15 F. 459 -

DOA.NE & WELLIN(}TON

CO. V. SMITH.

459

DOANE

& WELLINGTON MANUP'G CO.

f'. SMITH.

lUirc'Uit Oowrt, S. D. New Y01'k. December, 27,1882.)
1.

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.

2.

SAME-INFRINGEMENT.

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,
WHEEIJER,

J. This suit is

460

FEDERAL REPORTER.

that it is a winged plate in the rear of the ring, extending upward, and to act as a reflector and generator. In the reissue the ring is described as a "protector,calculated to direct and steady the flow of fresh air which is to be mingled with the gas before burning," as a "ring opening at both ends, and affoi"ding a channel through which the gas-jet is directed, before being allowed to impinge against the plate," and as serving "to direct the mingled air and gas upon the plate," and preventing "currents of air from disturbing the continued uniform flow of the burning mixture by confining the air-currents to certain directions." And the plate is described as a "flame-plate," "against which the issuing gas is made to impinge as it flows from an orifice:" as serving "to spread the flame:" and as having "a burning at or very near the upper edge," "and the illuminating flame projects beyond this edge." And there are eight claims for different combinations of all or some of these parts. It is obvious' from this statement that the invention described in the original is not the same as that described in the reissue. The ring described in the original is a mere ring, not a tube. In the reo issue this part is still called a ring; but when its uses are described, as being those of a protector, calculated to direct a;nd steady the flow of fresh air, and as being open at 1)oth ends and affording a channel through which the gas-jet is directed, and as preven,ting currents of ,air from disturbing the flow, by confining the air currents to certain directions, a tube or conduit is described which is quite different from At mere ring, having no office shown but to hold the dividing screw; and a plate against whioh the gas-jet is to impinge, and on which the flame is to spread, andover and beyond which it is to burn and extend, is npt the same as a reflector beyond the jet and flame. These two are the most prop:J.inent features of the combination of the original, and of the variousoom1:)inations of the reissue; and a fla.me-plate against which the impinges, and over which, with the wingling currents of air it spteads j and over and beyond which it burns and ,the flame extends, and a shield on the opposite side of the jet affording a channel between the shield and flame-plate, through which the jet is directed, and by whioh the ourrents are proteoted from .disturbance, are prominent features of the defendant's and without which burner, which is Qlaimed to be an there could be no foundation for such claim. The original patent these de.vices of thE! defendant, and still the claim in would the reissue; whioh is said to be infringed is the same as the,clft!m thE! original.

DOANE & WELLINGTON MANUF'G CO. V. SMITH.

.461

The scope of the invention as well as of the claims is changed and expanded in the direction, too, of covering the defendant's invention made subsequent to the original patent. Such a reissue seems to be wholly invalid; Gill v. Wells, 22 Wall. 1; James v. Campbell, 104 U. S. 356. If the description of these parts had only been more full and particular in the reissue, or if distinct functions of the parts not before mentioned had been newly set forth, or functions before mentioned had beeu wholly omitted, so long as the devices \and their mode of operation, as described, remained the same, the reissue might not be avoided for showing a different invention, although it might be for the enlargement of the claim after such a lapse of time. Miller v. Bridgeport Brass Co. 104 U. S. 350. The inventor was required by law to set forth a description of his invention in such full, clear, and exact terms as to enable any.person skilled in the art to make and use it. Act of 1836, § 6. The description of the parts in the original consisted largely in stating what they were to do. .The ring was to hold the dividing screw; the plate was to be a A person skilled in the art, following the patent, would construct them as such. The invention described consIsted in these parts operating as such. The description in the reissue, to some extent, at least, excludes these things and substitutes different things. So the reissue is not a correction which the law provides for and allows, but ·an alteration which the law not allow. Furtqer, Wintergerst was not the inventor of vapor-burners nor of ;any of these parts constituting such burners. His invention con· sisted merely in the new arrangement of these parts in a burner. His patent did not and could not cover any other arrangement. The defendant had no right to take that arrangement, even to improve upon, but all others were open to him. The defendant's arrange·ment is different from Wintergerst's. The defendant employs no rings or screw or reflector; Wintergerst's invention included. all ·these. Leaving to Wintergerst all that he invented and patented, there was still room for the defendant's devices. Conaequetitlythere is no infringement. By. 00. v. Sayles, 97 U. S. 554. Let a decree be entered disJ,Dissing the bill of complaint,wlth

462

FEDERAL BEPORTER.

NATIONAL CAR-BRAKE SHOE Co. v. BOSTON &

A·. R. Co. and others.

SAME v. BOSTON & M. R. CO. and others.

SAME

V.

OLD CoLONY R. CO. and others.

(OWcuit Court, D. Massachusetts. February 7, 1883.)
PATENTS FOR INVENTIONS-COMBINATION-DIFFERENT ARRANGEMENT.

Where the arrangement of a patented combination, many of whose elements were in use before the patent was granted, has many advantages over the pata dUferent combination and ented device and is an improvement thereon, its use is not an infringement. In Equity.

E. Banning and H. A. Banning, for plaintiff. A. McCallum, for defendants.
NELSON, J. These three suits are for infringement of patent No. 45,106, granted to Joseph Wood, November 15, 186:1, for an improvement in car-brake shoes, and assigned to the plaintiff. The brake-shoe in use by the defendants is the one covered by patent No. 49,948, granted to James Christy, September 12,1865. The parties agree that the Wood patent is valid, and the question submitted is whether the first claim of the Wood patent is infringed by the Christy patent. Both patents relate to the manner of attaching the sole, or the part which bears against the rim of the car-wheel, to the shoe. In the specification of the Wood pa.tent, the invention is described as follows: "A is the cast-iron shoe, between the portions. a an!l ai, of which is an opening, X, two projections, band b1 forming part of the shoe and embracing the brake-beam, as shown by dotted lines in figure 2. B is the sole-piece, the face of which is curved to suit the periphery of the car-wheel, the shoe fitting to the sole-piece between two lugs, c and el , cast on the same. At the back of tlill sole-piece is a lug, d. which projects through an opening in the portion. a, of the shoe into the recellS, X; and through a hole in the lug passes a tapering pin, i, which, bearing against the inner side of the portion of a of the shoe,serves to secure the latter to the sale, while the two are retained in their proper relative position vertically by the lUgs, c and (II," The first claim is thus stated:
"Firstly, the sole, B, its lugs, c and Ct, the lug, d, in combination with the shoe, A. the latter and the sole being constructed and adapted to each other so as to be secured by a simple pin, i, substantially as specified."