
    THE MORSE ARMS MANUFACTURING COMPANY v. THE UNITED STATES.
    [No. 14340.
    Decided June 20, 1892.]
    
      On the Proofs.
    
    Tn 1856 Morse takes out two patents, the first for a metallic cartridge, intended to be used as a gas check; the second for a breech-loading gun. The first patent expires in 1870; the second is extended. The claim now made is that he was “the lawful patentee of a device for sealmg a ’breech joint of a breech-loading gun, pmposely made open, by the expansion of a yielding metallic cartridge case, purposely made to jit loosely in its chamber.”
    
    I. The state of the art in 1856 was not such as would authorize a patent covering the broad claim of loose breech mechanism in breech-loading arms, sealed by the expansion of a yielding metallic cartridge case. And an inventor then was limited to his specific claim.
    EC. A breech-loading gun described in the patent as one through which a person could blow or run water, but which becomes air and water tight by the use of a cartridge case which seals the breech joint, was not novel in 1856.
    HI. A claim for a system founded upon two patent* can not be sustained where one has expired by limitation.
    IV. A broad claim for a cartridge extractor — i. e., for a lever with a toe in front of the cartridge flange — no matter how operated, can not be maintained in a patent taken out in 1858. The extraction of cartridge shells by leverage was not then new, nor was a lever whose short arm engaged the cartridge flange.
    
      The Reporters'1 statement of tbe case:
    Tbe following are tbe facts of tbis case as fonnd by tbe court:
    I. A musket made by George W. Morse, under Letters Patent No. 16995, was presented by bim to tbe War and Navy Departments of tbe United States during tbe year 1867. March 6,1857, Col. Craig, Chief of Ordnance, wrote tbe following letter to Maj. Bell, commander of tbe Washington Arsenal :
    “ Site: Mr. Morse, of Louisiana, will present at tbe arsenal a breech-loading rifle, which please cause to be tried, and report tbe result to tbis office, with your opinion as to the fitness of tbe arm for tbe military service. Maj. Bell reported that tbe arm, though complicated in its machinery, was worthy the consideration of the Department, and were it not for its complicated machinery it would probably be as well suited to military as it certainly is to civil purposes.”
    August 12,1857, an order was issued from the War'Department directing a board of officers to assemble at West Point “for the purpose of making trials of breech-loading rifles, with a view to ascertain which arm of this description is best suited for the military service.”
    To this board Morse wrote a letter commending his gun. The board reported as their unanimous opinion that “the breech-loading rifle submitted by A. E. Burnside, of Bhode Island, is suited for military service.” Nqvember 12, 1857, Morse wrote to John B. Floyd, Secretary of War, alluding to experiments made with his musket, and concluding thus:
    “Now, sir, I only await your leisure, and from your known knowledge of firearms confidently expect to prove to you the truth of my assertion ‘that mine is the best gun in the world.’”
    December 9,1857, Mr. Floyd, Secretary of War, issued the following direction to the commander of the Washington Arsenal:
    “The colonel of ordnance will direct Maj. William H. Bell to have a gun made at the Washington Arsenal upon the plan of Mr. Morse’s gun after either of the patents [which] have been exhibited, or a combination of them, the work to be executed under the supervision of Mr. Morse himself, if he chooses.”
    January 27,1858, Morse was asked by Col. Craig, Chief of Ordnance, to send one of his rifles for the use of Lieut. G-en. Scott, with cartridges. March 5,1858, the Secretary of War directed that 100 of the Morse gun be purchased at $40 apiece, to be paid for in lots of 25 each.
    In May, 1858, the Secretary of War asked the Committee on Military Affairs of the House of Bepresentatives to recommend an appropriation of $100,000, to be used in altering old muskets and rifles into breech-loading arms.
    The act of June 12, 1858, appropriated $20,000 for breech-loaders, of which, besides the amount paid Morse, $2,500 was paid to William Mont Storm for the privilege of altering 2,000 arms according to his plan.
    
      February 26, 1858, Morse wrote to the “board of officers for the examination of altered United States arms” urging the use of brass cartridges, and stated that “ I do not depend upon the gun for a tight joint at the breech, but upon the cartridge, which seals it perfectly, and is renewable after each discharge, so that it can never wear out. ”
    August 5,1858, the board of officers who had met at West Point reported to the Secretary of War that they had selected Morse’s model, for this reason: “Inasmuch as it differs from the others by including the new and untried principles of a primed metallic cartridge, which may, on actual trial, be found of advantage.”
    September 9,1858, Morse wrote the Secretary of War, authorizing him to alter 2,500 old arms on his plans for $5 each. This was accepted for 2,000 arms, and the Secretary said (11th September, 1858):
    “Let Mr. Morse have an order for three United States flintlock muskets, of the latest model, and for three United States percussion rifles, seven grooves, to alter after his plan, for patterns. When these patterns are ready let an order be given for the alteration, according to the pattern arms, of 2,000 muskets of the same model at either United States armory, as he may designate. * * * The arms so altered to be rifled and sighted at the armory, and Mr. Morse to have the privilege of superintending the process of alteration and to be required to state that the work is done in a satisfactory manner to him before the altered'arms are issued for trial. * * * Let a written grant of the privilege to alter 2,000 arms at the rate proposed be obtained from Mr. Morse, payment to be made to him ($10,000) out of the special appropriation when the agreement is signed, which agreement is to include all his patent privileges.”
    September 13, 1858, Morse said: “In consideration of the sum of $10,000, paid to me by warrant on the Treasury of the United States, I hereby grant, sell, and convey to the said United States the right and privilege to alter 2,000 of the muskets now belonging to the United States” according to his pattern.
    February 6, 1860, Morse (and A. Anderson) proposed to the Secretary of War to change the order for 100 carbines at $40 each, and “instead of it to sell the Government the right to manufacture 1,000 carbines according to Morse’s invention for breech-loading arms, and according to the particular plan thereof which has been applied in the alteration of the United States rifles;” and they proposed to make the conveyance for $3,000, being at the rate of $3 on each gun. This proposition was accepted by the Secretary of War February 9, 1860. Thereafter the following license was given:
    “This agreement, made this eleventh day of February, eighteen hundred and sixty, witnesseth: That whereas an order was given on the 16th of March, 1868, by direction of the Secretary of War, to George W. Morse for one hundred guns of his invention, at forty dollars each, for the use of the United States, and which was agreed to by said Morse; and whereas none of said guns have been yet furnished, and said Morse has now proposed to have said order changed and in place of it that the Government shall purchase from him, at the rate of three dollars each, the right to manufacture one thousand carbines, according to his, said Morse’s, invention for breech-loading arms, and more particularly according to the particular plan thereof which has been applied in the alteration of the United States rifle, which proposal has been assented to by the Secretary of War:
    “ Now, therefore, be it known that I, the said George W. Morse, for and in consideration of the premises, and of the sum of three.thousand dollars, in hand, paid jointly to him and A. Anderson, who joined in the application to have the order for the one hundred guns set aside and this agreement to be entered into in place thereof, and the receipt of which sum of three thousand dollars is hereby acknowledged, do hereby grant, sell, and convey to the Government of the United States of America the fall right to manufacture, at any time or times it may determine, one thousand guns called carbines, or by whatever other name known, of his, said Morse’s, invention of breech-loading arms, and of cartridge cases for the same, and more particularly according to the particular plan thereof which has been applied in the alteration of the United States rifle; it being fully understood that this is to convey all the patent rights of said Morse to his inventions of breech-loading arms and ammunition therefor, as described and secured in his patents numbered 20503 and 20727, so far as regards the above-mentioned one thousand arms, and also the right to apply, as far as regards said one thousand arms, any and all improvements he has made and may make applicable to the same.”
    Sixty of Morse’s muskets were made prior to November 12, 1859. The Government paid Morse $13,000 under the agreements hereinbefore set forth.
    II. At the request of defendants’ counsel the following facts are found:
    
      In February, 1861, Morse wrote to “ Jefferson Davis, president of the Confederate States of America,” as follows:
    “In pursuance of my understanding with yon respecting the machinery for arms, * * * I shall have the satisfaction of knowing that my exertions and honest endeavors to benefit the Confederacy will be crowned with success.”
    In March, 1861, he wrote to the secretary of war of the Confederate States of America as follows:
    “ If success does not attend the efforts now being made for the establishment of a Southern armory, these arms can be manufactured in Europe or anywhere else at about the same cost as those of the ordinary kind. I shall be happy to make a trial of them before you at any time you may indicate.
    “ P. S. — It seems to me that the adoption of a single plan of breechloader, with one caliber, for both the army and navy, would be advantageous.”
    April 6,1861, he wrote to J. C. Grubb & Co. relative to the manufacture of 1,000 of his breech-loading carbines for the State of Texas, to be made in Europe, saying:
    “ I enclose you a circular in reference to this gun, and I doubt not that if I can get its manufacture under way that any number of them will be sold in the South, where some models of it have been in use for sometime past by Major McCulloch, and shown all over the country.”
    July 18,1861, he wrote the following letter:
    “ Richmond, July 18th,, 1861.
    
    “ Hon. E. Pope Walker,
    “ Secretary of Wcvr, O. S. :
    
    “ SiE: In accordance with your suggestion, I submit the following as a list of machines which I hope to obtain for the purposes set forth in a letter from the governor of the State of Tennessee to his excellency President Davis:
    1 trip hammer, with such special tools for welding gun barrels as are at hand.
    2 small planers.
    1 screw machine.
    1 cone machine.
    2 small lathes.
    1 profiling machine.
    2 drilling do with 3 or 4 spindles each.
    8 milling machines.
    1 rifling machine.
    1 nut-boring do.
    1 smooth do. do.
    1 barrel-turning lathe.
    1 punching press.
    1 horizontal milling machine for ramrods.
    1 oldbreech-screw-cuttingmachine., 1 old index machine.
    “It is the loan of these tools only which is asked for, the value for which may be fairly estimated at from eight to ten thousand dollars. There are several good reasons why the request should be granted, and one of them is, that under the representations of Gen’l Polk that it would be done, the State of Tennessee bas purchased buildings and grounds for an armory.
    “Another is, that at Nashville workmen from Louisville and St. Louis are easily obtained to duplicate them and make more of the same kind.
    “ Still another reason is, that the State has purchased large supplies of war material, and the Confederate Government has not only already availed itself of a part of this in the form of percussion caps, but will want large supplies of powder from her mills. All of which is respectfully submitted for your consideration.
    “I am, sir, your ob’t servant,
    “Geo. W. Morse,
    
      uBwpt. Tenn. Armory.”
    
    April 11,1861, Morse left Washington for Louisiana, where he remained throughout the war.
    III. In the year 1855 the said Morse filed in the Patent Office acaveat thus entitled: “ Description of improvements in breech-loading guns, and cartridges for the same, for either cannon or small arms,” which is made part of these findings. Thereafter a patent, dated October 28, 1856, was issued to said Morse, which, with the specifications, claims, and drawings (and disclaimer filed November 27,1872) is made a part of these findings. This i>atent (No. 15995) was extended by statute (act of March 11, 1872), and expired November 29,1879. October 28,1856, another patent (No. 15996) was issued to said Morse, which, with the claims and specifications upon which it was issued, is made part of these findings. June 8, 1858, patent No. 20503 was issued to said Morse, which, with the claims and specifications upon which it was issued, is made part of these findings. This patent was extended by statute, and expired June 7,1879. June 29,1858, patent No. 20727 was issued to Morse, which, with the claims and specifications upon which it was issued, is made part of these findings. This was extended by statute, and expired June 29, 1879. In 1835 the following report was published in France; it does not appear whether it was published in this country:
    
      “34 Tear (No. 369) . — March, 1835.
    “ [Bnlletm of the Society for the Encouragement of National Industry at Paris. 1835.]
    “Mechanical Abts — Fire-Arms.
    “ jReport ánade by the Baron Séguier, in the name of the committee of mechanical arts, on sporting guns loading at the breech, presented by Mr. Lefaueheuoc, gunsmith, street de la Bourse, corner of Golonnes, at Baris.
    
    “For a long time it was known, that the war guns called guns with forced balls had a longer range than the others, and yet very little effort had been made to give the same advantages to sporting arms loaded with small shot.
    “This was difficult. The only means of attaining this end was to load them with cartridges with the charge of shot separated from the powder by a diaphragm of a larger diameter than that of the gun. Such a cartridge could not be introduced and pushed to the bottom of the barrel without a great effort, and even in that case, without losing a part of the advantages sought for; the intervening body placed between the shot and the powder, being thus compressed at the time of loading, would place itself beforehand in contact with the diameter of the arm. At the moment of the explosion a wad thus moulded would have a very little superiority over ordinary wads.
    “But this even could not be, inasmuch as the barrel of a sporting gun, in order to carry the shot properly, should be at its orifice slightly smaller than at its breech. To solve the problem, the cartridge, prepared as we have just said, must be placed in the chamber of the barrel of a diameter a little larger than the barrel and connected with it by the section of a cone. These arms can, therefore, only be loaded at the breech. This was what several armorers well understood when the first systems of sporting guns with movable breeches, called broken barrels, were thought of.
    “ Our purpose, gentlemen, isnot, on the occasion of this report, to retrace here at length the completé history of the modifications which the sporting arms have already undergone. We will limit ourselves to saying that it was to a gunsmith by the name of Pauly to whom is due, in our day, the introduction into commerce of these kind of arms, which had heretofore appeared more curious than useful.
    “The guns which we call to your attention to-day were presented by an armorer for a long while employed in the workshops of Mr. Pauly. This artist seemed to have at heart the desire of bringing to the highest possible point of perfection this kind of gun, on which he worked from the beginning.
    “M. Lefaucheux has exposed under our eyes the drawings of the different modifications through which he carried the Pauly invention to bring it to the point where you now see it. Experience lias furnished him successively the indications of the practical inconveniences which each one of the preceding modifications carries with it; and it is to-day that experience has, for a sufficient length of time, sanctioned these last efforts that he calls upon you to appreciate their merits.
    
      “ The Lefaucheux gun is composed of a barrel fixed by a tangential hinge at its circumference to a piece of iron folded in a square, against which comes and rests its lower extremity; the barrel is firmly held in contact with that piece, which serves it as a breech, by the aid of a drawing- bolt in the form of a T, the head of which engages itself between two hooks soldered under the barrel. • The piece forming a breech is made to function at the same time as tipping piece, and comes and inserts itself ordinarily in the wood between the two plates, like the prolongation of the tipping piece. The head of the T is constructed in such a fashion as to fill the double office of drawing to a joint the barrel against the piece forming the breech when it is desired to close the gun for firing, and to raise lightly the barrel to overcome the adherence of the pieces, ono against the other, when it is required to introduce a new cartridge.
    
      “ Sometimes it is a particular lever, at other times it is the handle of the under guard which serves to put the T in motion. In this gun the fire is put to the powder in the ordinary way, by the percussion of the hammer on the cone (called piston) screwed into the barrel.
    “ In examining this arm with attention, you inquire, perhaps, why the hinge which unites the barrel to the stock has thus been placed under the barrel, and why the pulling is not done in the axis'? This reflection presents itself to our own mind. We should anticipate it on your part in communicating to you the motives which caused Mr. Lefaucheux to act in this maimer. Pulling in the axis to operate the juxtaposition of the extremity of the barrel againstthe piece forming-the breech can only be obtained by means of side plates, but experience has démonstrated that the plates very soon undergo by the action of the fire a very remarkable alteration.
    “ This phenomena, observed in the guns with plates, is curious enough for you to permit us to entertain you on the subject for an instant.
    “ In these kinds of guns, after even a short service, a groove is soon observed, corresponding to the point where the barrel terminates. This scooping, which ends by becoming quite deep, operating in either steel or iron case-hardened, which is harder still since its temper is not reduced, is the result of a mechanical action of the gas in its flight, or, rather, is it not the product of a chemical action, by the combination of the sulphur of the powder with the iron0? This, gentlemen, is the case in point which we have a.t heart to make clear. After a careful examination we bave found thattlie corroded point acquires a liardness very superior to all the other points of the plate. We have verified that such an alteration does not show itself, or at least in a manner quite imperceptible, upon the blade of brass inserted between the barrels, to oppose itself to the communication of the fire from the one to the other. This blade, under the most unfavorable conditions, lasted only an extremely short time when it was of steel, and it was this experience and the observation which indicated to Mr. Lefaucheux the substitution of brass for steel.
    “ The good condition of the intermediary blades of brass in the guns, where the side plates were already deeply furrowed, leaves us no longer in doubt as to the cause of that deterioration.
    “ Without setting aside the influence of the mechanical action, we attribute it principally to the chemical combination which we have just described.
    “ Mr. Lefaucheux could then have advantageously lined the side plates with brass, but he preferred attacking the evil at its root,- he has endeavored to disembarrass himself entirely of the side plates, and it is in this manner, gentlemen, that he has been led to avoid this last disadvantage by means of the arrangement which he submits to you.
    “ This simple arrangement, which renders the manoeuvring of the gun simple and commodious, ought, it-seems, finally to have completely satisfied the sportsman; but it was otherwise; in proportion as the arm neared its perfection the exigencies increased; being unable to find fault with the mechanism, they complained that it did not overcome the complete loss of gas.
    
      “ This loss of gas, according to the belief of the greater number, offered the double inconvenience of diminishing the range and the blacking of the fingers; as to ourselves, we can attribute to it only this last inconvenience.
    “Although very slight, this last reproach had a foundation. Mr. Lefaucheux, desiring to satisfy in all respects the many sportsmen who honored him with their confidence, put himself again to the task without ever despairing of success; therefore, to surmount a last obstacle, he was induced to apply to the guns the happy application of the closing principle of hydraulic presses. W e desire to speak of that pun«11 ed-up leather, the edges of which are applied against the sides of a vase, with all the more force when the liquid which it contains finds itself more compressed and has a greater tendency to escape.
    “You conceive, gentlemen, that in adopting this principle of closure for guns, as there is no question of the opposing of the escape of the liquid but that of inflamed gas, it was proper to modify the material of the stopper; therefore it is not a cap of leather, but a bottom of thin brass with which Mr. Lefau-cheux caps his cartridges. The flexible edges of this hat, which has the form of a large capsule, which, dilating at the tbe moment of tbe explosion, and applying itself to tbe sides of tbe barrel with snob exactness, that bencefortb tbe slightest escape of gas becomes impossible.
    This method, which is as simple as it is ingenious, and which an observing mind has known bow to borrow from tbe hydraulic press, to make of it a happy application, deserves to fix your attention. We look upon it as one of tbe most useful improvements applied for a long time to sporting arms which are loaded at the breech.
    This, according to our opinion, is a true service rendered to the entire art of gun-making. By its use the combinations of closures, which are less exact, will be safe from the escape of gas, and henceforth it will not be the exactitude, but only the solidity of the closure which renders the problem of .the manufacture of arms with broken breech difficult to solve.
    “Mr. Lefaucheux believed he should secure to himself the privilege of the use of this powerful auxiliary of a closed by means of a patent of invention and a patent of improvement.
    “We have just given you a concise description of the Lefau-cheux gun; we have discussed and explained its construction; we have made known to you how Mr. Lefaucheux had found in the resources of his inventive mind the ingenious means of surmounting the obstacles as fast as they presented themselves; we should now speak to you of the use of his arm and its results.
    “Mr. Lefaucheux has requested that we should satisfy ourselves of the good effects of his gun; not shrinking from any test, he has himself solicited us to make comparative experiments; we will submit the results for your inspection:
    “ Official report of the comparative experiments made between several gums of different systems, at the request of Mr. Le-faueheux, by Messrs. Olivier a/nd Séguier, commissioners of the Society of Encouragement, in the presence of Messrs. Lefau-cheux, Justin, and others, the firing by Mr. Gosset.
    
    “(Note. — The experiments were made on several papers— blue paper, partly sized, pinkish-white paper, gray paper, unglazed. Each series or trials, however, took place for all of the guns on the same kind of paper and under similar' circumstances.)
    “First Trial. — PinMsh-white paper.
    
    Penetration.
    Lefaucheux gun. — Powder, 70grains; shot No. 4, 1 oz. 37 sheets.
    Second shot. Powder, do. do. 49 do.
    Pottet gun. 55 do. 41 do.
    “The comparisons being impossible, as the charges were unequal, in the following shots they were brought to the same weights. To obtain the same quality of powder the Lefau-cheux gun made use of the cartridges intended for the Pottet gun. We should cause you to observe that those cartridges entered more easily in the Lefaucheux gun than in that of Pottet, for which‘they, had been made.
    “Second Experiment.
    “Shot No. 4,1 oz.; powder, 55 grains; blue paper. Lefau-cheux, 25 sheets; Pottet, 31 sheets.
    “The cartridge was rolled in a band of paper, so as to enter into the Lefaucheux gun with less play.
    “Pinkish-white paper. — Lefaucheux, 46 sheets; Pottet, 50.
    “Cray paper. — Lefaucheux, 71 sheets; Pottet, 74.
    Lefaucheux, 51 sheets.
    “In this experiment the quires of paper were turned over, and Lefaucheux fired on the paper which had already received the shot of Pottet. The second shot was fired by Lefaucheux on new paper.
    “ Third Test. — Comparison of the Lefaucheux gun and the Robert gum.
    
    “Gray paper. — First shot fired by the Bobert gun, loaded with loose ammunition without a cartridge, 55 grains of powder, 49 sheets.
    “Second fire, with cartridge, 52 grains of powder, 66 sheets.
    “The Lefaucheux gun, loaded with the powder and shot of Bobert cartridges, taken to pieces, so as to make them into the Lefaucheux cartridges, 52 grains, 73 sheets.
    “Third fire of the Bobert gun, fired on paper which had already been shot, 73 sheets.
    “Second shot, Lefaucheux gun, on paper also turned, 73 sheets.
    “We think it necessary to point out in our experiments this circumstance of the paper which had already been struck, because the necessity of separating the sheets to count them destroys their juxtaposition — they become more difficult to penetrate.
    “The object of the fourth test is to ascertain the best mode of ignition, either upon the barrel or behind it.
    “These experiments were made with two guns of the Lefau-cheux system, but by a different arrangement as regards the ignition.
    “Gray paper. — Fir.st fire, inflammation in the back part and in the bore of the gun, 70 grains powder, 71 sheets; second, ignition on the barrel, same amount of powder, 72 sheets.
    “From all these experiments one must conclude, as a general rule, that it is a grave error to suppose that the ranges are more useful when the charges of powder are heavier. Be-mark, gentlemen, that we use the word utility, because we do not pretend to say that the distance to which the projectile is thrown is not increased with the force of the power which gives it its movement.
    “We have said useful, because it is demonstrated for us, and the experiments with which we have just entertained you proves it, that the penetration is much less when the velocity goes beyond a certain limit; it can be very well understood when one reflects that the penetration of a body is all the more difficult when the time during which the separation of the constituent molecules has been incited is in itself the shortest. It is in this manner, gentlemen, that the fact, otherwise so strange, is naturally explained, that a ball fired close up, flattening itself on a board, will pierce it through and through when fired from a distance.
    “ We have rigorously established the fact that the Le-faucheux gun oilers no more escape of gas, a condition to which some sportsmen attach a very high value, but as to ourselves we believe it to be of very much less importance than is generally supposed. The limits of this report do not permit us to develop in this respect our opinion; for its foundation it has a new mode of viewing the phenomena that accompany the,ignition of the powder. We believe that up to this date the chemical phenomena, such as the production of a gas, have not been sufficiently discriminated from the purely mechanical phenomena, such as the useful application of a generated force.
    “It will be sufficient to say that the experiments with which we have been entertaining you come themselves to our support, since a gun of the Robert system — that is to say, in which there is a sensible escape of gas,, has obtained a range equal to those guns which leave no other escape for the gas except through the barrel itself. We are pleased, therefore, to accord to the Lefaucheux gun every advantage shown in its practice. We note, in the first place, the solidity of its closure, tested several times by the simultaneous explosion of the double charges placed in each barrel; and then the facility with which it is loaded, the small amount of cleaning necessary which it requires; its catridges, surmounted by their capsules, being withdrawn almost entire after the explosion, preserving the chamber from any fouling; with regard to the barrel, the forced wad which passes through it at each explosion cleans it each time of the smoke of the preceding fire, and so well that after a considerable number of fires this gun is as fit for use as at the moment when it was first put into use.
    “ These properties render the facility of its being taken apart and of its being cleaned of very little importance; nevertheless, ás Mr. Lefaucheux still claims for the gun to to which he gives his name the merit of simplicity of construction, we believe that we give proof of impartiality in stating in favor of this report a comparative table of the num ber of pieces which compose the guns of the different systems' furnished by Mr. Lefaucheux, acknowledging as to ourselves that the lesser figure is in favor of the Lefaucheux guns. The experience of Mr. Lefaucheux has produced its fruits, and what completely justifies the praises which we accord him is the public favor which he has so well known how to obtain, the best touchstones in matters of industry. We have under our eyes an album containing a considerable number of satisfactory attestations, given by the sportsmen who have made use of his guns. The inspection of commercial books have, by the importance of their sales, corroborated these declarations.
    “We have for some length of time occupied your attention, and nevertheless we have yet only spoken of the improvements applied to sporting guns. The inventive mind of Mr. Lefaucheux has actually directed itself towards the modifications towhich our war guns could be usefully subjected, which are less improved than those of some other European powers— of Sweden, for instance j but has Mr. Lefaucheux reflected well upon the extent and the difficulties of the task which he imposes on himself? He will have to struggle against fixed habits, and then attack, one by one, the arrangements which have been prescribed by the times, the numerous vices of constructions which they conceal, and which defy the judicious critics of moderate practice under the auspices of a learned theory. But we trust to our colleague, Mr. Olivier, the charge of speaking to you of the labor of Mr. Lefaucheux in this re- - spect; we mention them here briefly only in support of the conclusions which we have the honor to submit to you in the name of the committee of the mechanical arts.
    “We therefore propose to you to return the name of Mr. Le-faucheux to the commission of medals, so that he may receive from the society one of those honorable distinctions which it holds in reserve for encouraging persevering efforts and recompense useful labors and crown happy inventions.
    “Approved in session the 18th February, 1835.
    “(Signed) “Baron Séguier,
    “ Reporter.
    
    “DESCRIPTION OP THE SPORTING GUN OP MR. LEPAUCHEUX, •WHICH loads at the breech.
    “The Fig. 1, PI. 616, represents the gun put together with all its pieces.
    “ Fig. 2, double-barrelled gun, the barrels lowered and ready to receive the cartridges.
    ■ “Fig. 3, longitudinal cut of the same, drawn on a double scale.
    “Fig. 4, the key, seen in elevation and in plan.
    “Fig. 5, the T seen in elevation and in plan.
    “Fig. 6, screw of the T in elevation and underneath.
    
      “Fig. 7, cartridge supplied with its culot.
    “Fig. 8, culot, front view.
    “Tbe same letters indicate the same objects in all the figures.
    
      ua a, the barrel of the gun.
    “6 b, hooks applied under the chamber, between which a kind of bolt called T engages itself.
    “c, pin cut in a bevel and used to hold the T.
    “ d, cone or nipple, applied on the barrel to receive the priming cap.
    “e, key placed under the tipper; it is turned horizontally from left to right, so as to disengage the hooks and lower the barrel ; in the square of that key enters the lower extremity of the T, which is held there by a screw.
    “/, bolt called T, of which the part/1 is cut in a bevel, so as to slide against the end of the pin o, cut in an inclined plane; a spring, which is not visible in Fig. 3, but which is indicated in Fig. 12, rests against the T and holds the key apart whilst the gun is being charged; g, a screw which fixes the key against the T.
    
      uh, ring which surrounds the T; it is hollowed on one part of its circumference, so as to receive a little blade fixed at the bottom of the tipper; i, piece of iron folded in a square called tipper, solidly fixed to the gun; on its extremity the barrel turns.
    
      “j, pin, which passes through the hinge 7c of the tipper, and serving as center of motion to the barrel.
    
      uk, hammer; 7, under guard; mm, triggers; n, sight; o, cartridge; ]), brass culot of the cartridge.
    “Management of the gun: The gun is seized with the right hand; the left hand is passed under the barrel, and you bear against the key, which turns at that moment and disengages the hooks c c. The barrel at once lowers itself and shows its oj>en chamber. In this position, indicated by the Fig. 2, the key remains in place and can not fall again, being held back by the spring which rests against the T. Whilst the gun is held by the left hand the cartridge is shoved into the barrel; then the barrel is raised, the key is put in place, as is seen in Fig. 1, and the gun is loaded. There remains nothing more to be done but to cap the cone d with a brass capsule containing the priming of fulminate powder and to cock the hammer; this hammer in falling sharply against the capsule crushes it and inflames the fulminate powder, which sets fire to the charge by traversing the cartridge. After the load has been fired the barrel is lowered, the culot is withdrawn, and you load as has been said before.
    “The cost of the manufacture of the Lefaucheux gun is from 150 to 350 francs; those made in Paris are sold at 550 francs with twisted barrels, and 650 francs with Damascus barrels.”
    
      Letters patent numbered as follows were issued at tlie dates set forth and to the persons named upon drawings, specifications, and claims which are made part of these findings:
    “ No. 828 (French), M. Lafaucheux, May 2,1845.
    “No. 203 (United States), Henry O. Hay, May 22, 1837.
    “ No. 7172 (French) Pierre Francois Desnyau, May 4,1840.
    “ No. 3601 (French), M.- Chaudun, December 9, 1847.
    “No. 2746 (French), M. Loron, January 4, 1847.
    “ No. 6139 (United States), David Minesinger, February 27, 1849.
    “No. 635 (English), Charles Pryse and Richard Redman, November 4, 1852.
    “ No. 9058 (French), M. G-astinne, March 5, 1853.
    “No. 2778 (English), Auguste Loradoux Belford, November 29,1853.
    “No. 4626 (English), Jean Samuel Pauly, May 14,1816.
    “ No. 11127 (French), Messrs. Palmer and Bidault, June 3, 1854.
    “ Reissue No. 279 (United States), Horace Smith and Daniel B. Wesson, October 10, 1854.
    “ No 12446 (French), M. Pottet, February 26, 1855.
    “ No. 8829 (French), M. Beatus Beringer, December 31,1834.”
    IY. In the Springfield gun (the official small arm of the U. S. Army) the breechblock is solid, and fills all the breech chamber except in this: It does not bear against the rear end of the chamber, and that end of the chamber is not intended to take up any part of the recoil except upon the breech pin alone, nor does the forward end of the breechblock when shut come quite in contact with the head of the cartridge.
    The breechblock is fastened by a hinge at its forward end to the top of the barrel. The hinge pin is of less diameter than the hinge holes through which it passes, thus permitting some slight movement or play in the hinge, so that the pin may not be cut during recoil.
    There is a recess at the head of the breech pin; this recess is somewhat concave in form, and into this, the cam latch locks; the shaft of the cam-latch hinge is smaller than the hinge holes through which it passes, and this shaft extends horizontally beyond the barrel, terminating in a handle or thumb latch, as shown in the Allin gun; when the breech lock is shut and locked this handle lies under the angle of the hammer, and is so arranged that with a hammer in the third or lowest notch (or entirely down) the breechblock can not accidentally unlock and open. In locking or unlocking the cam latch this handle turns across tlie bead of tbe firing pin, and tbus operates to prevent premature firing, as in tbe Allin gun.
    In firing, tbe breechblock sets back under tbe force of tbe recoil; tbe loose binge at tbe forward end gives play there; tbe loose binge of tbe cam latch gives play at that point, and tbe recoil is transmitted through tbe breechblock to tbe cam latch, with tbe bead of which it comes in direct contact, and then through tbe cam latch to tbe bead of tbe breech pin. I3y reason of tbe small diameters of tbe respective pins or shafts of tbe two binges, as compared to tbe binge boles through which they pass, no strain is brought upon these binges by tbe recoil.
    Extraction and ejection of cartridges were tbus performed in all Springfield guns, beginning with tbe model of 1868 and continuing since.
    Extraction: By an extractor plate swinging on tbe binge pin and struck above its center of motion by tbe forward end of tbe breechblock near tbe completion of its movement in opening.
    Ejection: By accelerating tbe movement of tbe extractor by means of a spiral ejector spring, which surrounds tbe stem of tbe ejector spindle, and bears against tbe bottom of its bole in tbe receiver at one end and against tbe bead of tbe spindle at tbe other end. When tbe extractor is revolved by tbe opening of tbe block, tbe ejector spring is compressed by tbe ejector spindle, tbe point of which rests in a cavity in tbe back of the extractor above its axis of motion. Tbe continued revolution of tbe extractor finally brings tbe prolongation of tbe ejector spindle below tbe axis of motion; as soon as tbe center is passed, tbe sudden release of tbe ejector spring causes tbe ejector to rapidly rotate about its axis and to carry tbe empty cartridge shell against tbe beveled surface of tbe ejector stud, by which it is deflected upward and thrown clear of tbe gun.
    Between July 10,1875, and November 29,1879, defendants manufactured new rifles of this model or changed old rifles to this model; tbe number so manufactured or altered during said period was 51,864.
    Y. Tbe following models of guns were examined by tbe court during tbe trial of this cause and are made exhibits herein. Tbe model filed in tbe Patent Office as showing tbe construction described in patent 15595; tbe Morse gun, captured during tbe late war; tbe Springfield rifle, models of 1S66 and 1873; tbe Winchester repeating rifle.
    VI. Plaintiff is a corporation, organized under an act of tbe legislature of New York of February 17,1848, entitled “An act to authorize the formation of corporations for manufacturing, mining, mechanical, or chemical purposes,” and the acts amendatory thereto, has its place of business in New York City, and is the owner, by assignment made prior to June 10, 1875, of all the right, title, and interest granted by said here-inbefore-recited letters patent to said Morse until their expiration.
    VII. A reasonable royalty for the use of the device claimed in claim 1, patent 15995, if used by the Government, as contended by plaintiffs, for the period covered by the action — i. e., prior to the expiration of the patent and not longer ago than six years before this action began — would be $1 per gun.
    A reasonable royalty for the use of the device claimed in claim 3, patent 20503, if used by the Government, as contended by plaintiffs, for the same period, would be 25 cents per gun.
    
      Mr. Samuel A. Duncan and Mr. George S. Boutwell for the claimant.
    
      Mr. John 0. Chaney and 'Mr. P. P. Dewees (with whom was Mr. Assistant Attorney-General Cotton) for the defendants.
   Davis, J.,

delivered the opinion of the court:

In 1855 George W. Morse filed in the Patent Office a caveat which he entitled a “Description of improvements in breech-loading guns and cartridges for the same, for either cannon or small arms.” Speaking of the gun, he said that the barrel should be so constructed that the gun could be opened and closed at the breech by a movable breech piece “ which does not necessarily fit tight into the bore of the breech of the gun, but only to remain firmly in its place when the gun is in proper position for firing.” He proposed in this caveat that what he named “the cartridge or breech pin (if it should be made to enter the gun) should be so constructed of metal or combination of other materials behind the powder that by the explosion of the powder it will expand and perfectly fill the bore of the gun behind as the minie ball fills the cavity of the gun by the enlargement of tbe afterpart of tlie same by the explosion of the powder.” He proposed that cartridges haying a leaden case should be provided for his gun, the cartridges to be in any form consistent with the principle which he thus claimed, “although it [the cartridge] or the breech pin may enter the gun loose, yet the effect of the explosion will be to render the gun perfectly tight behind the powder.”

This caveat was followed by application for letters patent upon a gun and cartridge. In the Patent Office tlie application was separated, and two patents were issued in the year 1856, the one, (No. 15995), upon the gun, the other, (15996), upon the cartridge. The first of these patents was extended by act of Congress and expired November 29,1879; the second (No. 15996) expired October 28,1870. This action was begun April 12,1884. The statute of limitations, therefore, runs against and bars any possible claim under this second patent.

The case turns primarily upon claim 1 in patent 15995, which reads as follows:

“1. Inserting the rim N, or its equivalent, without contact, into the chamber O, substantially in the manner and for the purpose described, contact being obtained through the medium of a cartridge case.”

This claim is thus construed by one of the counsel for the plaintiff:

“The claimant asserts that George W. Morse, the grantee of letters patent numbered 15995, was the lawful patentee of a device for sealing a breech joint of a breech-loading gun, purposely made open, by the expansion of a yielding metallic cartridge case, purposely made to fit loosely in its chamber.”

Another of plaintiff’s counsel states the scope of this patent in argument substantially as follows:

“Morse discovered a method or art by which a breechblock, so constructed as to be free in operation under all circumstances, shall be automatically sealed at the moment when the use of the gun imperatively requires a close connection between the breechblock and the gun barrel.”

Upon either statement the claim is for a broad device which shall practically cover subsequent inventions for sealing loose-jointed breech-loading military firearms by an expanding metallic cartridge.

In view of this contention it becomes necessary to examine the state of the art in the year 1856, when this patent was issued.

The first form of firearm was the breechloader; but as the imperfect fitting of the breech mechanism permitted the rearward escape of gas and flame, the muzzle-loader was adopted and continued in use until the close of the last war; meantime, and for many years, inventors had been searching for an efficient gas check capable of useful application to a military breech-loading musket. At first all efforts were directed to the manufacture of a mechanism which by the close fit of its parts should attain the desired result. Many devices of this kind were invented. None (so far as appears) had much practical value, unless possibly in light sporting arms. The reason is plain. The carefully adjusted breech mechanism was apt to become inexact (and might become dangerous) through wear, rust, or dirt. An absolutely mechanically correct adjustment of the parts was in theory possible, but in practice the slightest injury to the gun, the least rust or the presence of sand or earth, rendered it inefficient.

Long before 1856 inventors had recognized the necessity of a comparatively loose mechanism in the breechblock, combined with a sufficient gas check through the expansive cartridge, if practical efficiency in this class of firearms were ever to be attained. Several patents are referred to in the findings of fact which show the endeavor of small-arms inventors in this century. A citation or two, by way of illustration, may not be amiss.

In 1835 the Society for the Encouragement of National Industry in France issued a bulletin headed “Mechanical arts— firearms,” being a report made by Baron Séguier. This report is set forth in the findings, and from it we make only the following excerpts. Alluding to the loss of gas, which offered (it was said) “ that double inconvenience of diminishing the range and blacking the fingers,” the report proceeds (we quote from translation):

“Mr. Lefaucheux, desiring to satisfy in all respects the many sportsmen who honored him with their confidence, put himself again to the task, without despairing of success; so, to surmount a last obstacle, he was happily led to apply to the guns the closing principle of hydraulic presses; we speak of that punched-up leather whose edges rub against the sides of a vase with all the greater force as the liquid which it contains is the more compressed and has a greater tendency to escape.
“You understand, gentlemen, that in adopting this principle of closure for guns, as there is no question of preventing an escape of liquid but of burning gas, it was proper to modify the material of the stopper, therefore it is not a cap of leather, but a bottom of thin brass with which Mr. Lefaucheux caps his cartridges. The flexible edges of this hat, having the form of a large capsule, dilates at the moment of explosion, and rubs tightly against the sides of the barrel with such exactness that the slightest escape of gas becomes impossible. # * * We look upon it as one of the most useful improvements applied for a long time to breech-loading sporting arms.
“ This, according to our opinion, is a true service rendered to the entire art of gun-making. By its use the least exact breech closures are safe from the escape of gas, and henceforth it will not be the exactitude, but alone the strength of the closure which shall render the problem of the manufacture of arms with broken breech difficult to solve.”

Nearly twenty years before this (in 1816) Pauly had taken out his English patent for what he termed “ apparatus and arrangements for discharging firearms by means of condensed air, also cartridges applicable thereto.” His description, which is long, contained the following paragraph:

“Having described the various forms and constructions which I give to cannon or other large arms for the purpose of loading or charging them at the breech or butt end, I shall in the next place describe my culot, plug, or cartridge stopper, which is an essential part of invention, which must be used with any or all the constructions of cannon which have here-inbefore been described or mentioned by me when the same are to be fired or discharged. The great obstacle to the use of large arms loading at the breech has hitherto been the difficulty of producing an air-tight or perfect closure between the movable breech and the body or remainder of the gun; and if the efforts of the explosion can at all make way into this joint or closure the construction becomes dangerous, inasmuch as the opening will become larger, and eventually the moving breeching may be blown away or torn from its situation. 'This effect will entirely be prevented by the adoption of my culot, plug, or cartridge stopper, which is so placed in the gun as to come between the charge of gunpowder and the movable breech in all cases, and is formed of lead, copper, or such other ductile material as will give way to the explosive force of the charge, and so formed and situated that by yielding or giving way it will completely and effectually cover and close up the joint or joining between the movable breeching and the gun itself.”

Here, then, Pauly recognized the necessity of a gas check between the “movable breech and the body or remainder of the gun,” and proposed to furnish it by means of a cartridge “formed of lead, copper, or such other ductile material” as should yield under explosion and seal the joint. Other citations might be made, but they seem unnecessary.

The state of the art in 1856 was not such in our opinion as would permit a patent to issue covering so broad a claim as that made by plaintiff’s counsel in this case. The advantages of loose breech mechanism were known when Morse applied for his patent; the metallic cartridge as an invention was old, although practical difficulty had been encountered in manufacturing it; the use of a cartridge as a gas check was by no means a novel idea. It was not open to Morse in 1856 to patent every “device for .sealing a breech joint of a breech-loading gun, purposely made open by the expansion of a yielding metallic cartridge case, purposely made to fit loosely in its chamber;” quite the reverse; this idea had been disturbing inventors for many years; Morse came to the Patent Office limited to some specific, mechanical device which should solve the long-studied problem, and he must be held to the one described in his application. Morse was by no means the first in the field, and therefore he is not entitled to-the very liberal construction which is here asked.

The claim upon which plaintiffs rely (the first in patent 15995) is on its face a narrow one, limited to a specific device. They, however, contend that as the patent was issued under the act of 1836, the question is (to quote from the brief) “whether in his specification as a whole, including the claim, this device was particularly specified and pointed out as his own invention for which he demanded the protection of letters patent.”

Without deciding whether this contention as to the law is correct we turn to the specifications, and find the invention described as a “new and useful breech-loading gun;” this gun to be so constructed that he could “ blow through it or run water through it with facility, but when the charge is in, it becomes comparatively air and water tight, because I use a cartridge case which seals the breech joint both as to powder and the priming.” Here nothing novel is described, as a loose-jointed mechanism was known, and the use of a cartridge as a gas check was known; the kind of cartridge was not specified; neither was the combination of the two (i. e., the loose-jointed mechanism and the cartridge) as a broad device then open to a patent. Further on Morse describes the mechanism which he afterwards “ claims ” as his invention in the form we have seen. Safety in the gun and the fact that water will not impair its efficiency appear from this specification to have been Morse’s main objects.

Another patent, granted to Morse the same, day (October 28,1856), did cover a metallic cartridge intended to be used as a gas check, but that patent expired in 1870; because of the statute of limitations no recovery can be had in this action prior to 1878; therefore no rights under this patent can be urged here. Nor can the cartridge patent be imported into the patent for the gun. A claim for a system founded upon two patents can not be sustained where one of the patents has expired by limitation.

The specific device described in the specification and claim of patent 15995 does not appear in the Government gun. (Morse Arms Company v. Winchester Arms Company, 33 Fed. Rep., 170.)

Patent 20503, issued June 8, 1858, after being extended by statute, expired June 8,1879; it contained a claim of a cartridge extractor, and this extractor, or its equivalent, it is contended, is in the Springfield gun. The claim is as follows:

“Third. The construction and use of the lever, when arranged substantially as described, for the purpose of retracting the cartridge case.”

Under this and the specifications set forth in the findings, counsel urge the broad claim for a lever when the toe is in front of the flange, no matter how operated. We have discussed the question of cartridge extractors in the case of the Berdan Firearms Manufacturing Company (26 C. Cls., R. 48). The extraction of cartridge shells by leverage was not new in 1858, and Morse in this patent, as in the earlier one, must be confined to his specific invention and to his use of a lever for pushing or pulling out a cartridge from a gun barrel. Bourcier’s spatent (1847,1848, and 1852), G-astinne’s patent (1853), Belford’s (1853), and Hick’s (1857), all set forth in the findings, sufficiently show that the automatic or mechanical extraction of cartridges did not originate with Morse, and that he was not tbe first to use a lever whose short arm should, engage the forward side of the flange. Morse must in any event be limited to the' specific device described by him, and this device does not appear in the Springfield rifle.

Petition dismissed.  