supplied by showing that she was actually | government prevented the Statute from runprivily examined. Berry v. Donley, 26 Tex. ning until after the patent issued to the heirs 737; Fitzgerald v. Turner, 43 Tex. 79; Looney of John Childress in June, 1868, it certainly v. Adamson, 48 Tex. 619; Johnson v. Bryan, 62 commenced to run at that time against those Tex. 623. To the same effect see Elliott v. who claimed under the patent; and the facts Peirsol, 26 U. S. 1 Pet. 328, 340 [7: 164]; Hitz present a strong case of adverse possession on v. Jenks, 123 U. S. 297, 303 [31: 156, 158]. the part of E. M. Daggett and his grantees. This seems to be a fatal defect; and it is on this They were in full, continuous and peaceable defect that the complainants in the cross-bills possession for a period, altogether, of thirty rely. Their position is, that the land was Mrs. years, namely, from 1854 to 1885, when William Worrall's separate property, that she never ex- Dunlap and others appeared as intervenors in ecuted any conveyance of it according to law, this suit; and from 1854 to 1886, when the and that it was hers when she died in Novem- Worralls intervened. This possession was ber, 1870, and descended, one half to her hus- complete in the use, cultivation and enjoyment band, Dr. I. R. Worrall, and one half to her of the land in dispute, and the payment of brothers and sisters, represented by William taxes thereon. It was claimed and exercised Dunlap and others. The complainants in the under a regular deed of conveyance from M. other cross-bill, Martha R. Worrall and others, T. Johnson, dated 23d June, 1855, which claim the other half of the property as heirs of granted and conveyed, not only the certificate Dr. Worrall, being his mother and his brothers of Rutledge, but the land located under it, deand sisters. They contend that Dr. Worrall scribing and identifying the same; and which had no interest to convey when he executed was duly registered in the records of Tarrant the deed with his wife in 1869, and hence the County on the 30th of March, 1857. It is one-half part which he inherited from his wife difficult to see why the plea of limitation of in November, 1870, was unaffected by that five years at least is not a good bar against the conveyance. It is true, if the deed contained heirs of Adaline S. Worrall. She died Nova warranty, he would be estopped from claim- ember 4th, 1870, and one half her estate deing the land; but it is contended that the clause scended to her husband, 1. R. Worrall, who above recited does not amount to a warranty. survived to the 22d September, 1871. The It has been decided, however, by the Supreme Statute, having commenced to run against him, Court of Texas that words substantially such was not suspended by his death, and had been as those contained in the deed do import a gen- running more than fourteen years at the comeral warranty. In Rowe v. Heath, 23 Tex. 618, mencement of the suit. The other half of the following words were so construed, to wit: Adaline S. Worrall's estate descended to her "For him the said R. H., his heirs and assigns, brother, John Cook, and her two sisters, to have and to hold forever, as his own right, Alizannah, wife of William Dunlap, and Matitle and property, free from the claim or claims tilda, wife of Dr. Jonas Fell. John Cook was of me, my heirs or creditors, and all other per- living at Adaline's death, and survived to sons whomsoever, to claim the same or any part August, 1873. The sisters were married thereof lawfully." In our judgment the deed women when Adaline S. Worrall died, but as of Worrall and his wife did contain a general her disability as a married woman had already warranty, and the one-half part of Adaline S. prevented the Statute from running during her Worrall's interest which descended to Dr. lifetime, their disability, according to the law Worrall by estoppel to Daggett when Dr. Wor- of Texas, cannot be added to hers. It was derall inherited the same from his wife. cided by the Supreme Court of Texas in the cases of White v. Latimer, 12 Tex. 61, and Mc Masters v. Mills, 30 Tex. 591, that one disability cannot be tacked to another so as to prolong the disabilities beyond the continuance of that which existed when the cause of action accrued. See also Wood on Limitations, section 251, and notes. According to this rule the Statute commenced to run at the death of Adaline S. Worrall, on the 4th of November, 1870. If this is so, as we think it is, the complainants in the cross-bills are barred by the Statute of Limitations. The other questions arise on the Statute of Limitations. The defendants pleaded the limitations of three years and of five years, and also peaceable possession for thirty years. The Act of February 5th, 1841, first created the limitations referred to. The 15th section created that of three years, declaring that "every suit, to be instituted to recover real estate, as against him, her or them, in possession under title, or color of title, shall be instituted within three years next after the cause of action shall have accrued, and not afterwards;" not computing the duration of disability from minority, coverture or insanity; and by "title" meaning regular claim of transfer from or under the sovereignty of the soil; also reserving the right of the government. The 16th section created the limitation of five years, declaring that "he, she or they who shall have had five years like peaceable possession of real estate, cultivating, using or enjoying the same, and paying tax thereon, if any, and claiming under a deed, or deeds, duly registered, shall be held to have full title, precluding all claims, but shall not bar the government;" and saving disabilities for non-age, coverture or insanity. Now supposing that the prerogative of the 132 U. S. U. S., Book 33. 32 The new Statute of Limitations contained in the Revised Statutes, which went into effect on the 1st day of September, 1879, does not materially differ, so far as its application to the present case is concerned, from the old Statute of 1841; and it is explicit in declaring that "the period of limitation shall not be extended by the connection of one disability with another." (Art. 3225, Rev. Stat.) In our judgment, the Statute of Limitations is a complete bar to the claims set up by the complainants both in the original and in the cross-bills, whether we are right or not in regard to the validity of the Rutledge title. The decree of the Circuit Court is affirmed. 501 SAMUEL HILL ET AL., Appts., V. DANIEL B. WOOSTER. (See S. C. Reporter's ed. 693–701.) Suit to procure patent to be issued-patentable invention-box creamery-invention or discovery necessary to a patent. 1. Under section 4915, U. S. Rev. Stat., the circuit court inay adjudge that the applicant is entitled, according to law, to receive a patent for his invention or for any part thereof; and if the adjudication is in favor of the right of the applicant, it shall authorize the commissioner to issue the patent. 2. But no adjudication can be made in favor of the applicant, unless the alleged invention for which a patent is sought is a patentable invention; neither the circuit court nor this court can overlook the question of patentability. 3. Nothing in the four claims of Wooster in this action constitutes a patentable invention. It is not a patentable invention to add a lower compartment to a box creamery on legs. 4. A person, to be entitled to a patent, must have invented or discovered some new and useful art, machine, manufacture or composition of matter, or some new and useful improvement thereof; and it is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been before known, and that it shall be useful, but it must, under the Constitution and the Statute, amount to an invention or discovery. [No. 10.] Argued Nov. 19, 20, 1889. Decided Jan. 13, 1890. of the United States for the District of APPEAL from a decree of the Circuit Court Vermont that Daniel B. Wooster was the original and first inventor of the improvement, claims, and was entitled to receive a patent called a "Cabinet Creamery," set forth in his therefor as set forth in his application filed Jan. 17, 1879, and that Hill & Prentice were not the original and first inventors of such improvement. Reversed. This was a suit in equity brought by Daniel B. Wooster against Samuel Hill, Benjamin B. Prentice and The Vermont Farm Machine Company, under section 4915 of the Revised Statutes, which provides that when a patent on application is refused, the applicant may bring a suit in equity to procure a decree that the plaintiff is entitled to receive a patent for his invention, and authorizing the commissioner to issue such patent. The bill prays for a decree adjudging Wooster to be the first inventor of the invention of a "Cabinet Creamery," as embraced in his claims, and entitled to receive a patent for his invention. The answer denies that Wooster was the first inventor and avers that Hill & Prentice were the first inventors and entitled to a patent. As to distinction between inventions of mechanism or products and processes, and when the latter may be patented, see note to Corning v. Burden, supra. The examiners in the Patent Office and the commissioner of patents awarded priority of invention to Hill & Prentice. The circuit court decided in this suit that Wooster was the first inventor of the improvement called a "Cabinet Creamery," and entitled to receive a patent therefor, as set forth in his application. From this decree the defendants appealed to this court. The facts are fully stated in the opinion. Mr. William Edgar Simonds, for appellants: Illustrative drawings of conceived idea do not constitute an invention, and unless they are followed up by seasonable observance of the requirements of the Patent Laws, they have no effect upon a subsequently granted patent to another. Reeves v. Keystone Bridge Co. 1 Pat. Off. Gaz. 466; Smith v. O'Connor, 4 Pat. Off. Gaz. 633; Electric R. R. Signal Co. v. Hall R. R. Signal Co. 6 Fed. Rep. 603; Detroit Lubricator Mfg. Co. v. Renchard, 9 Fed. Rep. 293. In attempting to defeat patentees on the ground of prior invention, such prior invention must have reached a practical result before the patentees made their invention. Union Metallic Cartridge Co. v. U. S. Cartridge Co. 7 Fed. Rep. 344; U. S. Stamping Co. v. Jewett, 7 Fed. Rep. 869; Webster Loom Co. v. Higgins, 21 Pat. Off. Gaz. 2031, 105 U. S. 580 (26: 1177); Atlantic Works v. Brady, 23 Pat. Off. Gaz. 1330, 107 U. S. 192 (27: 438). Amid conflicting evidence the first maker of the embodied invention is, in default of preponderating proof to the contrary, the in ventor. Edwards v. Requa, Com. Dec. 1869, p. 28; Jennings v. Winters, Com. Dec. 1869, p. 38; Holman v. Foley, Com. Dec. 1870, p. 97; Clark v. Osborn, Com. Dec. 1874, p. 220; Ware v. Bullock, Com. Dec. 1875, p. 11. He who claims to have imparted the invention to his opponent takes upon himself the burden of proof. Mowbray v. Shaffner, Com. Dec. 1870, p. 35. As against a patentee, an applicant must show conclusively that he reduced to practice and completed form prior to invention by the patentee. McKnight v. Van Wagenen, Com. Dec. 1869, p. 126; Sargent v. Burge, Com. Dec. 1877, p. 62; Hallidie v. Paine, Com. Dec. 1877, p. 112; Wyman v. Knowles, 13 Pat. Off. Gaz. 320; James v. Campbell, 21 Pat. Off. Gaz. 337, 104 U. S. 356 (26:786). Mr. Stephen C. Shurtleff, for appellee: At the time Hill and Prentice made the preliminary statement of 1880 they were the own ers of the invention in controversy, and their declarations are entitled to full weight; and any person who takes the invention afterwards, takes it subject to the liability of its being defeated by the declaration of the for mer owner. Miller v. Bingham, 29 Vt. 82; Downs v. Belden, 46 Vt. 674; Alger v. Andrews, 47 Vt. 238; Batchelder v. Kinney, 44 Vt. 150. The omission of a witness to testify to material facts on a former trial, which he now relates, is admissible. Briggs v. Taylor, 35 Vt. 57. Something more than the uncorroborated statement of parties should be shown, in order for the court to find a disputed fact. Bering v. Haworth, 14 Pat. Off. Gaz. 117. It is immaterial whether the patentee is the inventor of any one or more of the elements of the, combination; these may all be old; but if the patentee was the first to combine for the purpose specified in his patent, his patent will be good. Carr v. Rice, 1 Fish. Pat. Cas. 198; Hovey v. Stevens, 1 Woodb. & M. 290; Buck v. Hermance, 1 Blatchf. 398; Gray v. James, Pet. C. C. 394; Furbush v. Cook, 2 Fish. Pat. Cas. 668; Buck v. Gill, 4 McLean, 174; Evans v. Eaton, 16 U. S. 3 Wheat. 454 (4: 433); Swift v. Whisen, 3 Fish. Pat. Cas. 348. The presumption arising from silence is far stronger than preponderance in the number of witnesses. Smith v. Fay, 6 Fish. Pat. Cas. 446. The witness' attention must be called to the subject matter with reasonable certainty as to time and place, but the sayings of a party are always admissible, whether his attention has been called to the substance of his declarations or not. May v. Brownell, 3 Vt. 463; Alger v. Andrews. 47 Vt. 238; Downs v. Belden, 46 Vt. 674; Hayward Rubber Co. v. Duncklee, 30 Vt. 29; Miller v. Bingham, 29 Vt. 82; Davis v. Windsor Sav. Bank, 48 Vt. 532. The rule is that a plaintiff is entitled to rest on making out a prima facie case, and, afterwards, to adduce additional as well as rebutting testimony; that the defendant is, in general, required to go through with his evidence before resting. This rule supposes, however, that the case as first made out by the plaintiff fairly ap prises the defendant of the ground on which the right of recovery is finally to be supported. Clayes v. Ferris, 10 Vt. 112; Kent v. Lincoln, 32 Vt. 598; Thayer v. Davis, 38 Vt. 163. The appellee's exhibit, Lamson letter, is admissible to show that the appellants have been trying to manufacture evidence. This is always admissible in evidence, and raises a presumption against the party making such attempt. Winchell v. Edwards, 57 Ill. 41; The Tillie, 7 Ben. 383; Moriarty v. London, C. & D. R. Co. L. R. 5 Q. B. 314. Mn. 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 District of Vermont, by Daniel B. Wooster against Samuel Hill, Benjamin B. Prentice and the Vermont Farm Machine Company, under section 4915 of the Revised Statutes, which reads as follows: "Whenever a patent on application is refused, either by the commissioner of patents or by the Supreme Court of the District of Columbia upon appeal from the commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not." The substance of the allegations of the bill is as follows: Wooster, on the 17th of January, 1879, filed in the Patent Office an application for a patent for an "improvement in milk-coolers.' The commissioner of patents declared an interference between that application and letters patent No. 207,738, granted September 3, 1878, to said Hill & Prentice, for an "improvement in milk-coolers," an interest in which patent had been assigned to the defendant The Vermont Farm Machine Company. Testimony was taken, and priority of invention was adjudged by the Patent Office in favor of Wooster, in respect to the claim in issue in the interference; and Wooster, by a separate application for that purpose, was granted a patent containing that claim, on the 14th of June, 1881, No. 242,805, for an "improvement in milk-coolers." On the 30th of March, 1880, Hill & Prentice filed an application for a patent for an "improvement in milk-setting apparatus." They also, on the 10th of November, 1880, filed an application for a reissue of their patent No. 207,738. Both of the last-mentioned two applications were declared to be in interference with the application of Wooster, of January 17, 1879. Testimony was taken by both parties, and the commissioner of patents decided to grant a patent for certain of the claims to Hill & Prentice, or to The Vermont Farm Machine Company as their assignee, and refused to grant a patent for them to Wooster. Four of those claims arose on the application filed by Hill & Prentice on the 30th of March, 1880, and were as follows: "4. A milk-cooling apparatus, consisting of a cabinet provided with an upper and lower compartment, an ice receptacle having an open top and located in the upper compartment of the cabinet, a vertically elongated milk receptacle, the upper portion of which is located in the ice receptacle and its lower end constructed to project downward into the lower compartment of the cabinet, and a valve or stop-cock connected with the lower end of the milk receptacle." The decision against Wooster and in favor of Hill & Prentice covered three other claims which arose on Hill & Prentice's application for a reissue, filed November 10, 1880; but it is not necessary further to allude to them, as there is no contest in this court in regard to them. The bill contains the following statement as to the invention of Wooster: "The object of your orator's invention being to provide a milkcooler of such construction that a milk receptacle of a depth greater than its width may have its upper portions only subjected to cold, and thus cause the contained milk to rise and descend in reverse vertical currents. The upper strata of milk, being subjected to cold, will part in whole or in part with its cream, and then descend, its place being supplied by an ascending current of warmer milk from the lower portion of the vessel. And, further, to provide the milk-cooler with a combined ventilator and filter, whereby the milk may be thoroughly ventilated. And, further, to provide a milk-cooler with a transparent eduction tube, to be attached to the lower portion of the cooling vessel, whereby the milk can be easily or readily inspected while being drawn from the cooler and the milk and cream accurately separated and deposited in separate vessels.' The bill prays for a decree adjudging Wooster to be the first inventor of the invention embraced in the claims hereinbefore set forth, and entitled, according to law, to receive a patent for said invention." claims marked 1, 2, 3 and 4, and avers that Hill & Prentice were the first inventors thereof, and are entitled to a patent for those claims. The answer of the defendants denies that "1. The combination, with a cabinet provid-Wooster was the first inventor of either of the ed at its top with a cover or lid and having a door in its side, of an ice receptacle located in the upper portion of the cabinet, and an elongated milk receptacle, the upper portion of which is located within the ice receptacle and its discharge conduit arranged to extend below the ice receptacle. "2. In a milk-cooling apparatus, the combination, with a cabinet or box having its top and side provided with covers or doors, of a vertical elongated milk receptacle provided with a discharge regulating valve or stop-cock at its lower end, and an ice receptacle having an open top and surrounding the upper portion of the milk receptacle. "3. A milk-cooling apparatus consisting essentially of a vertically elongated milk receptacle, provided with a discharge opening at its lower end, an ice receptacle having an open top and surrounding the upper portion of the milk receptacle, and a cabinet having a cover which extends over the milk and ice receptacles, and with a side door for preventing admission of the outer air to the lower portion of the milk receptacle, when desired. The cause was put at issue by a replication, voluminous proofs were taken, and the case was heard by Judge Wheeler. His opinion is reported as Wooster v. Hill, 22 Fed. Rep. 830. In the Patent Office, the examiner of interferences awarded priority of invention to Hill & Prentice, in regard to the above claims 1, 2, 3 and 4. On appeal to the examiners-inchief by Wooster, they affirmed such decision of the examiner of interferences. On an appeal by Wooster to the commissioner of patents, the latter affirmed the decision of the examiners-in-chief, and afterwards denied a motion for a reconsideration of his decision. The opinion of the circuit court discusses the questions involved solely as questions of fact as to priority of invention, as between Wooster on the one side and Hill & Prentice on the other, and states that considerable evidence was produced before the court which was not before the Patent Office. The court was of opinion that Hill & Prentice were the first inventors of an that long rectangular milk receptacles have been provided with a water-chamber extending around the upper portion thereof; also, that or casing, and their upper ends inclosed within an ice receptacle having a perforated bottom; also, that a milk receptacle has been provided with an ice receptacle extending through the centre of the same; and hence I would have it understood that I do not claim the construction above referred to." open-box creamery standing on legs, with the lower part of the cans extending through the bottom of the box downward, and the upper part surrounded by water in the box, for cool-water-coolers have been inclosed within a box ing the top of the milk in the cans, as shown in the patent No. 207,738, granted to them on September 3, 1878. The "cabinet" mentioned in the four claims before recited applied to a cabinet creamery closed all the way down, but having a door in front, for access to the lower part of the can, in contradistinction to an openbox creamery standing on legs. The court was of opinion, on the evidence, that Wooster was the first inventor "of the cabinet creamery as an improvement upon the box creamery, as that is shown in the patent of Hill & Prentice." It thereupon entered a decree adjudging that Hill & Prentice were not the original, first and joint inventors of the improvements set forth in the four claims before recited, and that Wooster was the original and first inventor of the improvement called a cabinet creamery, set forth in those four claims, and was entitled to receive a patent therefor, as set forth in his application filed January 17, 1879. From this decree the defendants have appealed to this court. The provision of section 4915 is that the circuit court may adjudge that the applicant "is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear;" and that, if the adjudication is in favor of the right of the applicant, it shall authorize the commissioner to issue the patent. It necessarily follows that no adjudication can be made in favor of the applicant, unless the alleged invention for which a patent is sought is a patentable invention. The litigation between the parties on this bill cannot be concluded by solely determining an issue as to which of them in fact first made a cabinet creamery. A determination of that issue alone, in favor of the applicant, carrying with it, as it does, authority to the commissioner to issue a patent to him for the claims in interference, would necessarily give the sanction of the court to the patentability of the invention involved. The parties to the present suit appear to have been willing to ignore the question as to patentability in the present case, and to have litigated merely the question of priority of invention, on the assumption that the invention was patentable. But neither the circuit court nor this court can overlook the question of patentability. The bill claims a patent for what it alleges was invented by Wooster as a patentable invention; and the answer of the defendants is founded upon the view that Hill & Prentice were the first inventors of the improvements covered by the four claims in question, as patentable inventions. We are of opinion that nothing in those four claims constitutes a patentable invention. A cabinet constitutes an element in each of the combinations covered by the four claims. This cabinet is nothing more than a boxing or covering in of the open space forming the lower part of the prior open box creamery standing on legs. In the application of Wooster, filed January 17, 1879, in an amendment filed by him March 29, 1879, he says: "I am aware In the application of Hill & Prentice, filed March 30, 1880, they say in the specification: "The lower chamber or compartment serves to protect that part of the milk vessel which is in contact with this chamber from free contact with the outer air, preventing the temperature from unduly varying; and it also serves as a suitable place wherein to store butter, milk or dairy appliances, this being practically a refrigerating chamber." In the decision of the examiners-in-chief on appeal, made July 12, 1882, they say: "The idea of applying a cooling medium to the top of milk cans while the bottom should be exposed to the ordinary temperature of the dairyroom was old, and Wooster expressly disclaims any broad pretension to such method, and says that he is aware that milk receptacles have been provided with a water-chamber around the upper portion, and that water-coolers have been boxed and their upper parts enclosed in ice receptacles and the lower end perforated, and milk receptacles been provided with an ice receptacle extending through the centre of the same. So, to start with, we find that whatever either has done is merely to improve upon means for more effectually carrying out this mode of treating milk, to obtain the best results in raising and securing cream. As a structure, the cabinet would seem almost anticipated by the water-cooler of which the parties made a double use; but this is not before us, except so far as showing us to what a limited extent the examiner conceded patentability of matter included in the claims allowed and put in interference." The examiners-in-chief seem, therefore, not to have considered that the question of patentability was before them, but that they were limited to considering the question as to which of the two parties first made the structure in the form in which it was presented. The examiners-in-chief proceed: "When the parties came to the office they undoubtedly supposed, each for himself, that they had made a great discovery in keeping the top of the milk cool and the bottom warm. So we find that both of them seem to have obtained new light in regard to the state of the art, and, by repeated amendments, came down to quite restricted claims. We now come down to the material matter: Which of the parties devised and first reduced to practice the box, with lid, inclosing the cooler tank, having the elongated can extending through the bottom, etc.? The idea of drawing off the milk from the bottom was old, and the glass to afford inspection was old. And which of them conceived of and first reduced to practice the cabinet form, or the above box and tank and can construction, with the lower part of the can also inclosed? It is certainly a very small matter of invention, |