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derstood by the constitution and laws, a sentence to the state prison, for any term of time, must be considered as falling within them. The convict is placed in a public place of punishment, common to the whole state, subject to solitary imprisonment, to have his hair cropped, to be clothed in conspicu. ous prison dress, subjected to hard labor without pay, to hard fare, coarse and meager food, and to severe discipline. Some of these a convict in the house of correction is subject to; but the house of correction, under that and the various names of work-house and bridewell, has not the same character of infamy attached to it. Besides, the state prison, for any term of time, is now by law substituted for all the ignominious punishments formerly in use; and, unless this is infamous, then there is now no infamous punishment other than capital.” Jones v. Robbins, 8 Gray, 329, 349. In the same case, Mr. Justice MERRICK, while dissenting from the rest of the court upon the ques. tion whether under the words “the law of the land" in the constitution of Massachusetts an indictment by a grand jury was essential to a prosecution for a crime punishable by imprisonment in the state prison, and taking a po sition upon that question more accordant with the recent judgment of this court in Hurtado v. California, 110 U. S. 516, S. C. 4 SUP. CT. REP. 111, yet concurred with the other judges in holding that such imprisonment at hard labor was an infamous punishment. 8 Gray, 370-372.

Imprisonment at hard labor, compulsory and unpaid, is, in the strongest sense of the words, “in voluntary servitude for crime," spoken of in the provision of the ordinance of 1787, and of the thirteenth amendment of the constitution, by which all other slavery was abolished.

Deciding nothing beyond what is required by the facts of the case before us, our judgment is that a crime punishable by imprisonment for a term of years at hard labor is an infamous crime, within the meaning of the fifth amendment of the constitution; and that the district court, in holding the petitioner to answer for such a crime, and sentencing him to such imprisonment, without indictment or presentment by a grand jury, exceeded its juris. diction, and he is therefore entitled to be discharged.

Writ of habeas corpus to issue.

(114 U. S. 447) WESTERN ELECTRIC MANUF'G Co. 0. ANSONIA BRASS & COPPER CO.

(April 20, 1885.) 1. PATENT LAW-INSULATING TELEGRAPH WIRES-OLMSTEAD PATENT Void.

Reissued letters patent, numbered 6,954 and 6,955, dated February 29, 1874, for improvements in insulating telegraph wires, granted to Joseph Olmstead, covers an old process applied to the same subject, with no change in the manner of apply. ing it, and with no result substantially distinct in its nature. The patent is there

fore invalid. 2. SAME-LACK OF SPECIFIC DESCRIPTION OF A PROCESS.

A patentee cannot claim the benefit of an element in his invention not specifically described; he cannot mention a quality of the product, and ask the court to infer the process from that quality. Appeal from the Circuit Court of the United States for the District of Con. necticut.

The case was a suit in equity, brought by the appellant, the Western Electric Manufacturing Company, against the Ansonia Brass & Copper Company to restrain the infringement of two reissued letters patent, numbered 6,954 and 6,955, respectively, granted to the appellant as the assignee of Joseph Olmstead, both dated February 29, 1874, for improvements in insulating tele graph wires. The reissues are divisions of original letters patent No. 129,858, dated July 23, 1872. The descriptive specifications of the two patents were

18. C. 9 Fed. Rep. 706.

identical. They differed only in the claims, the first being for a process, and the second for the product of the process.

The specification of both patents, after stating that Olmstead had invented a new and useful improvement in insulating telegraph wires, proceeded as follows: "The method of insulating now in use consists in braiding over the wires a fibrous covering, after which it is dipped in wax, for the purpose of filling and closing its pores, and, after a subsequent scraping to remove the surplus wax, it is ready for use. This method is, however, objectionable, inasmuch as it leaves the covering in a very rough and soft condition, and fails to secure perfect insulation. In my improved method, after the wire has received its coating, I dip it in paraffine or wax, after which, instead of scraping off the surplus coating, I pass the whole through a suitable machine, which compresses the covering and forces the paraffine or wax into the pores and secures perfect insulation. By so compressing the covering the paraffine or wax is forced into the pores, and the surface becomes and appears polished. Wire insulated in this manner is entirely impervious to the atmosphere, of greater durability, and less cumbersome than any heretofore made."

The claim of the process patent No. 6,954 was as follows: "The method of insulating telegraph wire by first filling the pores of the covering, and subsequently compressing this covering, and thereby polishing its surface, substantially as described.” The claim of the product patent No. 6,955 was “an insulated telegraph wire, the covering of which has its pores filled and its surface polished, substantially as described.”

The defendant denied in its answer that Olmstead was the first and original inventor of the improvement described in the patents, or of any substantial or material part thereof, or that the same was patentable or the subjectmatter of invention, and that the alleged invention had been previously patented by letters patent of Great Britain, granted to Thomas Earl of Dundonald, dated July 22, 1851, and by letters patent of Great Britain, granted to Felix M. Baudouin, dated April 3, 1857. The defendant also denied in. fringement. The circuit court, on final hearing, dismissed the bill, and the plaintiff appealed.

Geo. P. Barton, for appellant. Wm. B. Wooster, for appellee.

Woods, J. It is clear that the two patents must stand or fall together If the patent for the process is invalid, so must be the patent for the product. What we have to say will refer to the process patent. The alleged invention described in the patent is not for insulating telegraph wires, for that art long antedated the original patent. The specification disclaims as a part of the invention the braiding of a fibrous covering over the wire, and then dipping it in wax for the purpose of filling and closing the pores, and the subsequent scraping of the surplus wax from the wire. The patent does not cover the material in which the wire, after it has received its fibrous coating, is dipped, which may be either paraffine, wax, or bitumen, or any other suitable material. The three substances mentioned had long been used for that purpose. Nor does the patent specify or cover any device by which the process is to be carried on. Any suitable machine may be used. The process described by the patent consists, therefore, simply in this: After the wire has received its. fibrous coating, and been dipped in paraffine, wax, or other suitable substance, the compressing and forcing of the paraffine, wax, or other substance, without scraping off any part of it, into the pores of the fibrous material by some suitable means. We think this process was not new. It was substantially anticipated both by the process described in the patent of Dundonald and in that of Baudouin, the first dated January 22, 1852, and the other April 3, 1857. Dundonald describes his process thus: “I also employ a bituminous material to cover, and thus insulate, the conducting wires of electric telegraphs, which are intended to be placed under ground. For this purposeI employ the said bitumen, either simple or compounded, of a flexible descrip

*450

tion, and pass the wire through it when it is in a melted state, then causing the wire to pass through some die or orifice, which will deprive it of all the superfluous bitumen. * The incasement of this wire with bitumen may also be affected by covering it with a filamentous material, which has been previously saturated with melted bitumen, and then passing the wire so covered through a heated die or orifice, so as to melt or soften the bitumen upon the filamentous material, and press the whole of the coating against the wire in such a way as to cause it to form one compact continuous covering of the wire, and thus insure its insulation."

The patent of Baudouin describes his process as follows: “My invention relates to the preparation of conductors of electricity for electric telegraphs, being wires insulated to prevent the loss or deterioration of the electric cur. rents used for that purpose, and also in the machinery for the preparation of manufacture of suc conductors. I coat the wires with bituminous or ich like fatty matters that are not liable to become hard or crack, but, on the contrary, are constantly acted on by the temperature of the atmosphere. Coatings of this material in themselves are insufficient to maintain the proper protection and insulation for telegraph conductors, but when combined with other materials, such as paper, woven fabrics of cotton, silk, wool, or hemp, in a particular manner, are well adapted for the purpose. I prefer to use three ribbons and bobbins for this purpose, the first covering of the wire being enveloped by the second in such manner that the helical junction of the first ribbon is covered by the second, and the second by the third. The wire is passed through a bath of hot bitumen, and has the superfluous matter removed by passing through suitable dies or parts to scrape and smooth its surface, and render it of uniform thickness. The first and second ribbons are also passed through bituminous or other suitable matter to render them more impervious to electricity. The coated and lapped wire is passed through suitable dies to remove superfluous matter, to smooth down the lapping of the ribbons, and to compress and cause their proper adhesion. The coated and lapped wire passes through dies or smoothing holes both in entering and leaving the rotating frame. These dies or smoothers have a rotary motion, the better to enable them to wipe and smooth the coated wire.”

It is plain that these patents anticipate the process set out in the specification of the Olmstead process patent. They all three describe the compressing of the wax, paratline, or bitumen coating of a wire covered with the fibrous material, so as to attain the same result, namely, the insulation of the wire. The Olmstead patent, therefore, covers an old process applied to the same subject, with no change in the manner oi applying it, and with no result substantially distinct in its nature. It cannot, therefore, be a valid patent. Pennsylvania R. Co. v. Locomotive Truck Co. 110 U. S. 490; S. C. 4 SUP. CT. REP. 220; Vinton v. Hamilton, 104 U. S. 485.

The fact that in the process described in the Olmstead patent the surplus wax or paraffine is not scraped off, but all that adheres to the wire is compressed against it and forms part of the covering, is relied on to distinguish that process from those of Dundonald and Baudouin. But the Dundonald process does not differ in this respect from that of Olmstead, for in the Dundonald process the whole of the coating is pressed against the wire, and is left to form the covering; and as to the Baudouin process, the difference consists merely in the use of a greater quantity of wax or paraffine to form the coating. This may be an improvement upon the Baudouin process, but it does not involve invention. So far as the present case is concerned, another answer to this contention of the appellant is that, in this respect, the defendant follows the Baudouin and not the Olmstead process, by scraping off the super-a fluous coating material.

*It was insisted in argument, by appellant's counsel, that one of the features e of the process described in the Olmstead patent was the allowing of the wax

or paraffine covering to cool before compressing it upon the wire, and as this was not done in the Dundonald or Baudouin process, they did not anticipate che Olmstead process. But neither the specification nor claim of the Olmstead patent mentions, as a part of the process, the cooling of the wax or paraffine coating before compressing it upon the wire. The appellant's counsei, however, contends that it must be considered a part of the process, because the polished appearance of the surface of the covering described in the speci. fication is the result of allowing the paraffine or wax to cool before compressing it upon the wire. But, clearly, a patentee cannot claim the benefit of an element of his invention thus vaguely and indefinitely hinted at. The law in force when the patent of Olmstead was issued-act July 8, 1870, (Rev. St. S 4888,)-requires that “before any inventor shall receive a patent for his invention or discovery he shall file in the patent-office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, or use the same; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.” It is clear that if the patentee intended to include the cooling of the wax or paraffine before compressing it upon the wire, he has failed to describe in his specification that element of his invention, as required by the statute. Instead of describing the process he mentions a quality of the product, and asks the court to infer the process from that quality. Such a vague and inverted method of description is not a compliance with the statute. That part of the alleged invention is not even referred to in the most distant manner in the claim. It has been held by this court that “the scope of letters patent should be limited to the invention covered by the claim; and, though the claim may be illustrated, it cannot be enlarged by the language in other parts of the specification." Ruilroad Co. v. Mellon, 104 U. S. 112. The element of the process under consideration cannot, therefore, be held to be covered by the patent. The contention that the patentee intended to include it in his process is evidently an after-thought.

The result of the views expressed is that both the patents sued on are void. Decree athrmed.

*453

*464

(114 U. S. 463)
PACIFIO NAT. BANK OF BOSTON 0. MIXTER.

(April 20, 1885.) PRACTICE-SUPREME COURT-BOND ON WRITS OF ERROR AND APPEAL8-COMPTROLLER OP

THE TREASURY-ACTION AGAINST INSOLVENT NATIONAL BANK8. In Error to the Circuit Court of the United States for the District of Massachusetts. On motions to dismiss.

Joshua D. Ball, for motion. A. A. Ranney, in opposition. *WAITE, C. J. This motion is denied. Under section 1001 of the Revised Statutes, no bond for the prosecution of the suit, or to answer in damages or costs, is required on writs of error or appeals issuing from or brought to this court by direction of the comptroller of the currency in suits by or against insolvent national banks, or the receivers thereof. This is such a case. There is abundant evidence in the record that the direction from the comptroller to the receiver was to take out a writ of error in this case, although, by mistake in one of the papers, Henry Mixter was named as the plaintiff instead of George Mixter.

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(111 U S. 439)

DOBSON and another 0. HARTFORD CARPET Co.1
SAME 0. BIGELOW CARPET Co. (Two Cases.)'

(April 20, 1885.)
1. PATENTS FOR INVENTIONS-DESIGN FOR CARPETS-INFRINGEMENT-DAMAGES.

In a suit in equity for the infringement of a patent for a design for carpets, where no profits were found to have been made by the defendant, the circuít court al. lowed to the plaintiff, as damages, in respect to the yards of infringing carpets made and sold by the defendant, the sum per yard which was the protit of the plaintiff in making and selling carpets with the patented design, there being no evidence as to the value imparted to the carpet by the design. Held, that such award of dam.

ages was improper, and that only nominal damages should have been allowed. 2. SAME-BILL TAKEN AS CONFESSED-VALIDITY.

Where a bill founded on a design patent, with a claim for a pattern and separate claims for each of its parts, is taken as confessed, it alleging infringement of the

'invention,” the patent will be held valid for the purposes of the suit. 3. SAME-JOINDER OF CLAIMS.

•The joinder of such claims in one patent does not per se invalidate the patent, or

any claim, at the objection of a defendant. 4. SAME-CLAIM REFERRING TO DESCRIPTION AND DRAWING.

A claim of “the design for a carpet, substantially as shown," refers to the de

scription and the drawing, and is valid. 6. SAME-WANT OF INVENTION.

An objection that a patent for a design is for an aggregation of old ornaments, and embodies no "invention,” is concluded, where the bill alleges infringement

of the “invention," and is taken as confessed. 6. SAME-MASTER'S REPORT-Costs.

Where the master reported no profits, and nominal damages, in a suit in equity for the infringement of a patent for a design, and, on exception by the plaintitř, the circuit court allowed a sum for damages, and this court reversed its decree, the plaintiff was allowed costs in the circuit court to and including the interlocutory decree, and the defendant was allowed his costs after such decree. Appeals from the Circuit Court of the United States for the Eastern District of Pennsylvania.

H. T'. Fenton and R. P. White, for appellants. A. o. Briesen, for appellees.

BLATCHFORD, J. These are three suits in equity brought in the circuit court of the United States for the Eastern district of Pennsylvania, against John Dobson and James Dobson, trading as John and James Dobson and as "The Falls of Schuylkill Carpet Mills. No. 1 is brought by the Hartford Carpet Company, for the infringement of design letters patent No. 11,074, granted March 18, 1879, to the plaintiff, as assignee of Winthrop L. Jacobs, for three and one-half years, for a design for carpets. No. 2 is brought by the Bigelow Carpet Company, for the infringement of design letters patent No. 10,778, granted August 13, 1878, to the plaintiff, as assignee of Hugh Christie, for three and one-half years, for a design for carpets. No. 3 is brought by the Bigelow Carpet Company, for the infringement of design letters patent No. 10,870, granted October 15, 1878, to the plaintiff, as assignee of Charles Magee, for three and one-half years, for a design for carpets.

*No. 1 was commenced on the twenty-sixth of April, 1879, and Nos. 2 and* 3 on the seventh of May, 1879. In No. 1 and No. 3 the defendants appeared by a solicitor, but did not plead, answer, or demur to the bill, and it was taken as confessed, in each suit, on the eleventh of July, 1879; and on the second of September, 1879, an interlocutory decree was entered in each suit, awarding a perpetual injunction, and an account of profits and damages. In No. 2, an answer was filed on the third of September, 1879, denying infringement and setting up want of novelty. A replication was filed, and on the fifth of November, 1879, a preliminary injunction was granted. Testiniony

18. C. 10 Fed. Rep. 335.

v.59—60

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