Opinion of the Court.

next step is to open the safe or box J, from the space between the outer door and the angle door, and by the crank H operate the drum (p), which carries the wire rope or endless chain (e), which, by pulleys, levers and hinges, opens or shuts the corridor or partition doors (). Those doors being closed while the jailer is still outside of the angle door, he can then open the angle door and go into the inner hall. The mechanism thus explained is the foundation of claims 2 and 3. (3) Then the jailer, having between him and the prisoners the grated partition (2), with the doors in it closed, can direct each prisoner to retire to his cell and to close the cell door after him. The jailer then, by operating the lever (b), can draw the bars (a) and carry the bolts or lugs S over the cell doors, and thus secure them. He can then advance into the corridor and further secure the cell doors by ordinary locks on them. This mechanism is the foundation of claim 4.

The novel idea set forth in the patent is to interpose a grating between the jailer and the prisoners at every stage of opening or shutting a door. Previously, there had been between the jailer and the prisoners no intervening wall, corridor grating or other protection against attack; but, with that exception, the prior device used in the Wisconsin State prison and the Chemung County jail was substantially identical with, and a mechanical equivalent of, the device claimed in claim 4 of the patent, and operated in the same way to fasten and unfasten the cell doors.

The several elements of the patented device were old. Moulton testified that he had seen angle doors and curved doors, and illustrations of them in books, before 1859; that in the defendant's jail the corridor doors were not closed by the fastening mechanism described in the patent, but, when closed by the prisoners or the turnkey, were locked by bolts moved by rock-shafts extending from the outer apartment, through the wall, into the jail proper and to the corridor doors; that there was nothing new in a rock-shaft applied to the purpose of transmitting motion to bolts or to other like uses; that it was the equivalent of an endless chain or any other well-known device for transmitting motion, and was very old; that the

Opinion of the Court.

operation and effect of the rock-shaft and handle or lever that moved it and the bolts that it moved, in connection with the corridor doors thereby locked and unlocked, were precisely the same with or without a wall or grating interposed between the handle or lever and the door locked; that the operation and effect of the arrangement of the lever (b), bar (a), and bolts or lugs S, as described in the patent, were precisely the same, whether the lever was operated through a wall or grating or not; that mechanically the effect was precisely the same with or without the grating, so far as fastening and unfastening the doors was concerned; that the only difference was in the effect of the grating to protect the jailer and guard against escapes; that every separate element of the combination of claim 4 was old, the levers, the bars, the bolts or lugs and the grating; that levers had been used long before the patent to move a long bar and thereby move bolts, lugs or the like at a distance, and so had similar devices passing through a wall to open and close window-shutters and the like, but that the particular combination adapted to interpose protection between the person operating the device and persons on the other side of the wall or grating, was new; that the grating had nothing to do directly with locking or unlocking the doors, but afforded protection to the operator while so doing; that all the elements of claim 3 of the patent were old; and that it was only the particular combination applied to the purpose indicated that was new.

As the angle door was an old contrivance, it is manifest that the combination of it with the safe lock or bolt I, claimed in claim 1, was not new or patentable. As the witness Moulton says, locks and bolts upon doors are old, and to put a lock or bolt upon an angle door would not be invention. Nor is the combination of an angle door, with a lock of any kind, a patentable invention, even though the particular lock had not before been put upon an angle door. Moreover, the combination claimed in claim 1 is one of the angle door with the particular lock or bolt I, that is, such lock or bolt as an integral part of the safe or box J, with its drum (p) and connections, in which view the apparatus in the defendant's jail does not infringe claim 1.

Opinion of the Court.

As to the patentability of claims 3 and 4, the feature which it is alleged makes both of them patentable is the interposition of a barrier between the jailer and the prisoners. In claim 3, the sliding doors are opened and closed, while the angle door is still locked. In claim 4, the cell doors are fastened by means of the bolts or lugs S, during the time the grated doors in the corridor are securely closed. In view of the evidence, it is clear that the devices covered by claims 3 and 4, as mechanical devices, existed before, having the same mechanical elements and the same mechanical operation and effect. The whole combination was the same, so far as it was a mechanical or patentable combination, namely, a lever, a bar passing through an interposed barrier, a lever or its mechanical equivalent at the other end, and something to be moved by the motion thus transmitted through the barrier. The patentee merely used the same devices which had before been used by other persons, between one side of an interposed barrier and the other, with the same mechanical effect. His motive was, and his use of the device was, to protect the jailer, by a sufficient barrier, from being injured by the prisoners; but neither the motive nor the strength of the barrier can enter as an element into the question. The case is one merely of a double use. The mechanism was old in its use to move a door or a gate at a distance, and the mechanical operation of the device was the same, whether the mechanism passed through a solid iron barrier, or a grated iron barrief, or a barrier of another material, or through no barrier at all. Mr. Moulton testifies that the mechanical effect is precisely the same with or without the grating, so far as fastening and unfastening the doors is concerned, the only difference being in the effect of the grating to protect the jailer and guard against escapes. Tucker v. Spaulding, 13 Wall. 453; The Corn Planter Patent, 23 Wall. 181, 232; Brown v. Piper, 91 U. S. 37; Dunbar v. Myers, 94 U. S. 187; Vinton v. Hamilton, 104 U. S. 485, 491; Heald v. Rice, 104 U. S. 737, 754; Hall v. Macneale, 107 UJ. S. 90; Thompson v. Boisselier, 114 U. S. 1; Stephenson v. Brooklyn Cross-Town Railroad Co., 114 U. S. 149; Aron v. Manhattan Railway Co., 132 U. S. 84; Watson v. Cincinnati &c.

Opinion of the Court.

Railway Co., 132 U. S. 161; Hill v. Wooster, 132 U. S. 693; Burt v. Evory, 133 U. S. 349; St. Germain v. Brunswick, 135 U. S. 227.

As the mechanical operation and effect of the patented devices are the same, whether there be a grating or other barrier or not, there is no patentable combination between the devices and the grating. The grating performs no mechanical function and has no mechanical effect. The case is one of mere aggregation. Pickering v. McCullough, 104 U. S. 310, 318; Double-Pointed Tack Co. v. Two Rivers Mfg. Co., 109 U. S. 117; Stephenson v. Brooklyn Cross-Town Railroad Co., 114 U. S. 149; Hendy v. Miners' Iron Works, 127 U. S. 370; Aron v. Manhattan Railway Co., 132 U. S. 84.

This patent was granted under the act of July 4, 1836, chap. 357, the sixth section of which, 5 Stat. 119, provides for the granting of a patent for "any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement in any art, machine, manufacture, or composition of matter." It was not granted for an art or process, that is, "an act or a series of acts performed upon the subject matter to be transformed and reduced to a different state or thing." Cochrane v. Deener, 94 U.. S. 780, 788. So far as the grating is sought to be made an element in the combinations of claims 3 and 4, it is not an element of the mechanism. It is no part of the machine, and has no effect upon its operation. Nor is the apparatus a manufacture or a composition of matter. In the patent, the invention is called one of an "improvement in the construction of prisons,” and in the specification it is called an invention of "improvements in the construction and operation of prisons." In Jacobs v. Baker, 7 Wall. 295, suit was brought on four patents for "improve ments in the construction of prisons." One was for a secret passage or guard-chamber around the outside of an iron-plate jail, and between the jail and the surrounding inclosure, constructed for the purpose of allowing the keeper to oversee and overhear the prisoners without their being conscious of his presence. Another was for improved iron walls for iron-plate jails. Another was for an improvement in joining the metal

Opinion of the Court.

plates. Another was for arranging iron-plate cells in jails. This court held that an improvement in the construction of a jail did not come under the denomination of a machine, or a manufacture, or a composition of matter; and that it was doubtful whether it could be classed as an art. But, however this may be, the grating, in the present case, cannot be considered as a part of a patentable mechanical combination. Brown v. Davis, 116 U. S. 237, 249, and cases there cited; Forncrook v. Root, 127 U. S. 176, 181.

The judgment is reversed, and the case is remanded to the Circuit Court, with a direction to grant a new trial.

MAY v. JUNEAU COUNTY.

ERROR TO THE CIRCUIT COURT OF THE UNITED STATES FOR THE WESTERN DISTRICT OF WISCONSIN.

No. 94. Argued and submitted November 26, 1890.- Decided December 15, 1890.

The decision in County of Fond du Lac v. May, ante, 395, as to the invalidity of letters patent No. 25,662, granted to Edwin May, October 4, 1859, for an " improvement in the construction of prisons," affirmed. Want of patentability is a defence to a suit for the infringement of a patent, though not set up in an answer or plea.

AT LAW, for an infringement of letters patent. Verdict for defendant and judgment on the verdict. The plaintiff sued out this writ of error. The case is stated in the opinion.

Mr. M. C. Burch for plaintiff in error. Mr. Duane E. Fox was with him on the brief.

Mr. S. U. Pinney, for defendant in error, submitted on his brief.

MR. JUSTICE BLATCHFORD delivered the opinion of the court.

This is an action at law, brought in the Circuit Court of the United States for the Western District of Wisconsin, by Sarah