paid as the final payment of the note, above what was then legally due upon the note after applying the payments made thereon in liquidation of the legal portion of the note with interest." To the same effect are the following authorities: Kendall v. Crouch, 88 Ky. 199, 202; Smith v. Robinson, 10 Allen, 132; Hawkins v. Welch, 8 Mo. 490, 492; Hall v. First amount of any penalty prescribed by the statute of New Mexico. The judgment of the supreme court of the territory is, therefore, affirmed. Nat. Bank of Fairfield, 3 Neb. 99, 102; Jack- THE GATES IRON WORKS, Appt., [332 son v. Garner, 79 Ga. 415. In Wright v. Laing, 3 Barn. & C. 165, 168, which was an action to recover the penalties of the statute of usury, Abbott, Ch. J., said: "None of the payments were appropriated by either party at the time of payment. If the law ought now to make such an appropriation as the pleader has supposed in this court the count will be sustained by the proof, otherwise not. We think the law ought not to make such an appropriation. . . And such an appropriation works no prejudice to the party; it leaves him only where by his own conduct he placed himself; and in the case I have put v. DAVID R. FRASER ET AL (See S. C. Reporter's ed. 332-352.) Patents for improvements in stone crushing machines, Nos. 201,646, 237,320, 56,793, 110,397, 243,343, 243,545, 246,608, 250,656, when valid, and when not infringed. 1. The patent to Charles M. Brown, No. 201,646, of March 26, 1878, for a stone crushing machine, is a reproduction of the earlier machine patented to Rutter and is not infringed by defendant's machine. 3. 4. No. 237,320. of Feb. 1, 1881, is for a combination which includes several features not found in the machine made by defendants. The leading features of the stone crushing machine patented to Henry Pearce July 31, 1866, by patent No. 56,793, and which are found in the machine of defendants, are anticipated by the Wood machine, a prior patented invention, and by the Ostrander machine, a still older patent. The use of safety break pins for saving machinery from the strain of a sudden jar is old, and their use for such a purpose, in connection with the driving gear of a stone crushing machine, is not patentable. Defendant's use of a hard cast iron safety pin of the payment of one bill and non-pay 2. The patent to George and Albert Raymond, ment of the other, if an action for the penalties of the statute should be brought, the same principle of law would protect the defendant by applying the payment of the first bill to the legal demand, and not permitting the then plaintiff to apply it to the illegal demand, that is, to the loan and interest, although it be precisely of the same amount; because peradventure, the lender might repent the illegal bar. gain and refuse to receive the full amount of the second bill, and the law will allow him the opportunity of doing so, that he might not be 331] deemed a receiver of usurious* interest, without clear evidence that he had not only bar-5. gained to receive, but had actually received, such interest. And if the law will make this ap propriation of the payment in the two cases that I have put, in one instance, against the lender. and to prevent him from enforcing an illegal sued June 21, 1881, and No. 243,545, issued June 28, bargain, and in the other instance in favor of 1881, for improvements in stone crushing mathe lender, and to protect him from being sub- chines, were anticipated in the Brown machines, ject to a penalty for an illegal bargain only, it seems very plainly to follow that a similar apstruction and effect, see note to Dalzell v. Dueber NOTE. As to assignments of patents, their conpropriation ought to be made by law in the watch Case Mfg. Co. 37: 749. case before the court. And this, in 'effect, is only saying that where a person has two demands, one recognized by law, the other arising on a matter forbidden by law, and an unappropriated payment is made to him, the law will afterwards appropriate it to the demand which it acknowledges, and not to the demand which it prohibits." For the reasons stated, we are, of opinion that this action cannot now be maintained under the statute, and, consequently, the court below properly reversed the judgment of the court of original jurisdiction and entered judgment in favor of the defendant. It is proper to say that the questions deter mined in Barnet v. Muncie Nat. Bank, 98 U. S. 555 [25: 1801; Driesbach v. Second Nat. Bank of Wilkesbarre, 104 U. S. 52 [26: 658]; Stephens v. Monongahela Nat. Bank, 111 U. S. 197 [28: 399]; and Carter v. Carusi, 112 U. S. 478 [28: 820], do not arise here. No question is presented in the case before us as to whether the borrower, when sued for the principal debt and legal interest, may, of right, set off the 6. does not infringe the patent No. 110,397, to John H. Rusk, of Dec. 20, 1870, for a soft metal pin in a grinding mill, the use of safety pins being old. The two patents to P. W. Gates No. 243,343, is For what patents are granted; when declared void, see note to Evans v. Eaton, 4: 433. As to patentability of inventions, see notes to Thompson v. Boisselier, 29: 76, and to Corning v. Burden, 14: 683. As to distinction between inventions of mechanism, articles or products and processes; when latter patented, see note to Corning v. Burden, 14: 683. As to including process and product in same patent; separate patents therefor, see note to Evans v. Eaton, 4:433. As to what reissue may cover, see note to O'Reilly v. Morse, 14: 601. As to assignment, before issuing and reissuing pat ent: recording; when assignment transfers extended As to when assignee may sue for infringement, damages, see note to Hogg v. Emerson, 13: 824. Ject-matter: utility: what constitutes invention: pat in public use more than two years before Gates | fendants had a right to make and sell maapplied for such patents. 7. The first claim of the patent to P. W. Gates No. 246,608, of Sept. 5, 1881, for an improvement in stone crushing machines, is not an invention, and is not infringed by defendants. 8. The alleged invention in the patent to P. W. Gates, No. 250,656, of Dec. 13, 1881, for improvebination of old features present in the Brown machine made and sold more than two years before Gates applied for this patent, except the bard metal plate, which is old. ment in stone crushing machines, is for a com [No. 253.] Argued March 8, 1894. Decided May 14, 1894. APPEAL from a decree of the Circuit Court of the United States for the Northern Dis trict of Illinois, dismissing a suit in equity brought by the Gates Iron Works against David R. Fraser et al., for a violation of certain patents for improvements in stone crushing machines, which had been assigned to, and become vested in the plaintiff, and for the usual relief. Affirmed. Statement by Mr. Justice Shiras: At the March term, 1890, of the Circuit Court of the United States for the Northern District of Illinois the Gates Iron Works, a corporation organized under the laws of the state of Illinois, filed its bill of complaint against David R. Fraser, Thomas Chalmers, and Hiram H. Scoville, alleging that the said complainant was the sole owner of several letters patent of the United States, namely, No. 56,793, issued to Henry Pearce, July 31, 1866; No. 201,646, issued to Charles M. Brown, March 26, 1878; No. 237,320, issued to George and Albert Raymond, February 1, 1881; No. 110,397, issued to John H. Rusk, December 20, 1870; No. 243,343, issued to P. W. Gates, June 21, 1881; No. 243, 545, issued to P. W. Gates, June 28, 1881; No. 246,608, issued to P. W. Gates, September 5, 1881; and No. 250.656, issued to P. W. Gates, December 13, 1881; and which said letters patent, and the inventions and improvements therein described, had, by assignments in writing, prior to the commence ment of the suit, become vested in the complaint. The bil further alleged that the defendants were making, using, and vending machines embodying the said inventions, in disregard of the rights of complainant, and prayed for the usual relief. The defendants filed a joint and several answer, admitting that the letters patent mentioned in the bill have been issued, but 3341*denying that the persons to whom they had been granted were the original and first inventors of the several inventions described and claimed therein, or that the defendants had infringed, or were infringing, the rights of the complainant in the said inventions. The answer further averred that the defend- | ant Hiram H. Scoville had, prior to the filing of the application by Charles N. Brown for a patent for the improvements described and claimed in said patent No. 201,646, dated March 26, 1878, by and with the consent of the said Brown, made and put into use two machines containing the inventions secured by said patent No. 201,646, and that the de chines containing said inventions by virtue of an oral license given by Brown to Scoville before the application for said patent was filed. The answer further alleged that P. W. Gates was not the original and first inventor of the improvements described in the several patents Nos. 243.343, 243, 545, 246,608, 250, 656; but that substantially those improvements were invented by said Charles N. Brown before the supposed invention thereof by Gates, and were embodied and exemplified in certain full-sized working machines built by the said Hiram H. Scoville, which were publicly used more than two years before Gates made application for any one of the said four patents. The answer further stated that Henry Pearce was not the original and first inventor of the improvement patented by said patent No. 56,793, dated July 31, 1866, and that substantially the same thing was shown and described in letters patent No. 28,031, issued to one G. H. Wood, dated April 24, 1860. Subsequently the defendants, with leave of court, filed the following amendment to the answer, to wit: "Letters patent to J. F. Ostrander, granted and dated April 25, 1846, No. 4478, 'grain mill.' "And as to the patent mentioned in said bill of complaint as having been granted and issued to J. H. Rusk, Charles M. Brown, G. and A. Raymond, and the four patents to P. W. Gates, numbered respectively 243,343, 243, 545, 246,608, and 250,656, they further aver, upon information and belief, that the *said Brown, Raymond, Rusk, and Gates!335 were not the original and first inventors of the things patented by or to them respectively, and that substantially the same things were patented by or shown and described in the following letters patent, to wit: "As to patent to H. Pearce, No. 56,793. "Letters patent to J. F. Ostrander, granted and dated April 25, 1846, No. 4478, for improvement in grain mill. "Letters patent to G. H. Wood, granted and dated April 24, 1860, No. 28,031. "As to patent to J. H. Rusk, No. 110,397. "Letters patent to A. C. Ellithorpe and I. Scoville, granted and dated November 23, 1858, for improvements in machine for breaking stones, etc., No. 22.113. "Letters patent to Hiram H. Scoville, granted and dated May 26, 1868, No. 78,332, for improvement in stone breaker. "As to patent to C. M. Brown, No. 201,646. "Letters patent to Charles Tripp, granted and dated November 10, 1857, No. 18,610, for improvement in grinding mill. "Letters patent to Conrad P. Wagner, granted and dated January 30, 1866, No. 52,347, for improvement in quartz mill. "Reissue letters patent to James W. Rutter, granted and dated September 7, 1869, No. 3633 for improvement in ore crusher. "As to chilled iron, V. I. Knight's American Mechanical Dictionary, published in New York, 1874, p. 537, title 'Chill.' 66 'As to patent to P. W. Gates, No. 243,343. "Letters patent to L. Fagin, granted and dated October 30, 1866, No. 59, 201, for im- | the brief of the plaintiff in error the followprovement in hanging millstones. "Letters patent to S. N. Taylor, granted and dated February 27, 1866, No. 52,908, for improvements in knuckle joint. "As to patent to P. W. Gates, No. 243, 545. "Letters patent to Charles Tripp, granted and dated November 10, 1857, No. 18,610, for improvement in grinding mill. ing description of the final and perfected form of the machine, and which is claimed to embody the various inventions and improvements covered by the several patents: "The inventions of these various patents can be more readily understood by first un derstanding the construction of this type of stone crushing machines which has become to be known as the gyratory type of stone crushers. This name comes from the fact that the crushing cone is carried on a vertical shaft which has its bearing at one end in the "Letters patent to Conrad P. Wagner, 336] granted and *dated January 30, 1866, for improvement in quartz mill, No. 52,347. Letters patent to Thomas Varney, granted and dated April 9, 1867, No. 63, 675, for im-axis of the conical enclosing case which surprovement in quartz mill. 66 As to patent to P. W. Gates, No. 246, 608. "Letters patent to H. Pearce, granted and dated July 31, 1866, No. 56,795, for improve. ment in quartz mill. "As to patent to P. W. Gates, No. 250,656. "Letters patent to P. W. Gates, granted and dated June 28, 1881, No. 243. 545, for improvement in rock or stone breaker. "Letters patent to Daniel Hughes, granted and dated February 20, 1866, No. 52,716, for improvement in quartz crusher, etc. "Letters patent to L. Fagin, granted and dated October 30, 1866, No. 59,201, for improvement in hanging millstones. "English letters patent to Claude Marie Savoye, No. 6195 of 1831, for improvement in machinery for grinding grain and other substances. "The defendants, further answering, say upon information and belief that some of the older ones of complainant's said patents show and describe improvements which are claimed in other and later of the complainant's said patents, and they further say that as to the said several patents by them herein and hereintofore mentioned are shown and described devices, parts, or combination of parts that are substantially the same as the devices and combinations set forth in other patents than those to which they are specifically named as relating, and that any and all of said patents will be referred to as containing the substance of any or either of the complainant's said patents as may be deemed appropriate." The cause was put at issue, a large amount of evidence taken, and after argument on March 31, 1890, the court below dismissed the bill at complainant's costs. From this decree an appeal was taken to this court. Mr. Lewis L. Coburn for appellant. Messrs. L. L. Bond and C. E. Pickard for appellees. 337] *Mr. Justice Shiras delivered the opinion of the court: The patents that are before us for consideration are for improvements in stone crushing machines. We shall preface our discussion of the questions that arise by adopting from 736 rounds the crushing cone, while the bearing of the other end of the cone shaft is eccentric to the axis of the enclosing or surrounding conical cylinder which surrounds the crushing cone. This vertical shaft which carries the crushing cone of the machine is loose in its bearings, but the end of this shaft which is eccentric to the axis of the enclosing con ical case or cylinder of the machine is carried around in a circle by being placed in an eccentric box in a gear wheel that is revolved on its center, which center is in the axis of the enclosing case or cylinder of the machine. The shaft which carries the crushing cone describes in its movement, when the machine is in operation, a conical orbit around the vertical axis of the enclosing conical cylinder of the machine. The stone to be crushed is dumped into the top of the machine between the crushing cone and the cylindrical conical case or shell which surrounds it, the cone shaft is carried around in its conical orbit, the crushing cone and impinges the ore or rock between it and the surrounding case or cylinder, and crushes it. The shaft or arbor of this crushing cone being loose in its bearings, it does not rub or grind the stone, but simply cracks it into finer pieces, and then impinges the next pieces of ore or rock, and so on around the entire conical *orbit, the space between the [338 crushing cone and the enclosing conical case or cylinder opposite of where the ore or rock is being cracked or broken becomes greater by reason of the crushing cone being carried to the opposite side of the enclosing case or cylinder, and the broken rock falls down into a narrower space, and when the crushing cone comes around again, it is again broken, until it is sufficiently fine to pass out at the bottom of the space between the crushing cone and its enclosing case or cylinder. "This construction of ore crushers, or stone breakers, as they are frequently called, is a continuous feed machine, the stone being constantly fed in at the top of the machine in a coarse state, and continuously passes out at the bottom of the crushing space. broken to a certain definite size, which is fixed by an adjustment of the crushing cone in the enclosing case or cylinder." This form of machine is illustrated in the following drawing: 153 U. S. Vertical Sectional View of Machine. 339] *In this cut, A represents the conical enclosing casc orcylinder which surrounds the crushing cone B. which is rigidly attached to and is carried on the vertical shaft or arbor C. The top or upper end of the arbor C has a bearing in the chilled section box D that is held in an open spider frame E, this bearing being exactly in line of the axis of the enclosing conical case or cylinder A. The bottom or lower end of the shaft Chas its bearing in what is termed an eccentric box, F, which is placed in the gearwheel G. This eccentric box is placed at one side of or eccentric to the vertical axis of the enclosing case or cylinder A. The gear wheel G is supported on the base of the machine, so that the center of its hub is exactly in line with the vertical axis of the enclosing conical case or cylinder A. and when it is revolved it carries the lower end of the shaft or arbor C, around in a circle, and consequently continually brings the conical crushing cone B in closer prox. imity to one side of the enclosing case or cylinder to impinge the stone contained in the enclosing case or cylinder, and that impingement is continually changing from one place to another throughout the entire circle, and the space opposite of the place of im pingement between the crushing cone and its enclosing case or cylinder is wider than where the impingement of the ore or stone is taking place. This particular motion of the crushing cone and its shaft or arbor has been termed a gyratory motion. The shaft or arbor is never vertical, and one of its bearings is in an eccentric box placed eccentric to the bearing of the other end of the shaft or arbor, and eccentric to the axis of the enclosing case or cylinder. The crushing cone and its shaft or arbor describes at each revolution of the geared wheel in which the eccentric box of the shaft or arbor is placed, a conical orbit. It is claimed by the plaintiff in error that this form of machine is the composite result of the application of the improvements described in the patents set up in the bill To test the soundness of this claim it will be necessary for us to look into the condition of the art prior to the issue of the earliest patent owned by the complainant, that is prior to July 31, 1866, the date of letters patent No. 56,793, granted to Henry Pearce. *The first patent to which our atten [340 tion has been particularly directed is that issued April 25, 1846, to Jonathan F. Ostrander, and numbered 4478. It is a claim for an im provement in grinding mills, and the nature of the invention is said to consist in "making the surfaces of the stones. or metallic plates, between which the material is ground, the one convex, the concave, and also in giving the movable plate or stone a compound motion, consisting of, firstly, an oblique gyrating motion of its axis around the axis of the fixed plate; and, secondly, a rotating motion around its own axis." The material to be ground is fed to the mill by being placed in a cup-shaped opening in the top of the shell that encloses the machine, and the ground material is received in a gutter surrounding the base. We here perceive the double motion, that is. "the revolving and rolling motion," which is a feature of the Pearce patent, and the operation of the two machines is similar in that. in both, the pestle alternately closes upon and recedes from the sides of the outer shell, so that any substance or material to be ground is thereby crushed, and passes downward to the lower part of the machine, where the space gradually lessens, and is crushed finer. The patent No. 28,031, granted April 24, 1860, to George H. Wood, was for a machine for crushing stone, quartz, ores, or any other substance capable of being reduced or pulverized by pressure. The specification describes a machine having an outer shell or case and an interior cone or pestle, which has an eccentric motion. We shall hereafter show that the machine made by the defendants does not contain the distinguishing features of the Pearce patent. But we have briefly described the inventions of Ostrander and of Wood to make it to appear that machines composed of an outer shell or case enclosing an outer cone or pestle, and operating on the material to be crushed by an eccentric motion, were known to the art. Letters patent No. 88,216, dated March 23, 1869, reissue No. 3633, dated September 7, 1869, were granted to James W. Rutter for an improvement in ore crushers, and in which it is stated that the invention related to that class 341] of crushing and* grinding machines in which a conical grinder or crusher, with concentric and eccentric bearings, is operated within a stationary upright cylinder or chamber, or in which the crushing chamber is made conical and the crusher straight. There are other special features contained in this patent not relevant to our present inquiry, but this patent does provide for grinding ore or other material introduced at the upper or top end of the machine, and subjecting it to a continuous crushing and grinding force till it reaches the bottom, where it is discharged into a gutter or annular space. With this brief view of the state of the art we shall now examime the letters patent upon which the complainant directly relies. The first is that which was granted to Charles M. Brown, No. 201,646, dated March 26, 1878. The object of this invention is described as being "to furnish a strong, compact machine, in which large pieces of ore may be broken into smaller fragments by the regular continuous movements of the mechanism, and also in which the power used for crushing the ore shall be applied in a more advantageous manner than has been done heretofore in machines designed for this purpose." The specification describes a machine composed of an outer shell or case, with an opening on one side for the egress of the crushed ore. Within this outer shell is an upright shaft or spindle, whose upper end is pivoted within a circular cap or cover, which is accurately fitted within the top of the outer shell. The lower end of the shaft is pivoted in a bearing in the hub of a bevel gear, and this bearing is placed in an eccentric position with reference to the center of the hub. The end of the shaft rests on a loose plate or button, which is raised or Jowered by an adjusting screw, which passes through the lower part of the hub in a line with the axis of the shaft. The upper part of the shaft, below the place where it is pivoted in the cap, is contracted into a neck, and below this neck it is enlarged in the form of a pyramidal section, so as to receive a conical breaking head, which is accurately fitted on the shaft. The outer shell or case is lined with a hard or durable material, made in sections so that they may be readily *replaced by similar pieces when they [342 are worn out by use, and their wearing sur faces may be either smooth or corrugated. The ore is fed into the machine through openings in the head, and falls into the space between the outer shell, lined as before mentioned, and the breaking head. When the driving mechanism, which is not claimed as a part of the invention, is set in operation the breaking head receives an eccentric gyratory motion from the eccentrically placed bearing in the hub of the gear below, and advances successively towards every portion of the outer shell, crushing the ore that is contained between two surfaces. As the breaking head advances on one side it recedes on the opposite, thus allowing the partially broken ore to fall still lower in the space between the shell and the breaking head, to be again and again acted upon until it is reduced to fragments sufficiently small to pass through an opening at the bottom of the chamber. Here it falls upon an inclined plate and passes out of the machine through the opening in the side of the shell. The claims of the inventor were substantially for the combination of the gyrating spindle; the conical breaking head with the breaking interior surface of the shell; the sliding socket bearing in which the upper end of the shaft operates; the eccentric bearing at the lower end of the shaft, and the adjusting screw which raises or lowers the shaft. His fourth claim was as follows: "In our ore breaking machine, a shell or case frame, enclosing at its upper part a conclave breaker, and provided with an oblique trough, integral with the frame, the inner edge of which extends upwards and within the conclave base of the breaker all around, and having a low-down discharge at one side." It will be seen that, in its general features, this machine is a reproduction of that of Rutter. In both we find the outer shell; the shaft to which a gyrating motion is given by the eccentric bearing at the lower end, and which shaft works at the upper end in a ball and socket joint, and the crusher or breaking head of a conical form. The operation of the machines is similar in that the material to be crushed is fed into the machine at the top, and passes down between the inner surface of the shell and the breaker, and the gyrating motion*of the shaft causes the breaking[343 head to so operate that as it approaches the shell on the one side it departs from the other side, thus permitting the partially broken ore to fall further down in the chamber, and thus to be exposed over and again to the crushing operation of the breaking head. It is true, however, that the Rutter machine operates differently from that of Brown's, because its crusher or breaking head does not revolve on its own axis. There are also some minor features in which the machines differ, but such minor features of the Brown machine are not found in the defendant's machine. The next patent in chronological order, set up in the bill, is that numbered 237,320, granted February 1, 1881, to George Raymond and Albert Raymond. It claims to cover certain improvements in that class of mills |