Syllabus.

DUGGER v. TAYLOE.

SAME v. SAME.

ERROR TO THE SUPREME COURT OF THE STATE OF ALABAMA.

Submitted April 7, and April 11, 1887. - Decided April 18, 1887.

No assignments of error being made in these cases, and there being no appearance for plaintiffs in error, the Court affirms the judgments below under Rule 21, § 4, 108 U. S. 585, for want of due prosecution of the writs of error.

THE case is stated in the opinion of the court.

No appearance for plaintiffs in error.

Mr. James T. Jones for defendants in error.

MR. CHIEF JUSTICE WAITE delivered the opinion of the court.

These are writs of error brought for the review of judg ments of the Supreme Court of Alabama. No assignment of errors was returned with the writ in either of the cases, as required by § 997 of the Revised Statutes. No counsel has appeared for the plaintiffs in error, but the cases have both been submitted by the defendants in error on briefs, without any specification of errors by the plaintiffs, as required by Rule 21, § 2, 108 U. S. 585. We, therefore, affirm the judg ment in each case, under § 4 of the same rule, 108 U. S. 585, for want of a due prosecution of the writ of error.

Affirmed.

THATCHER HEATING COMPANY v. BURTIS.

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

Argued April 5, 1887. Decided April 18, 1887.

A combination of well-known separate elements, each of which, when com bined, operates separately and in its old way, and in which no result is produced which cannot be assigned to the independent action of one or the other of the separate elements, is not patentable.

Opinion of the Court.

Letters-patent No. 104,876, dated June 14, 1870, granted to John M. Thatcher for improvements in fireplace heaters, are not for a particular device for effecting the combination described in the patentees' claim, but for the combination itself, no matter how or by what means it may be effected, and, as such, are void.

BILL in equity to restrain infringements of letters-patent. Decree dismissing the bill. Complainants appealed. The case is stated in the opinion of the court.

Mr. B. F. Lee for appellants.

Mr. A. J. Todd for appellees.

MR. JUSTICE MATTHEWS delivered the opinion of the court.

This is a bill in equity filed December 13, 1875, by the appellants, as assignees of John M. Thatcher, to restrain the alleged infringement of letters-patent No. 104,376, dated June 14, 1870, granted to John M. Thatcher for certain new and üseful improvements in fireplace heaters. There was a decree below dismissing the bill, from which the complainants prosecute the present appeal.

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The patentee in his specification describes his invention as follows:

"My invention consists, first, of a base-burning fireplace stove, in which are combined the following elements, namely: A cylinder or body projecting outward from the mantel or frame, a fuel magazine or feeder within the said cylinder, and an opening through which the said magazine' can be fed from above. The object of this part of my invention is to increase the capacity of the fuel magazine; secondly, of a base-burning fireplace stove or heater in which the magazine or feeder is extended to the feed-opening of the outer casing, so that there may be no open space across which to project the fuel on feeding the magazine; thirdly, in the combination, with a fireplace stove or heater, of a feeder or magazine projecting above the top of the heater, so as to increase the capacity of the said magazine.

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Figure 1 is a front view of my improved fireplace heater;

Opinion of the Court.

Fig. 2, a vertical section of the same; Fig. 3, a sectional plan; Fig. 4, a plan view with part of the mantel removed; Fig. 5, a view of the "slicer" or plate to be introduced into the firepot under the "feeder," for the purpose of holding up the coal which is unconsumed when the clinkers, ashes, &c., in the lower part of the fireplace have to be removed; Fig. 6 is a plan view of the grate, and Fig. 7 an edge view of the grate."

The specification then proceeds to describe in detail the various parts and arrangements of the heater, but as that portion is not material to a determination of the questions arising in the case it is omitted. The specification then proceeds as follows:

"A more minute description of my improved heater than that given above will be unnecessary, as several of the parts described and illustrated in the drawings form the subjects of other patents, and my present improvements relate especially

Opinion of the Court.

to the top-feeding arrangements of a fireplace stove or heater. I will now refer more particularly to these improvements. "In constructing my improved heater I have so combined three elements or features as to produce an important result. These features are as follows: First, a cylinder or body of the heater projecting outward from the frame or mantel; second, a feeder or fuel-magazine within the cylinder; and, thirdly, an opening through which the said magazine can be fed from above.

"While fireplace stoves or heaters with protuberant cylinders and feeders or magazines were known prior to the date of my invention, I am not aware that the above combination of three features above referred to- namely, a top-feeding arrangement, a protuberant cylinder permitting such an arrangement, and a magazine within the cylinder- has ever been known or used prior to my invention of the same.

"It has been the practice to so construct base-burning fireplace stoves or heaters that the fuel had to be introduced into the feeder or magazine through a doorway in front; hence the magazine was of a very limited capacity. By so arranging the feed-hole, however, that the fuel can be introduced into the magazine from above, the capacity of the magazine is increased—a result which I especially aimed at in adopting the first part of my invention, namely, the above-mentioned combination, and in the production of my top-feeding, baseburning fireplace stove.

"The second part of my invention consists in extending the feeder or magazine to the feed-hole of fireplace stoves. This not only increases the capacity of the magazine to some extent, but an uninterrupted passage or guide is afforded for the introduction of fuel into the magazine through the opening in the outer casing.

"The capacity of the magazine is still further increased, in the present instance, by carrying the feeder up above the top of the heater, by placing thereon a movable section, o, furnished with a cover, o', which has to be lifted off when coal has to be introduced into the magazine."

The first and second claims, which are alone involved in this controversy, are as follows:

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Opinion of the Court.

"1. A base-burning, fireplace stove, in which are combined the following elements, namely, a cylinder or body projecting outward from the mantel or frame, a fuel magazine or feeder within the cylinder, and an opening through which the said magazine can be fed from above.

"2. A fireplace stove or heater, in which the magazine is extended to the feed-opening of the outer casing."

The case turned in the Circuit Court on the question of the validity of the patent on the ground of want of novelty in the invention in view of the state of the art at its date. In passing upon this question on final hearing, Judge Wallace, in his opinion, stated the grounds of his decree dismissing the bill, as follows:

"It is conceded that these claims are to be construed broadly, so as to cover the combination of a fireplace heater having a body projecting outwards from the mantel or frame, and a furnace-like portion in the chimney behind the mantel, with a fuel receptacle within the cylinder of the heater, which will preserve a supply of unignited coal while the heater is in operation, and an opening through which the magazine can be fed from above, the magazine extending to this opening. Inasmuch as the heater was old, and the fuel receptacle with the described opening was old when located within an ordinary coal stove, what Thatcher accomplished was merely the advantageous location of the fuel receptacle within the fireplace heater. As the complainants' expert, Mr. Brevoort states: 'The problem Thatcher had before him was to place the fuel magazine within the Bibb & Augee heater.'

"It must be conceded that it was not obvious that such a fuel magazine could be advantageously employed in such a heater. Attempts had been made by others to do the same thing without satisfactory results, but Thatcher's organization was a success, and immediately commended itself to the public. But Thatcher's broad claims cannot be sustained. There may have been patentable novelty in the means he employed to adjust the parts in the new organization, but there was none in merely bringing those parts together. They did not perform any new function in the new arrangement. The fuel magazine