Munson v. Mayor, Alderman and Commonalty of New York City , 8 S. Ct. 622 ( 1888 )

124 U.S. 601 (1888)

MUNSON
v.
MAYOR, ALDERMEN AND COMMONALTY OF THE CITY OF NEW YORK.
MAYOR, ALDERMEN AND COMMONALTY OF THE CITY OF NEW YORK
v.
MUNSON.

Supreme Court of United States.

Argued February 2, 3, 1888. Decided February 13, 1888. APPEALS FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

Mr. Royal S. Crane for Munson cited, to the point of the patentability of his improvement: Hawes v. Washburne, 5 Pat. Off. Gaz. 491; Dewey v. Ewing, 1 Bond, 540.

Mr. Frederic H. Betts for the other parties. Mr. J.E. Hindon Hyde was with him on the brief.

MR. JUSTICE GRAY, after stating the case as above reported, delivered the opinion of the court.

What the plaintiff, in different parts of his specification, calls his "improvement," his "system," and his "invention," consists in providing one or more blank books, resembling common scrap-books, of which each page will hold a bond and its coupons, and has a heading describing the bond, and all the pages are numbered and ruled into spaces, in which the bonds and the coupons, on being presented and paid, may be pasted in the order of their numbers — the bonds on the successive pages, and the coupons of each bond on the same page with it — or, when any bond or coupon is paid without being surrendered, memoranda concerning it may be made. The claim is for the so preserving, filing and verifying of the bonds and coupons, and for the book so constructed and used.

If upon the face of the specification this could be considered as an "art, machine, manufacture, or composition of matter," within the meaning of the patent laws, (upon which we express no opinion,) it is quite clear that, in the state of previous knowledge upon the subject, there was no patentable novelty in the plaintiffs scheme; inasmuch as the only difference between it and the earlier scheme of Warren was that in Warren's books there was no place for the bonds, and the coupons were grouped according to their dates of payment, instead of being grouped together with the bonds to which they respectively belonged. The providing of spaces for the bonds, and the change in the order of arrangement of the coupons, cannot, upon the most liberal construction of the patent laws, be held to involve any invention.

Decree reversed, and case remanded to the Circuit Court, with directions to dismiss the bill; the original plaintiff to pay the costs in both courts.