
    JOSEPHINE P. KELTON, Executrix, v. THE UNITED STATES.
    [No. 15593.
    Decided April 5, 1897.]
    
      On the Proofs.
    
    The adjutant-general of a military division transmits a device for sight covers — an invention of his own — to the commanding officer of an arsenal within the division, stating that it is sent hy direction of the division commander. Models are made and the device is experimented with at the cost of the Government. After some sight covers have been issued and used, a patent is taken out.
    I.Where the inventor was the adjutant-general of a military division, bringing his invention to the notice of the Ordnance Department through the interposition of his commanding officer, using the time and skill and experience of Government officers and experts and its machinery and appliances to perfect his invention, and introducing' the device into the service before it was patented, no contract will be implied, andthe can not maintain an action for royalty after the patent has issued.
    II.The decision of this court in GUI’s Case (25 C. Cls. R., 415) was that though the claimant might.have maintained an action against an ordinary defendant for the use of a machine constructed after the patent had issued, yet that he being an employe of the Government in the arsenal where the machine was constructed, and having brought his device to the attention of the commanding officer, and having allowed it to be introduced without notice that he intended to seek royalty, a contract could not be implied.
    III.Courts are not established to give effect to contracts which should not have been made. A guardian or trustee can not sell to himself, and in this court public officers are regarded as guardians of the public welfare and the Government as a ward.
    
      
      The Reporters’ statement of the case:
    The following are the facts of the case, as found by the court:
    I. The claimant is a citizen of the United States and a resident of the District of Columbia.
    On July 21,1893, letters testamentary upon the estate of John C. Kelton, late of the District of Columbia, deceased, were issued to the claimant, by order of the Supreme Court of the District of Columbia.
    II. During the period between January 1,1880, and March 1,1885, the said John C. Kelton held the office of assistant adjutant-general, United States Army, and was on duty as the assistant adjutant-general at the headquarters Military Division of the Pacific and Department of California, San Francisco, Cal.
    III. On 19th January, 1882, Colonel Kelton addressed to the commanding officer at Benicia Arsenal the following communication :
    “Headquarters Mil. Div. oe the Paoieio
    “AND Dept, oe Cal.,
    “ Presidio of San Francisco, January 19, 1882.
    
    “COMMANDING OEEICER,
    “ Benicia Arsenal, Gal.
    
    “Sir: The division commander directs me to enclose herewith for your information a copy of a ‘ memorandum of opinions upon target practice and in regard to the Springfield rifle and carbine.7
    “ Yery respectfully, your obedient servant,
    “J. C. Kelton,
    
      “Assistant Adjutcmt-General.
    
    “ 3 plates enclosed.77
    Besides the “ memorandum of opinions upon target practice,77 there was also inclosed the following printed circular:
    “Headquarters Military Division oe the
    “Paoieio and Dept, oe Oalieornia,
    
      “Presidio of San Francisco, Gal.,-, 188 .
    
    “Commanding Oeeicer
    “ (Through comdg. gen., Dept, of-).
    “Sir: The division commaDder directs me to say that the pistol grip of the Military Division of the Pacific (see plate herewith) is even more important on the carbine than the rifle. It is now made of metal at the Springfield Armory, and, like any other ordnance property, can be obtained on approved requisition at Benicia Arsenal.
    “This,
    “and abroad covered front sight (see plate herewith), which will enable the carbine to be accurately leveled and protect the front sight from becoming worn or polished,
    “and a small screw (see plate herewith) placed in the block which moves between the guide bars of the rear-sight leaf slide to prevent the lateral motion of the slide,
    “and a holster into which the carbine can be quickly disposed of) and which will prevent all injury to it, appear to meet all the want's at present expressed by the 1st and 6th Cavalry.
    “If these wants are generally felt by company cavalry officers they should, if they adopt the devices proposed, or present better, make known their wishes to the commanding officer, Benicia Arsenal, through their department commander.
    “The pistol grip, broad covered front sight, and cartridge with the 500-grain bullet and 70 grains of powder, are expected to do much to improve carbine practice, and to make it, up to 600 yards, very little, if any, inferior to that of the Springfield rifle.
    “ Yery respectfully, your obedient servant,
    “ J. C. Kelton, Colonel, A. A. O.”
    
    The plate referred to in the above circular contained several figures relating to various devices, including fig. 1 (post). Upon the plate was pasted the following printed matter:
    
      “Memorandum of views entertained in respect to inexpensive modifications in the Springfield rifle and carbine, perfection consisting in the sum of small improvements.
    
    “The rifle and carbine to have the straight edge buckhorn rear sight, rammer bayonet, chamber in butt for appendages. Pistol grip, Military Division of the Pacific pattern; Broad, straight, sharply corrugated triggers, inclined to rear. Broad covered front sight.
    “As the stud on which the front sight is fixed will not be required for the present bayonet, if the rammer bayonet is adopted, it is suggested that it may be made as broad as the barrel and covered. Then, in conjunction, with the straigt edge of the rear sight, the base of the front sight will answer as a level, while the cover will prevent injury to and glare upon the front sight, rendering blacking unnecessary.
    “The straight trigger, inclined to the rear, will have the advantage not only of giving the finger the option of a longer lever, but, by being normal to the direction of the force applied, will secure the direct and full application of the force.
    
      “It is also suggested that the depth of the front sight be limited to ¶ of an inch, in order that the errors in aiming arising from taking different depths of the front sight may be restricted so far as possible.”
    On the 21st of January, 1882, the commanding officer addressed to Colonel Kelton the following communication:
    “Benicia Arsenal,
    
      " Benicia, California, January 21,1882.
    
    “Col. J. C. Kelton,
    
      " Asst. Adjt. Geni., Mil. I)iv. of the Pacific,
    
    
      " Presidio of San Francisco, Gal.
    
    “ Dear Sir : I have the honor to acknowledge the receipt of your communication of 19th inst., with inclosures, in reference to Springfield carbines and rifles, and request to be informed if the division commander desires me to forward these inclosures to the Chief of Ordnance, or have copies already been sent him ?
    “ Yery respectfully, your obdt. sevt.,
    “J. McAllister,
    
      " Col. of Ordnance, Comdgf
    
    This communication was returned to the commanding officer by Colonel Kelton, with the indorsement hereafter set forth, and the communication was then transmitted to the Chief of Ordnance, to the National Armory, etc., as shown by the following indorsements: .
    “ [1st endorsement.]
    “Headqrs. Mil. Div. Pac. and Dept. Cal.,
    “ Presidio S. F., Jany. 23d, 1882.
    
    “ Respectfully returned to the commanding officer, Benicia Arsenal, Cal.
    “ Copies of the enclosures have not been forwarded to the Chief of Ordnance, the division commander preferring that you should forward them with your remarks.
    “ He requests that you will ask authority to place the broad covered front sight and straight inclined trigger on rifles at division headquarters for trial.
    “ J. C. Kelton,
    “ Colonel, A. A. General.
    
    “ [2d endorsement.]
    “Benicia Arsenal, Jam,. 24,1882.
    
    “Respectfully forwarded to the Chief of Ordnance, with recommendation in reference to target practice, copy of a circular from div. hdqrs. in reference to the carbine, two sketches of new carbine boot, and one sketch of improvements designed for carbine and rifle. Authority is requested to comply with the desire of the div. comdr., and to make the sights and triggers and to place them on the arms at headquarters for experimental purposes.
    “J. McAllister,
    “ Col. of Ordnance.
    
    “ [Bd endorsement.]
    “ORDNANCE OEEICE, WAR DEPARTMENT,
    “ Washington, Jany. 31st, 1882.
    
    “Respectfully referred to the commanding officer of National Armory for report on the points made in regard to pistol grip for carbine and front and rear sights.
    “By order of the Chief of Ordnance:
    “Jas. M. Whittemore,
    
      11 Lt. Ool. of Ordnance.
    
    “[átli endorsement.]
    “National Armory, Feby. 2d, 1882.
    
    “Respectfully referred to a board to consist of Lt. J. 0. Ayres, Ord. Dept., and Lt. 0. 0. Morrison, Ord. Dept., for report.
    “D. A. Lyle,
    “ Gaft, of Ordnmice, Oomdg.
    
    “ [5tli endorsement.]
    “National Armory, Feb. 22, 1882.
    
    “Respectfully returned to the commanding officer National Armory with report.
    “ J. 0. Ayres, Lt. of Ord.”
    
    The relevant portions of this report are as follows:
    “National Armory,
    “ Springfield, Mass., February 2d, 1882.
    
    “ The board met pursuant to endorsement dated Feb. 2d, of the commanding officer National Armory, on the communication of Col. McAllister, Ordnance Department, dated Jan. 31, 1882. Present, both the members.
    “At the request of the board, a front-sight cover, of the general form suggested by Col. Kelton, was manufactured at the armory.
    “They find it a very complete and desirable protection against the wear that the carbine front sight is subject to in service.
    “ It also serves the purpose of making the light on the front sight uniform.
    
      “Covers made like the one herewith can be manufactured at a probable cost of twenty-five to thirty cents each, when made in quantity. They could be put on the carbines in the service having the steel front sight by furnishing longer stud pins with the covers.
    “The board do not consider the straight edge of the front sight of much use as a level for the piece, because when taking aim it is entirely obscured by the rear sight, whether it be a buck horn or a straight edge, and when a coarse enough sight is taken to see the straight edge of the front sight above the rear sight the notch of the rear sight can not be seen distinctly against the black background of the front sight. The description states that it can be used ‘in conjunction with the straight edge of the rear sight.’
    “ If this means that it is intended to first level with the front-sight straight edge and then to pass from that to the rear-sight straight edge, as one must in order to get a good sight, it would seem to be unnecessary trouble, as the piece might as well be leveled by the straight edge on the rear sight in the first place.
    “ [Here follows matter relating to the other devices suggested by Ool. Helton.]
    “There being no further business before the board, it adjourned Feb’y 14 sine die.
    “J. O. AYRES,
    
      “Lieut, of Ordnance.
    
    “Chas. 0. Morrison,
    
      “Lieut, of Ordmance.
    
    “Approved.
    “A. E. Buffington,
    
      “Lt. Ool. Ordnance, Gomdg.
    
    
      “ [Fig. 2, post, shows the sight cover referred to in this report.]
    “ [6th endorsement.]
    “National Armory,
    “ Springfield, Mass., Feb. 28,1882.
    
    “Bespectfully returned to the Ohief of Ordnance, U. S. A., accompanied by report required by 3d endorsement hereon; also (separate package by mail) by a rear sight with screw for holding buck-horn plate and front-sight cover.
    # * * * *
    “ The height of front sight on either rifle or carbine can not
    be changed without changing the system, but the height of straight edge or cover can be regulated to allow more or less of sight to appear above it.
    “A..B. Buffington,
    
      “Lt. Ool. Ordnance, Oomdg.
    
    
      u [7th. endorsement.]
    “Ordnance Oeeice, Mar. 2,1882.
    
    “Resp’y returned to c. o., Benicia Arsenal, with sample of sights, and with authority to comply with the wishes of Col. Kelton and division commander as far as his funds may permit.
    “S. Y. Benét,
    “ Brig. Geni., Ohief of Ordnance.”
    IY. Subsequently the following communications passed between Colonel McAllister and Colonel Kelton:
    “Benicia Arsenal, California,
    
      “Mar oh 13, 1882.
    
    “ General Kelton :
    
      “Presidio of San Francisco.
    
    “Dear General: I forward copies of letter and report on sight covers for front sights and screws for slides of carbines. I am making some of the former and will send you one for inspection as soon as it is completed. If you approve of it, we can place them on Harris’ carbines for trial at headquarters division.
    “ Yours, truly,
    “J. McAllister,
    
      “Colonel, Ord. Dept.”
    “Benicia Arsenal, Cal.,
    
      “March 18th, 1882.
    
    “ Dear General : I send you by mail an altered rear sight with clamp screw in it, also a front-sight cover for carbine. Please inspect the same and determine if they will answer. Return these articles as patterns to me.
    “ Yours, respectfully,
    “J. McAllister,
    “ Oolonel, Ord. Dept.
    
    “ To General Kelton,
    
      “Adjutant-General, U. S. A., Headqrs. Bin. Pac.,
    
    
      “Presidio of San Francisco.”
    “ Headquarters Military Division op the Pacific “and Department of California,
    “ Presidio S. P., Gal., March 21st, 1882.
    
    “ Colonel McAllister,
    “ Benicia Arsenal, Gal.
    
    “ Dear Sir : I have received your communication, with enclosures about carbine sights, etc., and also a rear sight, in wliieb tbe slide is fastened with a screw, and tbe front-si gbt cover.
    “ I will try these devices and return them in a day or two with report.
    “ Tbe sight cover is very adjustable and strong, and appears to be just what is required and is asked for.
    “ I, however, see nothing said in the ordnance report about the straight, inclined, corrugated trigger, but notice the Chief of Ordnance authorizes you to comply with our wishes as far as your funds permit.
    “Please, therefore, prepare two triggers for trial, and send them by mail. This is part of ‘ our ’ system.
    “ Yery respectfully, yours,
    “J. 0. Kelton,
    “ Colonel, A. A. Geni.”
    
    Y. Subsequently the following communications passed:
    “Headquarters Military Division or the “Pacific and Department of California,
    
      “Presidio 8. F., Gal., August 10th, 1882.
    
    “ Colonel J. McAllister,
    
      llBenicia Arsenal, Gal.
    
    “ Dear Colonel : I herewith send you a sketch of the last and of all the improvements proposed by me to the Springfield rifle and carbine, with a general description thereof and the advantages claimed therefor.
    “ [Here follow matters not relating to sight covers.]
    “1 will be glad if you will forward these papers to the Chief of Ordnance with your remarks.
    “If you find sufficient merit in the improvement proposed and recommend an experimental magazine rifle be prepared at Springfield, the Chief of Ordnance may consider the matter favorably. If so, I will gladly meet the expenses; indeed, desire to do so in order that the rifle may be presented for trial before the small-arms board before they adjourn.
    “ Yery truly, yours,
    “J. C. Kelton,
    
      " Colo.,A.A. G.”
    
    Figures 7 and 8, post, are the only figures on the sketch which relate to sight covers.
    “ [1st endorsement.]
    “ Benicia Arsenal, August 14,1882.
    
    “ Respectfully forwarded to the Chief of Ordnance in accordance with the request contained in this letter. Enclosures A and'B.
    
      “ The best suggestion is to convert the rifle into a magazine gun, but the propositions are all suggestive of improvement. The only question to be determined is as to the most practical and economical manner of effecting the alterations. I would respectfully recommend that Ool. Kelton’s request be granted, as he desires to pay all the expenses incurred in the manufacture of this rifle.
    “J. McAllister,
    “ Gol. of Ord., Oomdg.
    
    “ [2d endorsement.]
    “Ordnance Oeeioe, War Department,
    “ Washington, Aug. 25th, 1882.
    
    “Respectfully referred to the commanding officer of National Armory for detailed report on the within letter of Ool. Kelton, enclosing sketch of all the improvements proposed by him to the Springfield rifle and carbine.
    “Jas. M. Whittemore,
    
      “Acting Chief of Ordnance.
    
    “ [3d endorsement.]
    “National Armory, Springfield, Mass.,
    • “ September 18th, 1882.
    
    “Respectfully returned to the Chief of Ordnance, U. S. A., inclosing herewith detailed report in accordance with the 2d endorsement hereon; also a letter appended to Inclosure A, of September 4th, 1882, from Col. Kelton, in further explanation of his proposed devices. Relative to the expense of making them, the law approved March 3d, 1875 (Sec. I), expressly states:
    “ ‘ That hereafter no money shall be expended at said armories in the perfection of patentable inventions in the manufacture of arms by officers of the Army.’
    “A. R. Buffington,
    
      uLt. Ool. of Ord., Commanding.
    
    ^“Note. — Ool. Kelton’s letter of Sept. 4,1882, did not relate ' to sight covers.]
    “[4tli endorsement.]
    “Ordnance Office, War Department,
    “ Washington, Sept. 22nd, 1882.
    
    “Respectfully returned to the commanding officer of Benicia Arsenal, inviting his attention to 3d endorsement, and enclosed detailed report from the National Armory. A copy of 3d endorsement, and of the report will be sent to Ool. J. 0. Kelton from Benicia Arsenal.
    “ By order of the Chief of Ordnance:
    “Jas. M. Whittemore,
    
      " Lt. Ool. of Ordnance."
    
    
      VI. The following communications subsequently passed between the Ordnance Office and the National Armory:
    “ ORDNANCE OEEICE, WAR DEPARTMENT,
    “ Washington, September 25, 1882.
    “The Commanding- Oeeicer,
    “ National Armory.
    
    “Sir: The Chief of Ordnance directs me to state that as requisitions are received at this office for front-sight covers for the service rifle, you will please report as to the advisability of furnishing these covers for all service rifles, cost, etc.
    “ Respectfully, your obedient servant,
    “Jas. M. Whittemore,
    
      uLt. Ool. of Ordnance.”
    
    “National Armory, Springeield, Mass.,
    “ October 25th, 1882.
    
    •“ Chiee oe Ordnance, U. S. A.,
    “ Washington, D. G.
    
    “ Sir : Herewith I have the honor to inclose a tracing of two front-sight covers — one for carbine, one for rifle — which 1 forward this day by mail, and to report in accordance with your instructions of the 2oth of September, 1882, relative to the advisability of furnishing front-sight covers for all service rifles,'cost, etc., as follows:
    “ I had these covers made to meet, so far as known here, the wishes of the officers desiring them- — that is, to show the front sight of rifle about -f above a line perpendicular to the plane of the sight and about equal in length to the exterior diameter of the barrel at that point. These are about as simple and inexpensive as we could devise. I have had them tried by experienced marksmen, who differ somewhat in their opinion as to usefulness. The majority, however, agree that they are an advantage, although better scores were made without than with them. This, perhaps, is a mere coincidence. Relative to the carbine, there appears to be a well-defined want — something to protect the front sight — as well as one open to question in the desire to obtain front sight covers. In regard to the rifle, an actual want is not so well defined. However, this can better be judged by the number and character of those who ask for them than by opinions based on our practice here.
    “I would suggest that those who ask for them be supplied as a better way of arriving at a fixed result, than by furnishing one for every rifle before it is fully decided that they are really wanted. At best they will be expensive to make — 50c. each, estimated, if made in lots of 10,000 or more; will cost more if made in less quantity.
    
      “It will be observed that the screw, which, is to secure the cover when on (it can [be] put on and taken off at pleasure), furnishes the line perpendicular to the sight plane above described. This result was arrived at after repeated trials with other ways of getting (and positions of) the line, and found to be the best.
    “.Respectfully, your obedient servant,
    “A. R. Buffington,
    
      Lt. Ool. of Ordnance, Commanding.”
    Figures 9, 10, and 11, post, are the tracings of front-sight covers above referred to.
    “ [1st endorsement.]
    “ORDNANCE Office, War Department,
    “ Washington, Oct. 31st, 1882.
    
    “Respectfully referred to the commanding officer of Benicia Arsenal, who will confer with Ool. Helton and furnish the Bureau with such information as may aid it in coming to some definite conclusion as to the number, if any, of these front-sight covers to be issued to the Army, including such reports as may have been received from troops to whom they have already been issued. Samples by mail.
    “By order of the Chief of Ordnance:
    “Jas. M. Whittemore,
    
      uLt. Ool. of Ordnance.
    
    “[2d endorsement.]
    “Benicia Arsenal, Cal., Jany. 2d, 1883.
    
    “Respectfully returned to the Chief of Ordnance with letters from several officers on the subject of front sights, marked A to H, inclusive. Colonel Helton and myself have consulted on the subject, and I forward a letter of his, marked “If which expresses his views, as well as mine, on this subject. I recommend, however, as necessary, a new boot or holster for carrying the carbine.
    “J. McAllister,
    “ Colonel of Ordnance, Commanding.
    
    “ [Letter referred to in this endorsement.]
    “Headquarters Military Division
    “of the Pacific,
    
      “Presidio of San Francisco, Lee. 22, 1882.
    
    “ Colonel J. McAllister,
    “ Ordnance Department, Benicia Arsenal, Gal.
    
    “ Dear Colonel: Referring to the remarks of the Chief of Ordnance in regard to front-sight covers, two of which have been sent through you, by mail, I think the ordnance device for the sight cover for the rifle as well as the carbine is better than mine; first, for the reason that it can not be so easily, if at all, displaced by contact witb the boot or holster; second, because there is more space between the top of the cover and the sight; third, because the sight is more under cover and can be more readily fixed and detached. I do not think 10,000 too many to have made; 7,800 for carbines, for which they are indispensable to preserve the front sight and secure accuracy in firing; 2,200 for the rifle, to be at first issued only to marksmen.
    “I have no doubt all the foot troops'will soon want them, but the want should of course be real before it is fully gratified.
    “ I invite attention to the very favorable opinion expressed concerning the straight corrugated inclined trigger by all who have tried it.
    “ Yery truly, yours, “ J. C. Kelton,
    
      “Assistant Adjntcmt- General.
    
    “ [3d endorsement.]
    “ Ordnance Oeeice, War Department,
    “ Washington, Jan. 16th, 1883.
    
    “ Respectfully returned to the commanding officer of National Armory, who will make 2,500 carbine front-sight covers and 500 rifle front-sight covers, and send them to comdg. officer, Benicia Arsenal, for issue. Attention invited to opinion on straight corrugated inclined triggers.
    “ By order of the Chief of Ordnance:
    “ Jas. M. Whittemore,
    “ Lieut. Col. of Ordnance.
    
    “[4th endorsement.]
    “ National Armory, Spring-field, Mass.,
    “ March 30th, 1883.
    
    “ Respectfully returned to the Chief of Ordnance, U. S. A.
    “The sight covers for carbine and rifle are now in process of manufacture, but on account of the pressure of other work can not be completed for some months.
    “ Will be issued in accordance with the 3d endt. hereon as soon as completed.
    “A. R. Buffing-ton,
    
      “Lieivt. Col. of Ordnance, Commanding.”
    YII. While the communications given in finding vi were passing, the following communication was sent to Col. Kelton by an officer of cavalry:
    “Fort Bidwell, California,
    “ October 21st, 1882.
    
    “ To the Assistant Adjutant-General,
    
      “EL'eadgrs. Department of California,
    
    
      ílPresülio of San Francisco, California.
    
    “ Sir : In compliance with your letter of May 25th, 1882,1 have the honor to say that I find the front-sight cover to be just what is wanted to protect the sight from becoming worn down or rubbed bright. I had one of them filed so as to expose the whole blade of the sight, so that anyone, in shooting, could take in the whole sight or a portion of it. This also makes the opening in the cover larger, so that quicker aim can be taken; this I believe to be an improvement. The men who use the covers are of the same opinion. In regard to the straight triggers, I will say they are the triggers that should be supplied to the troops; they render the pull much easier than with the old ones.
    <f I am, sir, very respectfully, your obedient servant,
    “R. F. Bernard,
    
      u Captain, 1st Cavalry, Commanding Troop (?.”
    YIII. Between the dates of the third and fourth endorsements to the communication given in finding vi there were further communications between the Ordnance Office and the National Armory as to sight covers and other matters, the relevant portions of which are as follows:
    
      “ National Ardmory,
    
      u Springfield, Mass., January 17,1883.
    
    “ Chiee or Ordnance, U. S. A.,
    
      “ Washington, D. C.
    
    
      u Sir : Referring to Bureau letter No. 4950 of ’82,3d endorsement, directing the. manufacture of carbine and rifle front-sight covers, I have the honor to call attention, before complying with these instructions, to the statement of Ool. Kelton in endorsement of Nov. 7th, 1882, on enclosure marked ‘A:’
    
      iUI therefore recommend * * * that the front-sight cover, if it is decided to issue it generally, be modified by permitting the whole, or nearly the whole, of the sight to appear above the straight edge, say 3/32.’
    “ His letter of December 22d, 1882, Enclosure i I,’ states the 1ordnance device’ (the above remarks evidently refer to some other) * * * ‘ is better than mine.’ Now the ordnance device submitted shows but l/16th of the front sight above the straight edge, and the instructions to manufacture do not modify the sample submitted.
    *****
    “ Respectfully, your obedient servant,
    “A. R. Bueeington,
    
      11 Lieut. Col. of Ordnance, Gommandimg.
    
    “[1st endorsement.]
    
      11 Ordnance Oefice, War Department,
    
      u Washington, January 19,1883.
    
    
      u Respectfully returned to the commanding officer of National Armory. Make the front-sight- covers according to sample furnished from the Armory and approved by Colonel Kelton. * * *
    “By order of the Chief of Ordnance:
    “J. A. WHITTTEMORE,
    
      u Lieut. Ool. of Ordnance.
    
    “ [2d endorsement.]
    “National Armory,
    “ Springfield, Mass., January 20,1883.
    
    “ Respectfully returned to the Chief of Ordnance. ‘ Sample furnished from the Army ’ it is presumed should read ‘ Sample furnished from the Armory,’ which Colonel Kelton calls the ‘Ordnance device,’ the one approved by him, and for reasons not at all connected with the distance of front sight above the ■ straight edge, which he recommends should be changed. The Armory sample should therefore be changed to produce what he wants. * * *
    “A. R. Buefing-ton,
    
      “Lieut. Gol. of Ordnance, OommanJg.
    
    “ [3d endorsement.]
    “ Ordnance Office, War Department, '
    “ Washington, January 22,1883.
    
    “ Respectfully returned to the commanding officer of National Armory. Make the front-sight covers as you suggest. * * *
    “By order of the Chief of Ordnance:
    “J. A. Whittemore,
    
      “Lieut. Gol. of Ordnance.
    
    “ [4th endorsement.]
    “National Armory.
    “ Springfield, Mass., January 27th, 1883.
    
    “Respectfully returned to the Chief of Ordnance, Ú. S. A. The front-sight covers will be made as authorized in the 3rd endorsement hereon — that is, like the tracings shown in Armoy letter of October 25, 1882, Bureau No. 4950,1882, now changed to show front sight -3%" above straight edge. * * *
    
    “A. R. Buffington.
    “ Lieut. Gol. of Ordnance, Gom’d’g.”
    IX. Pursuant to the orders and instructions set forth in the preceding findings, the ordnance officers proceeded to manufacture front-sight covers like the tracing shown in the Armory letter of October 25, 1882, hereinbefore set forth. Some of these were manufactured, or in process of manufacture, before the claimant’s application for a patent, hereinafter set forth, was filed, some were manufactured after the application for a patent, and some after the patent had been issued. The first front-sight covers were issued for service on January 32,1884, after the application for a patent had been filed and before the patent had been granted. It does not appear that the defendants’ officers were notified that Colonel Kelton claimed to be the inventor of a patentable device, or that he intended to patent it, or that an application for a patent had been filed by him, except so far as the same may be inferred from his letters and communications hereinbefore set forth. Neither does it appear that any other communication passed from him to the defendants’ officers than those set forth in the preceding findings. The cost of preparing working drawings and of constructing the sample front-sight covers hereinbefore referred to was borne exclusively by the Government.
    X. The War Department is early and regularly informed of all improvements and inventions in firearms and ammunition. It is aware of the state of the art at all times, and generally knows of all patents upon firearms as soon as issued. The attitude of the War Department toward inventors in ordnance has been one of neutrality It has neither denied nor admitted the legal rights, if any there were, of inventors. In an endeavor to perfect the Government arm that Department has taken advantage of all knowledge within its reach and of all inventions. It does not deny the claims of inventors, but has proceeded upon the policy that executive officers should not decide upon such claims against the Government or upon conflicting claims, but that the claims should be presented without prejudice before some other tribunal than an Executive Department.
    Needed improvements in the service arms are suggested or developed during the progress of manufacture by officers of the Ordnance Department, and often by officers of the line of the Army after actual trials in the hands of troops. The changes thus suggested, if promising, are put on a few arms, and, after extended and thorough trials at the place of manufacture to prove their utility, a number áre made embracing the changes suggested for experimental purposes and placed in the hands of troops for actual trial, and in the event of such trials proving satisfactory the changes are adopted and put on all arms issued to the service. Needed improvements are added from time to time, regardless of the fact that the same may be infringements of patent rights.
    
      XI. The Ordnance Department, with the consent of Colonel Kelton, adopted for use in the Army the front-sight covers manufactured as hereinbefore described. Between January 12,1884, when they were first issued for use, and March 18, 1887, when this suit was brought, 59,887 covers were manufactured by the defendants and issued for service and used in the Army. A reasonable royalty for the use of said invention, if the claimant be entitled to recover, would be the sum of-cents for each front-sight cover manufactured, issued for service, and used as above described.
    XII. On April 4,1883, Colonel Kelton wrote a letter to the Commissioner of Patents to accompany an application for United States letters patent for a sight cover alleged to have been invented by him, and on March 3,1885, letters patent were issued. In the original application, which was sworn to April 13,1883, and filed in the Patent Office June 16,1883, the specification and claims were as follows:
    “ Specification.
    
    
      iL To whom it may concern :
    
    “ Be it known that I, John C. Kelton, a citizen of the United States and resident of the Presidio in the county of San Francisco and State of California, have invented an improved rifle front-sight cover, and I hereby declare the following to be a full, clear, and exact description thereof:
    “ My invention relates to a cover for the front sights of rifles and carbines, which serves to protect the sight from injury when the arm is not in use, and to shade the sight and assist in properly leveling the arm when aiming.
    “Referring to the accompanying drawings for a more complete explanation of my invention—
    “ Fig. 1 is an end view of the sight.
    “ Fig. 2 is a longitudinal vertical section of same.
    “Fig. 3 is a perspective view showing the front end.
    “Fig. 4 is a perspective view showing the rear end and the transverse bar.
    “A is the upper part of my sight cover, which forms an arch above the barrel of the arm when it is in place. The sides B B extend venically downward a short distance to the sides of the barrel and have longitudinal cheek pieces, C, between them. These pieces are separated sufficiently to admit the bayonet stud between them, and the lower sides are curved, as shown at D, to fit upon the top of the barrel.
    “A screw or pin, E, passes through the cheeks and the bayonet stud, and thus holds the cover in place.
    
      “Across the rear part of the cover and at a level above the bayonet stud is a straight bar, F, the exterior part of which is inclined inward as shown in figs. 2 and 4. This bar has a straight edge upon the top, and is of such a height as to expose only the necessary upper part of the front sight. This bar is of great use, when aiming, to assist in keeping the gun level transversely.
    “ The cover shades the sight so that it is not necessary to blacken it to secure a good definition while aiming and is of value in protecting the sight from injury or abrasion, especially in the case of carbines, which are either slung or carried in the boot where the sight would soon become more bright.
    “Having thus described my invention, what I claim as new and desire to secure by letters patent is:
    “1st. The sight protector, consisting of the arched upper portion A and sides B, with the cheek pieces 0 made concave below to fit the barrel of the gun and enclose the bayonet stud and the pin E, substantially as herein described.
    “2d. The arched sight cover and protector A, fitted to the barrel of the gun, as shown, and having the transverse straight-edged bar F across its rear portion, substantially as herein described.
    “In witness whereof I hereunto set my hand.
    .“John C. Kelton.
    “Witnesses:
    “Alfred Pansho.
    “Clement Winstanley.”
    The following correspondence then passed between the examiner and Colonel Kelton’s attorneys:
    “Department of the Interior,
    “ United States Patent Office,
    “ Washington, D. 0., July 6th, 1883.
    
    “John C. Kelton
    “ (Care Dewey & Co.),
    “ Sail Francisco, Oal.
    
    “ Claim 1 is met by the patent of Matthews, 211763, Jan. 28, 1879 (sights), and claim 2 by that of Larue, 128049, June 18, 1872.
    “ M. Seaton, Fxaminer.
    
    “Maxson,
    
      u3d Asst. Fxaminer.”
    “ Hon. Commissioner of Patents.
    “ Sir: In the matter of the application of Gen’l J. C. Kelton for a patent for rifle sight cover, filed J une 16th, 1893, No. 98349.
    
      “Reference bas been made to tbe patents of Matthews, No. 211763, and Larue, 128049.
    “ The patent of Matthews shows a fixed front sight, combining the ordinary enclosed pin sight with an open sight above, but the latter shows no means for enclosing or protecting it, nor any device in any way similar to mine.
    “ As this is the only portion which occupies the same relative position upon the gun to mine, I-have referred to it, although it is not made the subject of a claim.
    “ In the patent to Larue a sight is shown and claimed composed of two hinged pieces folding one above the other. This does not appear to resemble my invention in any way whatever.
    “ In my device I provide a cover to be used in combination with the open front sight of military rifles, to protect them from the glare of the sun or the effects of rain, the cover being removable, and it also acts as a level.
    “ It is removable so as to meet the condition when the sight base is used for fastening the bayonet to the rifle.
    “The cover is used when the bayonet is not required, and can be adjusted readily and securely.
    “ When displaced by the bayonet it is easily carried on the person.
    “The cover is broad and strong not only to protect the sight from the roughest usage in the field, but also to shade it from the sun and prevent it from becoming distorted in aiming by water clinging to it when it rains.
    “The straight edge limits the depth of the sight, which prevents excessive vertical variation when firing at long ranges, and it enables the firer to level his rifle.
    “This part of the device is simple, strong, and effective, and is very important.
    “John 0. Kelton,
    “By Dewey & Go., Attorneys.”
    
    “Department oe the Interior,
    “United States Patent Oeeioe,
    “ Washington, D. 0., Jan. 24th, 1884.
    “John 0. Kelton
    “(Care Dewey & Oo._),
    “ San Francisco, Gal.
    
    “The claims are, upon reconsideration, finally rejected on the references before cited, which fully meet the terms of the claims.
    “M. Seaton, Examiner.
    
    “Maxson,
    
      “3rd Asst. Examiner.”
    
    
      “Honorable Commissioner or Patents.
    “Sir: In the matter of the application of G-en’l John C. Kel-ton for a patent for cover for rifle sight, filed June 16th, 1883, number 98319, reference has been made to the patents of Matthews of January, 1879, and Larue, of June, 1872, as anticipating my invention. Upon a careful examination of these patents, I believe that either they have been misunderstood or that my own specification was not sufficiently complete to properly explain my invention, as neither of these patents in the slightest degree resembles my own device.
    “ The patent to Matthews claims only the construction of the rear sight, which is no part of my invention. It shows also (but does not claim) a front sight having an opening in which is fixed a pin sight, and above this an ordinary V-shaped open sight upon the top. The patent to Larue shows a sight formed with two hinged leaves which are adapted to be folded down one over the other, the sight being fixed in these leaves and movable with them.
    “ My invention forms no part of the sight at all, but is simply a removable cover, which is fitted to cover the front sight of an ordinary military rifle or carbine. This sight is the ordinary fixed sight which belongs to a rifle, and my improved cover is so constructed as to fit over this sight and be secured to it. I do not claim any improvement in the sight whatever, but simply an attachment or cover, which is to be placed over the sight.
    “ Believing that my specification may be somewhat obscure in some of the parts, I desire to amend it as follows: Strike out the specification and claims as now written and substitute there.for the inclosed specification and claims.
    
    “Respectfully, “John C. Kelton.
    “By his a-tt’ys, Dewet & Co.”
    “ Specification.
    
    
      “To all whom it may concern:
    
    “ Be it known that I, John C. Kelton, of the city and county of San Francisco, State of California, have invented an imin’ovement in rifle front sight covers, and I hereby declare the following to be a full, clear, and exact description of the same.
    “ My invention relates to a cover for the front sights of rifles and carbiues, which serves to protect the sight from injury when the arm is not in use and to shade the sight and assist in properly leveling the arm when aiming.
    “Referring to the accompanying drawings for a more complete explanation of my invention—
    “ Fig. 1 is an end view of the sight cover. Fig. 2 is a longitudinal vertical section, of the same. Fig. 3 is a perspective view showing the front end. Fig. 4 is a perspective view showing the rear end and the transverse bar.
    “A is the upper part of my sight cover, which forms an arch above the barrel, and broad enough to extend entirely over the sight, and of sufficient strength to protect it from ordinary blows, abrasion, or wear, and to form a sufficient shade to prevent tbe light from striking too full upon the sight.
    “For military rifles or carbines this arched portion should be about five-eighths of an inch in width, and is placed over the front sight of the gun.
    “The arched portion A extends over and downward, forming the sides B B, and has longitudinal cheek plates 0 between them. These pieces are so constructed as not to interfere with the bayonet stud, and the lower sides are curved, as shown at D, to At upon the top of the barrel.
    “A screw or pin, E, passes through the cheeks and the sight stud, and thus holds the cover in place, or it can be fastened in any other suitable manner, either permanently or so that it can be easily detached.
    “The upper parts of'the cheek pieces G form a level or bar above the upper part of the bayonet stud, as shown by the straight bar F in figs. 2 and 4.
    “This bar is a straight edge upon the top and is horizontal ~ when the gun is in proper position for firing, and is of such a height as to expose only the necessary upper part of the front sight. This bar is of great use when aiming, to assist in keeping the gun level transversely.
    “The cover shades the front sight so that, it is not necessary to blacken it to secure a good definition while aiming, and is of value in protecting the sight from injury or abrasion, especially in the case of carbines, which are slung or carried in the boot, where the sight would soon become worn bright.
    “Having thus described my invention, what I claim as new and desire to secure by letters patent is:
    “First. The sight protector or cover, consisting of the arched upper portion and sides of sufficient width and strength and height to protect the sight from abrasion and wear to fit the barrel of the gun, and enclose the sight stud, fastened to the barrel in any suitable manner to protect the front sight, substantially as herein described.
    “Second. The arched sight cover and protector fitted to the barrel of the gun over the front sight as shown, and having-cheek pieces, the upper edges of which form a transverse straight-edged bar, substantially as herein described.
    “In witness whereof I have set my hand.
    “John 0. Kelton.
    “Per att’ys, A. H. Evans & Go.”
    
      “Department oe the Interior,
    “United States Patent Oeeioe,
    “ Washington, D. G., Oct. 27th, 1884.
    
    “John 0. Kelton
    “(Care Dewey & Co.),
    
      u San Francisco, Cal.
    
    “The claims in this application, have been carefully considered and are held to be fully met by the reference, Matthews, before cited. As they do not materially differ from others formerly rejected, this action is final. Attention is especially called to fig. 3, in the reference.
    “F. M. Tryon,
    
      “Asst. Examiner in Charge.
    
    “Maxson,
    “ 2nd Asst. Examiner.'”
    
    “Hon. Commissioner or Patents.
    “Sir: In the application of John C. Kelton. Eifle front-sight cover. Filed June 16, ’83. . # 98349.
    
      “Erase claims and substitute the following:
    
    “1st. The sight protector or cover, consisting of an arched upper portion and sides of sufficient width, length, and height to protect the sight from abrasion and wear, and slotted so as not to interfere with the bayonet stud, and having cheek pieces, the lower sides of which are curved to fit the top of the barrel, and a transverse bar upon the cheek pieces in the rear end of the arched x>ortion, substantially as herein described.
    “2d. The arched sight cover and protector fitted to the barrel of the gun over the front sight, as shown, and slotted so as not to interfere with the bayonet stud, and having cheek pieces with curved lower sides to fit the barrel, a transverse bar with straight upper edge, located in the rear of the cover, and a screw or pin passing through the cheek pieces to hold the cover in place, substantially as described and for the purpose set forth.
    “We respectfully request a reconsideration of this application in view of the claims herewith submitted, as it is believed the limited construction now claimed is clear of the references.
    “ Very respectfully,
    '“John 0. Kelton.
    ■“By his atty’s, A. H. Evans & Co.”
    The patent was granted upon these claims and .the substituted specifications above given.
    XIII. Prior to the invention of the front-sight cover of Colonel Kelton as described in his letters patent it was not known or used by others in this country, and was not patented or described in any printed publication in tbi's or any foreign country, unless the same may appear in tlie letters patent hereinafter referred to as showing the prior state of the art; and the front-sight cover was not in public use or for sale for more than two years prior to his application for letters patent.
    XIY. In connection with the foregoing finding the following letters patent, together with the drawings and specifications accompanying the same, have been considered as showing the state of the art prior to the alleged invention of Colonel Kelton, and they are hereunto annexed for the purpose of reference, together with the following plates or drawings, being the same referred to in the preceding findings:
    U. S. letters patent No. 33965, issued to Wm. J. Stillman.
    U. S. letters patent No. 41162, issued to Frank N. Martin.
    U. S. letters patent No. 97717, issued to Chas. E. Sneider.
    U. S. letters patent No. 101568, issued to Henry B. Barber.
    U. S. letters patent No 112124, issued to Frederick A. Churchill.
    U. S. letters patent No. 128049, issued to John T. Larue.
    U. S. letters patent No. 134772, issued to Herrman A. Schottky.
    U. S. letters patent No. 154871, issued to Samuel W. Johnsón.
    U. S. letters patent No. 181530, issued to Emmit 6. Latta.
    U. S. letters patent No. 206164, issued to Philom P. Carnes.
    TJ. S. letters patent No. 214331, issued to Oliver D. Warfield,
    CJ. S. letters patent No. 259844, issued to Frederick J. Gardiner.
    TJ. S. letters patent No. 266206, issued to Harvey Rowell.
    TJ. S. letters patent No. 269023, issued to Frank De Lorme.
    TJ. S. letters patent No. 285474, issued to .James M. Farrington.
    TJ. S. letters patent No. 211763, issued to Washington Matthews.
    TJ. S. letters patent No. 217770, issued to William H. Broden.
    TJ. S. letters patent No. 274269, issued to Richard Cannon.
    TJ. S. letters patent No. 9615, issued to John A. Wagener.
    TJ. S. letters patent No. 168941, issued to Wm. A. Treadway.
    
      V. S. letters patent No. 46000, issued to Frederick W. Howe.
    TJ. S. letters patent No. 158577, issued to Thomas Dunstone.
    Letters patent of the Kingdom of Great Britain and Ireland, No. 2860 of 1860, issued to Thomas H. ICeble.
    Letters patent of the Kingdom of Great Britain and Ireland, No. 2453 of 1861, issued to Andrew Wylie.
    Letters patent of the Kingdom of Great Britain and Ireland, No. 2974 of 1860, issued to Frank Jaques.
    Letters patent oí the Kingdom of Great Britain and Ireland, No. 2399 of 1863, issued to Benjamin Browne.
    
      Mr. Jos. K. McClammon and Mr. James H. Hayden for the claimant:
    It appears from the evidence that John C. Kelton made an invention; that he invited the Government to adopt it, and the Government did so; and that thereafter, with the knowledge and consent of Kelton, the Government used his invention, he having duly applied for and duly obtained United States letters patent for and upon it.
    
      By many decisions of this court and of the Supreme Court of tbe United States it is established that such an adoption and use of an invention are under implied license from the-inventor and patentee, and that an implied contract for compensation arises from such a license and a subsequent actual use of the invention. (McKeever v. U. 8., 14 O. Gis. B., 396, 1878.)
    This judgment was affirmed, without opinion, by the Supreme Court of the United States. (See 18 C. Cls. B., 757; United States v. Palmer, 128 U. S., 262 (1888); United States v. Berdan-Firearms Manufacturing Go., 156 U. S., 552 (1894).)
    These authorities are in accord as to the contractual liability of the Government to make compensation to persons whose inventions it has used with their knowledge and consent. They are likewise in accord with a broader class of authorities, depending upon the same principles of law, and which consider the obligation resting upon the United States to compensate the owners of land and other corporeal property which it has appropriated and used. We cite the most recent case on the subject, Morris v. U. S. (30 C. Cls. B., 162).
    At the time of the invention of the Kelton sight cover and at the times of its presentation to and adoption and use by the Government and of Kelton’s application for letters patent and the granting thereof he was an officer of the United States Army. But he was not specially employed to make experiments with a view to suggest improvements in ordnance, nor were his duties, which were those of an assistant adjutant-general, in any way connected with the designing, adoption, manufacture, or use of ordnance or other military equipments. Therefore the claimant’s right to receive compensation from the United States for its use of Kelton’s invention is not affected by his employment. (U. S. v. Burns, 12 Wallace (1870), 246; McKeever v. U. S., 14 C. Cls. B., 396 (1879).)
    An issue has been raised in this case with regard to the novelty of Kelton’s invention, and consequently with regard to the validity of the letters patent that he obtained upon it. We submit that it appears from the evidence that at the time of its invention the Kelton front sight cover and protector was a new and useful improvement of a machine or manufacture not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country before Ms invention or discovery thereof, and not in public use or on sale for more than two years prior to his application for letters patent. In view of these facts it is clear that the legal and exclusive right of property vested in Kelton and all other inventors by the Constitution (Art 1, § 8) was properly secured to him by United States letters patent numbered 313212, and that these letters patent are valid.
    We quote section 4886 of the Kevised Statutes (U. S.), which governs the granting of patents for inventions:
    “Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used, by others in this country, and patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to liis application, unless the same is proved to have been abandoned, may, upon payment of fees required by law and other due proceedings had, obtain a patent therefor.”
    What constitutes a “new and useful machine or manufacture,” or a “new and useful improvement thereof” — in short, what, constitutes invention — is a subject that has been extensively considered by courts- and jurists. As applied to each individual case, it is manifest that the question is principally one of fact. Some principles, however, have been adopted for general use and guidance in determining whether a device contains elements of novelty. We cite a few recent cases which deal with the subject, and submit that the principles announced, when applied to the facts presented in the case at bar, dispose of any doubt concerning the novelty of Kelton’s invention. Its usefulness, we submit, is demonstrated by its adoption and ext ensive use by the United States. (The Barbed Wire Patent cases, 143 U. S., 275 (1892); Potts v. Greager, 155 U. S., 597 (1885); National Go. et al. v. Belcher, Fed. Kep., vol. 71, p. 876.)
    
      Mr. Charles 0. Binney (with whom was Mr. Assistant Attorney-General Bodge) for the defendants:
    Assuming that the device covered by General Kelton’s patent was novel, he was not the inventor, because what he proposed, in January, 1882, was a covered sight, the cover being brazed on to the sight stud (which in rifles was the bayonet stud), which was to be made as broad as the barrel, a bayonet stud being no longer needed for rifles, if the rammer bayonet was to be used, as he contemplated. The original detachable-sight cover, fastened to the barrel at the sight stud by a pin, was not devised by Helton, but at the Springfield Armory, Helton’s sketch and description not applying to such a device. Helton applied for a patent for a sight cover, “fastened to the barrel in any suitable manner,” but failed to obtain it, and his claims were limited to a cover held by the specific method of fastening (viz, by the cheek pieces, slot, and pin) which was devised at Springfield.
    Except when the first experiments were tried the Government never made nor used any sight covers of the patented type. The covers used were held by a ring passing around •the barrel and a pin which passed in the rear of the sight stud and not through it. This was a much better method of fastening, as General Helton admitted as soon as he saw it, and not covered by his very limited claims.
    Admitting, however, that General Helton’s patent was valid, and that it covered the device used by the Government, the fact remains that this device was used by his license, without any liability for compensation. What he brought to the Government’s attention in January, 1882, was not a fully completed invention of a detachable-sight cover, but only a suggestion that broad sight covers, not detachable, be used. The development of that suggestion, up to the moment that the sight cover became an operative device, was solely at the cost and risk of the Government. A license for free use by the United States, and not a contract for use on royalty, must be implied from such circumstances. (Gill v. United States, 160 U. S., 426.) After all, there was no real novelty in the device patented to General Helton. There are quite a number of prior patents for covered sights, and the patent to Latta, No. 181530, provides, among other things, for using the same sight, either covered or open, at will. If the globe sights of the Latta patent were all removed, leaving only the arched support, and that arch were made higher, the result would be a practicable sight cover attached and detached by a means which even the claimant’s patent expert admits to be the equivalent of the means described by Helton.
    
      The English patent to Jaques, No. 2974, of 1860, shows a sight cover that may be attached or detached as readily as Kelton’s by the use of a split ring encircling the barrel, tightened by a screw. The Jaques cover projects over the sight and the only inferiority to Kelton’s is that the former would not shade the lower part of the sight bead when the sun was low. Kelton’s device is a slight advance in mechanical perfection, such as would naturally occur to any mechanic who was not limited to the split ring, as Jaques was, he wishing to combine two different covers in one device, for which double purpose the ring was necessary.
    The damages claimed are greater than even the claimant’s witnesses testify to, and greatly exceed what would be a reasonable royalty for an invention, as the evidence of defendant’s witness clearly shows.
   Nott, Ch. J.,

delivered the opinion of the court:

In January, 1882, the officer in command of the Benicia Arsenal received a communication from the assistant adjutant-general at the headquarters of the Military Division of the Pacific, which said: “The division commander directs me to enclose herewith for your information a copy of a ‘memorandum of opinions upon target practice and in regard to the Springfield rifle and carbine.’ ” The communication was signed “J. 0. Kelton, Assistant Adjutant-General.” It enclosed a printed circular signed “ J. 0. Kelton, Colonel, A. A. G-.,” purporting to be issued by “ direction of the division commander,” in regard to proposed changes in small arms. The circular was accompanied by a plate or drawing of the proposed changes, and, among other things, said: “If these wants are generally felt by company cavalry officers, they should, if they adopt the devices proposed, or present better, make known their wishes to the commanding officer, Benicia Arsenal, through their department commander.” To the plate was attached a memorandum entitled “Memorandum of views entertained in respect to inexpensive modifications in the Springfield rifle and carbine, perfection consisting in the sum of small improvements.” It referred to a number of changes and improvements in small arms and, among others, to a front-sight cover for rifles and carbines, which device, as afterwards modified and patented, is the subject of the present action.

The commanding officer of tbe arsenal wrote in reply, requesting “to be informed whether the division commander desired him to forward these enclosures to the Chief of Ordnance.” Other communications followed during the year 1882 which were less formal and more personal, and referred to the changes in small arms as “his” (Ool. Kelton’s) “proposed devices.” The tone of the communications chahged, but they always remained official — communications between the adjutant-general of the Military Division of the Pacific and an ordnance officer.

The commanding officer of the arsenal forwarded the communication and memorandum setting forth the- proposed changes to the Chief of Ordnance at Washin gton, an d requested authority “to comply with the desire of the division commander.” TheChief ofOrdnance referred them to thecounnand-ing officer of the national armory at Springfield for examination and report; a board reported favorably; the Springfield Arsenal, with modifications and changes, manufactured or made sample sights; the Chief of Ordnance examined the sample sights and forwarded them to the Benicia Arsenal, “with authority to comply with the wishes of Col. Kelton and division cominauder as far as funds may permit.”

At a later day, August 10th, 1882, Ool. Kelton, referring to one of his proi>osed improvements, “ an experimental magazine rifle,” proposed to bear the expense of it, and the commanding officer of the Springfield Arsenal called attention to the Act 3rd March, 1875 (18 Stat. -L., 452, 455,- § J), which provides “that hereafter no money shall be expended at said armories in the perfection of patentable inventions in the manufacture of arms by officers of the Army.” The Chief of Ordnance authorized this experimental rifle to be made at Col. Kelton’s cost, but the expense of the front-sight covers was borne by the Government.

On the 31st October, 1882, the Chief of Ordnance. directed the commanding officer of the Benicia Arsenal “ to confer with Col. Kelton and furnish the Bureau with such information as may aid it in coming to some definite conclusion as to the number, if any, of these front-sight covers to be issued to the Army.” On the 22d December, 1882, Colonel Kelton said that he did “not think 10,000 too many to have made; ” and on the 16th January, 1883, the Chief of Ordnance directed that 3,000 be made and sent to tbe Benicia Arsenal for issue ; and on tbe 22d January, 1883, be further directed that tbe front-sight covers should be made like tbe sample furnished from tbe Armory, which Col. Kelton calls tbe ordnance device — tbe one approved by him” — that is to say, like tbe tracing shown in tbe armory letter, but changed at tbe suggestion of Colonel Kelton with regard to tbe elevation of tbe front sight.

On tbe 16th June following Colonel Kelton applied for a patent.

Tbe question which these facts present is whether tbe claimant can maintain an action against tbe Government for tbe use of bis alleged patented invention.

Tbe counsel for tbe defendants contends that tbe device which Colonel Kelton brought in January, 1882, to tbe attention of tbe ordnance officers was not a fully completed invention. “ Tbe development of that suggestion, up to tbe moment when tbe Government sight cover existed as an operative device, was solely at the cost and risk of tbe Government. This being so, and Col. Kelton being an army officer, tbe case clearly comes in tbe recent decision in Gill v. United States (160 U. S., 426).” Tbe counsel for tbe claimant replies that the facts in Gill’s Case “ bear no possible or conceivable resemblance to those presented in tbe case at bar ; ” that Colonel Kelton did not take advantage of bis connection with tbe Government; that bis duties as Adjutant-General in no way related to tbe manufacture, adoption, or issuance of ordnance; that bis invention was not introduced or bis sight covers issued for service until after be bad applied for a patent; that be never received increased pay or preferment on account of bis invention, and that be notified tbe Ordnance Department that bis invention was bis property, and acted in accordance with tbe usage and custom prevailing in tbe Ordnance Department governing tbe adoption of patented inventions.

Tbe last position does not seem to tbe court to be sustained by tbe evidence. If there was any such notification, it has not been shown or must be a matter of inference from tbe communications set forth in tbe findings.

McKeever’s (14 C. Cls. R., 396) is tbe leading case of actions brought on implied contracts to recover for tbe use of an invention — tbe first case where an inventor recovered for what, as . between individuals, would be an infringement of bis patented device — without there being an express contract as the foundation of the action. The claimant there was also an officer of the Army, and his invention was for a military accouterment, but he did not act until his patent had been issued, and he then addressed a written communication to the Ordnance Office, in which he expressly stated that the device was patented. The Chief of Ordnance acknowledged the receiptofthe “sample boxes” as “your patent cartridge boxes,” and the board which recommended their adoption described them as “ the cartridge box invented by Lieutenant McKeever.” In this case there was no such notification on the part of the inventor and no such acknowledgment of an understanding-on the part of the Ordnance Office. Some of the front sights were manufactured, or in process of manufacture, before an application for a patent had been filed; some were manufactured after the application, but before the patent was issued. What proportion has since been manufactured does not appear.

Colonel Kelton, as “Assistant Adjutant-General,” was consulted and deferred to as to the number which should be manufactured, and the communications from him were always signed as assistant adjutant-general. It is true, as has been said before, that the tone of the communications changed; and it is probable that the officers of the Army knew of so prominent an officer as Colonel Kelton, that he was interesting himself in the improvement of small arms; but when, in his first communication to the commanding officer of the Benicia Arsenal, Colonel Kelton wrote, “The division commander directs me to enclose herewith for your information a copy of a memorandum,” and signed that communication “ J. C. Kelton, Assistant Adjutant-General,” he stamped everything which followed as official. The orders and communications of a commanding officer ordinarily emanate from headquarters in the name of his adjutant-general; and in military usage the official orders and communications issued from tlie headquarters by the adjutant-general are the orders and communications of. the commanding officer. If Colonel Kelton had waited until his patent ivas issued, had borne all the expense of completing the invention without aid from the Ordnance Department, and had laid his invention before the proper officers of the United States with the express declaration that it was patented by him, the case would be like McKeever’s. But these three elements are wholly wanting in this case. It is not in those particulars like McKeever’s, and the question is whether it comes within the decisions in the cases of Solomons and Gill (21 C. Cls. R., 479; 137 U. S., 342; and 25 C. Cls. R., 415; 160 U. S., 426).

The differences between these two cases were these:

In Solomons’s the invention was by an officer of the Government charged with the duty of selecting and manufacturing an internal-revenue stamp; he was one of a committee who selected the stamp; he concealed from the committee the fact that the stamp which he produced and laid before them was his own invention, that it was patentable, and that he intended to patent it; he used the means and appliances of the Government and of the Bureau of which he was a chief, though trivial, to complete and perfect his invention, and he took out his patent as inventor while engaged in the manufacture of the stamp as an officer of the Government.

• In Gill’s Case the claimant was not a public officer, but a simple mechanic on daily wages, holding a subordinate position, and not charged with the duty of making inventions or perfecting machinery. He carried his device to the commanding officer when he had completed it, informing him that it was his own; and he had received no assistance from the Government in money, material, or the services of other employes, when the commanding officer approved the device and ordered the construction of a machine. But he allowed that machine and others to be built without notice bo the commanding officer that he intended to patent his device and should ultimately claim a royalty.

The present case differs from the other two in this: Colonel Kelton was not an officer in the Ordnance Department; he was not charged with the duty of selecting arms; he was not employed in their manufacture, and his device, if adopted by officers charged with that responsibility, could be beneficial to himself in but one way, by enabling him as inventor to receive a royalty.

In the implied-license cases which have come before the Supreme Court there has been the element of employer and employé. The time which was given to the invention was more or less the employer’s time; the money paid for completing and developing and perfecting it was the employer’s money. These things the courts have deemed sufficient to constitute a valid consideration for a license. In the first, the leading, case of McClurg v. Kingsland (1 How. R., 202), the so-called invention was but a crude idea; it could not be said to be useful until it was tested; the inventor received wages for working on what might be termed his own working model, and his wages were raised in consequence of the useful i esult obtained after several unsuccessful experiments. In Gill’s Case (160 U. S., 456) this consideration was of the narrowest. For it appeared by the findings that “ the claimant was not employed to make inventions or assigned to that duty, and his invention, until it was reduced to paper in the form of an intelligible drawing, was made out of the hours of labor at the arsenal and during the time which was properly his own, and the work of so devising a machine was not an obligation imposed upon him by the authorities of the arsenal.” It also appeared by the findings that “'from time to time his wages were advanced, until they became in 1881 $6 a day, and he was in 1881 appointed master armorer;” but that “ this increase of pay and advancement of position came through and by authority of the commanding officers of the arsenal, and the consideration or reason therefor was that the claimant was a faithful, intelligent, and capable employee, whose services were of great value to the Government.” It also appeared that “it was never stipulated by any commanding officer, or understood or agreed to by the claimant, that the advance of wages was to be a consideration for the use of his inventions.” The counsel for the claimant contends that the present case does not come within the general rule of the others, inasmuch as here there was no such consideration. Colonel Kelton was not an officer or employé of the Ordnance Department; neither his pay nor his preferment depended upon services rendered there; when his duties as adjutant-general were performed, his time was his own, and under the decision of the Supreme Court in Burn’s Case (12 Wall., 246) he had a right to make a military invention, and that invention, when patented, was his own property, vendible, like other property, to the Government.

The present case may not come withiu the letter of the decision of the Supreme Court in Gill’s Case, but it does come within the decision announced by this court.

When that case was under advisement, it was perceived that the Government had made use of the claimant’s invention of a cartridge-loading machine by making and operating at various times, running through a course of several years, nine distinct and separate machines. Some had been built under one commanding officer and some under another. Their operation did not depend upon each, other nor preclude the Government from making cartridges with the old machines which these superseded. The old machines and the new machines had run side by side, and the cartridges which they filled were to all intents and purposes an identical product. Of these nine machines it remains to be said that eight of them were built and operated before a patent was taken out and that one of them was built after the patent had been issued.

An implied license can not be deemed to cover mo e than an express license given in like circumstances ami under like conditions. A license to do one thing is not a license to also do several things. A license to a steamship company to use a patented screw in one ship would never be construed to be a license to put a screw in every ship of the line and in ships subsequently constructed during the life of the patent. Where there is a necessary continuity in the use of the invention, the implied license necessarily extends as far as the user. Thus, in the case of McClurg v. Kingsland the invention consisted not in a machine for effecting a process, but for the process itself — a method for introducing molten metal into the mold at a certain angle.

In such a case the manufacturer could not be asked to tear his works to pieces and go back to the old method after his employee had taken out a patent and acquired a property in the invention. So in the case of Lane Bodley Co. v. Locke (150 U. S., 193), the employee had invented a stop valve, which thefirm, with his consent, introduced into the elevators which they built. The device became a part of the machines which they manufactured and advertised and sold. It was, as it were, covered by their trade-mark. After the employee left their service, he could not ask them to undo their established business and make elevators of a different design. The text-books make the distinction under the terms of “business,” “process,” and “machine.” “If,” says Robinson (2nd Robinson on Patents, 637, § 832, note 4), “the workman, by using the tools and time and money of his employer with his consent, makes an invention and applies it in his employer’s business, the employer may continue to use it. If the improvement is a process, it has been held that the employer may continue to practise the process for the whole period of the patent. (McClurg v. Kingsland, 1 How., 202; Chabot v. American Buttonhole, &c., Co., 6 Fisher, 71.) But if the invention pertains to a machine, it is understood that only the specific machine or machines which have been so made are licensed. (Pierson v. Eagle Screw Co., 3 Story, 402; Brickill v. Mayor of New York, 7 Fed. Rep., 479.) Further, where a workman makes an invention at the expense of his employer, and applies the invention practically in the employer’s business, the employer has an implied license to use it after the relation ceases. See Jencks v. Langdon Mills (1886), 27 Fed. Rep., 622; 36 O. G., 347; Bensley v. Northwestern Horse Nail Co. (1886), 26 Fed. Rep., 250; 36 O. G., 689; Barry v. Crane Bros. Mfg. Co. (1884), 22 Fed. Rep., 396; Slemmer's Appeal (1868), 58 Pa. St., 155.” If the case of Gill had been an ordinary action for infringement between ordinary parties, the court entertained no doubt then, and entertains no doubt now, that the plaintiff would have been allowed to recover for the infringement of his patent by the building and user of the ninth machine.

But the case of Gill was not an action for an infringement — • that is to say, it was not an action under the patent laws, ex delicto in its nature. As was then said: “In these cases against the Government the element of contract comes in and the element of tort must be excluded. It is as if the parties had expressly agreed that the taking of the property should not be deemed tortious, and that where the validity of the patent is attacked the defense should come in as if the suit were on an express contract with a warranty, and the defendant were setting up a failure of consideration. Accordingly, if the facts are such that a contract may be implied in these cases, the law will imply one; but the law will not treat the user as if it were an infringement.” Our jurisdiction, it was also said, is substantially that of the State courts, amplified by jurisdiction of cases of implied contract.

The resulting question in Gill’s Case, then, was whether the contract was one which could be enforced.

The principle, too often overlooked in modern jurisprudence, is that courts are not established and maintained to give effect to contracts which should not have been made. It is not every suit that will be entertained, for the reason that the cause of action is not prohibited by law. There was no statute against exchanging horses for barley in the old case of James v. Morgan (1 Living. R., 111), where the purchaser agreed to give one barleycorn for the first nail in the horse’s shoe, two for the second, four for the third, and so on, in geometrical proportion, until the value of the barley, which was the price, amounted to about £400. There was no fraud in the case of Sume v. United States (132 U. S., 406), where the defendants agreed to pay $60 per hundred for shucks which were worth about 60 cents. In Hanauer v. Woodruff (15 Wall., 439) the case was the ordinary one of one man selling goods to another and subsequently bringing a suit for the purchase money. But it appeared that the property was sold to a Confederate contractor for use in the Confederate army, and that the object of the purchase was known to the vendor.- There was no State statute which forbade such sales; there was no United States statute which reached the case. But the Supreme Court said of it, “When a contract is connected by its consideration with an illegal transaction, a court of justice will not aid its enforcement.” The case of Groton v. The Inhabitants of Waldoborough (2 Fairfield R., 306) is a monumental record of rural thrift. A town put up the office of constable at auction. The plaintiff for three years bid it off, and was three times duly elected, and paid the purchase money. The sum total of his three investments in the office was $33.29. Much might be said,' plausibly, in support of the transaction. It was not the case of an individual selling a public office for his private gain. The transaction was public, and believed to be for the public good — the diminution of taxation. It tended to exterminate the pest of the professional office seeker; it forestalled the secret combinations and machinations of the political caucus. There was no statute forbidding a community to dispose of their offices just as other communities are often required to dispose of their franchises. Moreover, no small part of the legislative power is vested in the New England towns, and in matters which strictly concern themselves they have an almost prescriptive right to regulate their own affairs in their own way. Nevertheless, the Supreme Court of Maine held that the transaction was prejudicial to the public welfare; that such officers might reimburse themselves by oppression and extortion; that “men of elevated minds and correct principles could never be reconciled to this mode of obtaining' office,” and that the court, for reasons of public policy, should not extend its assistance to either party. Contracts which are against public policy, contracts which involve moral turpitude, contracts which are against public morals or decency, were not prohibited by early English statutes, but when parties to such transactions sought judicial redress, the courts of the common law interposed on their own authority and said— and would have said, though the point had not been raised by the defendants — it is not the office of courts of justice to aid parties in the enforcement of such contracts.

A guardian or trustee can not- sell to himself. Such sales are not prohibited by positive enactment, and they may not be ipso facto absolutely void at law, but they are always “ viewed with suspicion; ” and it requires so little more than suspicion to void such transactions that it may be said that courts of equity always set them aside for the asking. It is not a question of fraud, or dishonesty, or unfairness, or undue influence in the particular case before the court. It is as was said by Lord Hardwick (2 Ves., 548, 549): “All depends upon public utility, and therefore the court will not suffer it, though, perhaps, in a particular instance there may not be an actual unfairness.” It is as Story states it (Eq. Juris., § 322): “The principle applies, however innocent the .purchase may be in the given case. It is poisonous in its consequences.”

In this court public officers have always been regarded as guardians of the public welfare, and the Government as a ward which is always under the protection of the court. In the case of Solomons, where there was a responsible public officer and a personal responsibility and discretion vested in him, the court applied that principle to the case without hesitation. In the case of Gill, where the inventor was a simple mechanic, working in an arsenal at $4 a day and charged with no personal responsibility and invested with no discretionary power, the court applied the principle with some doubt and with extreme reluctance. In this case, where the inventor was the adjutant-general of a military division, bringing his invention to the notice of the Ordnance Department through tbe interposition of bis commanding officer, using tbe time and skill and experience of Government officers and experts and its machinery and appliances to perfect bis invention, and introducing tbe device into tbe service before it was patented, tbe court can perceive no difference between it and tbe two other cases on which to found a legal distinction. Tbe invention was brought to tbe attention of tbe ordnance officers by virtue of Colonel Kelton’s official position, and they consulted and deferred to him in regard to tbe number which should be manufactured at tbe outset. He could not, at one and tbe same time, be tbe adjutant-general of a military department determining tbe number of tbe sights which should be manufactured for issue and use, and tbe inventor claiming a royalty for the device. If Colonel Kelton intended to sell his device to tbe Government when be invented it, the way was open to him" as it bad been open to the officers in McKe&oer’s and Palmer’s cases (14 C. Cls. R., 396; 20 id., 432; 128 U. S., 269). It was for him to perfect tbe invention by his own means and appliances, to transmute it into property by obtaining for it a patent right, and to offer that property as property — i. e., as a patented device to tbe officers of tbe Government charged with the official responsibility of improving and manufacturing arms. Tbe case does not possess these requisites.

Inasmuch as it is now decided that there was no sale and purchase between tbe parties, tbe court does not feel at liberty to pass upon any question affecting tbe validity of tbe. patent or in giving a construction to its terms.

The judgment of tbe court is that tbe petition be dismissed.  