Opinion of the Court.

of introduction, preference being given to the old form of lock-case, with its projecting key-post, though it necessitated the hand-chiselled mortise and fastening-screws for its attachment." Speaking of his own prior patent of May 24, 1881, he says: "The lock-case being thus secured at its sides, allowed of a space or recess being formed in the rear wall of the mortise and in rear of the cap-plate for the reception of the projecting key-posts, which space was covered and concealed from view by the projecting top plate for selvedge. While this latter construction of lock possessed valuable features of improvement not disclosed by the prior art, yet the form of lock shown and described in the patent is such as to preclude its adoption for use in routed cavities, because this front plate is not of the proper form to fit within and cover a cavity made by a routing tool. The object of this invention is to obviate the objectionable features and defects herein before set forth, and provide a lock-case of such form and construction that it may have a projecting key-post, if so desired, and be secured within a routed cavity, and snugly retained therein, so as to conceal the cavity from view, and form a neat and finished appearance when in place. With these ends in view my invention consists in a lock-case having its edges constructed to engage or interlock with the side walls of a routed cavity, and provided with a front plate having a rounded bottom adapted to fit within a countersunk recess around the routed cavity, and constitute a support for the lock-case and conceal the cavity from view." This lock differs from the prior Spiegel patent principally in being rounded at the bottom so as to be fitted to a routed cavity, and prevent the displacement of the lock either in a forward or backward direction, and also in having a space in the rear wall of the cavity for a projecting key-post.

This was practically the state of the art when Orum's patent was granted. In this patent the shell or case of the lock is dovetailed to fit a corresponding dovetailed cavity, and the selvedge is also made of similar dovetail shape. The front plate projects upon each side of the case and is rounded at the bottom, so that it may be fitted to a routed cavity. The

Opinion of the Court.

lock is held in position by two tacks through the upper corners of the front plate, or by a single tack driven through a hole at the base of the plate. To insert the lock, it is simply slipped down into place in the mortise and secured against lifting by one or more tacks which are used merely to prevent the lock from slipping out of the mortise, and are not called upon to resist a strain. His claim is for "the lock herein described, having a dovetail cap and top plate, and a front plate projecting laterally and below the cap and rounded at the bottom, whereby the lock is adapted for insertion in a mortise formed by a laterally-cutting bit, and when in position is sustained by a countersunk front plate, as set forth." There is no mention made, in the specification or claim, of a projecting key-post or of any space for its reception, although such a key-post is shown in the drawing, and it was evidently intended that the mortise should be made deep enough to receive it, or that a special channel should be cut out for that purpose. The selvedge was made wide enough to cover a cavity corresponding in depth to the projection of such keypost.

In view of the advance that had been made by prior inventors, it is difficult to see wherein Orum displayed anything more than the usual skill of a mechanic in the execution of his device.

All that he claims as invention is found in one or more of the prior patents. The dovetailed cavity and the correspondingly shaped case or shell is only a copy of a cavity shown in Fig. 8 of the Gory patent, and it certainly required no invention to make the top plate or selvedge of the same shape so as to completely cover the cavity. The projecting front plate rounded at the bottom is shown in the second Spiegel patent, both of these patents also exhibitíng a projecting back and front plate, and a projection or groove in the mortise between them. Neither is the countersunk recess for the reception of the front plate novel, since it is also found in the second patent to Spiegel, and expressly set forth as an element of his first two claims. In each case it is used for the purpose of supporting the lock vertically, and also of

Opinion of the Court.

preventing it falling backward against the inner wall of the mortise.

In view of the fact that Mr. Orum had no actual knowledge of the Gory patent, he may rightfully claim the quality of invention in the conception of his own device, but as he is deemed in a legal point of view to have had this and all other prior patents before him, his title to invention rests upon modifications of these, too trivial to be the subject of serious consideration. His "radically new idea of making the mortise as deep as the width of the projecting selvedge and of cutting out the selvedge at its ends," as claimed by his counsel, was such as would have occurred at once to an ordinarily intelligent mechanic who had the previous devices before him. To speak of these trifling variations as involving months of labor, thought, and experiment is a misuse of words. In his own testimony, Mr. Orum, who was called as a witness by the defendant, says that if he had been acquainted with the Gory patent he would have had no difficulty in making the top plate of the Spiegel lock conform to a dovetailed cavity, or any other routed cavity. While the testimony of a patentee in derogation of his own patent is usually open to some suspicion, this opinion is so obviously correct that it needs only a comparison of his device with those of Gory and Spiegel to confirm it.

It is true the Orum lock seems to have gained an immediate popularity, to have met with large and increasing sales, and to have had the usual effect of successful patents in stimulating the activity of business competitors to produce an equally useful and popular device. Were the question of patentability one of doubt this might suffice to turn the scale in favor of the patentee. But there are so many other considerations than that of novelty entering into a question of this kind that the popularity of the article becomes an unsafe criterion. For instance, a man may, by the aid of an alluring trade-mark, succeed in catching the eye of the people, and palming off upon them wares of no greater intrinsic value than those of his rivals; but such trade-mark may be, and usually is, wholly destitute of originality, often taken from some prior publica

Syllabus.

tion, and appropriated to the specific purpose of the owner. The same result may follow from the more attractive appearance or the more perfect finish of the article, from more extensive advertising, larger discounts in price, or greater energy in pushing sales. While the popularity of the Orum lock may be due to its greater usefulness, or to the fact that it was put upon the market just at the time when cabinetmakers were looking for a lock of this description, it is certainly not due to any patentable feature in its construction. The decree of the court below dismissing the bill is, therefore,

Affirmed.

UNDERWOOD v. GERBER.

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE EASTERN DISTRICT OF NEW YORK.

No. 217. Argued April 19, 1893. - Decided May 1, 1893.

In a suit in equity brought on letters patent No. 348,073, granted August 24, 1886, on an application filed March 22, 1886, to John T. Underwood and Frederick W. Underwood, for a "reproducing surface for type-writing and manifolding," the claim being for "A sheet of material or fabric coated with a composition composed of a precipitate of dye-matter, obtained as described, in combination with oil, wax, or oleaginous matter, substantially as and for the purposes set forth," it appeared that letters patent No. 348,072, had been granted to the plaintiffs August 24, 1886, on an application filed March 22, 1886, the claim of which was for "The coloring composition herein described for the manufacture of a substitute for carbon-paper, composed of a precipitate of dye-matter, in combination with oil, wax, or oleaginous matter, substantially as set forth." The suit was not brought on No. 348,072. The only difference in the two patents was that No. 348,073 was for spreading upon paper the composition described in No. 348,072: Held that, in view of earlier patents and publications, there was no novelty in taking a coloring substance already known and applying it to paper; that the omission to claim in No. 348,073, the composition of matter described in it was a disclaimer of it, as being public property; and that there was no invention in applying it to paper, as claimed in No. 348,073.

THE case is stated in the opinion.

Opinion of the Court.

Mr. Livingston Gifford for appellants. Mr. James A. Hudson filed a brief for same.

Mr. Arthur v. Briesen for appellees.

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 Eastern District of New York, by John T. Underwood and Frederick W. Underwood against Henry Gerber and Anton Andreas, founded on the alleged infringement of letters patent No. 348,073, granted to the plaintiffs August 24, 1886, on an application filed March 22, 1886, for a "reproducing surface for type-writing and manifolding."

The specification reads as follows:

"Our invention relates to an improved reproducing-surface adapted to be employed for obtaining copies of type-writing or other printed or written impressions by means of a typewriter or other printing device, or by the employment of a stylus or other writing means.

"Our improved transfer-surface is spread upon a sheet or vehicle, and when so applied is adapted to be employed in place of the articles of trade commonly known and designated as 'carbon paper' or 'semi-carbon paper,' which are employed by type-writers and others to produce copies of impressions either obtained by a machine or by a stylus or other writing means.

"[In carrying out our invention we employ in the manufacture of our improved transfer-surface dye-wood solutions or their active principles, which we filter and precipitate with alkalies and mineral salts, or with alkalies, acids, and mineral salts, or with acids or alkalies alone. After the solution has been filtered the precipitate is removed from the filtering device and dried. The precipitate is then mixed with lard-oil and wax or their equivalents, and the mixture is then ground together in a warm state.

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