plants. There is nothing legally indicative of secrecy about the familiar "No Admittance" signs. There is testimony for the plaintiff that the defendants were asked to make, and did make, promises to keep the method secret; but the testimony is so sharply controverted that we are constrained to resolve the issue against the plaintiff and hold that the court committed no error in dismissing bill of complaint No. 1. [2, 3] The plaintiff in the second suit (by bill of complaint No. 2) charged infringement of two patents for metallized products issued to it as assignee of Grupe and Boyd, the inventors. Grupe filed an application for a patent for an invention in the use of chalk or its equivalent as a filler in a product which we shall presently describe, naming rice starch as one of the equivalents of chalk. Later, Grupe, believing the reference in his application to the use of rice starch was a mistake of his patent attorney, caused it to be erased. In the meantime, Boyd had filed an application for a patent covering rice starch as a filler, based on a claimed reduction to practice prior to Grupe's application. Both patents issued to the plaintiff on the same day, No. 1,515,676 as assignee of Grupe and No. 1,515,722 as assignee of Boyd. The inventions of both patents relate to the very old art of decalcomania which has to do with means for transferring letters, designs, patterns, insignia or the like, from one material, as specially prepared paper, to another material, as china, metals, leather, or fabrics. Three claims of the Grupe patent are in suit. Claim 1 is general and claims 4 and 6 are specific. Claim 1, with accompanying words of explanation, is for: "A metallic medium comprising a carrier strip (usually made of thin flexible paper), a layer of (heat) releasable composition on one face of said strip (as beeswax), a metallic layer disposed on said layer of releasable composition (as pure gold or silver, or bronze or aluminum to simulate one or the other) and an outermost layer comprising sizing (of shellac or varnish-up to this point everything is old) admixed with a material for increasing the lustre of the metallic layer." of the claims of either patent it consists only in the filler used in the last element—the siz ing layer. The plaintiff maintains that the Grupe patent is a primary or basic patent and lies at the foundation of the modern commercial roll leaf industry, claiming that it has five important results which are that chalk or its equivalent, being present in the sizing in the form of myriads of microscopic marbles, (1) operates as a mirror upon light passing through the thin metallic leaf to increase its lustre; (2) affords an opaque screen to block out the color of the article embossed; (3) fills the coarse grain of the fabric embossed; (4) has a heat-retarding effect to produce clean-cut edges of the embossed design; and (5) becomes a shield against tarnishing and discoloring the metallic leaf by chemicals from the article embossed. That the alleged invention was not the foundation of the commercial roll leaf industry is evidenced, we think, by the fact that transfer leaf in rolls was in use, patented and in litigation before the conception of either of the inventions of the patents in suit; and while chalk and rice starch may produce the five results claimed, it is equally true that the same results were obtained in like or different degree by other ingredients in the prior art. In seeking to cover his invention, Grupe impinged materially upon the art, and so did Boyd. The plaintiff, owning both patents and claiming invention in the use of both chalk and rice starch and their equivalents, finds itself in this difficulty: The defendants did not use chalk as a filler. They admit using rice starch. Unless rice starch is the equivalent of chalk, the defendants, of course, did not infringe the Grupe patent. If rice starch is the equivalent of chalk and Boyd reduced his claimed invention of rice starch to practice before Grupe reduced his claimed invention of chalk to practice, then Boyd anticipated Grupe; otherwise Grupe anticipated Boyd. That chalk and rice starch are equivalents is the theory on which Grupe's application for a patent was first made and, though separate patents for the two things have issued, the whole theory of the plaintiff's brief is that "the proofs herein show beyond question" and the "plaintiff still contends that rice starch is the equivalent of chalk." If chalk and rice starch are equivalents one of All claims of the Boyd patent are in suit. the other, they are in the eye of the patent They differ from those of the Grupe patent law the same thing and the two patents isonly in the specification of rice starch as a sued for that thing closely resemble double sizing filler. patenting. In any event where both patents Obviously if invention is involved in any claim the same thing, though under different The other two claims differ from the one quoted only in that the specific filling "material" admixed with the outermost sizing layer is chalk. 20 F.(2d) 803 men's rights under barge contractors' performance bond given United States held determinable according to law as declared by federal courts. names, certainly one is invalid because antici- 2. Courts 372(4)-Laborers' and materialpated by the other. We have not stopped to determine which is invalid by reason of anticipation but have considered the alleged inventions of both one of chalk with rice starch as an equivalent and the other of rice starch with chalk as an equivalent-in respect to the prior use of ingredients in the art which are so closely related to them as to suggest their equivalency and to indicate their lack of patentability. Evidently the Grupe patent or the Boyd patent cannot be infringed unless it is valid and, if valid, it is only because it involves invention and then only if the invention be patentable in that it points out a filler to be admixed with the sizing that is new and useful in the sense of being a real advance over what the art already had. It seems to us that the art had about everything already. It had French chalk dusted on the article to be embossed; dextrin, a derivative of starch; metallic powder; talcum; color pigments; bicarbonate of soda. It had starch variously placed and applied; wheat flour; calcium; pulverized whiting and resin. These fillers varied in some of their functions and perhaps in degrees of excellence in giving lustre and obtaining sharp cleavage. Yet the art is so full of fillers and the idea of fillers has been so long found in the art that we cannot think the disclosure of chalk or rice starch as a filler amounts to invention. The two decrees of the District Court are affirmed. UNITED STATES, to Use of STALLINGS, et al. v. STARR et al. Circuit Court of Appeals, Fourth Circuit. No. 2586. 1. United States 67 (2)-Barge contractors' performance bond given United States held not to cover claims of laborers and materialmen (Hurd Act, amending Act Aug. 13, 1894 [Comp. St. § 6923]). Performance bond, given by barge contractors to the United States pursuant to contract requiring bond "conditioned on the full and complete performance of the contractors under and in accordance with the terms of this contract," held not to cover claims of laborers and materialmen, notwithstanding Hurd Act, amending Act Aug. 13, 1894 (Comp. St. § 6923), requiring that bond given for performance of contract shall contain an obligation guaranteeing payment of such claims. Rights of laborers and materialmen under barge contractors' performance bond given the of the law as declared by federal courts. United States are to be determined in the light 3. Bonds 50-Under North Carolina law, mere statutory requirement that bond contain particular obligation does not incorporate it therein. Under law of North Carolina, the mere requirement of a statute that a bond contain an obligation does not of itself incorporate the obligation in the bond. 4. Bonds 50-Statutory provision that bond shall protect claims of laborers and materialmen, whether such provision be incorporated in bond, or not, will be given effect. A statutory provision that a bond given thereunder shall protect the claims of laborers and materialmen, whether such provision be incorporated in the bond or not, will be given effect. 5. United States 67 (2)-Bond guaranteeing under contract to build barges at contractors' "own risk and expense" held not to cover laborers' and materialmen's claims, on theory that payment thereof was part of perform ance. Barge contractors' performance bond, given pursuant to contract requiring contractors barges involved, held not to make surety liable "at their own risk and expense" to construct for laborers' and materialmen's claim, on theory that payment thereof was one of contractors' duties under contract. 6. United States 67 (3)—Finding that action on government contractors' bond was not instituted within 12 months of final settlement held supported by evidence. Finding of trial judge that action on government contractors' bond was not instituted within 12 months of final settlement held supported by evidence. 7. Appeal and error 1008 (2)-Where Jury is waived, findings of court, supported by substantial evidence, are binding on appeal. Where jury is waived, trial court's findings have force and effect of verdict of jury, and are binding on appellate court, if supported by any substantial evidence. 8. United States 67(3)-"Final settlement," as affects time for suit on government contractors' bond, means final determination by governmental authority of amount government owes or is entitled to. "Final settlement," as affects time of institution of suit on government contractors' bond, does not mean an agreement between the contractor and proper government official adjusting the balance due, nor does it mean payment of balance due under contract, but rather the, final determination by the proper governmental authority of the amount which the gov ernment is finally bound to pay or entitled to receive under contract. [Ed. Note. For other definitions, see Words and Phrases, First and Second Series, Final Settlement.] 9. United States 67 (3)-Final settlement between government and contractor may have been made, notwithstanding balance due may be subject to change. There may be a final settlement between government and contractor, so as to fix rights of creditor under statute, notwithstanding balance found to be due may be subject to change. 10. Appeal and error 1033 (10)-Plaintiffs held not entitled to complain of order of judge setting aside order of predecessor containing conclusions of law favorable to plain tiffs. In materialmen's action on government contractors' bond where judge entered order setting forth certain conclusions of law, re ferred case to auditor, settled bill of exceptions relating to matters which had occurred up to that time, and died before auditor reported, and where his successor set aside the order containing the conclusions of law, and with the consent of all parties granted new trial, held, plaintiffs, on review of adverse judgment, could not complain of order setting aside order of first judge containing conclusions favorable to them, in view of their failure to except and consent to procedure followed. In Error to the District Court of the United States for the Eastern District of North Carolina, at Newbern; Isaac M. Meekins, Judge. Action by the United States, to the use of Robert L. Stallings, trading as Stallings Bros., against Edward I. Starr and another, trading as Starr & Bennett, and others, wherein the Air Reduction Steel Company and others intervened. Judgment for defendants, and plaintiff and interveners bring error. Affirmed. Hugh H. Obear, of Washington, D. C., and R. E. Whitehurst, of Newbern, N. C. (A. D. Ward and Whitehurst & Barden, all of Newbern, N. C., Douglas, Obear & Douglas, of Washington, D. C., and Ward & Ward, of Newbern, N. C., on the brief), for plaintiffs in error. Larry I. Moore, of Newbern, N. C., and Bynum E. Hinton, of Washington, D. C., for defendants in error. Before WADDILL and PARKER, Circuit Judges, and BAKER, District Judge. PARKER, Circuit Judge. Starr & Bennett, hereinafter called contractors, on February 27, 1919, entered into a contract with the Director General of Railroads of the United States for the construction of four steel barges, and gave bond, with the Globe ful performance of the contract. This is an Indemnity Company as surety, for the faithaction instituted on the bond by Stallings furnished to the contractors. Sundry other Bros., as relators, to recover for materials furnishers of materials have intervened and been made parties to the action. In the court below a jury trial was duly waived by written stipulation, and the trial judge found the facts and rendered judgment in favor of the surety. By the exceptions to this judgment two questions are presented: (1) Whether the bond sued on covers the claims of laborers and materialmen; and (2) whether the action was instituted within 12 months of final settlement, as required by statute. On the first question, it appears that the bond contained no provision obligating the surety to pay for labor or materials. The bond by reference incorporates the contract, but the contract contains no such obligation. The first paragraph of the contract provides that the contractors "at their own risk and expense" shall construct the barges contracted for, and shall furnish acceptable bond in the sum of $83,550, "conditioned upon the full and complete performance of the contractors under and in accordance with the terms of this contract." By a subsequent paragraph, the contractors agree to procure and keep in force "all such bond or bonds for the protection of claims and/or liens by laborers and/or materialmen, as may be required by the laws of the United States." It appears, however, that no such bond was given. that the action was instituted October 11, On the second question, the record shows 1922. Judge Meekins found that on October 4, 1921, the barges had been completed, delivered, and accepted, and that on that date there was made by the proper government department and rendered to the contractors and their receiver a statement of the account under the contract, administratively determining the balance due to be $23,864.30; that on the same date the government issued and forwarded its voucher to the receiver of the contractors for the sum of $22,500, leaving & balance of $1,364.30 to be thereafter paid; and that the amount so determined was not thereafter changed, but was accepted as final payment of the balance due under the contract. There was evidence to support this finding of the trial judge. The record shows that on October 4, 1921, the chief of the Inland and Coastwise Waterways Service of the 20 F.(2d) 803 War Department, whose duty it was to make settlement under the contract, sent a letter to the receiver of the contractors, inclosing a statement of account, and showing that the government owed a balance to the contractors of $23,864.30. The letter was as follows: "There is inclosed for your certification voucher R-337 covering proposed payment on contract NYCS-11 between the Director General of Railroads and Starr & Bennett. Please sign the voucher at point indicated by 'X' and return to this office, when check in the amount of $22,500 will be forwarded in accordance with the wording of the voucher. "For your information there is inclosed statement of the account between the Director General of Railroads and Starr & Bennett as it appears on the books of the Inland and Coastwise Waterways Service as of October 3, 1921. It is believed that the statement is complete and includes all credits and charges. However, it is possible that additional charges will be discovered, as a number of small items have recently been reported by outside auditors who have just completed checking the accounts of the New York Canal section. Any change in the statement will be reported to you." and "This does not represent a complete settlement of balance due on the above contract." The voucher for the $1,364.30 was sent to the receiver some time prior to February 7, 1922, exactly when does not appear, but on that date the receiver petitioned the superior court, by which he had been appointed, for authority to accept the voucher. The authority was granted, the receiver certified the voucher as correct, and on February 15, 1922, it was approved by the proper official of the War Department and paid by check of that date. It contained, among other things, the following notation: "Final settlement on account NYCS No. 11. This payment represents the amount found due under contract, and it is further agreed that this is a final payment and full and complete settlement of all disputed claims and all claims and demands • of every kind and character which the said Starr & Bennett has or may have against the United States, the Secretary of War, or the Director General of Railroads in any wise connected with or growing out of the contract, upon which this payment is made." [1] We think that the learned District Judge was correct in holding that the bond in suit did not cover the claims of laborers and materialmen. It is true that on a contract such as this, the Hurd Act (Act Feb. 24, 1905, amending Act Aug. 13, 1894, 28 Stat. 278, 33 Stat. 811, U. S. Comp. Stat. § 6923), requires that the bond given for the performance of the contract shall contain an obligation guaranteeing the payment of such claims. But this requirement of the statute does not authorize a recovery by laborers and materialmen, where neither the bond itself nor the contract contains such obligation. Babcock & Wilcox v. American Surety Co. (C. C. A. 8th) 236 F. 340; U. S. v. Montgomery Heating & Ventilating Co. (C. C. A. 5th) 255 F. 683; U. S. v. Stewart (C. C. A. 8th) 288 F. 187; U. S., to use of Zambetti, v. American Fence Construction Co. (C. C. A.) 15 F. (2d) 450. [2, 3] Of course, the rights of the parties in this case are to be determined in the light of the law as declared by the federal courts; but, as the bond here considered was given within the state of North Carolina, it is worth while to note that the rule followed by the federal courts is the same as the rule followed by the courts of that state. Warner v. Halyburton, 187 N. C. 414, 121 S. E. 756; Ideal Brick Co. v. Gentry, 191 N. C. 636, 132 S. E. 800; Page Trust Co. v. Carolina Construction Co., 191 N. C. 664, 132 S. E. 804. Under the law of North Carolina, the mere requirement of the statute that a bond contain an obligation does not of itself incorporate the obligation in the bond; for, as said by Chief Justice Stacy in Ideal Brick Co. v. Gentry, supra: "It is a principle too well established to require the citation of authorities that, ‘as a party consents to bind himself, so shall he be bound.'" [4] A statutory provision that a bond given under the statute shall protect the claims of laborers and materialmen, whether such provision be incorporated in the bond or not, will be given effect. See Standard Electric Time Co. v. Fidelity & Deposit Co. of Maryland, 191 N. C. 653, 132 S. E. 808, construing chapter 100, Public Laws N. C. 1923. But, in the absence of some such statutory provision, the courts will not read into a bond an obligation which it does not contain. It is insisted, however, that the bond is obligated to laborers and materialmen because the contract provides that the contractors shall furnish a bond for their protection as required by the laws of the United States. But the trouble is that the contractors did not furnish such bond. The same point was in volved in the case of Babcock & Wilcox v. American Surety Co., supra, in which Judge Carland, speaking for the Circuit Court of Appeals of the Eighth Circuit, in denying the contention, said (236 F. 342, 343): "When all is said the case is simply this: That Opdhal by his contract agreed to give a bond obligating himself to pay the claims of materialmen, but he failed to give any such bond. The surety company signed the bond which was executed, and no other. The bond itself did not provide for the payment of materialmen, nor did the contract contain any such provision. The case is not difficult, unless we try to make it different from what it really is." To the same effect are U. S. v. Stewart, supra, and U. S., to the use of Zambetti, v. American Fence Construction Co., supra, in the latter of which cases the Circuit Court of Appeals for the Second Circuit treated the question as too well settled to permit of discussion. [5] Counsel for plaintiffs in error strenuously contend, however, that the provision of the contract that the contractors shall "at their own risk and expense" construct the barges is in effect an obligation imposing upon the contractors the duty to pay for labor and materials supplied them, and that, as the bond guarantees the performance of this as well as other provisions of the contract, recovery may be had thereunder. Without questioning for a moment the rule that laborers and materialmen may recover under the bond where the contract obligates the contractor to pay claims for labor and materials, we do not think that the provision of the contract relied on has that effect. Exactly the same question was before the Supreme Court of North Carolina in Warner v. Halyburton, supra, and what was said by Mr. Justice Hoke, speaking for the court in that case, is pertinent here: "The contract in question provides that the Construction Company shall build and complete the schoolhouse at Apex, N. C., providing all the materials, etc., therefor at their own expense, at the price of $58,083. There is no stipulation in the agreement that the contractor shall pay either the laborers or the materialmen, and a perusal of the instruments throughout will show that they are merely designed to secure the satisfactory and proper completion of a turnkey job, so far as the municipality is concerned, and that no interest ultra is provided for or contemplated." In the Babcock & Wilcox and Stewart Cases, supra, the contracts required the con tractors to "furnish" the materials, and in both cases the Circuit Court of Appeals for the Eighth Circuit held that the obligation to furnish was not an obligation to pay for material that might be furnished, and denied the right of recovery under the bond. The same holding was made by the Supreme Court of Indiana in Greenfield Lumber & Ice Co. v. Parker, 159 Ind. 571, 65 N. E. 747, where the contract provided that the contractor "at his own proper cost and charges" should provide labor and materials. These decisions seem to be in harmony with the weight of authority. City of Sterling v. Wolf, 163 Ill. 467, 45 N. E. 218; Green Bay Lumber Co. v. Independent School Dist., 121 Iowa, 663, 97 N. W. 72; Fellows v. Kreutz, 189 Mo. App. 547, 176 S. W. 1080; Puget Sound Brick, etc., Co. v. School Dist., 12 Wash. 118, 40 P. 608; note to Ann. Cas. 1916A, 759. The cases of Peake v. U. S., 16 App. D. C. 415, and Speir v. U. S., 31 App. D. C. 476, are distinguished from the case at bar, in that in those cases the promise to pay laborers and materialmen was inserted in the contract. U. S., to use of Zambetti, v. American Fence Const. Co., supra; Babcock & Wilcox et al. v. American Surety Co., supra. And the same distinction exists as to the case of Hartford Accident & Indemnity Co. v. Board of Education, 15 F. (2d) 317, decided by this court, which construed a bond given under a statute of West Virginia. [6-8] On the question whether the action was instituted within 12 months of final settlement, we have the finding of the District Judge that it was not so instituted, but that there was an administrative determination of the amount due more than 12 months beforehand. A jury trial having been waived, this finding has the force and effect of the verdict of a jury, and is binding upon this court if there is any substantial evidence to support it. George A. Fuller Co. v. Brown (C. C. A. 4th) 15 F. (2d) 672. We think that it is supported by such evidence. The letter of October 4th, quoted above, accompanied by the statement of account showing a balance due the contractors, was certainly evidence of such a final settlement as is contemplated by the statute. Final settlement as there used does not mean an agreement between the contractor and the proper government official adjusting the balance due, nor does it mean payment of the balance due under the contract. It means the final determination by the proper governmental authority of the amount which the government is finally bound to pay or entitled to receive under the con |