
    FRANK G. FARNHAM v. THE UNITED STATES.
    [Nos. 28964, 30931.
    Decided February 12, 1912.]
    
      On the Proofs.
    
    The suit is to recover $1,000,411 alleged to be tbe net profits of a patented postage stamp bolder used by tbe Post Office for 10 years. Tbe only question considered by tbe court is that of tbe validity of tbe patent.
    I. Where a claim for a postage stamp bolder having tbe two blank margins of tbe ordinary stamp sheet was rejected by tbe Patent Office for want of novelty and tbe applicant added a third series of spaces, tbe change was one of expediency for tlie purpose of securing tlie allowance of the claim, and the patent thereby obtained was more the result of evolution than invention.
    IX. A device to be patentable must be the product of the inventive faculties. Where the mind advances from the known to the unknown by a transition natural to the ordinary instructed intellect there is no invention.
    III. A combination is an entirety. If one of its elements be omitted, the thing claimed disappears. An inventor makes all parts material when he claims them in combination and not separately.
    IV. Where the inventor of a postage stamp holder states that the “ flaps on the outside and on the inside of the cover may he dispensed with if desired," it is an admission that the flaps are not an essential element.
    
      The Reporters' statement of the case:
    The following are the findings of fact as found by the court:
    I. On March 17, 1896, the claimant in this case, Frank G. Farnham, a citizen of the United States, filed an application in the United States Patent Office for letters patent for improvements in stamp holders, upon which application there were granted and issued to him Letters Patent No.. 596656, dated January 4, 1898, which letters patent are made a part of the petition herein.
    The claims in the specification accompanying the claimant’s application for patent were as follows:
    1. A stamp sheet having a plurality of imperforate unprinted spaces at intervals in the body thereof, substantially as described.
    “2. A stamp sheet having unprinted spaces at intervals in the body thereof and a backing cover for said sheet adapted to be divided into sections to form books, substantially as described.
    “ 3. A stamp sheet having unprinted spaces in the body thereof to provide for the folding of the sheet on said lines and wider spaces centrally of the sheet combined with a backing sheet adapted to be divided with the stamps into a series of covers, the wider spaces providing for the formation of flaps on the cover, substantially as- described.
    “ 4. A stamp book comprising a cover and a series of connected stamps having a central imperforate space with fastening means extending along this space securing the stamps to the cover, substantially as described.
    
      “ 5. A stamp book comprising the cover blank, the stamp sheet and the interposed sheet, the detachable end margin formed on the stamp sheet, and the corresponding extensions of the cover blanks and interposed sheets, said margins and corresponding parts being correspondingly perforated, substantially as described.”
    Upon the claimant’s application the following proceedings were had in the Patent Office.
    On April 10, 1890, the examiner in charge of the application entered the following action:
    “ It is noted that the modification in figure 6 should have the flap lettered P".
    “The oath is found to be a year older than the date of filing, and a new oath is required according to the last para-grap of rule 46.
    “ Claims 1 and 5 are rejected on the patent to Cooke, No. 306674, October 14,1884 (Bookbinding: Leaves).
    “ Claim 4 is rejected on Cooke, in view of Worthington, No. 373791, November 22, 1887 (Bookbinding: Books and binding), and Swiss patent No. 2907, of 1890, to Guillaume (Bookbinding: Books and covers). It is thought immaterial whether stamps or other printed matter are bound, as margins are required for binding in either case.”
    In response to the above action of the examiner the claimant on April 22,1896, amended as follows:
    “ Page 4, line 3 from the bottom, change P' to P".
    “The drawing has been corrected to conform to this: change.
    “A new oath will be filed before final action.
    “ Claim 1, line 1, before £ unprinted,’ insert a plurality of imperforate.
    
    “ Cancel claims 4 and 5 and insert:
    “4. A stamp book comprising the cover blank, the perforated stamp sheet, the interposed sheet, and the corresponding detachable margins formed on the cover blank,, stamp sheet and interposed sheets, said margins each being: provided with corresponding aligning openings, substantially as described.”
    On this amendment the examiner, on May 21,1896, entered the following action:
    “ The requirement for a new oath is repeated.
    “ Claim 1 is rejected as relating to nothing of patentable novelty, since it is within the personal recollection of two employees of the office, that the old unperforated sheet of postage stamps had such unprinted spaces. The patent to Cooke shows such spaces as at present perforated.”
    On May 25, 1896, the claimant amended as follows:
    “ Cancel claim 1 and insert:
    “ 1. A stamp sheet having perforated spaces between the rows of stamps and divisional spaces of greater width and imperforate, substantially as described.”
    On June 23,1896, the examiner replied to the above amendment as follows:
    “ The claim is thought not true in 1 divisional spaces of greater width and imperforate.’’ These spaces have two rows of perforations where the others have but one.'
    “ The claim is rejected.”
    On June 29, 1896, the claimant amended as follows:
    ' “ Cancel claim 1 and insert:
    “ 1. A stamp sheet having unprinted spaces of varying widths in the body thereof, substantially as described.”
    On July 14, 1896, the examiner replied to this amendment as follows:
    “ Case examined as amended the 29th ult. Claim 1 is thought to relate to nothing of patentable novelty, being a mere matter of design, and is rejected.”
    ' On July 18, 1896, the claimant amended as follows:
    “ 1. A stamp sheet having one series of narrow unprinted spaces in the body thereof, and along which said sheet is adapted to be stitched and folded, and another series of wider unprinted spaces adapted to be cut off, substantially as described.” ,
    On August 4, 1896, the examiner replied to this amendment as follows:
    “ Claim 1 is thought to relate to nothing of patentable novelty, differing from the. ordinary structure of stamp sheets with their blank margins only in a matter of degree. .Applicant’s claim can only be read when including the blank margins of the ordinary stamp sheet. .
    “ Only a claim to the specific construction can be allowed.
    “Claim 1 is rejected.
    “ The remaining claims are allowed.”
    
      On August 11, 1896, the claimant amended as follows:
    “ Cancel claim 1 and insert:
    
      “ 1. A stamp sheet having one series of narrow unprinted sjiaces in the body thereof, a second series of spaces wider than the first, along which said sheet is adapted to be stitched, a third senes of spaces wider than the first and second series extending around the edges and centrally of said sheet, substantially as described.”
    This amendment was allowed by the examiner, and on August 19, 1896, the claimant was notified that his application for patent had been allowed.
    The claimant having failed to pay the final fee required for the issue of a patent within six months after the date of allowance, he, on September 11, 1897, filed a renewal application for said patent, which application, upon examination, was allowed on October 16, 1897; and upon payment of the final fee the patent was issued January 4, 1898.
    II. By reason of the prior state of the art neither a multiple book-leaf sheet, whether of stamps or other matter; nor a multiple book-cover sheet, whether it be, or be not, com-plemental to such multiple book-leaf sheet; nor a multiple book composed of such a multiple book-leaf sheet or sheets and multiple book-cover sheet or sheets bearing a comple-mental relation to one another and attached together so as to permit of the division of such multiple book, by cutting into the units or single books composing it, was new or novel, at the time the claimant devised the improvements in stamp holders covered by his said letters patent.
    The following-described letters patent and publications bear upon the state of the art at the time of the claimant’s application for said patent No. 596656, which letters'patent and publications are made a part of these findings:
    United States patent to Snow, No. 27166, February 4,1860.
    United States patent to Keep, No. 155312, September 22, 1874.
    United States patent to Beaumont, No. 192893, July 10, 1877.
    United States patent to Cussons, No. 237825, February 15, 1881.
    United States patent to Cussons, No. 240099, April 12, 1881.
    
      United States patent to Carter, No. 300569, June 17, 1884.
    United States patent to Cooke, No. 306674, October 14, 1884.
    United States patent to Worthington, No. 373791, November 22, 1887.
    United States patent to Clark, No. 375125, December 20, 1887.
    United States patent to Mendham, No. 392048, October 30, 1888.
    United States patent to Cussons, No. 414500, November 5, 1889.
    United States patent to. McCalmont, No. 401961, April 23, 1889.
    United States patent to Fokusek, No. 464690, December 8, 1891.
    United States patent to Bright, No. 492912, March 7, 1893.
    United States patent to Cussons, No. 462627, November 3, 1891.
    Defendants’ Exhibits C. A. Woodward, No. 4.
    Defendants’ Exhibits C. F. Lehre, No. 1.
    Defendants’ Exhibits E. A., No. 1.
    Defendants’ Exhibits Keen, Nos. 1A, IB, 2A, 2B, 3, 4A, and 4B.
    Defendants’ Exhibits McKinney, Nos. 1, 2, 3, 4, 5, and 6.
    Also a stamp sheet-of which defendants’ Exhibit E. A., No. 1, noted above, represents an exact left-hand one-half section, said sheet therefore having a central unprinted space of just double the width of the right-hand margin of said exhibit.
    Also the ordinary Government stamp sheet, and to the stamp sheet represented by defendants’ Exhibit F. C., No. 2. hereinafter set forth, with the exception of its having two more rows of stamps and of the wider unprinted spaces in the body of the sheet being reduced to the same width as the narrow unprinted spaces therein.
    In view of the state of the art shown above, the improvements in stamp holders covered by the claimant’s said patent and involved in this suit did not possess patentable novelty at the time of the claimant’s devising them.
    
      
      
    
    
      
      
    
    
      
      
    
    
      
      
    
    The above cut illustrates claimant’s stamp holder, constructed according to the claims and specifications set out in his patent, dispensing with the flaps of the cover and the wide central space, which claimant admits may be done, “if desired."’ (Finding 1.)
    
      
      
    
    
      Below is a sheet taken from claimant’s stamp book filed as an exhibit:
    
      
    
    The following is a Western Union unpatented stamp book, without the cover thereon, filed as defendant’s Exhibit C, A. Woodward, No, 4, which was manufactured by the American Bank Note Co., formerly the International Bank Note Co., as early as 1S83 for said telegraph company:
    
      
    
    
      
      
    
    
      
      
    
    
      
    
    
      III. The devices covered by claimant’s patent do not possess patentable novelty and utility because the cost and expense of cutting off or detaching the wide unprinted margins and central space of the stamp sheets and paraffin sheets extending beyond the margins of the stamps and stamp books proper, and coincident with the wide marginal and central spaces of the backing cover intended for flaps for the stamp books proper, would also counterbalance any gain in reduction of cost of manufacture which might otherwise result from said device.
    IY. At the time of the claimant’s devising the improvements in stamp holders covered by his said patent there was no invention in the devising either of a multiple book-leaf sheet, whether of stamps or other matter; or of a. multiple book-cover sheet, whether it be, or be not, complemental to such multiple book-leaf sheet; or of a multiple book composed of such a multiple book-leaf sheet or sheets and multiple book-cover sheet or sheets bearing a complemental relation to one another and attached together so as to permit of the division of such multiple book, by cutting, into the units or single books composing it; nor was there patentable invention in the improvements covered by the claimant’s said patent.
    Y. On or about March 26, 1900, under the direction of the Third Assistant Postmaster General, the United States Bureau of Engraving and Printing began the manufacture for the Post Office Department of small books of postage stamps, the manufacture of which books was continued throughout the period of time covered by the claimant’s petition in this suit; that is, up to June 30, 1910. Said stamp books were, from the beginning, manufactured by the Bureau of Engraving and Printing, under contract with the Post Office Department.
    VI. On May 4, 1898, the claimant wrote United States Senator Penrose, of Pennsylvania, inclosing him two models of his proposed stamp book, together with a printed pamphlet explanatory of the device covered by his said patent, and of the proposed method of manufacturing such stamp books, and suggesting the adoption by the United States Post Office Department of the method of handling and selling stamps by means of such boohs. Shortly thereafter said letter and the two model stamp books accompanying it were transmitted by Senator Penrose to the Post Office Department, and were subsequently referred to the Third Assistant Postmaster General.
    VII. The pamphlet transmitted by the claimant to Senator Penrose described the stamp sheet and backing cover covered by the claimant’s said patent, together with the proposed method of manufacturing stamp books therefrom, as described in the patent, and also gave estimates of the cost of manufacturing such books. On June 1Y, 1898, Third Assistant Postmaster General John A. Merritt wrote the claimant „as follows:.
    “Sib: Your letter of the 4th ult. addressed to Honorable Boies Penrose was referred by him to the Second Assistant Postmaster General, who subsequently turned it over to this office. The two books submitted with your letter, contain^ ing in all 36 two-cent stamps, are herewith returned. The department does not deem it expedient to sell stamps in this way. The same proposition, it may interest you to be informed, has been many times made by other persons.”
    VIII. On July 14, 1898, the claimant, in reply to the letter set forth in the Finding VII, wrote Third Assistant Postmaster General. Merritt stating that he did not know what Senator Penrose had submitted to him, and that .the descriptive pamphlet and the two model stamp books which had been transmitted by him to Senator Penrose did not fully show his invention; and he requested a personal interview with Mr. Merritt in regard to the matter.
    IX: On July 16, 1898, Acting Third Assistant Postmaster General Madison Davis, m reply to the claimant’s letter of July 14, 1898, set forth in Finding VIII, wrote to the claimant, saying, “Your plan for booking and selling-stamps is well understood; your explanation of it could not be clearer; but, as stated in a former letter to you, the department does not wish to adopt it.”
    X. On June 14, 1899, Mr. Homer Greene wrote the Postmaster General in behalf of the claimant in favor of the adoption and use by the Post Office Department of the claimant’s patented device for booking postage stamps; and in reply to said letter Acting Third Assistant Postmaster General Madison Davis, on June 17 following, wrote Mr. Greene, stating that the claimant had, on June 17, 1898, been informed that the department deemed it inexpedient to sell postage stamps in the way proposed by him, which decision the department still adhered to.
    XI. The net profits to the United States from the sale of the products of the multiple stamp sheets and the .multiple backing covers, from April 16, 1900, to June 30, 1910, exceeded $3,000, for which no payment has been made, nor is it otherwise shown ivhat a reasonable royalty for the use of said stamp-holder device so patented would be if the same were valid.
    XII. Upon the foregoing findings of fact the court finds the ultimate fact, so far as it is a question of fact, that by reason of the former state of the art shown in Finding II, the patent granted to claimant does not possess novelty or utility.
    
      Mr. Earl Sherwood, Mr. B. M. Smith, Mr. F. P. B. Sands, and Mr. John M. Thurston for the claimant. Mr. Eosea B. Moulton was on the briefs.
    
      Mr. Charles F. Kincheloe (with whom was Mr. Assistant Attorney General Thompson) for the defendants.
   Atkinson, J.,

delivered the opinion of the court:

This suit was brought to recover from the United States under an implied contract the sum of $1,000,417.56, which is allaged to be the net profits accruing from the use of a patented device granted to plaintiff, covering a period of 10 years from April 16, 1900, to June 30, 1910. The defendants deny the validity of the patent, as well as the existence of an implied contract in fact for the use of the device by the Post Office Department.

The first question to be considered is the validity of the patent granted by the United States Patent Office to plaintiff for a postage-stamp holder,-dated January 4, 1898, and numbered 596656. Application for a patent on this device was first filed by plaintiff in the Patent Office March 17, 1896, which application was rejected, and an amended request for the issuance of the same was again filed September 14, 1897. Plaintiff, however, claims that he first discovered the utility of his stamp-holder combination in August, 1894, which claim is attested by two witnesses; but this contention, however, is not material to the issues involved in this suit. The court, in determining the validity of the patent, need only consider the matter of dates in so far as it is necessary to determine the relation of plaintiff’s patent to the prior state of.the art when applied to the several similar patented and unpatented devices which are herein involved.

Considering the subject of what an invention is, Walker on Patents, section 23, says:

“Patents are grantable for things invented, and not for things otherwise produced, even where the production required ability of a high order. Novelty and utility must, indeed, characterize the subject of a patent, but they alone are not enough to make anything patentable; for the statute provides that things to be patented must be invented things, as well as new and useful things.”

Hence, to be patentable, an idea or discovery must not only possess novelty and utility, but it must be the product of inventive faculties as w.ell.

Claim 1 of plaintiff’s patents reads as follows:

“A stamp sheet having one series of narrow, unprinted spaces in the body thereof, a second series of spaces wider than the first, along which said sheet is adapted to be stitched, a third series of spaces wider than the first and second series extending around the edges and centrally of said sheet, substantially as described”; and he lays particular stress upon this claim of his patent, alleging therein both novelty and invention.

A mass of evidence and many exhibits have been introduced to shoAV that the form of stamp sheet claimed in his patent involved inventions because of the fact that by this method or form it ivas possible to economically produce large numbers of the stamp booklets by multiple manufacture. The small margin of profit possible in the sale of stamp books made it essential to the success of the device to manufacture them at a minimum of cost. Plaintiff knew this, and his purpose therefore was to secure a patent on such a design of stamp sheet as would achieve this result. His effort, however, to secure acknowledgment of invention in this particular claim by the Patent Office officials met with many rejections, as is shown by the findings.

Whatever particular novelty there is in claim 1 of the patent consists, after five rejections, in adding a third series of spaces to the form of stamp sheet. In his application plaintiff states that “the flaps on the outside and on the inside of the cover F may be dispensed with, if desired, in which case the wide space h in the middle of the sheet of stamps and the flap P' need not be provided.”

It is shown by the proceedings before the examiners of the Patent Office that the claim was allowed only after the introduction of the centrally extending spaces; and yet we find plaintiff alleging in his specifications that the same results can be achieved without these spaces as well as with them.

The Patent Office examiners decided that there was no patentable novelty in claim 1 when the stamp sheet had “ one series of narrow unprinted spaces in the body thereof * * * and another series of wider unprinted spaces (printed in Finding II) need not loe provided. If the third series of spaces wider than the first and second series extending around the edges and centrally of said sheet ”; but in his specifications he states that in the manufacture of his device the wide central space h shown in his sheet of stamps (printed in Finding II) need not be provided. If the third space in his stamp sheet is not essential, then he reverts back to his claim as amended July 18, 1896, as to which the examiner said it “is thought to relate to nothing of patentable novelty differing from the ordinary structure of stamp sheets with their blank margins only in a matter of degree.”

Having failed to get claim 1 of his application through the Patent Office on his claim of a stamp sheet without the third series of spaces, and ivhen the examiners stated in their rejection of this particular claim that “ applicant’s claim can only be read when including the blank margins of the ordinary stamp sheet,” therefore plaintiff, in order to secure a different construction from that of the ordinary known' prior art, added “ a third series of spaces,” but renounces it as necessary or advantageous in the development of his device.

His Exhibit No. 21 printed in Finding II does not show the use of this central wide space because he had voluntarily dispensed with it. It is therefore plainly to be seen that the claim of a third space in the stamp sheet was one of expediency, alleged for the purpose of securing the allowance of claim 1 of his application for a patent, which reveals the fact that his allowed patent for a stamp-book holder was more the result of evolution than invention.

As we have already shown, a device to be patentable must not only possess novelty and utility, but it must also be the product of the inventive faculties. It must not merely show skill, but must evince invention. If, however, the mind advances from the known to the unknown by a transition natural to the ordinary instructed intellect, there is no invention. Eeasoning is not invention. (Merwin on Patentability, pp. 18, 19, 22, 38; Beckendorf v. Faber, 92 U. S., 347.) In a patentable device there must be invention, as distinguished from mechanical or technical skill. Invention is the creation of something new — new not as a mere modification of an idea already existing, but an addition to the stock of ideas. (Merwin, p. 10.)

In further considering the patentable novelty of claim 1 of the plaintiff’s patent, we enter the field of prior art of unpatented devices similar to the plaintiff’s alleged discovery.

It is shown by Finding II that the American Bank Note Co. in manufacturing pocket stamp books for the Western Union Telegraph Co. had knowledge of and had printed and used in booklet form the method of constructing multiple book leaf sheets of stamps, having unprinted cutting spaces and binding spaces, practically similar in all essential respects to plaintiff’s alleged discovery and allowed in his patent, as far back as 1883. It is apparent, therefore, that the narrow, unprinted spaces running through the body of the stamp sheet of defendants’ Exhibit E. A. No. 1 (Finding II) are for the purpose of perforation and also for cutting the sheets into the small book sections of leaves of sis stamps each, the wider spaces running through the sheet being for the purpose of binding stubs for use in binding the leaves of six stamps each into booklets. It is likewise further shown that the Western Union Telegraph Co. sheets were also cut through between the long way of the sections "and then, after collating the required quantity, were stitched together along with an interposed paraffin sheet between each sheet of stamps, and were subsequently split through crosswise of the section and placed in a case or cover.

By referring to the stamp sheet of the Western Union Telegraph Co., a replica of which is printed in Finding II, it appears that the spaces indicated by the “ <z’s ” thereon are the perforated ones, while the spaces marked by “ 5 ” thereon are the cutting divisions. Also the, spaces marked 1 ” would be for perforating, and the spaces marked “2” are for cutting and separating the sheets of four stamps one from the other. The part used for a binding margin or stub is the margin at the head of the stamps marked a-”

It further appears from the findings that if the permissible method of eliminating the wide central space in the stamp sheets of plaintiff’s claim 1 of his patent, as stated in the specifications therefor, may be done, we would reach an arrangement of stamp sheets under plaintiff’s method of “ one series of narrow unprinted spaces in the body thereof, a second series of spaces wider than the first, along which said sheet is adapted to be stitched,” as compared with which claim the American Bank Note Co. shows that it manufactured a similar multiple stamp sheet booklet with one narrow unprinted space in the body thereof, a second series of spaces wider than the first as early as 1883, which is practically identical with claim 1 in plaintiff’s patent. It will be observed, therefore, by comparison that the stamp sheet manufactured by the American Bank Note Co. (Finding II) is identical, or practically so, with that of plaintiff’s when the wide, centrally located unprinted space is left out of his stamp sheet, as he says may be done if desired, and as he has done in the manufacture of his sheets as shown by the book covers in Finding II.

The Patent Office examiners, after rejecting claim 1, stated that “ only a claim to a specific construction can be allowed,” whereupon plaintiff then inserted a claim for “ a third series of spaces wider than the first and second series extending around the edges and centrally of said sheet.” It was upon this amendment or addition that plaintiff secured his patent, but he states in his specifications that this central unprinted space is not an essential element in the construction of his stamp holders, and need not be used in a successful construction of the device.

A combination is an entirety, and if one of its elements is omitted the thing claimed disappears. Every part of the combination claimed is conclusively presumed to be material to the combination. A patentee makes all parts of a combination material when he claims them in combination and net separately. He can not, therefore, show his invention to be broader or narrower by construction, to prevent anticipation. (Walker on Patents, secs. 176, 181, 182, 186, 339, and 349); Case v. Brown, 2 Wall., 320; Derby v. Thompson, 146 U. S., 476, 482; Wright v. Yuengling, 155 U. S., 47; McClain v. Ortmayer, 141 U. S., 419, 425; Hubbell v. United States, 179, U. S., 77, 82; Water Meter Co. v. Vesper, 101 U. S., 332.)

Plaintiff’s claim 1 of his patent, therefore, necessarily fails for want of patentable novelty and utility by reason of like devices in the prior art.

Claim 2 of the patent reads as follows:

“A stamp sheet having unprinted spaces at intervals in the body thereof and a backing cover for said sheet adapted to be divided into sections to form books, substantially as described.”

The language of this claim is not definite. It was the evident intention of the patentee to form a combination of the stamp sheet as described in claim 1 of the patent, and, as plaintiff says, “a backing cover for said sheet adapted to be divided into sections to form books, substantially as described.” We are, therefore, necessarily referred by the terminal phrase of the claim, “ substantially as described,” to the specifications and drawings of the patent for enlightenment thereon.

In figure 1 of the patent, as shown in Finding II, we find a sheet of multiple backing covers or book backs. This sheet of backing covers has a series of divisional lines for the purpose of cutting the sheet in order to form small books and for stitching and for forming flaps for the same. Figure B is a view of the backing cover open, with sheets of stamps interposed. Figure 4 is a backing cover opened, showing the two backs, stitched at e' and flap P'. Figure 5 shows the backing cover with flap closed.

Plaintiff says in his specifications, and as there is no definite description in claim 2 in his patent of the backing cover — we must look elsewhere for design — that “the flaps on the outside and on the inside of the cover F (figs. 3, 4, and 5 of his specifications) may be dispensed with if desired.” This is a clear admission that the flap P' is not an essential element to the utility of the backing cover.

The elimination of the flap on the backing cover clearly brings the patent of J. Cussons, No. 414500, granted November 5, 1889, into this case, because of its similarity to plaintiff’s device, and it necessarily raises the question of the prior state of the art relating to patents covering this class of invention. (See cuts in Finding II.) [

Cussons’s claims are:

“ 1. The method herein described of manufacturing blank books, which consists in superimposing a series of unfolded sheets ruled to form the pages of a number of books, placing such unfolded sheets on a back or cover sheet, stitching through the sheets and cover along the folding line of the sheets and cover, then subdividing the whole and folding the subdivided sections along their stitched lines into complete books, substantially as described.
“2. The method herein described of manufacturing advertisement blank books, which consists in printing the advertisements in multiple impressions in rows upon a cover sheet, each row containing the impressions required for a series of complete books, superimposing a series of unfolded sheets, each having multiple impressions in rows one above the other, and each row containing the impressions required for a series of complete books, stitching through the superimposed unfolded sheets and cover along the folding line of the sheets and cover, subdividing the unfolded sheets and cover in two directions on lines extending at right angles to each other, substantially as described.”

Figure 3 of Cussons’s patent shows a sheet of multiple backing covers designed to form six complete small book covers. Plaintiff shows a sheet containing a greater number of backing covers. The difference, therefore, between them is only one of degree. Cussons’s patent states that his sheet is to be divided by cutting along the divisional lines in two directions on lines extending at right angles to one another. Plaintiff subdivides his multiple backing sheet in the same manner. Cussons stitches his sheets and covers before subdividing, and then folds them to form his book. Plaintiff says nothing as to folding cover, which convinces us that he folds along the stitched line shown in figure 4 of his patent so that his single backing cover folded through the center of his book will form an upper and lower cover. Figure 5 of his patent shows clearly a book cover folded in the middle to make the upper and lower covers thereof.

If it should be necessary to further show that Cussons’s patent anticipated the plaintiff’s backing cover, the simple addition of a flap to the Cussons multiple sheet (Finding II) would reveal a true facsimile of plaintiff’s backing cover. As plaintiff admits that the flap on his backing cover is not a necessary element in the construction of his device, he thereby necessarily precludes its patentable novelty, because a backing cover was anticipated by Cussons’s prior art patent.

Claims 1 and 2 of plaintiff’s patent, therefore, necessarily fail for lack of patentable novelty and utility.

Claims 3 and 4 of the patent not being involved in this suit have not been considered; nor have we considered the question of an implied contract in fact or in law between plaintiff and the United States for the use of his device or patent, for the reason we decide that his patent is void and of no effect.

The petition is accordingly dismissed, and judgment is awarded to the United States.  