#### ALBERT W. MOORE v. THE UNITED STATES.

[No. 32943.

Decided February 1, 1915.]

*On Demurrer.*

This is a suit under the act of June 25, 1910, 36 *Stat. L.,*85, for an alleged infringement by the United States, acting through the Postal Savings System, of Letters Patent, obtained by the plaintiff June 28, 1904.

I. Where it appears from letters patent that the article which is the subject thereof fails to come within the provisions of section 4886, *Revised Statutes,*said patent is void for want of subject matter, novelty, and invention.

*121*The Reporter's*statement of the case:

*Mr. Stephen M. Reynolds*for tbe plaintiff.

*Mr. H. G.*Workman, with wbom was *Mr. Assistant Attorney General Huston*Thompson, for the defendants.

Prior to the act in question the United States could not be sued for use of a patented invention except where such use arose upon a contract, express or implied. *Belknap*v. Sehild, 161 U. S., 10, 16, 17; *Schillinger*v. *United*States, 155 U. S., 163; *Grosser*v. Krupp, 224 U. S., 290.

The patent is before the court, being made part of the bill. *Fowler*v. *City of New*York, 121 Fed. Rep., 747; 58 C. C. A., 113.

The United States — the real defendant — may, like any other defendant, set up the defense of invalidity of the patent. And it may plead this defense by demurrer. *Richards*v. *Chase El.*Go., 158 U. S., 299, 301,- and authorities cited. Indeed, this defense may be noted by the court *without pleading or proof.*As said in *Brown*v. Piper, 91 U. S., 37, 44:

“ We think this patent void on its face, and that the court might have stopped short at that instrument, and without looking beyond it into the answers and testimony, *sua*sponte, if the objection were not taken by counsel, well have adjudged in favor of defendant.”

See also *Slawson*v. *Grand St. Ry. Go.,*107 U. S., 649; *Fowler*v. *City of New*York, *supra; Oonderman*v. Clements, 147 Fed. Rep., 915; *Connors*v. *Ormsby,*148 Fed. Rep., 13; *Thomas*v. *St.*Louis, 149 Fed. Rep., 753.

In *Strom Mfg. Go.*v. *Weir Frog*Go., 83 Fed. R.ep., 170, 172; 27 C. C. A., 502, it is said:

“ But it is no longer open to question that where the cas^ as presented is clear, and the court finds no difficulty in understanding the character and scope of the invention from the patent itself when tested by the common knowledge pertaining to it, and thereupon discerns that the patent is not sustainable, the proper and expedient course is to dispose of the case on demurrer, and thus put an end to useless litigation. *Authorities cited."*

*122Argument tor t&o Defendants.

This is in accord with this court’s attitude in *Brown*v. *Dist.*Gol., 17 C. Cls., 303, of not “ prolonging litigation or subjecting either side of a controversy to unnecessary inconvenience and expense.”

As it is the claim of a patent that defines the invention that is patented and determines the rights of the patentee, it is the claim that must be looked to to ascertain what that invention is — the specification and drawings of the patent being merely illustrative and explanatory of what is in the claim. *MoGlain*v. Ortmayer, 141 U. S., 419.

Section 4886, Title LX, of the Revised Statutes prescribes what things may be patented, viz, a “new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” If the certificate claimed is any of these (as it must be to be patentable) it could only be as a “ manufacture ”; but statements, promises, or spaces, either separately or together, or the' printed or written inscription as a whole, can not, by any interpretation, constitute a “ manufacture.” They have no physical characteristics or qualities other than the written or printed characters or signs that express them. The alleged invention is therefore not patentable subject matter. See *Hotel Go.*v. *Lorraine*Go., 160 Fed. Rep., 467; *Hooke*v. *N. 7. Central B. B.,*122 Fed. Rep., 467; *Munson*v. *Mayor of New*York, 124 U. S., 601; in re Moeser, 27 C. A. Dist. Col., 307; *U. B. Credit System*v. *American*Indemnity, 59 Fed., 139.

The court may take judicial notice of matters of common knowledge in determining novelty, i. e., whether, as said b'y the Supreme Court in *Brown*v. Piper, 91 U. S., 37, 41, “ the thing was within the circle of what was well known before and belonged to the public.” The court may, among other things mentioned in *Brown*v. Piper, take judicial notice of “ the general customs and usages of merchants,” and—

“ Courts will take notice of whatever is generally known within the limits of their jurisdiction; ana if the judge’s memory is at fault, he may refresh it by resorting to any means for that purpose which he may deem safe and proper.'’’

See also *Phillips et al.*v. Detroit, 111 U. S., 604, 606; *King*v. *GaTlun,*109 U. S., 99,101.

*123The averments of the petition to which the defendants demurred will be found sufficiently set forth in the opinion of the court.

Booth, Judge,

delivered the opinion of the court:

This is a suit under the act of June 25, 1910, *36 Stat.*Z., 85, for an alleged infringement of a patented article by the United States, acting through the trustees of the Postal Savings System. The issue presented is raised by defendants’ demurrer to the petition. We say petition, for, in view of the state of the record, we treat the pleadings as amended and designate them in accordance with our rules and practice.

Claimant alleges that he is the inventor of a new, useful, and improved certificate of deposit, for which he obtained on June 28, 1904, Letters Patent No. 763778. ’The petition makes said letters a part thereof, and from them and the allegations in reference thereto it appears that there is but one claim on the patent, stated as follows:

“A certificate issued for a round principal sum, a statement that said principal sum is being held on deposit, a promise by the depositary to pay said principal sum to the order of the specified depositor, a promise by the depositary to pay interest to the holder at a specified rate, and appropriately designated spaces for the signature and countersignature of *the depositor to thereby protect the depositor from presentation by an unauthorized person.”

An illustration made part of the letters patent simplifies both the claim and allegations of the petition to such an extent that we reproduce it (p. 124 *post).*

Defendants’ demurrer goes directly to the validity of the patent, assailing it for want of novelty and invention, as being void upon its face, and likewise void for want of subject matter. To sustain any one of these defenses would be fatal to a recovery, and all of them are properly raised by the pleadings in suit. *Strom Mfg. Co.*v. *Weir Frog Co.,*83 Fed. R., 170.

The case does not admit of prolonged discussion. Whatever novelty, if any, embraced within the claim of the alleged patent of the inventor consists in a duplication of signatures, *125one made by the depositor at the time o‘f making his deposit and subsequently duplicated by him when he seeks to realize funds upon his certificate. For this purpose two blank spaces or lines are provided, properly designated for signing and countersigning. This, as appears from the claim, is the most that can be claimed as new or novel, and is alleged as the instrumentality for the absolute prevention, barring forgery, of wrongful payment of the certificate. No mere rearrangement of words disclosing commercial transactions between individuals whereby one pays funds and the other acknowledges the receipt thereof, no matter how carefully guarded against fraud and mistake, can at this time claim the distinction of novelty. As has been heretofore said:

*124

*125“A system of transacting business, disconnected from the means for carrying out the system, is not within the most liberal interpretation of the term 4 art,’ and unless the means used are novel and disclose invention such system is not patentable.”

The signing and countersigning, the issuance and duplication of the same, the conception of checks and balances in the interest both of accuracy and honesty in business transactions, have prevailed since the inauguration of trade and commerce. The innumerable details involved in the evolution of systems of this character which require no more than employment of pen, ink, and paper to effectuate the same, are far too old' to admit of patentability. Travelers’ checks, express companies’ checks and orders, systems of accounting in restaurants, bars, and hotels furnish innumerable instances of the employment of systems of this character. As was said by the court in *Hocke*v. *New York Central & H. R. R. R.*Co., 122 Fed., 469:

“ Such improvements generally suggest themselves as their necessity becomes apparent to the intelligent and enterprising men who usually conduct this kind of business, and it would be surprising, indeed, if the long and extensive experience of forwarders and carriers had not discovered so obvious a method as that which is disclosed.”

The article exhibited is not a machine, manufacture, or composition of matter. If it comes at all within the terms of section 4886, Revised Statutes, it must be embraced within the terms “ new and useful art.” This we very much doubt. *126No claim is made for novelty of form or manufacture — i. e., no peculiar shaped certificate is suggested; it possesses no physical characteristics at all unlike all other written instruments designed for a similar purpose except the written and printed characters, words, and signs employed to express the meaning and intention of the parties executing the same. It is as if some one should claim novelty for proposing the terms of and the manner of executing a written contract. We think the case falls so clearly within the authorities cited in the defendants’ brief — viz, *Brown*v. *Piper,*91 U. S., 37; *Hotel Co.*v. *Lorraine,*160 Fed., 467; *Hocke*v. *New York Central R. R.,*122 Fed., 467; *Munson*v. *Mayor of New York,*124 U. S., 601; *In re Moesser,*27 C. A. Dist. Col., 307; *U. S. Credit System*v. *American Indemnity,*59 Fed., 139 — that the demurrer will be sustained and petition dismissed.

Howry, *Judge,*took no part in the decision of this case. All the other judges concur.