Morton v. New York Eye Infirmary.

of vapors, existed among the animals of the geologic ages preceding the creation of our race. That process, in connection with these vapors, is as old as the vapors themselves. We come, therefore, to the same point, only by a different road. We have, after all, only a new or more.perfect effect of a well-known chemical agent, operating through one of the ordinary functions of animal life.

It is curious and instructive to observe the perpetual struggle, in the specification, to draw from the surgical operation some support to the patent, beyond that of its utility. "We are fully aware," says the paragraph immediately preceding the claim, "that narcotics have been administered to patients undergoing surgical operations, and, as we believe, always, by introducing them into the stomach. This we consider in no respect to embody our invention, as we operate through the lungs and air-passages." An examination of this single passage in the specification will demonstrate the impossibility of sustaining this patent on any grounds known to the law. Now, suppose these agents had been fluids instead of elastic. vapors, and their effect had been known, when taken into the stomach, to be the same as that now long know to have resulted from their inhalation, namely, a state of partial intoxication-would the discovery that an increased quantity of the fluid produced a more perfect effect, by rendering intoxication complete, accompanied by total insensibility to pain, have rendered the discovery patentable? We think clearly not. In this view of the subject, we here lay out of the case the application of the new effect to surgical operations. We will allude to that again, in a moment. Now, a precisely parallel case is presented, by the actual facts before us, to the one just supposed. The inhalation of the ethers had long been known. By increasing their quantity, it was discovered that a new or more complete effect was produced, by which the subject was rendered wholly insensible. This can be no more patentable than the discovery that the increased quantity of liquor, taken into the stomach, would produce a like result. In both cases, there is only a naked discovery of a new effect,

Morton v. New York Eye Infirmary.

resulting from a well-known agent, working by a well-known process. This effect is a temporary suspension of sensibility and motion in the animal body. What is new in the alleged invention begins and ends here. The fact that the surgeon can operate upon the body in the condition to which it is thus reduced, forms no part of the invention or discovery. It simply furnishes evidence that it can be applied to at least one useful purpose-a fact quite independent of the other elements necessary to make a discovery patentable.

Before dismissing this case, it may not be amiss to speak of the character of the discovery upon which the patent is founded. Its value in securing insensibility during the surgical operation, and thus saving the patient from sharp anguish while it is proceeding, and mitigating the shock to his system, which would otherwise be much greater, was proved, on the trial, by distinguished surgeons of the city of New York. They agreed in ranking it among the great discoveries of modern times; and one of them remarked that its value was too great to be estimated in dollars and cents. Its universal use, too, concurs to the same point. Its discoverer is entitled to be classed among the greatest benefactors of mankind. But the beneficent and imposing character of the discovery cannot change the legal principles upon which the law of patents is founded, nor abrogate the rules by which judicial construction must be governed. These principles and rules are fixed, and uninfluenced by shades and degrees of comparative merit. They secure to the inventor a monopoly in the manufacture, use, and sale of very humble contrivances, of limited usefulness, the fruits of indifferent skill and trifling ingenuity, as well as of those grander products of his genius which confer renown on himself and extensive and lasting benefits on society. But they are inadequate to the protection of every discovery, by securing its exclusive control to the explorer to whose eye it may be first disclosed. A discovery may be brilliant and useful, and not patentable. No matter through what long, solitary vigils, or by what importunate efforts, the secret may have been wrung from the bosom of nature, or to what useful purpose

Vietor v. Cisco.

it may be applied. Something more is necessary. The new force or principle brought to light must be embodied and set to work, and can be patented only in connection or combination with the means by which, or the medium through which, it operates. Neither the natural functions of an animal, upon which or through which it may be designed to operate, nor any of the useful purposes to which it may be applied, can form any essential parts of the combination, however they may illustrate and establish its usefulness.

NELSON, J., concurred.

Motion for new trial denied.

THEODORE VIETOR AND OTHERS vs. JOHN J. CISCO.

A suit against an Assistant Treasurer of the United States, in a State Court, to recover the value of certain bonds issued by the United States, which, when they came into his hands from the plaintiff, he, under instructions from the Treasury Department of the United States, retained, on the ground that they were unlawfully put into circulation as against the party to whom they were issued, is not a suit which can be removed into this Court under the 3d section of the Act of March 2d, 1833, (4 U. S. Stat. at Large, 633,) which provides for the removal into this Court of a "suit commenced in a Court of any State, against any officer of the United States, or other person, for or on account of any act done under the revenue laws of the United States, or under color thereof, or for or on account of any right, authority, or title, set up or claimed by such officer, or other person, under any such law of the United States."

(Before SHIPMAN, J., Southern District of New York, December 3d, 1862.)

THIS was a suit originally brought in the Supreme Court of New York, and removed into this Court. The plantiffs, merchants in the city of New York, received from a correspondent in Mexico, five coupon bonds of $1,000 each, with instructions to collect the overdue coupons and sell the bonds. The bonds were known as Texas Indemnity Bonds, and were

Vietor v. Cisco.

issued to the State of Texas by the United States, under the Act of Congress of September 9th, 1850, (9 U. S. Stat. at Large, 446.) The plaintiffs, on receiving the bonds, allowed them to go into the hands of the defendant, who was Assistant Treasurer of the United States at New York. He, under instructions from the Treasury Department of the United States, retained the bonds in his possession, on the ground that they were unlawfully put into circulation as against the State of Texas. The plaintiffs brought the suit to recover the value of the bonds. The proceedings to remove the cause into this Court were claimed to be taken under the Act of March 2d, 1833, (4 U. S. Stat. at Large, 633,) which provides for the removal into this Court of a "suit commenced in a Court of any State, against any officer of the United States, or other person, for or on account of any act done under the revenue laws of the United States, or under color thereof, or for or on account of any right, authority, or title, set up or claimed by such officer, or other person, under any such law of the United States." The plaintiffs now moved to remand the case to the State Court, on the ground that it was not one embraced by the Act of 1833, and that, therefore, this Court had no jurisdiction of it.

Benjamin D. Silliman, for the plaintiffs.

E. Delafield Smith, (District Attorney,) for the defendant.

THE COURT granted the motion on the ground on which it was made.

VOL. V.-9

Magee v. Denton.

JOHN MAGEE

vs.

SEYMOUR F. DENTON AND OTHERS. IN EQUITY.

Under the Internal Revenue Act of July 1st, 1862, (12 U. S. Siat. at Large, 432,) when a dividend has been declared by an incorporated company, and become payable, its amount is to be regarded as forming part of the taxable income of the stockholders of the company, even though they do not call for and receive the dividend.

If an assessment of income tax under that Act is not made in legal form, the remedy of the person aggrieved is at law, and not in equity.

If such assessment is made in legal form, the party aggrieved must pursue the remedy provided by section 93 of the Act, before he can resort to a Court of Equity for relief.

(Before HALL, J., Northern District of New York, January 7th, 1863.

THIS was an application for a provisional injunction, to restrain the defendant Denton, as a Collector of Internal Revenue, from collecting $1,500 of the income tax assessed against the plaintiff under the Internal Revenue Act of July 1st, 1862, (12 U. S. Stat. at Large, 433.) The bill showed, that the plaintiff made, in due form, a particular statement of his income. for the year 1862, and verified the same by his oath; that the statement was then delivered to the proper assistant assessor, who increased the taxable income shown by that statement, by the addition to it of $30,000, on the assumed ground that the plaintiff's share of the profits of a mining company in which he was the principal stockholder, amounted to that sum, and had not been included in the statement; that the plaintiff objected to this increase, and offered to show, by his oath, that he had received no profits or dividends from the company, and that it was an incorporated company, and had expended all its profits for the year in the improvement of its property, by opening a mine, &c.; that the assistant assessor persisted in maintaining the propriety of such increase, and the assessor,