, the complainant appealed to this court.

The case is further stated by the court. See, also, Reckendofer v. Faber, 92 U. S., 347, 23 L. ed. 719.

Mr. John S. Washburn, for appellant: To restrict the invention to the absurdity of only "a piece of rubber with a hole in it," shows a want of comprehension of its real scope and value, which for years have been fully appreciated by the public. The invention claimed and described is something more than that.

The claim is for "an elastic, erasive pencil head, made substantially in manner described;" and in Seymour v. Osborne, 11 Wall., 516, 20 L. ed., 33, it was held by the Supreme Court, Clifford, J., that "Where the claim immediately follows the description of the invention, it may be construed in connection with the explanations contained in the specifications and where it contains words referring back to the specifications, it cannot properly be construed in any other way." Citing Curt. Pat., 3d. ed., §§ 225-227.

The same was held in the recent case of Rob

erts v. Dickey, Strong, J. McKennan, Circuit J., 1 Off. Gaz., 4. 6.

It is evident that the statement that the contour may be varied, and that he does not limit notes, 5 L. ed. U. S. 302; 2 C. C. A. 379; 17 C. C.ings, is made with reference to the end of the himself to the precise forms shown in the draw

A. 238; 28 C. C. A. 482.

pencil being covered or uncovered, and is subject to the express condition that the forms shall be convenient for the purpose, and the implied condition, to be fairly derived from the use of the word "precise," that they must correspond substantially with the drawings. There is certainly nothing from which it can be fairly inferred that he intended to disclaim the features which are clearly portrayed in the drawings, upon which its practical value as an eraser depends; and the use of the words, "to suit the fancy or the taste of an artist or other person," clearly confines the meaning of the inventor to a matter of simple style, and indicates that he does not limit himself to a precise contour as a matter of ornamental configuration; and this is further indicated by the fact that in the drawings, while the top of the head is varied, and the contour of the projecting erasive working surfaces about the sides may be varied from hexagon to square or circular, the projecting working surfaces themselves are always retained.

The drawings constitute a part of the specification, and are to be resorted to, to aid a specification which would otherwise be imperfect; to help out the description; to furnish clearer information respecting the invention described in the specification; to show the nature, character and extent of the claim, as well as make a part of the description; and to add anything to the specification which is not specifically contained or mentioned therein.

Earl v. Sawyer, 4 Mason, 9; Burrall v. Jew- | ett, 2 Paige, 143; Washburn v. Gould, 3 Story, 133; Emerson v. Hogg, 2 Blatchf., 9; Hogg v. Emerson, 6 How., 485, 11 How., 606; Winans v. Schen. & Troy R. R. Co., 2 Blatchf., 284; Heinrich v. Luther, 6 McLean, 348, and other

cases.

A duly issued patent is prima facie evidence that the patentee is the original and first in

ventor.

word "nipple." There is no description whatever.

This is clearly insufficient.

Seymour v. Osborne, supra; Reeves v. Keystone Bridge Co., U. S. Circuit Court, Eastern District of Pennsylvania, 1872; 1 Off. Gaz., 466, 471; Judson v. Cope, Leavitt, J., Law, Am. Dig., 609, pl. 9.

Nor can the invention of said Blair be considered a double use or new application of the nipple testified to have been sold before, within the principles or authorities upon which that doctrine depends.

Strong v. Noble, 3 Fish., 586.

Moreover, if it could be considered in åány respect a new use, it would not avail; for it is well settled that if, in the new use, any new function is performed, or an old function in a better manner, or effects already known are produced, but so as to be more economically or beneficially enjoyed by the public, or a new or better or cheaper article of manufacture is produced, it is patentable.

Ex parle H. L. Smith, App. Cas., 1853, Ex parte Seeley, App. Cas., 1853; Ex parte Blandy, App. Cas., 1858; Ex parte Newman, App. Cas., 1859.

But in fact it cannot be fairly said that there is any real resemblance between the nipple and the Blair rubber head. That the former may be irregularly and inconveniently used so as to erase pencil marks, constitutes none.

Messrs. Frederic H. Betts and S. W. Kellogg, for appellees:

The claim is, not for the combination of the erasive head with a pencil, but for the erasive head itself, apart from its connection with the pencil.

It is perfectly apparent from the specification that the invention claimed is a very broad one. It is in substance for a piece of erasive material of any external form suitable for rubbing out pencil marks, having in it a hole or socket, exWhere, as in the case of said Blair, the pat-tending entirely or partly through the same, entee has made two applications before he obtained the patent, it is for this purpose, connected with and relates back to his first and original application, and is prima facie evidence of invention at the date that was filed, provided he has not abandoned the invention. It is denied that, as a matter of fact or law, Blair ever intended to abandon or did abandon his said invention.

Joshua Gray's alleged invention, merely experimental and imperfect as it was, was not identical with or substantially the same as that of said Blair.

The novelty of said Blair's invention is further attacked by the defendants by the allegation that it was described in a printed publication entitled "Personal Narrative of the Origin and Progress of the Caoutchouc or India-rubber Manufacture in England, by Thomas Hancock," published in London in 1857, and especially at the plate opposite page 116, which is put in evidence, and also by the testimony of Edward Oelzner, showing sales of nipples made of india-rubber, intended to be, and applied to, bottles for artificially nursing babes; in other words, by the defense of double use.

So far as the alleged printed publication is concerned, nothing is shown save a plate, on which appears a small figure, and under it, the

and of such size that a lead pencil "or other articles," could be inserted in the hole, and in that case the piece of rubber would be held on by the elasticity of the rubber.

Not a word is found limiting the invention to any particular form of head. On the contrary, it is expressly stated that it may have the form shown in the drawings, or any other convenient for the purpose.

Not a word is found limiting the invention to a head having any particular form of internal cavity or socket. On the contrary, it is expressly stated that the socket is "cylindrical or other proper shaped cavity.”

Any piece of rubber, into a hole in which a pencil or other article could be inserted, and which in that case, if the article was large enough to fill the hole, would tend to hold to the article so inserted, and would present an erasive surface about the sides of the articles, would be an infringement of the patent.

The applicants for patents on this subject, prior to the time of the grant of Blair's patent, have been numerous.

The nature of these several applications, the action of the Patent Office upon them, and their result are clearly and briefly stated in the opinion of the Honorable R. L. B. Clark, one of the examiners in chief of the United States

Patent Office, in the interference case between the application of Joshua Gray, the first applicant, and the other applicants.

Mr. Examiner Clark then said: "The following facts appear:" 1. Gray applied September, 1856; claimed broadly combination of rubber eraser with pencil, by means substantially as shown. He showed a common pencil, with a rubber attached to the upper end, and held in a metal socket or cap from which it projected. But he suggested that the rubber might be otherwise fixed; the gist of his invention being the combination claimed.

1. Rejected as not patentable, and on reference to Pond, who showed a crayon rubber, but not a crayon and rubber.

2. Lipman applied January, 1857; claimed broadly the combination. Rejected on reference to Gray. Amended and limited to drawing pencils, with rubber inserted in similar manner to the lead, etc. Patented March, 1858. 3. Blair applied January, 1859; claimed the appendage to lead pencils, constructed substantially as shown. He showed substantially the same device as Gray; was rejected on reference to Gray, and withdrew his application.

4. Shaw applied February 1859; claimed a head for pencils made of rubber, and attached by means of a socket, and suggested that it might be molded; rejected on reference to Pond and Gray.

5. Shaw renewed his application April, 1859, and amended by limiting nis claim to the head shown, that being conical, and having a recess to fit over the head of the pencil, not differing materially from Gray; patent issued April 25, 1859.

6. Hale applied July, 1859; claimed combination of rubber eraser and pencil. Showed several ways of attaching, substantially like Gray, Blair and Shaw, and was rejected on reference to them.

7. Woods applied November, 1859. Disclaims broad combination, but limited to springing rubber over conical or tapering knob on the end of pencil. Rejected on reference to Shaw and Hale.

8. Neil applied August, 1861. Claimed pencil and eraser combined, and was rejected on reference to Hale.

9. Gray, second application, September, 1861. Claim limited to a peculiar mode of construction of rubber tips, viz.: 1. "A piece or section of elastic India-rubber tubing."

This would have been subordinate to his first invention, if not fully answered by it, but was rejected on reference to Hale and Neil.

10. Oliver applied in April, 1862, and was rejected on reference to Hale, and in his ond letter on reference to Gray.

sec

He disclaimed a rubber tip pencil, but claimed a combined sliding sleeve and eraser, to be used on a pencil.

On appeal to the examiner in chief, he was allowed for his peculiar device, as not being fully answered by the references, and patent issued June 3, 1862.

11. Vosburgh & Ludden applied in April, 1862, and claimed for a special device for holding rubber on pencils, consisting of rings and clamps, etc. Patented May 20, 1862.

12. L. L. Tower applied for a re-issue of Shaw's patent, May 14, 1862, putting in a dis

claimer to the use of metallic ferules or sockets to hold the rubber, and claimed for the combination of pencil and rubber head or ferule, to encompass the pencil, or a tenon thereon, and also claimed the pencil head as shown. This was allowed without any question or declaration of interference, although it was anticipated by Gray.

13. Reckendorfer applied June, 1862, and was rejected on reference to Lipman.

On appeal, the Board of Examiners in Chief allowed the application.

He disclaimed the broad combination of rubber and lead in the same case, but claimed a tapering case, larger at the rubber end, to give space for the rubber, which was inserted like Lipman's in combination with the lead of smaller dimensions. It was, at most, but an improvement on Lipman. Patented November 4, 1862. 14. Faber applied February, 1863; disclaimed combination of rubber head and pencil, but claims a pencil with an angulated rubber seal head, etc. Patented June, 1863.

15. Hodskin applied August, 1864. Claimed a pencil point protector, and a sleeve holding rubber, to slip on the point of a pencil when not in use, and on the other end to be used as an eraser. This was rejected on reference to Vosburgh & Ludden and B. L. Cohen, who is not in interference and whose files are not before the Board, but who simply showed a protector without rubber. Allowed by examiners in chief and patented February 14, 1865. It was but the uniting of two devices.

16. J. B. Blair re-applied January, 1866, and was put in interference with Shaw only, although we see he had been rejected on reference to Gray.

This renewed application was for the sole benefit of Cutter, Tower & Co., and Tower files his affidavit, that being engaged largely in manufacturing under Shaw's patent, he discovered that Blair was a prior inventor, and asked for an interference with Shaw; and "in order to prevent the invention from becoming public property, on account of long use," he asks that a patent be issued to Blair, if it prove true that he was originally entitled to it. Notice was served on Tower for taking Blair's testimony. None was taken for Shaw, and priority was awarded to Blair, as "no opposition was shown by the parties interested in Shaw's patent."

It thus appears that though several, since Gray, have applied for the broad combination of rubber and pencil, yet they have all been rejected on reference to Gray.

All of them seemed satisfied with the reference, and in some instances amended and limited their claims to the peculiar construction of the eraser or the mode of attaching it.

On the ten or dozen patents granted, not one of them' covers the broad ground of Gray's invention, although it is evident that many of the specifications and claims were drawn with a view of flanking and avoiding Gray, or the objections urged against his application, and yet gain the same object arrived at by him.

They are. however, clearly subordinate, if not fully met by Gray's invention.

As far as the Blair and Shaw patents and reissues are concerned, they seem to have been clearly and fully anticipated by Gray. and to

have been issued with a full opportunity for knowledge, on the part of the applicants, of the infringement upon Gray's invention.

The application of Gray was improperly rejected. This seems to be admitted on all hands. It may further be stated, as part of the history of their case, that the invention of Gray has been finally patented; the Supreme Court of the District of Columbia, having reversed the decision of the Patent Office, which rejected it on the ground of laches.

The said head is to be composed of India-rubber or India-rubber and some other material which will increase the erasive properties of the head." Drawings were attached to his specifications which, as was said, exhibited "the elastic head, so made as to cover the end, as well as to extend around the cylindrical sides, of the pencil: But," it was added, "it is evident that the contour of the said head may be varied to suit the fancy or the taste of an artist or other person, and I do not limit my invention to the precise forms shown in the drawing, as it may have such or any other, convenient for the purpose, so long as it is made so as to encompass the pencil, and present an erasive surface about the sides of the same. A head made in my improved manner and applied to a pencil as above These articles are rubber nipples. They are set forth, is of great practical utility to bookshown in exhibits and in the Hancock Book, keepers, accountants and various other persons. published in 1857. The witness Oelzner, with- The pointed form of the head will be very useout attempt at contradiction, testifies to the ful to draughtsmen, in erasing lines from their public use and sale of these articles, at least drawings when it may be desirable not to erase from 1855 downwards, and that they were used other lines in close proximity to that which it by him, and others for the erasing of pencil is desirable to erase. The elastic or rubber penmarks. As we have already seen, the Blair cil head, made as above set forth, may be apheads do not vary substantially because of plied, not only to lead pencils, but to ink erasthickness, size or shape, nor is the patent limit-ers, and other articles of like character." ed to any thickness, size or shape.

The next defense on the question of novelty is the existence and use of articles of rubber which, although not designed for tips for pencils, were yet substantially similar to Blair's tip, and could have been and were in fact occasionally used for the same purpose.

These nipples were, therefore, directly within it and anticipatory of it.

It makes no difference whether the nipples were, in fact, used as erasers, before Blair's application of 1859 or not; they were capable of such use, and the Blair patent cannot be sustained as a new use of an old article.

Mr. Chief Justice Waite delivered the opinion of the court:

On the 23d of July, 1867, James E. Blair, claiming to be the original or first inventor or discoverer of a "new and useful rubber head for lead pencils," received a patent for his invention. He claimed "as a new article of manufacture, an elastic, erasive pencil head, made substantially as in the manner described." In his specification, he stated that he had "invented a new and useful cap or rubber head, to be applied to lead pencils, etc., for the purpose of rubbing out pencil marks." The "nature of his invention," he said, was "To be found in a new and useful or improved rubber or erasive head for lead pencils, etc., and consists in making the said head of any convenient external form, and forming a socket longitudinally in the same, to receive one end of a lead pencil, or a tenon extending from it." "The said head," he goes on to say, "may have a flat top surface, or its top may be of a semi-circular or conical shape, or any other that may be desirable. Within one end of the said head I form a cylindrical or other proper shaped cavity. This socket I usually make about two thirds through the head, and axially thereof; but if desirable, the socket or bore may extend entirely through the said head. The diameter of the socket should be a very little smaller than that of the pencil to be inserted in it. The elastic erasive head so made, is to fit upon a lead pencil at or near one end thereof, and to be so made as to surround the part on which it is to be placed, and be held thereon by the inherent elasticity of the material of which the head may be composed.

The question which naturally presents itself for consideration *at the outset of this [*505 inquiry is, whether the new article of manufacture, claimed as an invention, was patentable as such. If not, there is an end of the case and we need not go further.

A patent may be obtained for a new or useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof. In this case, as has been seen, Blair's patent was for "a new manufacture," being a new and useful rubber head for lead pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character. It becomes necessary, therefore, to examine the description which the patentee has given of his new article of manufacture, and determine what it is, and whether it was properly the subject of a patent.

It is to be made of rubber or rubber and some other material which will increase its erasive properties. This part of the invention alone could not have been patented. Rubber had long been known, and so had rubber combined with other substances to increase its natural erasive qualities.

It is to be of any convenient external form. It may have a flat top surface, or its top may be of a semi-circular or conical shape, or any other that may be desirable This would seem to indicate clearly that the external form was not a part of the invention. It was, however, urged upon the argument, that the invention did consist in the projecting surfaces extending out from the head, and which appear, as is claimed, in the drawings attached to the specifications. It is true, that in two out of the three drawings projecting surfaces are indicated, but such is not beyond question the case with the third. The shape there shown is conical, extending to a point, and evidently intended to represent the form mentioned as specially adapted to the use of draughtsmen in erasing lines from their drawings. It was the end of such a pencil, not the sides, that was to furnish

the particular advantage of form. But although drawings do accompany the specification and 506*] are referred to, it is evident *that this reference is for the purpose of illustration only because the patentee is careful to say that "he does not limit his invention to the precise forms shown, as it may have such or any other convenient for the purpose, so long as it is made so as to encompass the pencil and present an erasive surface upon the sides of the same." Certainly words could hardly have been chosen to indicate more clearly that a patent was not asked for the external form, and it is very eviIdent that the essential element of the invention as understood by the patentee was the facility provided for attaching the head to the pencil. The prominent idea in the mind of the inventor clearly was the form of the attachment, not of the head. If additional proof of this is required, it may be found in the further statement in the specifications, which locates the head for use at or near the end of the pencil, and so made as to surround the part on which it is to be placed and be held thereon by the inherent elasticity of the material of which it is to be composed. If intended for use at any other place than on the end of the pencil, the projections could not be essential, as any form that would surround the part would present the requisite erasive surface.

one, but his device to give it effect, though useful, was not new. Consequently he took nothing by his patent.

The decree of the Circuit Court is affirmed.

JOHN S. ATCHISON, et al., Appts.,

υ.

PETER PETERSON et al.

(See S. C., 20 Wall., 507-516.)

Rights to running waters in mineral lands—invasion and impairment of right—injunction, when proper.

*1. On the mineral lands of the public domains
in the Pacific States and Territories, the doctrines
of the common law declaratory of the rights of ri-
parian proprietors respecting the use of running
waters, are inapplicable, or applicable only to a
very limited extent, to the necessities of miners,
appropriation gives the better right to running wa-
and inadequate for their protection. Their prior
ters, to the extent in quantity and quality necessary
for the uses to which the water is applied.
in quality will constitute an evasion of the rights
2. What diminution of quantity or deterioration
of the first appropriator, will depend upon the spe-
cial circumstances of each case; and in controver-
sies between him and parties subsequently claim-
ing the water, the question for determination is;
whether his use and enjoyment of the water to the
extent of the original appropriation has been im-
paired by the acts of the other parties.
3. Whether, upon a petition or bill asserting that
the prior rights of the first appropriator have been

the acts of the party complained of, will depend
upon the character and extent of the injury al-
leged; whether it be irremediable in its nature;
whether an action at law would afford adequate
remedy; whether the parties are able to respond for
the damages resulting from the injury, and other
considerations which ordinarily govern a court of
equity in the exercise of its preventive process of
injunction.
[No. 45.]

Argued Oct. 28, 1874. Decided Dec. 21. 1874.

Again; the head is to have in it longitudinally, a socket to receive one end of a lead pen-invaded, a court of equity will interfere to restrain cil or a tenon extending from it. This socket is to be cylindrical or of any other proper shape. Usually, the inventor says, he made it so as to extend part way through the head, but if desirable, it might be extended entirely through. It must be within one end, but any particular location at the end is not made essential. This, clearly, is no more than providing that the piece of rubber to be used must have an opening leading from one end into or through it. This opening may be of any form and of any extent longitudinally. The form, therefore, of the inside cavity is no more the subject of the patent than the external shape. Any piece of rubber with a hole in it is all that is required thus far to meet the calls of the specifications, and thus far there is nothing new, therefore, in the invention. Both the outside and inside may be made of any form which will accommodate the parties desiring the use.

507*]*But the cavity must be made smaller than the pencil and so constructed as to encompass its sides and be held thereon by the inherent elasticity of the rubber. This adds nothing to the patentable character of the invention. Everybody knew, when the patent was applied for, that if a solid substance was inserted into a cavity in a piece of rubber smaller than itself, the rubber would cling to it. The small opening in the piece of rubber, not limited in form or shape, was not patentable; neither was the elasticity of the rubber. What, therefore, is left for this patentee but the idea that if a pencil is inserted into a cavity in a piece of rubber smaller than itself the rubber will attach itself to the pencil, and when so attached become convenient for use as an eraser?

An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good

PPEAL from the Supreme Court of the

A Territory of Montana.

The complaint in this case was filed in a District Court of Montana in Lewis and Clarke County, asking for an injunction against the alleged wrongful use by the defendants of a certain stream of water. Judgment having been given for the defendants, and affirmed, upon appeal, by the Supreme Court of Montana, the plaintiffs appealed to this court.

The case is fully stated by the court.
Mr. Robert Leech, for appellants.
Mr. G. G. Symes, for appellees.

*Headnotes by Mr. Justice FIELD.

NOTE. Right of prior appropriation of watersee note, 30 L. R. A. 665.

Title to water by appropriation, common law rule; rule of mining States.

Prior appropriation of water of stream by a riparian proprietor, confers no exclusive right to the use of it as against another riparian proprietor unless the latter's rights are impaired by grant or license, or the prior appropriation has continued adversely for more than twenty years, or the common law has been modified by local usage or by statutory enactment. Palmer v. Mulligan, 3 Caines, 307, 2 Am. Dec., 270; Platt v. Johnson, 15 Johns. 213, 8 Am. Dec. 233; Martin v. Bigelow, 2 Aikens, 184, 16 Am. Dec., 696; Hoy v. Sterrett, 2 Watts, 327. 27 Am. Dec., 313: Stout v. McAdams, 2 Scam.,

67, 33 Am. Dec., 441; Davis v. Fuller, 12 Vt., 178, 36 Am. Dec., 334; Evans v. Merriweather, 3 Scam., 492, 38 Am. Dec., 107; Hartzall v. Sill, 12 Pa. St.,

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