[435]

[436]

and adjusted, so as to fit it to accomplish the specific result of cutting heavy paper when in large sheets and in a wet condition, as received from the paper-making machine, into smaller sizes and other shapes, for use as boards in book binding and box making.

in its specification. Vance v. Campbell, 1 | scribed, whereby the various parts are combined
Black, 427 [66 U. S. bk.17, L. ed. 168]; Brown
v. l'iper, 91 U. S. 37 [Bk. 23, L. ed. 200].
From that evidence, it appears that, at the
time of the alleged invention of the appellant,
and for many years prior thereto, paper boards
for bookbinding or for making boxes were
cut, trimmed or separated, while in a wet or Whether the particular construction and ar-
moist state, as the paper in sheets came from rangement of the parts forming the combination
the mill, by means of a hand saw, sometimes and adjustment described was, of itself, some-
with teeth, and sometimes ground with a thing novel, requiring invention, or whether
curved line to a sharp edge. This was the mode the adaptation and application of such a com-
or process in universal use. Heavy paper combination to the particular use declared was an
ing from the machine in a dry condition was invention by reason of the novelty of the use
cut, for similar purposes, in one direction by and the new result obtained, within the princi-
means of rolling shears; that is, revolving cir-ple of the cases of Stimpson v. Woodman, 10 Wall.
cular discs, operated on a shaft, their edges
ground to an angle of about sixty degrees, the
same as a pair of scissors; and in the other di-
rection by straight shears, acting like ordinary
scissors.

It is manifest, from this state of the art, that it was not open to the appellant, at the time he applied for his patent, to claim as his invention the discovery that heavy paper intended for the use of bookbinders and boxmakers, could best be cut into proper shapes and sizes, while in wet sheets, as they came from the machine; nor that the cutting could best be performed by cutters with serrated edges; for this was matter of general knowledge and common practice.

Accordingly, in the specification to his original patent, he declared the nature of his invention to consist"in combining six adjustable circular saws upon two shafts, set at any angle to each other, and a two-way carriage supported by a frame, and provided with guides so as to work easily and carry the material to be cut." Then follows a description of the machine which contains this combination, and of the mode of operating it, so as to effect the result of cutting the large wet sheets of heavy paper, placed on the frames for that purpose, in both directions, into smaller sheets of any desired sizes. This description refers to the drawings, which show the machine with all its parts, and their relations to each other, in their combination.

117 [77 U. S. bk. 19, L. ed. 866]; Tucker v. Spalding, 13 Wall. 453 [80 U. S. bk. 20, L. ed. 515]; Brown v. Piper, 91 U S. 37 [Bk. 23, L. ed. 2001; Roberts v. Ryer, 91 U. S. 157 [Bk. 23, L. ed. 270]; Heald v. Rice, 104 U S. 754 [Bk. 26, L. ed. 916]; Hall v. MacNeale, 107 U. §. 90 [Bk. 27, L. ed. 367]; Atlantic Works v. Brady, 107 U S. 192 [Bk. 27, L. ed. 438], and Pennsylvania Railroad v. Locomotive Truck Co. 110

S. 490 [Bk. 28, L. ed. 222], are questions not before us. It is sufficient to say that, whether for such an alleged invention the original patent could or could not be upheld, it cannot be construed as good for anything more or other than that.

We turn now, for the purpose of comparison, to the reissued patent. In the specification thereto the patentee declares that he has invented, not a machine, but "a new and improved process of cutting paper boards," of which a description follows; that the drawings referred to are views of "my machine for conducting my process;" that the invention consists in subjecting paper, while in a wet state, as it is taken from the paper-making machine, to the action of circular cutters having serrated edges, whereby the sheets are cut evenly and economically, and the trimmings can be returned to the paper machine without regrinding or other treatment;" that, in the annexed drawings "I have represented one practical form of a machine for conducting my process, but I desire to be understood as not confining But none of these parts, either in their con- myself to the precise construction of such ma struction or mode of operation, or general chine, nor to the number of serrated cutters function, are novel; for saws and shafts, and shown." After describing the construction and frames for carrying material to be cut, had been operation of the machine, by reference to the in common use for cutting other material, and drawings, the specification proceeds. "It will were well known. Accordingly, the appellant, be seen from the above description that I take in his specification, enters an express dis- sheets of paper, while they are in a wet condiclaimer as to all such uses, and the combina- tion, directly from the paper-making machine tions and arrangements of well known machin- and pass the saws over them, thereby trimming ery by which they had been effected. He says: their edges and leaving them of an equal thick"I make no claim to the arrangement of cir-ness throughout and dividing them into smaller cular saws and carriages, working upon guides | sheets. This process of sawing cannot be perfor the purpose of cutting logs, blocks of wood, wood of any kind, or any other material except paper." And thereupon states his claim, precisely, as follows: "The combination of shaft D, shaft F, saws SSS and CCC, carriage A, and frame E, for the purpose of cutting binders' and boxmakers' paper, substantially as shown and described."

It is plain, then, that the only invention exhibited in the drawings, or described in the specifications of the original patent, consists in the particular organization of the machine de

formed successfully and without tearing the surface of the sheets, unless the sheets are wet and in the condition in which they leave the paper-making machine.'

Then follow these disclaimers:

"I make no claim to the arrangement of cir cular saws and carriages for the purpose of sawing logs or any kind of wood; nor do I broadly claim the machine herein described for sawing wood. I am aware that paper board has heretofore been sawed when in a dry state, and I therefore lay no claim to such invention,

DEFFEBACK V. HAWKE.

rich leares the edges of the paper thus sawed | tion intended to be claimed.

The patent is

red condition, the action of the saw- plainly limited by its language to the combinaing to separate the fibers of the paper tion, arrangement and adjustment of the par2 in the line of kerf; whereas, when the ticular parts of the very machine described, for "re board is sawed in a wet state, directly the uses to which it is declared to be applicable. dearing the paper machine, the edges are On the other hand, the claim of the reissued th, the saws causing & an interlocking patent is broad enough to cover the process of thers in its path through the paper, and sawing paper boards in a wet state by means of mings of the paper being in a condition a hand saw; and if, for the purpose of saving tared to the vat without regrinding, it from the necessary consequences of such a ld not be the case with the trim- claim, it is restrained by construction so as to in225 f paper board sawed in a dry state." clude only the process described when perThe spication then concludes with the formed by means of circular cutters having serrated edges-terms of limitation to be found in the specification-it is still broad enough to cover every arrangement, combination and adjustment in which these elements may be found; and this surely is not the same invention as that described in the original patent.

flows:

What I claim as new, and desire to secure ters patent, is

The process of sawing paper board as herein bed, consisting in sawing the paper board is in the wet state in which it is taken paper-making machine, substantially ed, and for the purposes set forth." Amparison of the two patents makes it

that if the patentee had in fact conthe idea of enlarging the scope of his by development from a machine into , he has taken no pains to conceal or his purpose; for he entitled his origpatent as for a new and useful machine

paper boards, while with equal exin his reissue, he declared that he had red a new and improved process of cutper boards. This is at least a prima departure from the original grant, which

to be serious, if not fatal, under a its the power of the Commissioner so as to issue a new patent only for invention, when the original has been red, as inoperative or invalid, by reafa defective or insufficient specification, on of the patentee claiming as his ion or discovery more than he had claim as new, if the error has arisen erence, accident or mistake, and with-adulent or deceptive intention. If ad been any doubt as to how the matter tood by the patentee himself, it has ved by his testimony in the case, in wer to the question, "For what you ask a reissue of your patent?" I was told that a process would cover 4 mere machine, and so I applied

T

this obvious sense, the reissued
directly under the condemnation of
clared in Powder Co. v. Powder
8126 [Bk. 25, L. ed. 77], and
war cases not necessary to be cited.

is made, in argument on behalf
1, by construction to convert the
- into a patent for a process, in
vention described "consisted in
na peculiar kind of material with a
cutter," and in which the claim
ly framed so as to cover mere-
se itself and not the process in
se only of the factors. But we have
by reference to the state of the
to which heavy paper in a wet
cat by means of a saw, that the
stwald not be construed as in-
Paprocess without invalidating it:
the terms of the specification itself,
c process is described as the inven-

The decree of the Circuit Court dismissing the bill is affirmed.

True copy. Test:

James H. McKenney, Clerk, Sup. Court, U. S.

EDWARD DEFFEBACK, Appt.,

v.

ROBERT HAWKE.

(See S. C., Reporter's ed., 392-407.)

Public lands-homestead and town-site laws-
mineral lands, not within-certificate of pur-
chase of mineral land-effect of patent of
placer mining claim-color of title-improve-
ments-authority of officers of land depart

ment.

*1. No title from the United States to land known
at the time of sale to be valuable for its minerals of
gold, silver, cinnabar, or copper can be obtained
under the preemption or homestead laws, or the
town-site laws, or in any other way than as pre-
scribed by the laws specially authorizing the sale
of such lands, except in the States of Michigan, Wis-
consin, Minnesota, Missouri and Kansas.
2. A certificate of purchase of mineral land upon
an entry of the same by a claimant at the local land
office, if no adverse claim is filed with the register
and receiver, and the entry is not canceled or dis-
affirmed by the officers of the Land Department at
Washington, passes the right of the government to
him; and, as against the acquisition of title by any
other party, is equivalent to a patent. The land
thereby ceases to be the subject of sale by the goy-
erment, which thereafter holds the legal title in
trust for the holder of the certificate.

3. The officers of the Land Department have no
authority to insert in a patent any other terms than
those of conveyance, with recitals showing a com-
pliance with the law, and the conditions which it
prescribed. The patent of a placer mining claim
carries with it the title of the surface included
within the lines of the mining location, as well as

to the land beneath the surface.

4. There can be no color of title in an occupant of land, who does not hold under an instrument or proceeding, or law purporting to transfer the title or to give the right of possession. Nor can good faith be affirmed of a party in holding adversely, where he knows that he has no title, and that under the law, which he is presumed to know, he can ac quire none. So held where, in an action of ejectment for known mineral land by the holder of a patent of the United States, the occupant set up a claim to improvements made thereon under a statute of Dakota, which provides that "in an aotion for the recovery of real property, upon which permanent improvements have been made by a defendant, or those under whom he claims, holding under color of title, adversely to the claim of the plaintiff, in good faith, the value of such improvements must be allowed as a counterclaim by such *Head notes by Mr. Justice FIELD.

423

[439]

[392]

[393]

[394]

defendant," he not having taken any proceedings
to acquire the title under the laws of Congress
authorizing the sale of such lands, or to acquire the
right of possession under the local customs or rules
of miners of the district.

5. It would seem that there may be an entry of a
town site, even though within its limits mineral
lands are found, the entry and the patent being in-
operative as to all lands known at the time to be
valuable for its minerals, or discovered to be such
before their occupation and improvement for resi-
dences or business under the town-site title.
[No. 564.]

Submitted Oct. 14, 1885. Decided Nov. 16, 1885.

his grantor, as a ground for compensation under the statute of the Territory.

In the first special plea the answer avers substantially as follows: That on the 28th of February, 1877, the day on which the Treaty with Sioux Indians was ratified, by which the lands in Lawrence County were first opened to settlement and occupation, the land included in mineral lot No. 53, together with a large amount of other land in its immediate vicinity, was appropriated, set apart, and occupied for town-site purposes; and, as such, was surveyed and laid out into lots, blocks, streets and al

APPEAL from the Supreme Court of the leys, for municipal purposes and trade, and

Territory of Dakota.

was then, and has ever since been known called the town of Deadwood; that the town Statement of the case by Mr. Justice Field: then contained a population of two thousand inThis is an action to recover a parcel of min-habitants, and about five hundred buildings eral land, situated in the county of Lawrence, used as residences or for business, and not for in the Territory of Dakota, claimed by the agriculture; that the town was then, and has plaintiff under a patent of the United States ever since been, the center of trade and busi bearing date on the 31st of January, 1882. The ness west of the Missouri River in the Territory complaint alleges that on the 20th of Novem- of Dakota, and, at the commencement of this ber, 1877, the plaintiff, being in the actual, action, contained a population of about three peaceable and exclusive possession of the prem- thousand inhabitants, and buildings and im ises, filed his application in the United States provements of the value of about a million of Land Office at Deadwood, in that county and dollars; that the land in controversy was one Territory, to enter the land as a placer mining of the lots originally laid out and occupied for claim; that on the 31st of January, 1878, he town-site purposes, and has always been thu entered the same aud paid the government occupied by the defendant or his grantors, with price therefor, and that on the 31st of January, the buildings and improvements thereon, for 1882, a patent of the United States, conveying the purpose of business and trade and not fo a fee-simple title to the land, was executed and agriculture; that the placer mining claim, fo delivered to him, the land being described as which the plaintiff filed his application for mineral entry No. 8, and mineral lot No. 53; patent, as alleged in the complaint, was not lo that while thus the owner and in possession of cated or claimed by him or any other person the premises the defendant, on or about the 1st until after the selection, settlement upon an of July, 1878, with full notice of the plaintiff's appropriation of that and adjacent lands fo title, unlawfully and wrongfully entered upon town-site purposes; and that, on the 29th o a portion of the premises, which is particularly July, 1878, the town of Deadwood being unin described, and ousted the plaintiff therefrom, corporated, the probate judge of Lawrenc and has ever since withheld the possession County entered, at the local land office, th thereof, to his damage of five hundred dollars. said town site, paid the government price there The complaint also alleges that the value of for, and received from its officers a receipt fo the rents and profits of the premises from the the money and a certificate showing the entr entry of the defendant has been $800; and it and purchase by him in trust for the use an prays judgment for the possession of the prem- benefit of the occupants, including the defend ises, for the damages sustained, and for the ant; and that such town site embraces the lan rents and profits lost. covered by the plaintiff's patent.

To the complaint the defendant put in an answer, admitting that on the 20th of November, 1877, the plaintiff filed in the United States Land Office his application for a patent of the placer mining claim, described as mineral lot No. 53; that it includes the premises in controversy; and that, on the 31st of January, 1878, the plaintiff paid to the receiver of the Land Office the price of the land per acre, and received from the register and the receiver a certificate or receipt therefor, which payment and receipt are commonly called an entry.

The answer also contains two special pleas, by way of counterclaim, upon which affirmative relief is asked; namely, that the plaintiff be decreed to be a trustee of the premises for the defendant, and be directed to convey them, or an interest in them, to him, or to allow to him compensation for improvements thereon. In the first of these, it sets up various matters as grounds to charge the plaintiff, as trustee of the premises, for the defendant. In the second special plea, it alleges improvements made upon the premises, either by the defendant or

The answer further alleges, in substance that thereafter, on the 10th of April, 1879, th Commissioner of the General Land Office & Washington ordered a hearing before the lan office in Deadwood, between the plaintiff au the probate judge, as trustee for the occupant of the town site, as to the character of the lan for mineral purposes; at which hearing it wɛ not disputed that the defendant and other o cupants of town lots in Deadwood were th prior appropriators of the land; that the Con missioner refused to allow the consideration any other fact than the mineral character the land, holding, as a proposition of law d cisive of and controlling the case and the righ of the parties, that the only question of fa that could be considered was the mineral non-mineral character of the land, and that th fact of the prior occupation and appropriatic of the land for town site purposes did not co fer any rights upon the occupants; that t register and the receiver followed these instru tions and decided the controversy solely upc the ground of the mineral character of t

DEFFEBACK V. HAWKE.

Mr. G. C. Moody, for appellant.

Mr. Adoniram J. Plowman, for appel

Mr. Justice Field delivered the opinion of
the court.

their decision, upon appeal to the counterclaim in the defendant's favor against
the
the Secretary of the Interior, was defendant to file an amended answer. The de-
and those officers, the Commissioner fendant refused to amend and elected to stand
Secretary, awarded the land, with the on his pleadings. Judgment was therefore
its thereon, to the plaintiff, and re-entered for the plaintiff. On appeal to the Su-
pat at the same, or any interest there- preme Court of the Territory, the judgment
the said probate judge, or to the defend- was affirmed, and the case is brought to this
caroled the entry of the judge, and court on appeal.
and caused the patent mentioned in
paint to be issued to the plaintiff; |
the defendant insists that the patent lee.
ave contained an exception or reserva-
acting from its operation all town prop- |
all houses, buildings, lots, biocks,
alleys, and other improvements on
The principal question presented by the
belonging to the plaintiff, and all pleadings for our consideration is, whether,
essary or proper to the occupation, upon the public domain, title to mineral land
and enjoyment of the same; that can be acquired under the laws of Congress re-
on of the Commissioner and the Sec-lating to town sites. The plaintiff asserts title
warding the property to the plaintiff, to mineral land under a patent of the United
to recognize or protect the prior States founded upon an entry by him under the
of the defendant and other occupants of laws of Congress for the sale of mineral lands.
was contrary to law, and an errone- The defendant, not having the legal title, claims
straction thereof; and that, therefore, a better right to the premises by virtue of a
anti, by reason of his patent, holds the previous occupation of them by his grantor as
troversy, and the buildings and im- a lot on a portion of the public lands appropri-
ts thereon, in trust for the defendant, ated and used as a town site, that is, settled
which should be conveyed to him, he upon for purposes of trade and business, and
ay his just proportion of the legal not for agriculture, and laid out into streets,
f procuring the patent.
lots, blocks, and alleys for that purpose.

In several Acts of Congress relating to the cond special plea the answer sets up 10th day of February, 1877, one public lands of the United States, passed beB. Beaman, being one of the occupants fore July, 1866, lands which contained minersite, was in the peaceable and law- als were reserved from sale or other disposition. of the premises in controversy, Thus, the Preemption Act of 1841 excepts from ng and other improvements there preemption and sale "lands on which are situ(5 Stat. at that, from that time until his convey- ated any known salines or mines" defendant, he remained in the cor- L. 453, chap. 16, sec. 10); and the Act of 1862, creation thereof, using the same as extending to California the privilege of settlefr business and trade, claiming title ment on unsurveyed lands, previously authogood faith against all persons, ex-rized in certain States and Territories, conUnited States, and claiming the right tains a clause declaring that the provisions of the title from the United States as a the Act "shall not be held to authorize prethat thereafter the said Beaman sold emption and settlement of mineral lands." (12 the premises to the defendant, Stat. at L. 410, chap. 86, sec. 7.) Similar exd them in good faith, and before ceptions were made in grants to different acquired any title thereto made States, and in grants to aid in the construction provements thereon of the value of railroads. Thus, in the grant to California bandred dollars, and that the value of ten sections of land, for the purpose of erectf without the improvements ing the public buildings of that State, there is terced one hundred dollars. Un a proviso "that none of said selections shall be er concludes with a prayer that the made of mineral lands." (10 Stat. at L. chap. se nothing by his suit, and be de- 145, sec.13.) And in the grants to the Union Pavey to the defendant the premises cific Railroad, and its associated companies, to , excepting and reserving to him- aid in the building of the trans-continental rail- mire and extract the precious road and branches, there is a proviso declaring them, provided, in so doing, he that all mineral lands, other than of coal and tally injure, endanger, or inter- iron, shall be excepted from them. (12 Stat. at e buildings and improvements L. 489, chap. 120, sec. 3; 13 Stat. at L. 358, chap. the necessary use and enjoyment 216, sec. 4.) A similar exception is made in the defendant; and that, in the grants for universities and schools; and, in the d be determined that the plaintiff law allowing homesteads to be selected, it is and entitled to the possession of enacted that mineral lands shall not be liable ******, then the value of the improve- to entry and settlement for that purpose. be specifically found, and the Litave judgment for the same; and her and further relief as may be

the special pleas of the answer sterped a general demurrer, on that it did not state facts sufficient ▲ defense to the action nor a

By the Act of July 26, 1866, this policy of reserving mineral lands from sale or grant was changed. That Act declared that the mineral lands of the public domain were free and open to exploration and occupation by all citizens of the United States, and persons who had declared their intention to become citizens, subject to such regulations as might be prescribed

495

[400]

[401]

[402]

[403]