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[47]

HEIRS OF JOHN F. BENJAMIN, Deceased, | dell and George H. Benjamin, one of the heirs,

answered, and in the answer of Benjamin the
defense was made that the legal domicil of John
F. Benjamin at the time of his death was in Mis-
souri, where the validity of the will was being
litigated, and not in the District of Columbia,
and that no distribution of the estate in the
District should be ordered in this proceeding
until the litigation in Missouri was ended
Upon the question of the actual domicil of the
testator much testimony was taken, and on the
28th of February, 1880, the court, after full
hearing, decided that his domicil "was the City
of Washington, in the District of Columbia,"
and "that this court has original jurisdiction
in the matter of his estate." An entry to this
effect was made at special term, and George H.
Benjamin thereupon took an appeal to the gen-

Argued, on motion to dismiss, Apr. 14, 1886. eral term. Afterwards a final decree was en

Decided Apr. 15, 1886.

tered, notwithstanding this appeal, approving
the accounts of Truesdell, and directing him

APPEAL from the Supreme Court of the Dis- to pay over the funds in his hands as provided

Columbia.

The facts are stated in the opinion.
Mr. S.S.Henkle, for appellants.
Mr. A. S. Worthington, for appellee.

Mr. Chief Justice Waite delivered the opin-
ion of the court:

When this case was called for argument a motion to dismiss was interposed, because the decree appealed from was not a final decree in the suit. The facts are these:

for in his account. This order George H. Ben-
jamin moved to set aside, but his motion was
denied, and afterwards the court at general
term affirmed the decree of the 28th of Febru-
ary, 1880, and from that decree this appeal was
taken.

As was said in Bostwick v. Brinkerhoff, 106
U. S. 3 [Bk. 27, L. ed. 73], "The rule is well
settled and of long standing that a judgment or
decree to be final, within the meaning of that
term as used in the Acts of Congress giving this
court jurisdiction on appeals or writs of error,
must terminate the litigation between the par-
ties on the merits of the case, so that if there
should be an affirmance here, the court below
would have nothing to do but to execute the
judgment or decree which had been rendered."

On the 8th of March, 1877, John F. Benja-
min died in the District of Columbia, leaving
a will by which he gave to his adopted daugh-
ter, Mrs. Guy H. Allen, the wife of James M.
Allen, all his interest in the partnership of Big-
elow and Benjamin, all debts owing to him by
persons residing in the District of Columbia,
The effect of the appeal below from the spe-
and all real estate owned by him in the Dis- cial to the general term was to take to the gen
trict of Columbia. He also gave to George C. eral term for review only the finding of the.spe-
B. Rowan $100, and to his wife all his proper- cial term upon the question of domicil. Con-
ty in Missouri, $12,000 in District of Colum- sequently the appeal from the general term to
bia 6 per cent gold bonds, and other proper- this court brings up nothing more. The suit
ty. Joshua M. Ennis was named as executor, was for the money in the hands of Truesdell
so far as the property in Missouri was con- given to Rowan and to Mrs. Allen by the will,
cerned, and George Truesdell was appointed and the litigation between the parties is not end-
to wind up business in the District of Colum-ed until a decree to that effect is entered. The
bia. Previous to the year 1874 Benjamin had
resided in Missouri. During that year he went
to Washington, in the District of Columbia,
where he engaged in business with Otis Bige-
low, and remained until his death. The will
was first admitted to probate in Missouri, and
letters testamentary granted to Ennis. A copy
of the will and of the proof and probate there-
of in Missouri were admitted to record in the
Supreme Court of the District of Columbia,
on the 5th of June, 1877, and letters testament
ary granted to Truesdell of all the personal
property in the District. Truesdell thereupon
proceeded with the settlement of the estate in
the District of Columbia, and on the 5th of
January, 1880, Mrs. Allen and Rowan filed their
petition in the Supreme Court of the District,
setting forth that all debts had been paid, and
praying that Truesdell be directed to pay to
Rowan his legacy in full, and to Mrs. Allen so
much of that to her as he might have in his
possession. Notice of the filing of this petition
was given to Truesdell, to Ennis the Missouri
executor, and to the heirs of Benjamin. Trues-

jurisdiction of the court to make the decree
seems to have been thought to depend on the
fact of the domicil of the testator in Washing-
ton at the time of his death. The finding that
such was his domicil settled the disputed ques-
tion of jurisdiction, but it did not decree the
payment of any money, which was the only
purpose of the suit. It opened the way to that
end, but nothing more. If we should affirm
the decree as it stood when the appeal from the
special term to the general term was taken,
there would be no order of the court to carry
into execution. No relief had then been grant-
ed the petitioners. All the court had then de-
cided was that it had jurisdiction and power to
order the payment of the money which was
prayed for.

It follows that we have no jurisdiction, and
the motion to dismiss is granted.

True copy. Test:

James H. McKenney, Clerk, Sup. Court, U. 8.

[48]

[22] UNITED STATES RIFLE AND CART- cation, which was rejected by the examiners, RIDGE COMPANY AND E. REMING- on the ground of abandonment. On June 9, [24] 1869, Mr. Commissioner Fisher, on appeal, afTON & SONS, Appts., firmed their decision. His opinion is published in the Decisions of the Commissioner of Pa

0.

WHITNEY ARMS COMPANY, ELI WHIT- tents for 1869, p. 30. On appeal to the Supreme

NEY, Pres., ET AL.

(See S. C. Reporter's ed. 22-25.)

Court of the District of Columbia, his decision
was reversed. On July 7, 1870, he rejected the
application. But on December 5, 1870, Cochran
filed a formal renewal of his application, under

Patent law-rejection of application-abandon- the Act of July 8, 1870, chap. 230, § 35, and

ment.

on May 7, 1872, the patent sued on was granted
to him by Mr. Fisher's successor.

During the time between the applications of
1859 and of 1868, Cochran applied for and ob-
tained twenty-two other patents, nine of them
for improvements in breech-loading firearms,
some of which he sold for considerable sums.
He was poor and in debt; but upon the whole
evidence it is quite clear that his delay in re-

1. There may be an abandonment of an invention
to the public, as well after an application has been
rejected or withdrawn as before an application is
made. Such abandonment may be proved, either by
express declarations of an intention to abandon, or
by conduct inconsistent with any other conclusion.
2. Upon a renewed application for a patent, the
decision of the commissioner in favor of the appli-
cant, upon the question whether the invention has
tested and reviewed in a suit brought for the in-newing the application of 1859 was not owing
fringement of the patent.
to want of means, but to his regarding this pa-
tent as of less value than the others.

been abandoned, is not conclusive, but may be con

3. Where the first application for a patent had been rejected and withdrawn, a delay of eight years in renewing the application, because the applicant regarded the invention as of less value than others for which he took out patents, will be held an abandonment, when the subject matter of the invention has been incorporated into the substance of many other subsequent inventions. [No. 157.]

Argued Mar. 10,11,1886. Decided Apr. 19, 1886.

The circuit court was of opinion that the invention had been abandoned before May, 1868, and therefore entered a decree dismissing the bill. 14 Blatchf. 94; S. C. 2 Bann. & A. 493. From that decree this appeal is taken.

The renewal of Cochran's application on December 5, 1870, was under the provision of the Act of July 8, 1870, chap. 230, § 35, which al

APPEAL from the Circuit Court of the United lowed any inventor whose application for a

States for the District of Connecticut.

Affirmed.

The case is stated by the court.

pátent had been rejected or withdrawn before
the passage of that Act to renew it within six
months after its passage; and provided that

Messrs. J. E. Hindon Hyde and F. H. upon the hearing of such renewed application Betts, for appellants.

Mr. B. F. Thurston, for appellees.

[23] Mr. Justice Gray delivered the opinion of

་

་ e court:

This was a bill in equity for the infringement of letters patent granted May 7, 1872, to John W.Cochran for an improvement in breechloading firearms, of which one of the plaintiffs was the owner, and the others were the exclusive licensees. The answer denied that Cochran was the original inventor, and alleged that his application, upon which the letters patent were issued, was made and filed in the Patent Office, on May 6, 1868; that for more than two years before that date the thing patented had been in public use and on sale with his consent and allowance; and that long prior to that date the invention had been abandoned by him to the public. A general replication was filed, and evidence taken, by which the material facts appeared to be as follows:

abandonment should be considered as a ques-
tion of fact. 16 Stat. at L. 202.

The rules of law which must govern this
case are clearly established by the judgment
of this court in Planing Machine Co. v. Keith,
101 U. S. 479 [Bk. 25, L. ed. 939]. The decision
of the Commissioner in favor of the applicant,
upon the question whether the invention has
been abandoned, is not conclusive, but may be
contested and reviewed in a suit brought for the
infringement of the patent. There may be an [25]
abandonment of an invention to the public, as
well after an application has been rejected or
withdrawn, as before any application is made.
Such abandonment may be proved, either by
express declarations of an intention to abandon,
or by conduct inconsistent with any other con-
clusion. An inventor whose application for a
patent has been rejected, and who, without
substantial reason or excuse, omits for many
years to take any step to reinstate or renew it,
must be held to have acquiesced in its rejec
tion, and to have abandoned any intention of
further prosecuting his claim.

On January 10, 1859, Cochran filed an application for a patent for this invention, which on February 8, 1859, was rejected by the Commis- In the case at bar, the first application was sioner of Patents, for want of novelty; and on both rejected by the Commissioner and withFebruary 20, 1860, was withdrawn by Cochran, drawn by the applicant; and the question preand $20 refunded to him, at his request, agree-sented is well put in the opinion of Mr. Comably to the Act of July 4, 1836, chap. 357, § 7. 5 Stat. at L. 120.

At various dates from November 19, 1861, to February 11,1868, eighteen patents were granted to other persons for the same devices or their equivalents, and the defendants bought some of those patents, and afterwards manufactured firearms under them.

On May 6, 1868, Cochran filed a new appli

missioner Fisher, above referred to: "Can an
inventor withdraw his application, make no
effort to renew it for eight years, during which
time the subject matter of the invention has
been incorporated into the substance of many
other subsequent inventions, and then file a new
application and obtain a patent which, to sup-
port the novelty of the invention, shall relate
back to the first application?" We concur with

Patent law-whether invention is anticipated is dimensions, located a short distance from one

[29]

[30]

[31]

and gave evidence tending to prove infringement by the defendants, and rested their case. The defendants put in evidence certain extracts from the text and illustrative drawings of smelting furnaces of the treatise upon Metallurgy by Dr. J. B. Karsten, published at Berlin in 1831-32, mentioned in the plea, translated as follows:

"(318) The forehearth is that part of the crucible projecting in front of the fire walls of the furnace.

Crucible furnaces are those shaft furnaces in which the crucible is entirely on the inside. They are divided into eye-crucible furnaces and tap-crucible furnaces. The former have an eye in the front wall from which the slag flows continuously, the metal and matte being tapped off at intervals into basins.

"The tap-crucible furnaces are those in which the metal, matte and slag are all tapped off from time to time.

"Sump furnaces are those shaft furnaces in which the crucible is partly in the furnace and partly in front of the furnace. The slag runs off continuously over the fore hearth. The metal and matte are tapped off into receiving vessels or tap basins. Sometimes the sump furnaces are not provided with tap basins, and the metal in them is dipped with ladles direct from the fore hearth.

"Spur or channel furnaces are shaft furnaces without a crucible. The molten contents flow through the eye directly from the furnace hearth into receiving vessels. These different furnaces can be more advantageously studied from the drawings than from written descriptions.

"(819) In some countries the crucible furnace is preferred; in others, the sump furnace. It is not advisable to use the channel furnace when clean metal is produced. With this furnace the metal is not protected from oxidation. It is used chiefly in smelting copper ores, with a view to producing copper matte.

"The drawings, figures 461 to 463, represent an eye-crucible furnace. The slag runs continuously through a hole in the front wall. The metal and matte are tapped off at intervals through a hole in the side of the crucible.

"The drawings, figures 464 to 466, represent an eye-crucible furnace, which differs from the former, in that the tap hole is in the front wall and at the bottom of the crucible.

to dip the clean metal with ladles from the fore
hearth, instead of drawing it off into tap basins.
"The drawings, figures 476 to 478, represent
a sump furnace with an entirely open_breast,
in which the slag passes off immediately over
the fore hearth.

"The drawings, figures 479 and 480, repre-
sent a sump furnace with a covered eye, and
with a tap basin, into which the metal and
matte are tapped from the fore hearth. This
furnace might be regarded as a channel fur-
nace, by simply considering the short canal, or
eye, which connects the sump under the shaft
with the fore hearth, as a channel. But, by
means of this short canal or eye, the sump and
the fore hearth stand in combination with each
other as a pair of communicating tubes or ves-
sels; consequently, it is a sump and not a
channel furnace. The slag may pass through
the covered eye into the fore hearth, or through
an open eye above the fore hearth, the latter
eye being used exclusively for the slag.

"In smelting operations, where little or no slag is produced, the upper eye is dispensed with entirely."

The following are figures 858-860 and their scale from Plate XLI of Karsten's Atlas:

The furnaces thus figured by Karsten are planned for withdrawing the reduced metal continuously, and as fast as possible, from the oxidizing action of the blast and the intensely heated part of the slag. So the metal is made

"The drawings, figures 467 to 469, represent a tap-crucible furnace. The metal, matte and slag are tapped off from time to time into re-to flow constantly outward and upward through ceiving basins.

"The drawings, figures 470 to 472, represent an eye-crucible similar to the one represented by drawings, figures 464 to 466; it is provided with two tap basins. The slag also passes through a basin, for the purpose of allowing the small particles of metal and matte mixed with it to settle.

the open eye into the fore hearth, which is made as high as the inner crucible; and generally, the clean molten metal alone is passing through this bottom eye. When much slag is formed it is run off separately by another eye placed higher up; when very little slag is produced, it accumulates for a long time on the top of the molten metal in the inner crucible, and the "(320) The drawings, figures 473 to 475, rep-clean metal in the fore bay may be partially reresent a sump furnace with a covered eye, in moved many times without allowing any of the which the brasque (a mixture of fire clay and slag to escape through the eye." coke dust) under the front wall divides the sump into two communicating vessels.

"The slag runs off continuously through the eye between the bottom of the front wall and the top of the brasque partition.

"This arrangement is used when it is desired

One of the defendants, James Grant, was called to prove that he had constructed an experimental furnace of small size, according to the description and drawing of figure 860 of Karsten's publication, and worked it successfully. A model was exhibited, the proportions

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