GAGE V. KELLOGG.
VACUUM OIL CO.
(Oircuit Oourt, N. D. New YO/·k.
March 20, 1885.)
void for want of novelty.
After the term of a patent has expired, it is too late to file a disclaimer.
J. For the reltsons stated orally at the hearing of this canse the second and twelfth claims of the patent in Buit (No. 68,426, granted September 3, 1867, to Hiram B. Everest, assigned to complainant) are clearly void for want of novelty. Inasmuch as no disclaimer has been filed, it is unnecessary to consider the validity of the other claims. After the term of a patent has expired it is too late to file a disclaimer. The suit cannot therefore be maintained, and the bill is dismissed.
May 29, 18B5.)
«(Jircuit Oourt, N. D. New Y01'k.
PATENTS FOR INVEN'frONs-CLAIM FOR MACHINE AND PROCESS FOR
UsmG IT. There cannot be in the same patent a claim for a machine and a claim for the process of using that machine.
2. SAME-REISSUE VOID-ENLARGEMENT OF OLAIMS, Reissued letters patent No. 8,615, dated March 1, 1879, Rnd granted to William
B. Fisher for an improvement in seed-steaming apparatus, expand the claims in the original patent, and are void. Reissue No. 8,615 compared with defendants' machine which is used to moisten meal, and not to dry or clean the selld for storage or shipping, and held not infringed.
John Dane, Jr., for complainant. ,John W. Munday, for defendants. COXE, J. 'rhe complainant, as assignee, seeks by bill in equity to restrain the infringement of reissued letters patent No. 8,615, dated March 11, 1879, and granted to William B. Fisherfor an "Improvement in methods and apparatns for treating seeds." The application for the reissue was filed February 19, 1878. The original pat· ent, No. 129,018, is dated July 16, 1872, and is for an "Improvement in seed-steaming apparatus." The defendants contend, among other defenses, that the reissue is void, its olaims having been expanded after a delay of five years and seven months. The claims
are placed below side by side. not found in the other.
The italics in each show the matter
Reiss'u,e. I. The herein described method of treating seed, consisting in allOWing it to flow downward at'ound a central perforated steam reservoir, and forcin,ll jets of steam from said reservoir outward through the mass of seed, the flow of said seed being regulated by stirrers, substantially as setfol'th. 2, The combination, with a seed receptacle provided with a perforated steaming device, at'ranged within or below the material operated upon, of deVices for stirring it'! contents at will, said devices operating upon a platform, substantially as and for the purposes set forth. 3. In combination with a seed t'eceptacle for holding the seed while bein,ll steamed, means for directing the steam into said seed, and horizontally rotating b"tirrers adapted to regUlate the flow of said seed, substantially as set forth. 4, An appa1'atus for treating oleaginous seed by steam, consisting of a reeeptacle adapted to recefve and retain the seed at will, a steaming device adapted to be surrounded by said seed and e,ject steam in dijfet'ent directions otdwardly from within the mass, and rotating stirrers, substantially as described, whereb?! said seed may be thoroughly pel'meated by said steam, Imbstantially as and for the purposes set forth.
Original. 1. The combination of the hopper, H, perforated conical stearn-coil, B, jacket, 0, shaft, D. and rotating arms, a 0, cat'rying scrapers, E E, constituting an improved apparatus for treating oily seeds, as and for the purpose het'ein set forth. 2. The improved method of cleaning and drying oleaginous seed by feeding the same over the inclined surface of a perforated conical steamcoil, substantially in the manner described.
The first claim of the original, which is for the apparatus, contains the following elements: First, the "hopper;" second, the "perforated conical steam-coil ;" third, the "jacket';" fourth, the "shaft;" fifth, the "rotating arms;" sixth, the "scrapers;" and, seventh, (construing the patent liberally,) the "bed," "base," or "table." For this claim the reissue substitutes three indefinite and nebulous claims,-the second, third, and fourth,":'-each enlarging and expanding the scope of the original. In the second claim the "hopper," "perforated conical steam-coil," "jacket," "rotating arms," "scrapers," and "table" are all discarded, and in their places appear "a perforated steaming device," "a seed receptacle," and "devices for stirring its contents at will, said devices operating upon a platform." It will be observed that as these devices stir the contents of the seed receptacle they must necessarily
be so located that they can perform this function. In the drawing they are placed outside of and below the hopper. In the original they are not described as doing the work of stirrers. The third claim is even more sweeping in its terms. It deals with a combination having three elements: A "seed receptacle for holding the seed while being steamed," "means for directing the steam into said seed," and "horizontally rotating stirrers adapted to regulate the flow of said seed." The fourth claim is hardly less ambiguous. It is for a "receptacle adapted to receive and retain the seed at will;" "a steaming device, adapted to be surrounded by said seed, and eject steam in different directions, outwardly, from within the mass;" and "rotating stirrers." In the so-called "process claim" the method of "cleaning and drying oleaginous seed" becomes in the reissue a method of "treating seed." A manufacturer, therefore, who, like the defendants, is engaged in moistening linseed meal for the press is as much within this claim as one engaged in drying or cleaning. The only attempt, either in the testimony or the brief, to defend the patent from the attack based upon the expansion of the claims, has reference to this first claim of the reissue. The attention of the complainant's expert witness was called to it, and he expressed the opinion that it is not broader, but narrower, than the original, for the reason that it is limited bv the use of the words, "the flow of said seed being regulated by stirrers." His silence with reference to the other claims is suggestive. Even if this theory of the witness were correct, it would still be for a different invention. But is it cor· rect? The patentee himself evidently understands that this claim is only for the process of treating seed by the appamtus, and the whole thereof, described in the patent. He says: "I do not wish to be understood as claiming, broadly, the art of treating seed by steam; neither do I wish to be understood as claiming, broadly, all mechanism with which steam may be used for treating oleaginous seed, irrespective of the construction, arrangement, and operation of the same, as I am aware that steam has been employed heretofore for the purpo::;e of treating seed." In the original and in the reissue he seeks to secure the method of using the apparatus described in each respectively. The difficulty is that in the original the description is narrow and specific, in the reissue it is broad and general. It is quite evident that no one would infringe the original who did not use a perforated conical steam-coil, or its equivalent, which, in the description, the drawing, and the claims, is made an element, and an essential element, of the invention. It is equally clear that when the inventor, in the reiss11,e, speaks, for instance, of "means for directing steam into said seed," he uses language broader and more generic in its scope and meaning than is used in the original. A mechanism might infringe the claims of the reissue, and be entirely
outside of the claims of· the original. For a steaming device," "a central perforated steam reservoir," etc., many equivalents I'lUggest themselves, which would not occt.l)Y such a relation to a "steam-coil." In short, for the apt terms and perspicuous etatement contained both in the description and the claims of the original patent, obscure and general language has been substituted. In no case has a word of a more limited meaning been employed, but in almost every instance the reverse is true. In studying the reissue the conviction is forced upon the mind that the inventor had before him his own and other machines, when drawing its specification, and that he endeavored to cover them all by an ingenious and clever use of words. Had the decision inMiller v. Brass Co. 104 U. S. 350, been announced at that time it is safe to assume that so venturesome an undertaking would not have been attempted. The language of Coon v. Wilson, 30 O. G. 889, S. C·.5 Sup. Ct. Rep. 537, is applicable. The court say:
"In the present case, there was no mistake in the wording of the claim of the original patent. The description warranted no other ciaim. It did not warrant allY claim coYering bands not short or sectional. The description had to be changed in the reissue, to warrant the new claims in the reissue. The description in the reissue is not It more cle,lr and satisfat:ltory statement of wbat is described in the original patent, !Jut is a description of a different thing. so ingeniously worded as to cover collars with continuous long bands, and which have no short or sectional bands."
The conclusion is therefore reached that the reissue is void under the doctrine so often annonnced by the supreme court, and which has been reaffirmed as lately as May 4, 1885, in Wollensak v. Reiher, 5 Sup. Ct. Rep. 1132. . But irrespective of these considerations the inquiry is suggested, with reference to the first claim of the reissue, can there be in the same patent a claim for a machine and a claim for the process of using that machine? I have reached the conclusion that there cannot be, with some hesitation, for the reason that the qU6stion has not been argued by counsel, and yet I am unable to understand how the complainant can a.void the rule enunciated in the following cases: MacKay v. ,lackman, 12 FED. REP. 615; Brainard v. Cramme,,Id. 621; G08S V. Cameron, 14 FFm. REP. 576; Hatch v. lJ:lojJitt, 15 FED. REP. 252; New v. Warren, 22 O. G. 587; Corning v. Burden, 15 How. 252. But, in any view, the defenrlants do not infringe. Their machine is used to moisten meal, not to dry or clean the seed for storage or shipping. It is doubtful whether the apparatus described in the complainant's patent could be used at all with moistened linseed meal. The experiment has not been tried, as no machine precisely like the patented apparatus was ever built or operated, and the testimony seems, practically, to be unanimous that the,meal would clog in the space between the jacket and the coil, and soon cease to flow. The defendants have no conical steam-coil or central reservoir. There is no flowing down of the seed around a perforated steam reservoir while being sub-
TOMKINSON V. WILLt!JTS MAliUF'G CO.
jected to the action of the steam. There are no adjnstable stirrers', performing the functions of complainant's stirrers, and the flow is not regulated by their action. Nor can it be said, rernembering that an equivalent must perform the same function in substantially the same manner, that for these elements mechanical equivalents are used. 'l'ake, for illustration, the lower part of the seed receptacle. In the description the inventor states as follows:
"The lower part of the seed receptacle, (represented at 0, ) adapted for partially confining the seed and steam, when the softening and moistening process is required for pressing or other purposes, may be removed, and a perforated or screen-jacket suustituted in lieu thereof. By the employment of the latter the steam may be forced directly through the mOVing seed and screen-jacket, in such a manner as to cleanse it, and remove and carry away all impurities and excess of moisture previously contained therein."
It is said that for this the steam-jacket of the defendants (the sides of theidub or kettle are made double and filled with steam) is an equivalent; but the defendants' jacket does not perform the same functions as the jacket O. Certainly it does not perform them in substantially the same way. If a curb were placed around complainant's table the defendants' jacket would, perhaps, be an equivalent for such curb. For these reasons it follows that the bill must be dismissed.
TOMKINSON V. WILLETS MANUF'G
(Oircuit Oourt, 8. D. New York.
PATENTS FOR INVEN'l'IONS-DECREE BY CONSEN'r-HES JUDICATA.
When a decree has been entered by consent in a prior suit declaring a patent valid, and that complainant is the sole owner thereof, such decree will be considered binding, as to ail questions determined thereby, in a second suit between the same parties.
It is not necessary that a design patent should be copied in every particular to constitute an infringement. It is sufficient if the resemblance is such that an ordinary purchaser would be deceived, although the infringer has dcviated slightly in details, or has omitted something which an expert could discover.
Frank v. for complainant. Philo Chase, for defendant. COXE, J. This is an equity action for infringement founded upon design patent No. 13,295, granted to John Slater, assignor to Gildea & Walker, September 12,1882, for a design for a vegetable dish. The patent is now owned by the complainant. The invention relates to 8 new shape or configuration for a vegetable dish or other similar household article of china. The claims are as follows: