delivered the opinion of the court.
It will be seen by reference to the eleventh section of the' act of 1861; that if the second claim is patentable under'this section, it must be a claim for an original design or impression, or ornament, or pattern, or picture, and the like,-wholly irrespective of the means of producing it. The patent is simply for the-design, &c., itself.
In order to understand the full meaning of- this second claim, it will be useful to settle the meaning of the first, as the two ate intimately connected.
The first, as' we have .seen, is for constructing the bed for the elastic material used in graining machines "in the form shown and for the purposes specified. The patentees describe it as a box or bed, and which may be constructed of wood or iron, or of any other suitable material. -This box or bed is made for the purpose of holding the elastic, material, whether of rubber or leather, or the compound of glue and molasses,- which is preferred. Now, the second claim is for arranging the elastic material, when placed in this box or bed, whether curved or rectangular in form, “ in a series of distinct staves or designs,” for'the purpose specified, that is, for the purpose of graining pails in the variety of colors or figures described. The elastic bed pi ay be arranged, as is stated in the specification, so as to present one continuous or uniform design, or it may be arranged in blocks or staves, each of different designs, so that the vessel shall present- the appearance of different kinds of wood, as rosewood, *140oak, walnut, and others. It may also be constructed of separate pieces or blocks, as shown in the drawing, or the • material may be a single united mass, impressed by different designs arranged in staves, so as to produce -the same effect as when constructed in separate blocks. The two claims, as we- see, are closely connected, and.each essential to the complete construction of the instrument or apparatus, which, when put into practical operation by the contrivances pointed out in the specification, can accomplish the desired result, which result is the graining of the exterior body of the pail with a variety of colors and figures.
The learned counsel for the defendants below insists that this second claim is only an arrangement of designs, and, in a limited sense, he is no doubt right, but in its connection with the, first claim, and with the machine for transferring' the design to pails, it is more; it is a part of the machine or instrument, and an indispensable part; it is the elastic bed of rubber, or of leather, or compound of glue and molasses, of any arranged figure or design, that constitutes an element in the machine, and which, with the curved box and contrivances for working the instrument, produces the desired result. The figure or design is but incidental, and, as such, has no other protection than that which the patent secures to the inventor of the machine. The right to the use of the machine carries along with it the right to use the designs.
The arranged figure in the elastic bed is not the one protected by the eleventh section of the act of 1861; that is the one which is transferred to the pail or wares, where its beauty is first visible to the eye. While it remains in the elastic material it exhibits no more beauty than if engraved on stone or metal.
It may be that the inventors of the machine for impressing figures or designs upon pails or other wares would not be protected from using figures or designs, the right of property in which had been secured to the original inventor under this eleventh section, but they may clearly use any and all not thus protected. The machine in. question is invented for reducing to practical use these figures and *141designs, and will make them profitable to the original inventors or owners of them, if they choose to employ it.
We are of opinion that the first question should be answered in the affirmative and the second in the negative.