when Helms takes that he takes what is old and well known. I am unable to discover, though the argument is presented with much refinement of reasoning, that either the guard, finger-rest, or tool in the Helms machine performs any such new function, never before performed in prior machines, as to make the third claim a patentable combination. The bills should be dismissed, with costs, and it is so ordered.
CARPENTER, J., who sat with me on the first motion for a rehearing in the KmJ1I. Case, agrees with the conclusion I have reached.
J. L. Mo'rr
IRON WORKS ". CASSIDY
(Clircuit Oourt, 8. D. New York. March 22, 1887.)
PATBNTI! 1I'OR INVENTIONS-PATENTABILITY-NoVELTY.
Letters patent No. 199,806 were granted January 29, 1878, to one John Demarest for an improvement in for water-closets, consisting of a safe or safety-plate made of cast-iron in ,a certain form. Slop-safes of substantiallf the same form and for the, same .purpose had been previously made of lead· or wood, covered with lead to· such an axtent as to become a.matter of cotnmon knowledge, and .n 1877 a patent was gra.nted to another person fora similar device in which porcelain was used. Held, in a suit by said Dembrought upon his patent', that his invention wanting in patentable novelty, and his bill must therefore be ,dismissed.
In Equity. Jiranci8ForhlJ8, .for orator Arthur v. Briesen, for defendants.
J. This suit is brought upon letters patent No. 199,806, dated January 29, 1878, granted to John Demarest for an improvement in slop-safes for water-elosets. Such slop-safes, of substantially the same form and for the same purpose, had previous to this invention been made oflead, or of wood covered with lead, to such an extent as to have become a matter of common knowledge. A similar device called a driptray, made of porcelain or other earthenware, is described in letters patent No. 197,629, "dated November 27, 1877, and granted to Charles Harrison, for an improvement in drip-trays for water-closet bowls. The patent in suit described a safe or safety-plate, of cast-iron, with an upward rim or flange at the sides and back to prevent slops running over the edge, made dishing towards a central opening in the middle, with a .downward flange around that opening. The claim is for the slop-safe for water-closets made ofcast-iron, having the downward flange and the 'Upward flanges, as and for the purposes set forth. In the patent to Harrison it is said: "The upper surface, El, of the tray inclines from all sides towards the center,
and the interior portion, E2, which forms the boundary in the opening in the
tray, conforms to the shape of upper end of the bowl, and overlaps the 1Iange, B. The tray is provided at its outer edges with the vertical flanges. E8. The inclining of the upper surface from all sides gives the dishing form. In the drawings, E2 is a downward flange around the central opening; and ES are upward flanges at the ,back sides,and front." Here are aU the elements of the claim of the patent in suit, with the addition of the flange in front, which is immaterial. That would have nothing to do with the operation of the flanges at the back and sides. of. ,tllat patent and the safe of this The real difference between the is that tray is made of porcelain or earthenware and this of cast-iron. What Demarest really invented beyond what was known before was making these things of cast-iron, a well-known material, instead of making them of lead, or wood covered with lead, or of porcelain or other earthenware. It is sho)Vn and conceded that, these cast-iron trays are good articles, and' have largely superseded the others, and gone intO general use, since Demarest's, invention. These facts show utility, but do not of themselves show patentable novelty. There must be something amounthowever great. HoUwter v. ing to invention apart from ,mere, Benedict Manufg 00., 113 S ·. 59, 5 Sup. Ct. Rep. 717; Thompson v. BoWselier, 114'U. S. 1,5 Sup. Ct"':&ep. 1042. The use of one old ma, terial in, place of another, SUbstituted material performed no new function and is an improvement because it is more durable, does not appear to amount to patentable invention. Hotchkiss v. Greenwood, 11 Ho;w. 248; Hicks v. Kelsey, 18 JVa.ll. 670j Gardner v. Hm, 118 U. S. This is all that Demarest appears to have 180, 6 Sup. Ct. Rep. done. The patent is therefore apparently void for want of any patentable invention to found it upon. Let a decree be entered dismissing the bill of complaint with costs.
REED V. REED.
Ohio, B. D.; 1887.)
(Oifocuit Oourt, N.
REMOVAL OF' CAUSES-ORIGINAL JURISDICTION.
The circuit courts of the United States, sitting in Ohio, have no jurisdiction to try a controversy brought under the statutes of that state to contest the validity of a will by an original bill for that purpose; and, as under the act of congress of March 3,1887, n9cause can be removed from a state court to the United States circuit court, unless the circuit court would have had original jurisdiction of the controversy involved in the case, such a controversy is not,under that act, a proper subject for removal.
Under Rev. St. Ohio, § 5859. providing that ".aU the devisees, legatees, ltnd heirs of 'the testators, imd other interested persons, including the executor or administrator, must be parties" to a proceeding to contest the validity of a will, Where the contestant is·a resident of Ohio, and of the three defendants two arl) aleo residents of t)J.atstate, and the third of New York, there is no separable controversy, for the purposes of removal, between the contestant and such third defendant. .
On Motion to Remand. John McSweeney, Day Lynch, and F. L. Baldwin, for complainants. Alonzo W. Taft, and Lloyd Baldwin Shields, for respondents.
WlllLKER,J. The casewas commenced by Franklin A. Reed, in the court of common pleas of Stark county, Ohio, to contest the validity of the will of Gustavus P. Reed,deceased, before that time probated in the probate court of said Stark county, 'alleging that he was the sole heir at law of said Gustavus P. Reed, deceased; that Harriet A. Butler Reed and Adeline E. Reed are named as several legatees and devisees in said supposed will; that James H. Hunt was administrator with will annexed of said Reed, deceased; and alleging that the said paper writing was not the last will and testament of said Gustavus P. Reed; and prays that an issue be made as to whether said paper writing is the last will and testament of said Reed. Answers and cross-bills were filed by Harriet A. Butler Reed and Adeline E. Reed. Petition filed on the twenty-fourth day of March, 1887, for removal by said Harriet A.Butler Reed, who says her name is Harriet A. Butler Reed, and wife of the said Gustavus P. Reed, and states she is a citizen and resident of the state of New York, and that all the other parties are citizens and residents of the state of Ohio, and that the matter in dispute in said suit exceeds the sum of $2,000, exclusive of costs. The record and papers were duly filed in this court, April 2, 1887. Motion filed by the said Franklin A. Reed and Adeline Reed to remand the case to the said common pleas court. As cause for said remanding, they allege (1) that the petition for removal was not filed within the time prescribed by the United States statute; (2) that the said cause is not a removable cause, within the provisions and meaning of the act of congress of third of March, 1887 j (3) that the said circuit court has not original jurisdiCtion of the controversy, and it is not, therefore, removable; (4) that v.31F.no.2-4
the plaintiff, and the said James H. Hunt, administrator, and the said Adeline E. Reed, were, at the time ofthe filing of the petition in court of common pleas, and time of removal petition filed, citizens and residents of the state of Ohio; (5) that· there is no separate controversy between the plaintiff and Harriet A. Butler Reed, as'set out in the petition to remove; (6) that it does not appear that. the matter in dispute exceeds the sum of $2,000, exclu§iveof interest and costs. The petition in the state court was filed under the provisions of statutes of the state of Ohio, which are as follows: Section 5858 of the Revised Statutes provides that lC a person interested in a will or codicil, admittell to probate in the probate court, or court of common pleas on appeal, may contest the validity thereof in a action in the court of common pleas of the county in which the probate was had." ..) . "Sec. 5859. All the devisees,.lega,tees, and heirs of the testator, and other interested persons, including the executor or adr:n.inistrator, must be made parties to the action. "Sec. 5860. Upon the filing of the petition, the clerk shall certify that fact to the probate court in which the will is recorded; and the probate judge shall proceed as proVided. in title two. "Sec. 5861. An issue shall be made up. either in the pleadings or by an order on the journal, whether the writing produced is the last will or codicil of the testator or not, be tried by a jury, tbeverdict shall be conclusive, and theOQurtshall enter judgment thereon." And the other sections provide as to the mode of condUcting ,tpe trial and testimony. to be used. Section 5936, alluded to as two," provides that, "whellever the probate court $hall receive fror:o, of the. c()urt of common pleas a certificate thllt a petition hasb.E\enfiled inihe court of common pleas to contest the vlliidity of llnywill, * * * .the probate court shall forthwith transmit to the common pleas the-will, testimony, and all the papers relatiogthereto, wit4acopy oftheorderof probate; * * * and a copy of the final judgment ousuch shall be certified by the clerk of the coprt of common to the propata, court, and the sa\d clerk shall transmit to the .probatepourt the will and other papers transmitted as aforesaid to the common pleas; and the same shall be deposited and remain in the probate court. In the view taken of the questions raised on the motion to remand, it will only be necessary to consider the. second and third grounds stated; that is, that this court has no original jurisdiction of the controversy involved in the case, and it is therefore not removable; and the fourth and fifth grounds, to-wit, residence of parties, and separate controversy. The first section of the act of third of March, 1887, provides that 41 the circuit courts of the United; States shall have original cognizance, concurrent with the courts of the several states, of aU suits of a civil nature, at common law or inequity, where'the matter in dispute exceeds, exclusive, of interest and costs, the sum or value of two thousand dol- \ lars, * * * in which there shall be a controversy between citizens
REED :t'. REED.
of different states, in which the'ma.tter in dispute exceeds, exclusive interest and costs, the.sum or value aforesaid." As to removal of cases from the state courts, section 2 of said act provides "that any suit of a civil nature, at law or in equity,of which the circuit courts of the United States are given jurisdiction by the preceding section, and which are now pending * * * in any state court, may be removed into the circuit court of the United States for the proper district by the defendant or defendants therein, being non-residents of the state." It will be seen that, under this statute, no cause can be removed from a. state court to the circuit court unless the circuit court would have had original jurisdiction of the controversy involved in the case. In this respect it is different from the act of the third of March, 1875, in which this restriction did not exist; so that under that act a class of cases, it bad been decided by the court8, might be removed that could not have been originally brought in the circuit court. This clause was, no doubt, inserted to settle" definitely that question. One of the questions, then, to be settled on this motion, is, do the proceedings in the common pleas of Stark county, to contest the validity of the will of Reed, constitute a "suit of a civil nature, at common law or in eqUity?" The case sought to be removed seems to be proceedings under a special statute of the state of Ohio, and classed with special are directed remedies under the statute, in which the whole by the statute, and substantially make the common pleas court an appellate court, or an assistant to the probate court on the probate of wills and settlementofestates. The probatecourtsof the counties have the exclusivejurisdiction for th!l probate of wills. The probate therein generally is ex parte, without notice to others interested; and, to provide an adversary hearing of such probate, the statute provides that any person interested in a will may, at any time after probate so made ex parte, and within two years, file a petition in the court of common pleas to contest the validity of the will, and in that way review such probate. This proceeding in the court of common pleas is but the continuance of the controversy made in such contest, and in aid of the probate court in.its exercise of probate powers. The removal statute also provides that, in case of the proper removal to the circuit court, "the case shall then proceed in the same manner as if it had been originally commenced in said circuit court," thereby severingaU connection between this court and the state court from which it had been removed. Now,such proceedings in the common pleas are required:tobe certified to the probate court, and the will recorded and executed in the probate oourt. This court, if it retained jurisdiction, has no such connection with; or relatioll to, the probate court, as to authorize it to require the probate court to certify the original will and the proofs to this court for trial, or to certify its decision with the return of the original will and proof to the probate court after trial here, and no power to enforce such orders. This court surely has no such common-law powers, and the necessary judicial machinery has not been furnished by any legislation of the
United States to carry out the provision of the statute of the state of Ohio. . If the contest of the will is tried in this court, the record of the case and the will would remain here, and the whole probate system of the statechangedj and parties seeking for information in regard to wills be compelled to search the records of this court, as well as that of the probate court, to find the proceedings in reference to the probate of wills. It seems to me it was not the intention of congress to so investthis court with a jurisdiction that might produce these results. This question of jurisdiction is not a new one in this court.. .At the April term, 1878, this court had the same question before it in the case of Ho-we v. Nesbit, (not reported,) and the court then decided, after full argument, (Judges BAXTER and WELKER sitting together,}that the court had no jurisdiction to try a controversy brought under the Ohio statute to contest the validity of a will, by an original bill filed· for that purpose, and sustained a demurrer to such bill for want of such jurisdiction, and dismissed the case for that ground of demurrer. . In that case the will had been probated in the. probate.court of Lorain county, and the petition was filed as the one in this case was filed, making the heirs at law of the testatrix defendants, .and asking that the cause be submitted to a jury to .determine whether the ,said instrurnent Was the valid last will and testament of said Catharine Nesbit, and that the same mightbe declared null and void, etc. I see now, after a careful examination of the authorities cited by counsel in this case, no reason to change that ruling. ' Several cases are cited of decisions of the supreme court of the United States, but none of them meet the precise question made ip. this case. The case in 92 U. S. 10, (Gaines v. .li'uentes,) does not meet the question. In that case suits had been brought to settle titlea to lands, and the will sought to be set aside was. claimed as muniment of title, and, as it had been properly probated, it could be disputed only by a snit to set aside the probate, and declare the will void; and the court decided .that the circuit court had jurisdiction to set aside the will, where the . parties were such as gave it jurisdiction, but intimates want of such jurisdiction for purposes of establishing a wm. In the case of EUis v.Davis, 109 U; S. 485, 3 Sup. Ct. Rep. 327, it was held, "that circuit courts, as courts of equity,· have no general jurisdiction for annulling or affirming the probate of a will;" "that jurisdiction as to wills, or their probate as suoh, is neither included in nor excepted out ofthe grant of judicial power to the courts of the United States. So far as it is ex parte, and merely administrative, it is not conferred; and it cannot be exercised by.them at all until, in a case at law or in equity, its exercise becomes necessary to. settle a controversy of which a court of the United States may take cognizance by reason of the citizenship of the parties." In Re EBtateof Fraaer, 10 Chi. Leg. N. 390, in the Eastern district of Michigan, Justice SWAYNE, on a motion to remand to the circuit court of that state in a case appealed to it from the probate court in proceedings to probate a will, says:
!I"EALE V. FOSTER·
..A federal court has no' jurisdiction in cases of proceedings to establish a will. In fiaines v. Fuentes, 92U. 8.10, the supreme court said: 'There are, it is true, in several of the decisions of this court, expressions of opinion that federal courts have no probate jurisdiction, referring particularly to the establishment of wills; and such undoubtedly is the case under the existing legislation of congress.' By this ruling I am bound, and it is conclusive of this case. See, also, Case of B1'oderick's Will, 21 Wall. 504; lJu Vivier v. Hopkins, 116 Mass. 125; Yonley v. Lavender. 21 Wall. 276; Tarve1' v. Tarver, 9 Pet. 174; Ward v. Peck, 18 How. 270; Adams v. Preston, 22 How. 473, 478."
As to the third and fourth grounds to remand,-that is, that codefendants of Harriet A. Butler Reed are citizens' of the same state as the plaintiff, .Franklin A.Reed, and that the controversy of Mrs. Butler Reed is not wholly between citizens of different states, and which can be fully determined between them,-the record shows that Franklin A. Reed, the plaintiff, is a citizen of Ohio, and that Adeline E. Reed, a legatee, .and J.ames H., Hunt,administrl;ltor of Gustavus P. Reed, defendants with Mrs. Butler Reed, are citizens of the state of Ohio, and same state of the plaintiff. If Hunt, administrator, a,nd Adeline Reed, are necessary parties, and not merely nominal, then the act of Marcb3, 1887, does not allow one defendant to remove who may be a citizen of another state, because then the controversy cannot be fully determined between Hartiet 1\.. Butler Ree,d, as between her and the plaintiff. The state statute provides that "all the devisees, leglttees, and heirs of the testator" and other .interested persons, including the executor or administrator, must be made parties to the action." Parties required by the statute to be made can hardly be said to be merely nominal ones, but must be regarded as necessary parties. If such necessary parties, then oneof them, Harriet A. Butler Reed, cannot have a separate controversy with the plaintiff, and wholly between her and the plaintiff, which can be fully determined without the presence of the other parties, as required to be shown to entitle her, as one of the several defendants, to a removal Qf the case. On both grounds, then, the motion to remandwill.be sustained, and the case retpanded to the common pleas of Stark county.
Nl!:ALE V. FOSTER
June 15, 1887.) OJ' 1887-DIVEBsJll
BJIlMQ.VAL o.l!' CAUSE-AP1'LICATION TO REM.urn-AcT ZENsmp.
The plaintiff being' the owner and assignee of a non-negotiable contract. namely, two judgments for money, brought suit in the 'state court to set certain alleged fraudulent conveyances by the.judgment debtor, and to subject the lands described therein to the satisfaction of said jUdgments, and . then caused the suit to be removed to this court,' stating in his petition therefor.that the plaintiff is a citizen of illinois, and the defendants citizens of