BINGER MANUF'a CO.
ceiver, the facts remain that they avail themselves ot Beli's discovery that undulatory vibrations of electricity can intelligibly and ac· curately transmit articulate speech, as well as of the proc6sswhich Bell invented, and by which he reduced his discovery to practical nse; that they also copy the mode and apparatus by which he creates and transmits the undulatory electrical vibrations; corresponding to those of the air; and that in the plate charged with electrioity, which they have substituted for the magnetic coil in the receiver, the charge constantly varies in accordance with the principle which Bell discovered, and by means of the undulatory current caused by the process, and in the mode which he invented and patented. infringed Bell's patent by using his The defendants have general process or m,ethod, and should be restrained by injunction from continuing to do so; and it is unnecessary, for the purposes of this decision, to consider whether the defendants' apparatus is a sub· stantial equivalent of the plaintiff's, or whether it is an improvement for which Dolbear might himself be entitled to a patent. Temporary bj unction
(Oircuit Oourt, D. Ma88acn/ulJ6ttB. February. 7, 1883.)
PATENTS POR INVENTIONS-REISSUu..,..ENLARGElMENT OF
Where the reissue covers only claims which do not appear on the face of the original, it is invalid.
If an alteration and enlargement of the scope of a patent by reissue is In any case allowable, an unexplained delay of monlthan five yeara lntaking out the reissue is an unrcasonllhle delay. .
In Equity. Oausten Browne, for plaintiff. E. A. West, for defendant. Before LOWELL and NELSON, JJ. NELSON, J. This is a suit for infringement of reissue patent No. 4196, granted to the plaintiff as the assignee of James Bolton, the original inventor, for an improved tuck-marker or creaser for sewing. machines. If the plaintiff's patent is valid, the defendant's tuck-marker is a. plain infringement of it. But we are of opinion that the patent is
invalid under the rule established in Miller v. Bridgeport Brass Go. 104 U. S. 350. The original patent, No. 46,871, was granted March 21, 1865; the reissue was granted December 13, 1870, five years and nine months after the date of the original. If any invention claimed or described in the reissue is identical with either of the claims in the original, it is to be protected, under the recent decision of Mr. Justice GRAY in Gould v. Spicer, ante, 344. But we are of opinion that the reissue covers only claims which do not appear upon the face of the original. The specification of the original patent states:
"This invention consists in a novel mode of constructing and operating Imarkers or creasers to be used on sewing-machines. being composed of only two pieces hinged together so as to make one instrument, and so attached to a. presser-bar having a positive vertical motion as to be operated at every movement of the feeding devices. The drawing represents the marker in position on the table and attached to the presser-bar of a sewing-machine."
After describing further the device, the specification proceeds:
"The arm, b, [the upper arm of the marker,l carries an adjustable bracket,
k, lJy passing through a vertical slot cut therein, as seen in figure 2, and in which it is free to slide. The bracket, k, extends at right angles from the arm, b, to-
wards the plate of the presser-bar of a sewing-machine, and it is to be adjustably attached to the inside of the presser-bar by means of an open slot, 8, in said bracket,fitting over the shank of a screw which takes into a threaded hole made in said presser-bar. The bracket. k, can be attached to the presserbar in many cases by means of the same screw which secures the presserfoot to the bar. The open slot, 8, in the bracket, k, enables me to fix it any desired height on the presser-bar, according to the lateral adjustment of the marker on the bed-plate for the width of tuck. When the bracket, k, is fixed to the presser-bar, the arm, b, of the marker, being carried in said bracket, reciprocates with the presser-bar; that is, when the marker is used on a sewingmachine which has a reciprocating feed, so-called, the said arm, b, moving freely in its pivot, c. The material being SAwn lies upon and moves over the arm, f, [the lower arm of the marker,l and at every advance of the feed the shoe, d, of the marker is raised off the material with the rising of the presser. bar, and afterwards borne down by the said bar and pressed upon the material while the neeule is IDa.king another stich, the material being crimped between the slot, 0, in the shoe, d, and the raised edge, n, of the arm, f, thus marking the place for the tuck step by step, as the sewing or the perforation of the material proceeds on a line parallel with the seam or perforations, by means of the rising and falling of the presser·bar."
In describing the manner in which the width of the tuck is determined, the specification says:
SINGER MANUF'G 00. V. GOODRICH.
.. When a narrow tuck is to be made, the position of the joint, k, of the arm, b, is moved to the right a suitable distance, and the extent of the reciprocating movement of the -shoe, d; or, in other words, the extent of its vibration is correspondingly lessened according the distance of the shoe from the presserarm. The movement given to the shoe when it is near the presser-bar, as when it is marking for a narrow tuck, is sufficient for successful operation, because the material which is being sewn is held and advanced smootbly beneath the shoe for a considerable distance to one side of the line of sewing, by the joint operation of the feeding devices and the needle. But when the tuck is to be wide, the extent of the vibrating movement of the shoe needs to be greater, because that portion of the material which lies at a considerable Ilistance at one side of the seam has a tendency to drag or lag behind the advance of the seam, unless it is held extended and'smooth by the hand of the operator, or by some other means. It is therefore necessary that the shoe be raised sufficiently at each movement of the feed to clear the material. This, it will be seen, is effectually accomplished by my invention; the extent of vibration of the shoe being increased and diminished by the adjustment of the jointed arm, and the consequent lengthening and shortening of the distance between the shoe and the presser-arm,"
The specification contains this disclaimer:
" I disclaim marking a tuck or line on material being !!ewn nn chine by means of the needle-bar, as shown in the :Fuller on the fifth day of June, 1860:'
!lewing-mato H. W.
The claims of the original patent are as follows: "(1) 'rhe tuck-marker, A, for use with a seWing-machine, made and operated substantially as above described. (2) I also claim marking parallel lines for tucks, or for the seaming or perforating of material on a sewing-machine by means of a marker, which is operated by a presser-bar haVing a positive vertical motion, substantially as above described," In the Fuller patent, the upper arm of the marker derives its motion from and vibrates with the needle-bar, and the invention is stated to consist "in a vibrating marking instrument or instruments that move in unison with the needle, so as to crease or mark the cloth at a given distance or distances from the needle." One of the claims of· that patent is "forming one, two, or more creases in 'cloth by means of markers on opposite sides of the cloth, one of which is connected with the bed of the ahd the other operates simultaneously with vibrations of the needle in a sewing-machine." It is thus apparent from the foregoing that a material and essential part of Bolton's original invention in operating the upper arm of the marker in unison with and by means of the movement of the presser-bar of a sewing-machine. In the reissue the specification contains this statement:
" In order that the two creasing instruments may be intermittently separated and caused to approach each other, the upper one, b, is connected with some reciprocat'ing part of the sewing-machine; and when said .machine has a fourmotion reciprocating feed, the part that I prefer to make the connection with is the shank, B, of the presser-foot. or the prt'lsser-bar, as it is sometimes called. In order that the tuck-marker may be readily adjusted to different positions, notwithstanding its connection with the reciprocating part of the sewing-maof a slotted bracket, k, having a slot, chine, the connection is made by 0, of sufficient size to permit the arm, b, of the movable member, d, to slip readily througl1 it."
The reissue contains two claims:
(1) The creasing tuck-marker hereinbefore described, consisting substantiallyof the spur, the fork, and thestock,all permanently connected, so as to constitute a removable attachment to sewing-machines. (2) The combination of tl).e arm of the movable meJ;llber of a tuck-marker with a movable bracket, by which the said arm may be connected with a reciprocating member of the sewing-machine, substall,tially before. set forth.
From a comparison of the specifications and claims of the two patents, it will be seen that the inventor, in the first claim of the reissue, either leaves out the .presser-bar movement as an essential part oBhe improvement, and claims the movable attachment as & separate mechanism, or else, by reference to the specification, claims & tuckmarker moving in. unison with, and by means of, any reciprocating part of the sewing-machine, including both presser-bar and needlebar; while in the second he boldly-lays claim to combination of the with a movable bracket connected with any reciprocating part of the sewing-machine, whether presser-bar or ,needle-bar. The operation of the upper arm by the presser-bar movement thus ceases to bea material part of the invention, and the reissue claims and describes a. different invention from the original. If such an alteration and enlargement of the scope of I;L patent by reissue is in ,any case allowable,an unexplained delay of more than five years in taking out the reissue must be deemed to be unreasonable, under the V Bridgeport Brass Co. 8upra} and as neither of the rule of ·claimsin the reissue is identical with those of the original, the case IS not brought within the rule of Gould v. Spicer,8upra. Bill dismissed, with costs.
DOA.NE & WELLIN(}TON
CO. V. SMITH.
& WELLINGTON MANUP'G CO.
lUirc'Uit Oowrt, S. D. New Y01'k. December, 27,1882.)
PATENTS FOR INVENTIONS-NEW CoMBINATIONS-REISSUE VOm-INTRODUC. TION OF NEW MATTER. '
If the claim in a reissue of a patent for a new combinati(\n of known parts be substantially the same as that of the original, but expand the scope of the invention by assigning additional uses to cllFtain parts which are prominent features of another patent, made subsequent to the orilPnal, so that one skilled in the art, constructing accordip.g to. its term,!J;would some things described in the original and substitute others, th.e reissue, not being a correction provided for and allowed by law, but an alteration, is invalid for showing It different invention; though if the, terms were so changed as not to avoid it on this ground, it might be void for the enlargement after the lapse of time.
A suit for infringement cannot be maintained on such an invention against a party constructing a different arrangement, not involving all the parts the other used. ' 3. SAME-REISSUB No. 8,784 Vom. Reissued letters patent J:i[o. 8,784. for an improvement in vapor-burners, MId invalid.
Worth Osgood, for orator. James P. Foster, for defendant.
upon reissued'letters patent No; 8,784, dated July 1, 1879, granted to Christoph Wintergerst, assignor to Doane & Wellington, on an application, dated April 30 . 1879, upon the surrender of the original letters No. 82,262, dated September 15, 1868, for an improvement in vapor-burnets. There are defenses set up that the reisBtte is too broad for the briginal and void; and that the defendant does not infringe.: The original patent was for the arrangement of a reserV'oir for the fluid, a tube to conduct the fluid to the burner, a burner regulated by a needlevalve operated by a thumb-screw, a ring over the burner· to hold a thumb-screw projecting into it over the flame to divide the flame, and a winged plate behindihe flame and connecting, with the burner, acting as a reflector; and as a generator of gas by conducting heat from the flame to the fluid by way of the burner. Each of these parts is conceded to: have been old; and there was only one claim which was fOl: the arrangement merely. ' ;Thereis no description of the ring exc'ept thatit is over thehdle in the burner for it, which the escape of the gas to the flame with the divides the flame, and no office is assigned to it except' to support the screw where it would divide the flame; and none of the plate,
J. This suit is