less attributable to the fact that the subject | such means should be forbidden in some other of Federal taxation, dealt with by Federal part of the Constitution." statutes, creating liens for taxes, and providing remedies for their collection, has always been conceded to be independent of the legislative action of the states. The power of taxation has always been regarded as a necessary and indispensable incident of sovereignty. A government that cannot by self-administered methods, collect from its subjects the means necessary to support and maintain itself in the execution of its functions is a government merely in name. If the United States, proceeding in one of their own courts, in the collection of a tax admitted to be legitimate, can be thwarted by the plea of a state statute prescribing that such a tax must be assessed and recorded under state regulation, and limiting the time within such tax shall be a lien, it would follow that the potential existence of the government of the United States is at the mercy of state legislation. Moreover, it scarcely seems necessary to look beyond the Constitution itself for a decisive reply to the question we are now considering. The 8th section of the 1st article declares that "the Congress shall have power to lay and collect taxes, duties, imposts, and excises, but all duties, imposts, and Arnson v. Murphy, 109 U. S. 238 [27: 920], was a suit under the revenue laws of the United States, wherein the plaintiffs sought to recover moneys alleged to have been illegally exacted by the collector for custom duties. The circuit court applied the state statute of limitations, and directed a verdict in favor of the defendant. This court held that the limitation laws of the state in which the cause of action arose, or in which the suit was brought, did not furnish the rule of decision, and that it was error in the circuit court to apply, as a bar to the action, the limitation prescribed by the state statute. The conclusion reached is that that part of the decree of the court below which dismissed the bill as to the International Cotton Press Company must be reversed, and that the cause be remanded with directions to the court below to proceed therein in conformity with this opinion. Reversed. A. ADGATE DUER, Appt.. excises shall be uniform throughout the Unit- CORBIN 1. v. CABINET LOCK COMPANY. (See S. C. Reporter's ed. 216-224.) the article. The patent No. 262,977, issued August 22, 1882, to Morris L. Orum, for an improvement in locks for furniture, has no patentable novelty. vision exacting uniformity throughout the Patent for improvement in locks-popularity of United States itself imports a system of assessment and collection under the exclusive control of the general government. And both the grant of the power and its limitation are wholly inconsistent with the proposition that the states can by legislation interfere with the assessment of Federal taxes, or set up a limitation of time within which they must be collected. 2. Where the question of patentability is one of doubt, the popularity of the article may turn the scale in favor of the patentee; but where such popularity is not due to any patentable feature, it is an unsafe criterion. 1893. Although decisions of this court upon the precise question before us cannot be cited, Submitted March 28, 1898. Decided May 1, [No. 191.] 215] there are some analogous *subjects which lead clearly to the conclusion that the tax system of the United States is regulated by the Federal statutes and practice, and are not controlled by state enactments. In Dollar Sav. Bank v. United States, 86 U. S. 19 Wall. 227 [22: 80] it was held that the United States could maintain an action of debt for taxes due by a state bank in a circuit court of the United States, in disregard of a state statute prescribing a special form of remedy for the assessment and collection of taxes due by banks. In Den v. Hoboken Land & Imp. Co., 59 U. S. 18 How. 281 [15: 376], it was said: Among the legislative powers of Congress are the powers to lay and collect taxes, duties, imposts, and excises, and to make all laws which may be necessary and proper for carrying into execution these powers.' . . . The power to collect and disburse revenue, and to make all laws which shall be necessary and proper for carrying that power into effect, includes all known and appropriate means of effectually collecting and disbursing that revenue, unless some NOTE.-For what patents are granted; when declared void, see note to Evans v. Eaton, 4: 433. As to patentability of inventions, see notes to Thompson v. Boisselier, 29: 76, and to Corning v. Burden, 14: 683. As to abandonment of invention,see note to Pennock v. Dialogue, 7: 327. As to distinction between inventions of mechanism, articles, or products and processes; when latter patented, see note to Corning v. Burden, 14: 683. As to including process and product in same patent; separate patents therefor, see note to Evans v. Eaton, 4: 433. As to what reissue may cover, see note to O'Reilly v. Morse, 14: 601. As to assignment, before issuing and reissuing patent: recording; when assignment transfers extended terms, see note to Gayler v. Wilder, 13: 504. As to when assignee may sue for infringement; when patentee must, when they must join, see note to Wilson v. Rousseau, 11: 1141. damages, see note to Hogg v. Emerson, 13: 824. As to damages for infringement of patent; treble As to notes given for patent rights; purchaser before maturity, see note to Mandeville v. Welch, 5: 87. PPEAL from a decree of the Circuit Court | of time and labor in making the mortise, and APPEAL from a deartes for the District of to the superiority of the finished job, by ren Connecticut, dismissing a suit in equity for the infringement of letters patent No. 262,977, issued August 22, 1882, to Morris L. Orum for an improvement in locks for furniture. Af firmed. See same case below, 37 Fed. Rep. 338. Statement by Mr. Justice Brown: This was a bill in equity for the infringement of letters patent No. 262,977, issued August 22, 1882, to Morris L. Orum for an improvement in locks for furniture, such as are used on bureau or desk drawers, or the doors of wardrobes, washstands, etc., and as stated by the patentee in his specification: "It has for its object to provide a lock of such shape as to adapt it for insertion in a mortise of peculiar form, whereby a pair of the securing screws or nails is dispensed with, and the case of the lock is held laterally in the mortise by reason of its conformity thereto in shape." The following drawings illustrate the lock and mortise in which it is held. son of the fact that the lock plate is countersunk in the wood, instead of lying upon its surface. This result has never heretofore been attained, except by hand chiseling, which is a slow and tedious process. "I am aware that locks arranged to dovetail into their mortises are not broadly new, and such I do not claim." His claim, and there was but a single one, was as follows: tail cap and top plate, and a front plate pro "The lock herein described, having a dovejecting, laterally and below the cap and rounded at the bottom, whereby the lock is adapted for insertion in a mortise formed by a laterally cutting bit, and when in place is sustained by a countersunk front plate, as set forth." vices owned by the defendant, and the case The answer set up certain anticipating dewas heard in the court below upon the pleadings and proofs, and the bill dismissed. 37 Fed. Rep. 338. Plaintiff thereupon appealed to this court. Messrs. Benj. Price and W. H. Thurston for appellant. Messrs, John P. Bartlet and Chas. E. Mitchell for appellees. Mr. Justice Brown delivered the opinion of the court: The old and familiar style of furniture lock in use from time out of mind was enclosed in a shell or case, square or nearly so, and attached to a rectangular plate turned over at the top to form what is termed a selvedge, through which the bolt passed. A key post also projected some distance beyond the back plate of the shell toward the front of the drawer. The lock so constructed was inserted in a rectangular mortise cut out to receive it, and secured to the drawer by four screws through the four corners of the broad front plate. The peculiar shape of the cavity required the mortising to be done by hand, which took considerable time, and added largely to the expense of the furniture. Indeed, the lock itself in some instances cost less than the expense of mortising the recess to receive it. The need had been felt for a long time of a lock of such shape that it could be received into a rounded cavity, which was capable of being excavated by machinery. This want was first met by a lock invented by one Gory, for which a patent was issued to him April 22, 1873, numbered 138.148. This patent consisted of "such a construction of the shell or frame of the lock that it is adapted to fasten itself within a routed cavity in the wood, and thus dispense with mor. tising and fastening screws. "The shell A," said the patentee, "is so constructed that upon each side of the rear face (and by the rear face is understood the face nearest the front of the drawer) an extension projection or wing, a, is formed, which, when snugly fitted into a corresponding depression, b, at each side of the routed cavity, B, serves to retain the lock securely in the routed cavity. In this way the recess for the reception of the lock for drawers or similar uses, instead of | plate, which front plate had a slit and strip, being a mortise necessarily cut by a slowly which, when the lock is forced home, was operating mortising machine, is an open sided set into the wood by a hammer, and thus the 219] recess made *almost instantly by the lock was held from working out of its rerapidly revolving tool of a routing machine ceptacle. This patent is also owned by the or groover. This improved form defendant. of lock, when driven snugly into a routed His idea was in substance that of so concavity such as is described, requires no fast-structing the lock that there should be a space ening screws to hold it in place, and cou-between the front and rear plates to receive sequently reduces the expense of the lock and the walls of a routed mortise. Both the front fastening in addition to the reduced cost of and back plate, however, as well as the selproducing the cavity to receive it." This vedge, were made rectangular, and hence the was the underlying patent of all similar de-lock was no better adapted for insertion in vices, and while it never seems to have come a routed cavity than was the old style lock. into general use, subsequent patents have This lock also seems to have been a failure in been merely improvements upon it. practical use, and so far as the record shows none were ever constructed under the patent. On April 23, 1883, Spiegel filed an ap plication for another patent, which was is sued to him April 21, 1885, two and one half years after the Orum patent in suit; but as the lock was invented before that of Orum, and as Orum had full knowledge of it before he made his alleged invention, it should be considered as part of the art as it existed at the date of the Orum patent. The peculiar feature of his patent was not only in rounding the bottom of the lock so that it could be admitted into a cavity cut out by a revolving tool known as a router, but in making the cavity larger in the rear than in the front, so that a lock correspondingly shaped might be slipped into the cavity from above, and held there without the aid of screws. While the single claim of this patent was confined to a lock whose frame is made with side extensions at the rear face, to enable the lock to be firmly secured in the routed cavity. several different forms of cavity are shown in the drawings, nearly all of which are dovetailed in such manner that the lock is received and held in position without the aid of other fastenings. This lock was a most ingenious device, and no doubt involved patentable novelty. Three fourths of this patent now belongs to the defendant. There was a difficulty with it, however, in the fact that the patentee took off all the projections from the old style of lock, including those of the broad front plate, through which the screws were inserted, which was cut off so as to be flush with the side of the shell, the projecting key post which was cut flush with the face of the cap, and the top plate or selvedge through which the bolt is passed. It consisted merely of a shell fitted snugly upon all sides into a cavity routed out of the exact size to receive it. For these or other reasons, the lock never seems to have gone into general use. Indeed, the evidence is that it was never used at all. Next in order of time is patent numbered 241,828, issued May 24, 1881, to Henry L. Spiegel. In this device "the back plate of the lock" (that is, the plate nearest the front of 220] *the drawer) is made to project on each side of the lock, and adapted to fit a groove or dovetail formed in the inner surface of the drawer front," the object of the improvement being to provide a lock which may be secured in its receptacle without the aid of screws. The lock shown was of the ordinary pattern, except that its back plate was provided with projecting edges, designed to fit in a groove and hold the lock fast. "It is obvious," said the patentee, "that the groove B may be made dovetailed, and the edges G of the back plate bent to a corresponding angle to fit therein, if desired." His claim was for a cabinet lock with its rear plate projecting beyond each side of the lock case, and having the upper part of each projection bent toward the front In his specification, speaking of prior devices, and apparently of the Gory patent, the patentee states: "In view of the fact that locks constructed with projecting key posts possessed certain advantages that met the demand of the trade, the peculiar construction of lock above described, with its flush key post, and adapted to be driven into a routed cavity, failed *of introduction, [221 preference being given to the old form of lock case, with its projecting key post, though it necessitated the hand chiseled mortise and fastening screws for its attachment." Speaking of his own prior patent of May 24, 1881. he says: "The lock case being thus secured at its sides, allowed of a space or recess being formed in the rear wall of the mortise and in rear of the cap plate for the reception of the projecting key posts, which space was covered and concealed from view by the projecting top plate for selvedge. While this latter construction of lock possessed valuable features of improvement not disclosed by the prior art, yet the form of lock shown and described in the patent is such as to preclude its adoption for use in routed cavities, because this front plate is not of the proper form to fit within and cover a cavity made by a routing tool. The object of this invention is to obviate the objectionable features and defects hereinbefore set forth, and provide a lock case of such form and construction that it may have a projecting key post, if so desired, and be secured within a routed cavity, and snugly retained therein, so as to conceal the cavity from view, and form a neat and finished appearance when in place. With these ends in view my invention consists in a lock case having its edges constructed to engage or interlock with the side walls of a routed cavity, and provided with a front plate having a rounded bottom adapted to fit within a countersunk recess around the routed cavity, and constitute a support for the lock case and conceal the cavity from view." This lock differs from the prior Spiegel patent principally in being rounded at the bottom so as to be fitted to a routed cavity, and prevent the displacement of the lock either in a forward or backward direction, and also in having a space in the rear wall of the cavity for a projecting key post. |ifications of these too trivial to be the subject of serious consideration. His "radically new idea of making the mortise as deep as the width of the projecting selvedge and of cutting out the selvedge at its ends," as claimed by his counsel, was such as would have occurred at once to an ordinarily intelligent mechanic who had the previous devices be tions as involving months of labor, thought, and experiment is a misuse of words. In own testimony, Mr. Orum, who was called as a witness by the defendants, says that if he had been acquainted with the Gory patent he would have had no difficulty in making the top plate of the Spiegel lock conform to a dovetailed cavity, or any other routed cavity. While the testimony of a patentee in derogation of his own patent is usually open to some suspicion, this opinion is so obviously correct that it needs only a comparison of his device with those of Gory and Spiegel to confirm it. This was practically the state of the art when Orum's patent was granted. In this patent the shell or case of the lock is dovetailed to fit a corresponding dovetailed cav-fore him. To speak of these trifling variaity, and the selvedge is also made of similar dovetail shape. The front plate projects upon each side of the case and is rounded at the bottom, so that it may be fitted to a routed 222] cavity. *The lock is held in position by two tacks through the upper corners of the front plate, or by a single tack driven through a hole at the base of the plate. To insert the lock, it is simply slipped down into place in the mortise and secured against lifting by one or more tacks which are used merely to prevent the lock from slipping out of the mortise, and are not called upon to resist a strain. His claim is for "the lock herein described, having a dovetail cap and top plate, and a front plate projecting laterally and below the cap and rounded at the bottom, whereby the lock is adapted for insertion in a mortise formed by a laterally cutting bit, and when in position is sustained by a countersunk front plate, as set forth." There is no mention made, in the specification or claim, of a projecting key post or of any space for its reception, although such a key post is shown in the drawing, and it was evidently intended that the mortise should be made deep enough to receive it, or that a special channel should be cut out for that purpose. The selvedge was made wide enough to cover a cavity corresponding in depth to the projection of such key post. It is true the Orum lock seems to have gained an immediate popularity, to have met with large and increasing sales, and to have had the usual effect of successful patents in stimulating the activity of business com. petitors to produce an equally useful and popular device. Were the question of patentability one of doubt this might suffice to turn the scale in favor of the patentee. But there are so many other consideration than that of novelty entering into a question of this kind that the popularity of the article becomes an unsafe criterion. For instance, a man may, by the aid of an alluring trademark, succeed in catching the eye of the people, and palming off upon them wares of no greater intrinsic value than those of his In view of the advance that had been made rivals; but such trade-mark may be, and usuby prior inventors, it is difficult to see where-ally is, wholly destitute of originality, often in Orum displayed anything more than the usual skill of a mechanic in the execution of his device. taken from some prior *publication, and[224 appropriated to the specific purpose of the owner. The same result may follow from the more attractive appearance or the more perfect finish of the article, from more extensive advertising, larger discounts in price, or greater energy in pushing sales. While the popularity of the Orum lock may be due to its greater usefulness, or to the fact that it was put upon the market just at the time when cabinet makers were looking for a lock of this description, it is certainly not due to any patentable feature in its construction. The decree of the court below dismissing the bill is, therefore, affirmed. All that he claims as invention is found in one or more of the prior patents. The dove tailed cavity and the correspondingly shaped case or shell is only a copy of a cavity shown in Fig. 8 of the Gory patent, and it certainly required no invention to make the top plate or selvedge of the same shape so as to completely cover the cavity. The projecting front plate rounded at the bottom is shown in the second Spiegel patent, both of these patents also exhibiting a projecting back and front plate, and a projection or groove in the mortise between them. Neither is the countersunk recess for the reception of the front plate novel, since it is also found in the sec- JOHN T. UNDERWOOD ET AL., Exrs., ond patent to Spiegel, and expressly set forth as an element of his first two claims. In each case it is used for the purpose of supporting the lock vertically, and also of preventing 223] *it, falling backward against the inner wall of the mortise. In view of the fact that Mr. Orum had no actual knowledge of the Gory patent, he may rightfully claim the quality of invention in the conception of his own device, but as he is deemed in a legal point of view to have had this and all other prior patents before him, his title to invention rests upon mod. Appts., v. HENRY GERBER ET AL. (See 8. C. Reporter's ed. 224-231.) Patent for reproducing surface for type-writing -want of invention. derwood and Frederick W. Underwood, August | acids or alkalies alone. After the solution 24, 1886, for a reproducing surface for type-writ- has been filtered the precipitate is removed ing and manifolding. from the filtering device and dried. The precipitate is then mixed with lard-oil and wax or their equivalents, and the mixture is then ground together in a warm state. 2. As patent No. 348,073 does not claim the composition of matter, although it describes it, that composition must be regarded as disclaimed, and as being public property, and there was no inven ent. AP tion in applying it to paper, as claimed in said pat[No. 217.] Argued April 19, 1893. Decided May 1, 1893. PPEAL from a decree of the Circuit Court of the United States for the Eastern District of New York, dismissing a suit in equity brought by John T. Underwood et al., against Henry Gerber et al., for the infringement of letters patent, No. 348,073, granted to plaintiffs August 24, 1886, for a reproducing surface for typewriting and manifolding. Affirmed. See same case below, 2 L. R. A. 357,37 Fed. Rep. 682. The facts are stated in the opinion. Messrs. Livingston Gifford and James A. Hudson for appellants. Mr. Arthur V. Briesen for appellees. Mr. 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 Eastern District of New York, by John T. Underwood and Frederick W. Underwood against Henry Gerber and Anton Andreas, founded on the alleged infringement of letters patent No. 348,073, granted to the plain tiffs August 24, 1886, on an application filed March 22, 1886, for a "reproducing surface for typewriting and manifolding.” The specification reads as follows: "Our invention relates to an improved reproducing surface adapted to be employed for obtaining copies of typewriting or other printed or written impressions by means of a typewriter or other printing device, or by the employment of a stylus or other writing means. "Our improved transfer surface is spread upon a sheet or vehicle, and when so applied is adapted to be employed in place of the articles of trade commonly known and designated as 'carbon paper' or 'semi-carbon paper,' which are employed by typewriters and others to produce copies of impressions either obtained by a machine or by a stylus or other writing means. "[In carrying out our invention we employ in the manufacture of our improved transfer surface dye-wood solutions or their active principles, which we filter and precipitate with alkalies and mineral salts, or with alkalies, acids, and mineral salts, or with| Thompson v. Boisselier, 29: 76, and to Corning v. Burden, 14: 683. *The dye solutions we prefer to [226 employ are obtained from logwood or hæma toxylin, the active principle of logwood, Brazil wood, sapan wood, peach wood, madder, or its active principle-alizarine. "The proportions we find to answer well in producing our improved surface are as follows: Take one pound of extract of logwood and dissolve the same in one gallon of water, then add to the solution one pound of soda and one pound of mineral salt, using one of the salts of iron or copper, preferably sulphate of copper. The mixture thus obtained is then placed in a filter. After the solution has been filtered the precipitate is removed from the device employed for filtering and then dried, after which the precipitate is ready for use. To every two pounds of precipitate thus obtained we add one pound of oil and one pound of wax, and then grind the mixture in a warm state in what is commonly known as a 'paint' or other suitable grinding mill. The heated mixture thus obtained is then applied to tissue paper or other suitable paper or fabric by means of a sponge or other suitable transferring device. "The paper or fabric to which our improved surface is to be applied is placed upon a heated table, by preference formed of iron, and heated by steam; but this may be varied. "In place of employing oil or wax, or both combined, we can employ any other suitable oleaginous matter or combination of oleaginous matter having equivalent or approximately equivalent properties.]" The claim is as follows: "A sheet of material or fabric coated with a composition composed of a precipitate of dye matter, obtained as described, in combination with oil, wax, or oleaginous matter, substantially as and for the purposes set forth." The answer sets up as defenses want of novelty and non-infringement. There was a replication, proofs were taken, and the case was brought to a hearing before Judge Lacombe, who entered a decree dismissing the bill. His opinion is reported in 2 L. R. A. 357, 37 Fed. Rep. 682. The plaintiffs have appealed to this court. Since the appeal was taken, *Frederick W. Underwood has [227 died, and John T. Underwood and Hannah E. Underwood, as his executors, have been substituted as co-appellants with the surviving appellant, John T. Underwood. As to assignment, before issuing and reissuing patent; recording; when assignment transfers exAs to abandonment of invention, see note to Pen- tended terms, see note to Gayler v. Wilder, 13: 504. nock v. Dialogue, 7: 327. As to when assignee may sue for infringement; As to distinction between inventions of mechanism; | when patentee must, when they must join, see note to articles, or products and processes; when latter pat-Wilson v. Rousseau, 11: 1141. ented, see note to Corning v. Burden, 14: 683. As to including process and product in same patent; separate patents therefor, see note to Evans v. Eaton, 4: 433. As to damages for infringement of patent: treble damages, see note to Hogg v. Emerson, 13: 824. As to notes given for patent rights; purchaser before maturity, see note to Mandeville v. Welch, As to what reissue may cover, see note to O'Reilly 5: 87. v. Morse, 14: 601 |