WOOSTER t1. HANDY.
lienee of the "oblong" shape of the tube, which is one of the elements of the first claim of the reissue. As against the Bemis Company, complainant may perhaps contend successfully that this was admitand cannot now be denied by that company; but I am at a lOBS to see how and when this respondent admitted it, and estopped itself from denying it. An estoppel cannot arise unless it grows out of a. transaction to which the person estopped is a party or privy, and I do not understand that one who may purchase a patented article from a licensee of the patentee can, from that fact alone, be held bound by the license or its recitals, or that it establishes any contractual relations between such a. purchaser and the patentee. Bill of complaint dismissed.
WOOSTER
v.
HANDY.
(Circuit Court, 8. D. New York.
July 22, 1S84. )
Rule 88 of the eqUity rules prescribed by the supreme court of the United States, provides for a rehearing after a final decree of an appealable character. SAME-INTERLOCUTORY DECREES.
SS,-REHEARING.
a.
Interlocutory decrees remain under the control of the court and subject to its revision until the whole matter in controversy is disposed of by tinal decree.
SAME-EFFECT OF SuPREME COURT DECISION AFTER IN'l'ERLOCUTORY AND lmFORE FINAL DECREE.
When, after an interlocutor,vdecree, and before a final decree in a cMe, the supreme court renders a deciSIOn affecting the case, this court will make its final decree in accordance with the decision of the supreme courl, and as if that decision had been made before any decision in the case. Where, by an application for the reissue of a patent, it is sought merely to enlnrge a claim, a clear mistake and inadvertence must be shown, and a speedy application for its correction, without unreasonable delay, must be made. Where, by the reissue of a patent, it is sought merely to enlarge a claim, a pat. entee cannot wait until other inventors han produced new forms of improve. ment and then apply for an enlargement embracing the new forms.
4. PATENTS FOR INvENTIONS-REISSUES-REQUISITES FOR.
6. S,UIE.
6.
SAME-DELAY IN REISSUE 01' PATENT-WHEN COURT TO DECIDJIl UNREASON.....BI,E. .
Where it is apparent, from a comparison of the patents, that a reissue is made to enlarge the scope of the patent, the court may decide whether the delay m obtaining the reissue was unreasonable, and the reissue void.
7.
SAME-INFRINGEMENT OF PATENTs-BtLL, WHEN DIS¥ISSED.
Where a reissue of a patent is sought merely to expand its claims so as to embrace structures brought use between time of the issuing of the original and the time of the application for the reissue, and Which were not infringements of the claim of the original, there being no pro.,)f of mistake or inadvertence, the right to a.reissue is lost by a delay of more than 12 years, and. tb.e made and hrnulZht for the thereof, the bill wIll be dIsmISSed.
52 RIGHTS of-HEV. 8'1'.
FEDERAL REPORTER.
8. SAME-DEATH OF INVll:NTO:R-EFFECT ON REISSUE OF PATENT-ASSIGNEEAfter the death of the ill ventor, a reissue of the patent may be obtained upon application made, and a corrected specification signed by the assignee, under Rev. St. § 4895.
+ 4895.
In Equity. Frederic H. Betts, for plaintiff. Benjamin F. Lee, John Dane, Jr., and William H. L. Lee, for defendant. BLATCHFORD, Justice. This suit is brought on two reissued patents. One is reissue No. 6,565, granted to George H. Wooster, July 27, 1875, (on an application for a reissue filed June 22, 1875,) for. an "improvement in machines for making ruffies," the original patent, No. 37,550, having been granted to Pipo and Sherwood, January 27, 1863, on the invention of John A. Pipo. The other is reisslle No. 6,566, granted to George H. Wooster, July 27, 1875, (on an application for a reissue filed July 19, 1875,) for an "improvement in sewing-machines for making band.ruffling," the original patent, No. 46,424, having been granted to E. C. Wooster, February 14, 1865, on the invention of Thomas Rabjohn. The case was brought to a hearing on pleadings and proofs, and a decision was rendered in April, 1881, (Wooster v. Blake, 8 FED. REP. 429,) in favor of the plaintiffs, on both patents, on which an interlocutory decree was entered, April 80, lel81. The decree adjudged that No. 6,565 was valid so far as claims 1, 7, 8, and 10 were concerned; that those claims bad been infringed; and that an account of profits and damages should be taken as to such infringement. It stated that, as No. 6,565 had expired by its own limitation, no injunction was granted in reference to it The decree also adjudged tbat No. 6,566 was valid so far as claims 8 and 9 were concerned; that those claims had been infringed; that an account af profits and damages should be taken as to strch inas to said fringement; and that a perpetual injunction should claims.. The decree further said: "No adjudication is herein made as to any other claims than those above mentioned, of either of said letters patent, in any respect;" and it reserved the question of costs, andofincrease of damages, and all further questions, until the Iflaster's report should come in. .. . Thedefendant'sruffiers involved,andbeld. by d,ecision,to fringe both patents, were known as the Johnston ruffier and the Toof ruffler, a.nd wi3ie sold to. be attached to sewing-machilles,for fuffiing purposes, In regard to the Pipo patent, No. 6,565, .Qonsidered several patents and inventions !let up on the question of novelty,and .they could not avail. On the defense ·ofthe invalidity of the reissue, ,as not for the same invention' as the original" the decision said: "There isuo evidence that anything is found in tbe reissue No, tl,565, which is not tabe found in the description or drawing of the original patent; or intbe model the ap-
WOOSTER V. HA.NDY.
plication for that patent." As to the Robjohn patent, No. 6,566,the decision considered the question of novelty, and sustained the patent. Although the defense that the reissue was not for the same invention as the original was set up and urged, and it was considered and overruled, no special observations were made in the decision, in regard to it. The remarks in regard to the Pipo re).ssue were oonsidered as applying to it. Some progress was made in taking testimony on the accounting before the master, when, on the ninth of January, 1882, the cases of Miller v. Brass Co. 104 U. S. 350, and James v. Campbell, ld. 356, were decided by the supreme court. The defendant thereupon presented to this court, ou March 22, 1882, a petition, with notice of an application to be made March 31, 1882, that the prayer of the petition be granted. The application was adjourned and not heard till June, 1884. The petition states that the said decisions in 104 U. S. "fix and establish rules of law in respect to reissues. different from decisions of the circuit court of the United those stated in States for the Second circuit in numerous earlier cases; that said deciRions of the supreme court are directly in point, as affecting the validity of the said Pipo and Robjohn reissues; and that the said Pipo reissue and the said Robjohn reissue must be declared void in accordance with the doctrines laid down in said cases." One of the prayers of the petition is for a rehearing of the cause on the questions of law involved, in view of the said decisions of the supreme court, and that the interlocutory decree be opened. The rehearing asked for is not such a rehearing as is the subject of rule 88 of the equity rules prescribed by the supreme court. That rehearing is one after a final decree, after a decree which is of an appealable character. The present decree is not an appealable decree. The rehearing asked for is a reconsideration of the law of the case on the question of the validity of the reissues, in view of the decisions by the supreme court referred to. The test applied by this court, as announced by it in deciding the case, was that the reissues were to be sustained as to their claims, inasmuch as there was nothing found in ihemwhich was not found in the descriptions or drawings of the original patents, or in the models accompanying the applications for those patents. The principle, the application of which is invoked by the defendants. is well settled. In Perkins v. Fourniquet,6 How. 206, 209. it is said. that interlocutory decrees .remain under the control of the court and subject to its revision, until the master's report comes in and is finally acted upon by the court, and the whole of the matters in controversy are disposed of .by a final decree.. In Fourniquet v. Per. kins; 16 How. 82, there were an interlocutory decree, an accounting l;Inder it, a report of a master. exceptions to. the report, .and an argu. ment thereon. On the argument, the circuit reconsidered the opinion it had expressed on the merits in the interlocutory decree, and,
54
believing that opinion to be incorrect, dismissed the bill. The plain. tiff appealed to the supreme court, 'and that court held the decree of dismissal to be right. It added: "The counsel for the appellants, however, objects to the decree of dismissal, because it was made at the argument upon the exceptions to the master's report, and· is contrary to the opinion on the merits, expressed by court in its intel'locutory order. But this objection cannot be maintained. The case was at final hearing at the argument upon the exceptions, and all of the previous interlocutory orders in relation to the merits were open for revision and under the cuntrol of the court."
This court, then, is to interpret the law of reissues as it would have done if the cases referred to had been decided by the supreme court. before this court made its decision in this case. The rule laid down by the supreme court is, that where it is Bought merely to enlarge a claim, there must be a clear mistake and inadvertence, and a speedy application for its correction, with no unreasonable delay; that, in such a case, a patentee cannot wait until othel inventors have pro" duced new-forms of improvement, and then apply for such an en· largement of his claim as to make it embrace those new forms; and that when it is apparent, from a comparison of the two patents, that the reissue is made to enlarge the scope the patent, the court may decide whether the delay was unreasonable, and the reissue, therefore, void. This view has been repeatedly asserted and applied by the supreme court in numerous cases decided since those in 104 U. S. As to the Pipo reissue, No. 6,565, it is plain that the right to reissue was lost by the delay of more than 12 years, because the case is one of a mere expansion of the claims, beyond anything stated in the original patent as the invention, and with no proof of mistake or inadvertence, and it is sought to make the new claims embrace, in this case, structures brought into use between the time of the issue of the original patent and the time of the application for the reissue, and whicl1 were not infringements of the claim of the original patent. There was but one claim in the original. There are 13 in the reissue. It would serve no useful purpose to enlarge on this subject as to No. 6,565, for the counsel for the plaintiff concedeB that, under the reiterated decisions of the supreme court, this court must dismiss the bill as to that reissue. But in regard to the Rabjohn reissue, No. 6,566, the plaintiff contends that the case is different; that claim 2 of the original patent covered the defendant's structures; that claims 8 and 9 of the reissue are substantially only repetitions of claim 2 of the original; or that, at least, claim 2 of the original was so worded as to he ambiguous, and so inoperative, and claims 8 and 9 of the reissue are valid, as removing the ambiguity. The speoifications of the original and reissued patents are as follows, the parts in each which are not found in . the other being in italics:
WOOSTER V. HANDY. ORIGINAL, SEISSUE.
55
"Be it known. that I, Thomas RolJ.. john, of the city, county, aDd state of New York, have invented a new and usfful improvement in machinery for making band-ruffling; and T .do hereby declare that the following is a fall, clear, and exact description of the same, reference being had to the accompanying drawings forming part oj' this specification, in which
"Figure 1 is a top view of my invention and of the bed-plate of a sewing-machine, to which it is applied. Figure 2 is a longitudinal vertical section of the same. Figures 3 and 8 are opposite end views of the ruffling machinery. FilJu1'es 4 and 4 are transverse sections of the bandfolder. Figure 5 is a top view of the guides without the ruffling knife. Figure 6 is a section of the plaiting or ruffling device, parallel with Fig. 2, but shOWing the knife in a different position. Figure 7 is a face view of a ruflie made by the machine. Figure 8 is a transverse section of the same.
"Similar letters of reference indicate corresponding parts in the several figures, "This invention consists in the combination, with a sewing.machine, of a novel sy"tem of guides, and a plaiting or ru.ftling knife. whereby one strip of muslin or cloth has both edges turned in, and is folded longitUdinally, to form a double baud, and plaited or formed into a rUffle, and the banli 3,Ild ruffle are sewed together,
"Be it known, that It Thomas Robjohn, of the city, county, and state of New York, have invented certain improvements in machinery for making band-ruffling, of which the followin,q is a specijlcation: "This invention relates to improvements in rufflers for USe with sewing mechanism, and consists in a ruffling 'blade or lmife adapted to engage a strip of material to be rujfted, in combination with a feeding mechanism adapted to operate against the strip to which the ruffled strip is connected; also, in the oombination, with a r1Jiffling blade, of a guide for a strip to be ruffled, and also with a guide to fold and present a band ab4lut the ed,qes of the ru.ftled strip, as is hereinafter more fully described, such folding guide also being adapted to hem or turn the edges of the folded band. "Figure 1 is a top view of the invention, showin.q its arrangement upon the bed-plate of a sewingmachine. Fig. 2 is a longitudinal vertical section of the same. Fig. 3 and 3 are opposite end views of the ruffling machinery. Fig. 4 and 4 are transverse sections of the band-folder. Fig. 5 is a top view of the gUides without the ruffling knife. Fig. 6 is a section of the plaiting or ruffling device, parallel with Fig. 2, but showing a different position of the sa1ne. Fig. 7 is a face view of a rutIle made by the machine, and Fig. 8 is a transverse section of the same. Figure 9 is a section of the presser, taken at right angles to the line offeed, showing the under surface cut away, to allow the passa.ge of a hem on the ru.ftle. "Similar letters of reference indicate corresponding parts in the several figures. "As illustrated in the drawings, one strip of muslin or cloth has both edges turned in, and is folded longitUdinally, to forma double band, and another strip is plaited or formed into a ruffle, and the band and the ruffle are both sewed together at the same time, thus forming a band-ruffle at one operation.
56
all at the same time, thus forming a double band.ruffle at one operation. "To enable others skilled in the art to make and use my invention, I will proceed to describe its construction and operation.
"A is the bed-plate of the sewing. machine. B is the guide by which the turning in of the edges of, and the longitudinal folding of, the band, a, of the ruffle are performed, said guide being attached rigidly to the gauge· plate, C, and secured to the bed-plate, A, by a screw, D, and steady pins, b, b. '.rhis guide, B, is made of brass ')1' other metal, and has one end of the form of a tube, and nearly flat, shown in figure 3, the width of the said tube being equal to the width of the strip of cloth of which the band, a, of the ruflle is to be formed, such strip bein.q shown in section, in 1'ed color; in figure 4, 4. At a short distance from the end shown in figure 3, one side of the tube is cut away, leaving the gUide in the form of a transversely curved plate, with its edKe turned over on the concave side, as shown in figure 4, and towards the other end its curvature increases, and the turning in of the edges is increased until the plate is in the form of the letter V, or nearly double, and its ha'IJe a complete double turn, as shown at c, c, in figure 4, so that the strip, entering at the end shown in !iyure 3, and being drawn through, will corne out folded along the cen· tel', and with both edges turned in, as f:lhown in red outline, in figure 4*.
"The arrangement of this guide upon the sewing-machine is such that this folding of the band may be effected in the movement Ilf the latter towards the needle by the ordinary feeder, 1', Ilf the machine. The mar· ginal portions, c, c, of the folder, by which the edges of the band are turned inward, do not extend quite to the needle-hole, d, but are cut away at 80me distance therefrom, as shown at i, in figures 1, 3*, and 5, though the
"To enable others skilled in the art to make and use my invention, I will now proceed to illustmte the most c'omplete and perfect form of its operation, as combined with a sewingmachine. "A t A is represente,d the bed-plate of a sewing-machine. B is the guide by which the turning in of the edges of, and the folding of, the band, a, of the ruffle is performed, said guide being attached to the gage-plate, C, and secured to the bed-plate, A, by a screw, D, and steady pins, b, b. This guide, B, is made of lJrass or other metal, and has one end formed a tube, and of a width substantially equal to the width of the strip of cloth of which the band, a, of the ruflle is to be formed. The recei'ving end of this guide is shown at Fig. 3, and, at a short distance from such end, one sIde of said tube is cut away, leaving the guide in the form of a transversely curved plate. with its edge turned over on the concave side, as shown in Fig. 4, and towards the other end its curvature increases, and the turning in of the edges is increased, until the plate is in the form of the letter V, or nearly double, and its edges are given a double turn, as shown at c, C, in lNg. 4, so that the band or plain strip to which the ruifie is to be united by stitches, when entered at the end shown in Fig. 3, and drawn through the gu,ide, will come out folded along the center, and both edges may be turned in or hemmed, as shown in Fig. 4, provided the strip is wide enough to extend into and entirely fill the width of the guide. "The arrangement of this guide upon a sewing-machine is such that this folding of the band may be effected as the band is moved towards the needle by the feeding deVice, r. The marginal portions, c, c, of the folder, by which the edg,es of the band are turned in ward, do not extend quite to the needle-hole, d, as shown at s, in Figs. I, 3*, and 5, though the guide which produces the central fold has a nose, e, extending some distance
WOOSTER V. HANDY.
57
portion which produces the central fold extends some distance beyond the needle-hole, to preserve the form of the fold while the stiching is being performed, "E is a guide for the strip of cloth of which the ruffie, e, is to be formed, consisting of a flat metal tube, of a width equal to that of the said :>trip, arranged in front of, and partly within, the foldiug guide, B, parallel with the feed movement, to deliver the strip between the two edges of the band, as the latter issue from the said guide, B, and approach the needle.
beyond the needle-hole, to preserve the form of the fold in the band while the stiching is being performed.
"E is a guide for the strip of cloth of which the ruille is to be formed, con·' sisting of a flat metal tube, of a width equal to that of the said strip. and it is shown as arranged in front of, and partly within, the folding guide, B. parallel with the feed movement, and adapted to deliver the rujfted strip between the two edges of band, a, as the latter issues from the said guide, B. "The bottom plate, i, of the gUide "This guide has a slight downwa1'd inclination towards the needle, serves as the support for the strip or and its lower end rests on the bed- material to be rujfted, separates it plate close to the /eedin.g device and from the fabric to which it is to be the needle-hole, and its bottom part, i, united, and the rujfting blade, acting is made with projections, f, f, to en- on such material to be rujfted, carries able it to pass between and at the sides it forward over the support, i, and of the toothed surfaces of thefeerling presents it in afolded condition to the dog. stitching mechanism. This bottom "The upper part of the said guide plate, i, is made with projections, f,f, has near its sides two longitudinal to enable it to pass betw.een and at the slits, g, .g, commencing at a short sides of the toothed surfaces of the distance from the end furthest from feeder, r,' and the upper part of the the needle-hole; and extending to the said guide hasformed inittwo longiend next the needle, and the end of tUdinal slits, g, g, commencing ata the tongue, h, thus formed, is made short distance from the end furthest to press upon the strip, in passing from the needle, and extending to the through the guide, and so keep it flat- end next the needle, the end of the tened, and produce friction enough tongue, h, thus formed, being adapted upon it to keep it straight, on its way to press upon the strip passing through into the band. The said tongue, h, the guide with sufficient force to keep i.v shortened so that it does not extend it flattened and straight, on its way to so near to the needle-llOle, by from a the action of the rujfting blade. The quarter to three-eighths of an inch, said tongue, h, does not extend so as the bottom pa1·t, i, 0/ the gUide, near to the needle-hole as the bottom (see Fig. 2,) thereby leaving the said plate, i, (see Fig' 2,) thereby leavpart, i, exposed for the plaiting or ing the said plate exposed for the ruffling knife, F, to work upon, as plaiting or ruffling blade 01' knife to will be presently described. l his work upon, as will be presently deguide, H, is attached rigidly to the scribed. lower part 0/ the guide B. "The plaiting or ruffling knife is "The plaiting or ruffling blade or made with astraight and moderately knife is genemlly made with a sharp, but not a cutting, edge, of a straight and moderately sharp, but length equal to the width of the strip not a cutting, edge, of a length equal of which the ruffle is to be composed, to the width of the strip of which the the said edge being arranged at.right ruffle is to be composed, the said edge angles to the feed movement. The being arranged at right angles to the said knife is attached by an elastic feed movement, and connected with, shank, i,to a bent lever, G, the said or forming part of, an elastic shank, ihank keeping the edge pressed hard j, .attached to a bent lever, G. In its T
58
aown upon the 'bottom part of the gUide, and holding the knife with a downward. inr,lination towa1'ds the needle-hole, at an angle of about 30° to the sU/face of i. '''fhe lever, G, works on a fixed flulcrum, t,at the back of the bedplate, and derives motion, in one direction, from the rod which works the needle-arm, 'and, in the opposite direction from a spring, I, or has imparted to it, by any other mechanical means, the necessary motion to produce a movement of the knife upon the bottom, i,of the guide, E, towards and from the needle-hole, d. This movement of .the lever may be varied by means of a set-screw, to give the knife a greater or less movement, according as finer or not so fine plait" ing or ruming is desired, the movement of the knife requiring to be as much greater than the feed movement as the intended width of the plaits. 'rhis knife commences its movement before the feed, and, when the knife has moved a distance equal to the intended width of the plaits, the feed movement commences, and the movement of the knife continues at the same speed as the feed movement, while the latter carries both band and rume towards the needle. "The presser, li, of the sewingmachine, to which my invention is applied, is mn,de of a width sufficient to cover the whole width of the ruffle, and a sufficient portion of the band; but it is made shorter than usual at the end where the work enters beneath it, in order. to allow the knife to come close or nearly close to the needle; and its under side is beveled at that end, to allow the knife to pass under and push the plaits under it, as it gathers them up by its movement towards the needle. Theoperationof gathering up the plaits is illu.strated in ji!JU1'e 6, where the strip which forms the 1'ujfte is shown in red color. <
"The sewing"machine in connection with which this invention is ap-
forw,J,Ta movement the edge of the rujJting blade OT knife is pressed upon the support or plate, i, between the front part 01 which and the knife the strip to be is held. "The lever, G, works on a fixed fulcrum, t, at the back of the bedplate, and derives motion in one direction from the rod which works the needle-arm, and in the opposite direction from the spring, I, or has imparted to it, by any other mechanical means, the necessary motion to produce a movement of the blade or knife. This movement of the lever may be varied by means of a set-screw, to give the knife a greater or less movement, according as finer or not so fine plaiting or rUffling is desired, the movement of the knife reqUiring to be as much greater th",n the feed movement as the intended width of the plaits. This knife commences its movement before the feed, and, when the knife has moved a distance equal to the intended widths of the plaits, the feed movement commences, and the movement of the knife continues at the same speed as the feed movement, while the feeding device carries forward both the band, or plain pa1·t to which the rujfte is attached, and the ruffle. "The presser, li, which, as shown, is the foot of a sewing-machine, is represented of a width substantially equal to the width of the blade or knife, or sufficient to cover the whole width of the ruffle, and a sufficient portion of the band; but it is made shorter than usual at the end where the work enters beneath it, in order to allow the knife to come close or nearly close to the needle; and its under side is beveled at that end, to allow the knife to pass under and push the plaits under it, as it gathers them up by its movement. The lower surface is or cut <away at the side, as shown at m, in Fi,q. 9, to allow the hem of the r'ujfle (Fig. 8) to pass under without lifting the presser from the rest of the goods; and the foot is also recessed at'll" to receive the band of the rujJte. "'rhe sewing-machine in connection with which this in vention is ap-
WOOSTER 1'. HANDY.
5Sl
plied may be of any of the kinds in plied may be of any of the kinds in common use. common use. "To set the invention in operation, "To set the invention in operation, the strip of cloth to form the band, a, the strip of cloth to form the band, a, is inserted through the guide, B, and is inserted through the guide, H, and the longer strip, to form the rutlle, the longer strip, to form the rutlle, (which has been previously hemmed (which has been previously hemmed along one edge,) is inserted through along one edge,) is inserted through the guide, E, and under the knife, F, the guide, E, and under the rujfting and with its hemmed edge in front or blade or knife, and with its hemmed outward, and the ends of both strips edge in front or outward, and the nnder the presser, and, when ends of both strips are brought under the presser has been let down upon the presser, and, when the presser them, the machine is set in operation has been let down upon them, the as for ordinary sewing. As the two machine is set in operation. The two strips are drawn forward by thefeed strips are drawn forward by the feedmovement, the band is folded and has ing device, the band is folded and has its edges tumed in, and the rujfte strip its edge turned in, and the strip restis delivered into the fold of the band, in.g on the support, i, is r1f;tfled, delivand rujfied by the action of the knife, ered to the unrujfted material or the 3S hereinbefore described, and sewed band, by the action of the knife, as into the band by the needle passing hereinbefore described, and the rujfted through both the upper and lower and plain fa brio are united by the parts of the band close to the edges stitching mechanism of the sewin,gmachine, the needle, when operating thet·eof. with the band, passing through both the upper and lower parts thereof, close to the edges of the band. "In the ruffing operation, the knife, "In the rutlling operation the blade H, is prevented from acting on the or knife is prevented from acting on under part afthe band, by the eroten- the band or plain fabric beneath the sion of the lower part, i, of the guide, rujfte, by the support or plate, i. E, beyond the upper part and below "No claim is made to an open guide the knife, the said part of the band in combination with rujfting mechanpassing under the extended portion ism, as that is the form of gageS of i, and the r1f;tfle strip passing over which has been previously used,' nOlO it for the knife to act upon, and the to a separating device, except in comsaid extended portion protecting the bination with the rujfting mechanibm l<nper part of the band from the ac- arran,ged and operated above the table. tion of the knife." "The rujfted strip may be stitched, as formed, on to a plain fabric introduced under the ,guide, E, and between the support or plate, i, and the feeder. 1', the latter engaging and movin,g the plain fabric with the ruJfte attached, while the 1'1f!!ling knife or blade en· gages only the strip to be ,gathered, and carries it forward to the needle. "The end of the arm, G, carrying the ruJfting blade, is turned backward at g'. moves back and forth above the guide, and permits the blade carried by such arm to operate under the edge of the plain, unT1f;tfled material laid on top of the rujfted strip. As the blacle moves f01'Ward, it first enga,qes the mate1'ial to be rujfted on
60
\
the supporting and sepa1'aUngplate, just at the end of the tongue, h, and, as the blade moves forward the material to be ruffled, its edge is held or pressed firmly against the material, and, when the fold made in the material is prope1'ly formed for the actlon of the needle, then the blade is retmcted, and, as it returns to its backward position, the pressure of its end on the piece to be rujJted is lessened. The end of the rujJting blade moves beyond the edge of the supporting or sepamting plate, and carries the fold forwm'd, in the rujJted strip, beyond the edge of said plate, and, on the retum of said blade, the end of the supporting or separatin.g plate, between which and the blade. the material "ests, is held by the end of sai(l plate, i, pre'venting the plate, in its backward movement, from carryin.g back with it the fold formed in the strip to be ruifled. "I am ((,1Oa1'e that a 1'ou.gh-surfaced feeder and ru.ffler have been employed to enga.ge a piece of material to be rUifled, formin.g the gather in and muving the ru:.tJled piece forward, the r'l{tJler and feeder both engaging the rujJled strip, and, in connection with such mechanism, a sepa1'ator has been employed to separate a band from the 'I"ItjJled st1'ip, the band being laid on the surface of the 1'ttjJled strip engaged on its under side by the ruifler and feeder made as four-motioned feedinrl devices,. and I am also aware of United States patent No. 14,475. "I do not claim, as the invention ofThomas Robjohn, a flexible rujflin[l blade adapted to operate on a 8tTip to be ru:.tJled when sustained on the cloth-plate of a sewing-machine,. nor do I claim such a blade combined with a guide to present a single unfolded band strip to the ntjJled strip,' nor do I claim such a blade connected with and operated by a rocking arm or lever mo'Oed from a vibrating member of the needle-opemting mechanism, and controlled as to its backlOa1'd movement by a set-screw,' nor do I claim any of the specific combinatiuns of devices claimed in an application filed June 22, 1875, for rei88t!': of United States patent No. 37,550,
WOOS1'EB V. HANDY.
61
granted to John A.Pipo, January 27, 1863, said combinations of de'Dices, as expressed in such reissue claims, being the invention of the said Pipo."
The original Robjohn patent had two claims, as follows: "1st. The combination with each other and with a sewing-machine, of a guide for turning in the edges of and folding one strip of cloth to form a double band, a guide for guiding another strip of cloth into such band to form a ruffle, and a plaiting or ruflling knife, the whole operating substantially as herein specified. 2d. In combination with the rutiling knife acting above the strip which is to form the ruflle, I claim the extension of a portion of the bottom, i, of the guide, E, or its equivalent, below the said knife, in such a position as to be interposed between the rutile strip and the lower part of the band, substantially as and for the purpose herein specified."
The reissue has 18 claims, as follows: "(1) In a ruffling or plaiting mechanism, the combination of a ruffling or plaiting blade with a folding guide, whereby a strip of any suitable fabric may be properly guided to form and fold a band about the edge of a ruffle, substantially as described. (2) The combination of a ruffling or plaiting blade and folding guide for properly directing the strip to form and fold a band about the edges of a ruffle, with stitching or sewing mechanism. substantially as described. (3) In a plaiting or rUflling mechanism, the combination of a guide haVing an inclosed channel-way, for properly directing the strip to be rumed, with the plaiting or rullling blade, substantially as described. (4) The combination of a plaiting or rUflHng blade and an inclosed channel-way or guide for properly directing the strip to be ruffled, with a stitching or seweng mechanism, substantially as described. (5) The combination of a plaiting or ruffling blade and guide for properly dIrecting the strip to be ruffled, and a folding guide for conducting a separate strip to form and fold a band on the edge of the said rutlled strip, with sewing mechanism adapted to unite the band and ruffle, substantially as described. (6) The combination with a rUllUng or plaiting blade of a guide for conducting a strip to form a band for the ruffle, and adapted to fold or hem both edges of said band. (7) The combination of a ruffling or plaiting blade, a guide adapted to conduct a strip to form a band and to fold both edges of said band, with a sewing mechanism, SUbstantially 38 described. (8) The combination of a ruffling or plaiting blade or knife, arranged and operated above the cloth-plate, with a supporting or secondary plate, separate from the cloth-plate, between which and the blade or knife the fabric to be ruffled is held and advanced by the blade, substantially as described. (9).A plaiting or ruffling blade, arranged above the cloth-plate of a sewing-machine, and adapted to operate upon a surface other than such cloth-plate, Whereby a strip of goods can be plaited or ruffled above a plain piece, substantially as described. (10) In a ruffling or plaiting mechanism, a presser or holder, cut away at its lower side to permit the passage of a hem, substantially as described. (11).A folding guide, adapted to conduct and fold a band, and provided with a nose or extended portion, to direct and hold the band after it is folded, substantially 38 described. (12) The inclosed guide, in combination with the flexible tongue, adapted to press upon the goods passing through said guide, to keep said goods flattened and straight, substantially as described. (13) In a ruffling mechanism, the combination of a blade adapted to engage and fold or ruffle one piece of materjal, with a feeder adapted to engage and move forward the unrutiled material, on which the ruflled material is delivered and secured by stitching. substantially as described. (14) In a ruffling or plaiting mechanism, the combination of a plate adapted to separate the material to be ruffled from the unruffled
62
FEDERA.L. REPORTER.
material to which it is to be attached, with a reciprocating blade, adapted to press upon and engage the upper side of the material to be ruffled, to move forward with such material and present a fold for the action of the needle, and, on the return stroke of the blade, to relax its pressure on the material.to be ruflled, substantially as described. (15) The combination, of the ruftling-blade, adapted to move forward beyond the end of the supporting or separating plate, with the separating plate, adapted to retain the ruflled material from returning with the ruftling blade, substantially as described. (16) The combination of a guide, adapted to control each edge of the piece to be ruffled, and 8 ruming Qr plaiting blade, having its edge extended across the material to be rumed, with a solid or rigid pressing surface or holder, of a width to cover and flatten the rumed or plaited material, substantially as described. (17) The combination, with a mechanism adapted to fQrlll a ruilie or plait, of a guide, provided with an inclosed channel-way, to guide the strip intended to be ruffled or plaited. (18) The combination, with a separator and a ruffling blade, of guides adapted to control and present the band, forming edges both above and balow the 8trip to be rumed, whereby a piece of fabric may be ruffled between two surfaces. " The original Robjohn patent does not anywhere in the statement of invention, or in any claim, suggest that his invention was anything else but the invention of mechanism for making a band-ruffle by means of two automatic guides, one to fold in the band and the other to guide the strip to be ruffled; or that he had invented a separator plate, or any means of ruffling a strip above a plain piece. The statement of the invention, in the original patent, is that it consists in combining the guides and the knife with a sewing-machine, the result of the joint action being that one guide, B, turns in both edges of a band and folds it longitudinally, so as to make a double band of it, and the other guide, E, which is a tubular guide, guides the strip to be ruffled and delivers it between the two edges of the band as they issue from the guide, B, and the knife makes the ruffle, and the two parts of the band and the ruffle are then sewed together by the needle, and a band-ruffie is formed. The real meaning of the original specification is best understood by seeing the alterations made in the reissue. There is in the latter a statement that the in· vention "consists in a ruffling blade or knife, adapted to engage a, strip of m:aterial to be ruffled, in combination with a feeding mech· anism, adapted to operate against the strip to which the mffled strip is connected." This is new, and is in addition to a combination of the knife and the two guides. In the original the part i is the "bot· tom part" of the guide, B; but in the reissue it is called a plate, and a support, which separates the material to be mffled from the fabric to which it is to be united. In the original the guide E is said to he attached rigidly to the lower part of the guide B. This is omitted in the reissue. In the original the tongue, h, of the guide, E, is said to press on the strip to be ruffled, so as to keep it straight "on its way into the band;" but in the reissue the idea of the band in that con· nection is stricken ont, and the pressure is said to be made to keep the strip straight "on its way to the action of the ruffling blade." In
63
the original the elastic shank, j, is said. to press the ed.ge of the knife. down on "the bottom part of the guide;" but in the reissue it is said to press it down on "the support or plate, i." In the original the knife is said to have a movement "upon the bottom, i, of the guide, E, towards and rrom the needle-hole." In the reissue the knife is . said to have "a movement." In the original "the feed movement" is said to carry "both band and ruffle towards the needle." In the reissue "the feeding device" is said to carry forward "both the band, or plain part to which the ruffle is attached, and the ruffle." In the original it is stated that "the ruffle strip is delivered into the fold of the band and ruffled by the action of the knife, as hereinbefore described, and sewed into the band by the needle passing through both the upper and lower parts of the band, close to the edges thereof." In the reissue it is said that "the strip resting on the support, i, is ruffled, delivered to the unruffled material or the band, by the action of the knife, as hereinbefore described, and the ruffled and plain fabric are united by the stitching mechanism of the sewing.machine, the needle, when operating with the band, passing through both the upper and lower parts thereof, close to the edges of the band." In the original it is stated that "in the ruffling operation the knife,F, is prevented from acting on the under part of the band by the extension of the lower part, i, of the guide, E, beyond the upper part and below the knife; the said part of the band passing under the extended portion of i, and the ruffle strip passing over it for the knife to act upon, and the said extended portion protecting the lower part of the band from the action of the knife." In the reissue it is said that "in the ruffling operation the blade or knife is prevented from acting on the band or plain fabric beneath the ruffle by the support or plate, i." These studied efforts to convert the bottom of the guide, E, into something other than the bottom of a guide, and into a supporting or secondary plate, dissevered from a guide, and to introduce the feature of ruffling a strip of goods above a plain piece, in addition to ruffling it in connection with a band which has two parts, an upper part and an under part, and thus to pave the way for introducing claims 8 and 9 of the reissue, are supplemented by the introduction into the reissue of the following new matter: "The ruffled strip may be stitched, as formed, on to a plain fabric introduced under the guide, E, and between the support or plate, i, and the feeder, r, the latter engaging and moving the plain fabric with the ruffle attached, while the ruffling knife or blade engages only the strip to be gathered, and carries it forward to the needle. ,.
The internal evidence thus afforded by the patents is fortified by the external evidence. The plaintiff, George H. Wooster, became the owner, on June 1, 1875, of the entire interest in the original Pipo patent. The interest in the Robjohn invention was vested in Mrs. Emma C. Wooster, the wife of the plaintiff, before the original patent was issued, and it was issued to her. On the seventeenth of
64
June, 1875, she assigned her interest in it to the plaintiff. lIe applied for the reissue of the Pipo patent on June 22,1875, and for the reissue of the Robjohn patent on July 19, 1875. In the Pipo case, the application was signed by both Pipo and the plaintiff, the new . specification was signed by Pipo, and the oath to it was made by Pipo, June 21, 1875. In the Robjohn case, the application was signed by the plaintiff, as assignee of Robjohn, the new specification was signed by the plaintiff, as assignee of Robjohn, and the oath to it was made by the plaintiff, July 17, 1875. In that oath the plaintiff deposed, "that he verily believes that, by reason of an insufficient specification, the aforesaid letters patent granted to E. O. Wooster, as assignee of Thomas Robjohn, are inoperative; that the said error has ariBen from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, to the best of his knowledge and belief; that the entire title to said letters patent is vested in him; and that he verily believes the said Thomas Robjohn to be the first and original inventor of the invention set forth and claimed in the foregoing amended specification, and that the said Robjohn is now deceased." Although, as Robjohn was dead, the reissue may have been properly made, under section 4895 of the Revised Statutes, on an application made, and a corrected specification signed by the assignee, the reissue lacks the support which an oath by the inventor as to inadvertence, accident. or· mistake might afford to it. The circumstances under which the plaintiff applied for these reiSRues, after he thus became the owner of the two patents, and the object he had in view in doing so, are stated by himself. He was using the Pipo and Robjohn machines in the business of making ruffies. His attention was called to the Johnston ruffler alld the Toof ruffler, as ruffiing devices to be attached to sewing-machines; and he was applied to to sell the Rohjohn patent, owned by his wife. He then examined the matter in connection with both patents, and concluded that they could be reissued with the claims now in them, so as to cover such ruffiing attachments. He then purchased the Pipo patent, and took an assignment of the Rabjohn patent, and applied for the reissues. The Johnston and the Toof rnfflers were in the market. Patent No. 111,458, granted to Allen Johnston and William T. Johnston, January 31, 1871, for an "improvement in gathering attachments for sewing-machines," and patent No. 146,005, granted to Allen Johnston, December 30,1873, for an "improvement in gathering and ruffling attachments for sewing-machines," describe and show the Johnston ruffier as it is sued herein. No. 111,458 shows the features in it which are alleged to infringe claims 1, 7,8, and 10 of the Pipo reissue; and No. 146,005 shows the features in it which are alleged to infringe claims 8 and 9 of the Robjohn reissue. The defendant's ruffling attachments are alleged to infringe claims 8 and 9 of the Robjohn reissue, because they have (1) a ruffling blade; (2) a secondary plate, separate from the cloth-plate of the sewing-
65
maChme; (3) the cloth':plate, when in use, lying below the secondary plate, and the goods to be ruffled lying above the secondary plate, and between it and the blade, and a plain st.rip lying above the cloth-plate, and below the secondary plate, and between the two. The defendant's att.achments do not have the combination .claimed in claim lof the original Robjohn patent. But it is contended for the plaintiff that claim 2 of the original Robjohn patent was capable of being construed in two ways. It read thus: "(2<1) In combination with the ruffling knife acting above the strip which is to form the ruffle, I claim the extension of a portion of the bottom, i, of the guide, E, or its equivalent, below the said knife, in such a position as to be interposed l>etween the ruffle strip and the lower part of the band, substantially as and for the purpose herein specified."
It is said that the claim might have been construed as including in the combination only the part i, as being the part which really does the work of protecting the lower part of the band from the action of the ruffling knife; or it might have been construed as including not only the part, i, but the tube, E, with a covered top, from which the part, i, is extended, and which tube guides the piece to be ruffled. The argument is that claim 2 was, therefore, defective, because it was obscure or ambiguous. and uncertain in meaning, and insufficient in not clearly pointing out the invention desired to be covered; and that in neither claim 8 nor in claim 9 of the reissue is the tube or guide, E, an element. Claim 2 of the original patent fully and clearly embodied the descriptive part of the original specification, which was in these words: "In the ruffling operation the knife, F, is prevented from acting on the under part of the band, by the extension of the lower part, i, of the guide, E, beyond the upper part, and below the knife, the said part of the band passing under the extended portion of i, and the ruffle strip passing over it for the knife to act upon, and the said extended portion protecting the lower part of the band from the action of the knife."
So far as claim 2 of the original patent was concerned, the specifi. cation of that patent clearly and accurately described the invention which that claim sought to cover, and, so far as such description was concerned, there was no defect or insufficiency, and the patent was not invalid or inoperative to cover anything arising out of such descrip. tion which was set forth as an invention. There is no evidence that that there was, in fact, any inadvertence, accident, or mistake. Taking the language of claim 2 of the original patent, in connection with the descriptive part of the specification, the bottom, i, of the guide, E, is the lower part of a tubular guide which has an upper part, and it must be interposed between the ruffle strip and the lower part of such a double band as is described. No other band than a double band is anywhere mentioned in the original specification. It is a strip folded longitudinally by the guide, B, and having then an upper pllrt and a lower part. It is folded along the center of its v.21F,no.1-5
66
width ·.. guide E is "rranged in front of and partly within the guide B, and delivers the ruflle strip between the two edges of the double band. The two guides are rigidly attached together. One cannot be there to make the double band, without the other being present. The ruflled strip, between the upper and lower parts of the double band, is sewed to them, as the needle passes first through the upper part of the double: band, then through the ruffied strip, and then through the lower part of the double band. It is the under part of this double band which is protected from the knife by the extension of the lower part, i, of the tubular guide, E, beyond toe upper parto! that guide, because such under part of the double band passes under the extended portion of i. There can be no double band without the guide B, and the guide E is rigidly attached to the guide B, and so the extended part of the lower part, i, of the guide E must be the extended part of the lower part of such a tubular guide as B is. There is no warrant, therefore, in the specification of the original patent, for extending' the invention to cover the stitching of the ruffled strip on to a plain strip which is no part of a double band. The words "substantially as and for the purpose herein specified," in the original claim 2, refer to the purpose of protecting the lower part of a double band made by the guide B, by extending the lower part of the tubular guide E, which is rigidly attached to the g!1ide B. In view of the descriptive part of the original specification, claims 8 and 9 of the reissue could not have been sustained on that specification. There ,was no obscurity or ambiguity in the original claim 2. It was warranted by the description. That description authorized no claim as to the extension of a portion of i, different from what was claimed, as here interpreted, and the only admissible amendment of the claim, by the description as it stands; would have been one to interpret it in the same sense. These considerations bring the ease, as to the Robjohn reissue, within the decisions of the supreme court on the subject of reissues. Gill v. Wells, 22 Wall. 1; Wood Paper Patent, 23 Wall. 568; Powder Co. v. Powder Works, 98 U. S. 126; Ball v. Langles, 102 U. S. 128; Miller v. Brass Co. 104 U. S. 350; James v. Campbell, Id. 356; Heald v. Rice, ld. 737; .Johnson v. Railroad Co. 105 U. S. 539; Bantz v. F1'antz, ld. 160; Wing v. Anthony, 106 U. S. 142; S. C. 1 Sup. Ct. Rep. 93; Hoff/wins v. Russell, 107 U. S. 132; S. C. 1 Sup. Ct. Rep. 570; Gage v. Herring, 107 U. S. 640; S. C. 2 Sup. Ct. Rep. 819; Clements v. Odorless Excavating Apparatus Co. 109 U. S. 641; S. C. 3 Sup. Ct. Rep. 525; McMurray v. Ma,llory, 111' U. S. 97; S. C. 4 Sup.' Ct. Rep. 375; Turner d; Seymour Manuf'g Co. v. Dover Stamping Co. 111 U. S. 319; S. C. 4 Sup. Ct. Rep. 401. The bill must be dismissed, as to both reissues, because of their invalidity as respects claims 1, 7, 8, and 10 of the Pipo reissue, and claims 8 and 9 of the Robjohn reissue. ' The application to introduce further evidence is granted as respec'_,
HOOD V. BOSTON
00.
67
two affidavits of the plaintiff, and the files and contents in the matter of the reissues, but is denied in the other partioulars. No reason is seen why the defendant should not recover the oosts of the cause. The same rulings are made as to the case against- Thornton and others. In the case against Blake and others, the applicatioD to introduce further evidenoe is granted in the respects abovo indicated, and denied in the other particulars, and the suit as to them will prooeed in course.
HOWE MACHINE
Vo.
Oi1'cuit Oourt, S. D. New York. PATENTS FOR INVENTIONS.
July 22, 1884.,
Wooster v. Handy, ante, 51, followed.
Bill dismissed.
In Equity. ;rustice. 'fhe decisIOD herewith made, in Wooster v. Handy, ante, 51, requires that the bill in this case should be dismissed as to both of the reissued patents sued because of their invalidity as respeots claims 1,7,8, and 10 of the Pipo reissue, and olaims Sand 9 of the Robjohn reissue; ,the dismissal to be with costs. The same decision is made in the Buits against the defendants: The Singer Manufaoturing Company, a New York oorporation ; the Wilcox & Gibbs Sewing-maohine Company; the Doinestic Sewing-machine Company, impleaded, etc.; Allen Schenck, impleaded, etc.; the Singer Manufacturing Company, a New Jersey corporation i and Charles B. Barker. BLATCHFORD,
HOOD and others
'D.
BOSTON CAR-SPRING Co. and others. July 25, 1884··
(Oircuit Oourt, D. Massachu8etts. PATENT-EARLmR PUBLICATION-DEFINITENESS.
A patent is not invalidated by statements in an earlier publication, unless these statements are full and definite enough to inform those skilled in the art how to put into practice the invention now patented. ·
In Equity. Dickerson ft Dickerson, for complamants. Eu.qene N. Eliot, for defendants. Before GRAY and NELSON, JJ.