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great characteristic" of the Wells' machine ex-nal patent, so distinct a feature, fares even punged from the patent that no allusion to worse in the re-issue than the hood. We have such a device is to be found in it.

To patch up a sort of relationship between the original and the re-issue, and to account for the great feature in the drawing which is ignored in the re-issue, the following clause is inserted:

"In the machine illustrated by the accompanying drawings, the bottom plate, top guides or deflector, and side guides, are all united along their edges."

But there is in the re-issue no suggestion that such a union is essential, or even desirable, nor is there any allusion in the claims to any such union or relation of the various plates and guides.

The form of the aperture of the trunk, which in the original formed so distinct a feature, is entirely lost in the re-issue.

The tunnel in the original was at its outlet made to assume a shape nearly corresponding to a vertical section passing through the axis of the cone, but narrower, etc.

"Its top is gradually elevated and sides contracted to make the delivery aperture nearly of the form of the cone, but narrower and higher."

There is nothing whatever in the re-issue that indicates that the fur is deposited on a vertical section of the cone; nothing to indicate that it is not deposited on all parts of the cone at once, as in the Gill machine.

Indeed, the re-issue negatives the idea that the aperture is of the form of the cone at all, and there is nothing in the drawings that indicates that the aperture is not as wide at the top as at the bottom. The reasons given in the re-issue for placing the side guides further apart at the picker than at the outlet are, that by this arrangement a much longer picker may be used and so a greater amount of fur may be thrown.

We have quoted already a part of the description of these attachments to the tunnel or chamber, and shown that they were relied on exclusively to diversify the fur in thickness.

Although in the re-issue specification the hood is alluded to as "an additional deflector," yet in the claims it is entirely ignored as a separate device, and is omitted or absorbed into the top or "guide and deflector for directing the fur fibers on the tip and upper part of the cone," as set forth in the second claim.

The re-issue says: "There is an upper guide or deflector" which, in the drawing, represents the top of the tunnel.

"And still further to diversify the distribution of the fibers, an additional deflector, somewhat in the form of a hood, is hinged to the end of the deflector nearest the cone."

But one "guide or deflector" is described in the second claim, and it is said to be "For directing the fur fibers onto the tip and upper part of the cone." Is the top of the trunk omitted, or is the hood omitted, or are they merged into one guide or deflector?

In either view, no such guide or deflector is found in the original patent. The tunnel is a closed, rigid trunk, and the hood is an adjunct to it, having a peculiar function as an element

of it.

The hinged flap, which forms, in the origi

above quoted the description of it in the original. In the re-issue it is thus alluded to at the close of the elaborate description of the plate which is at the bottom:

"And with a view to facilitate distribution, the plate is made in two parts, with the part beyond the supporting screw and nearest the cone, hinged to the other part and provided with a cam and lever, or other equivalent device."

Thus, the hinged flap, so distinct a feature of the original chamber, is absorbed into the bottom plate or guide, and becomes a useless part of it.

Our conclusion upon this view of the case is, that the re-issue is for a different invention from that shown in the original patent, and so is void.

"Re-issued letters patent must, by the express words of the section authorizing the same, be for the same invention, and, consequently, where it appears on a comparison of the two instruments, as matter of law, that the re-issued patent is not for the same invention as that embraced and secured in the original patent, the re-issued patent is invalid, as that state of facts shows that the commissioner, in granting the new patent, exceeded his jurisdiction."

Clifford, J., Seymour v. Osborne, 11 Wall., 544, 20 L. ed. 38; Sickles v. Evans, 2 Cliff., 203; Cahart v. Austin, 2 Cliff., 528.

The great and peculiar characteristic of the Wells invention, "the chamber or tunnel as described and shown in his original patent," is not described in the re-issue, upon any possible construction of it; because,

1. "The devices for guiding the fur fibers" are described and claimed as separate and distinct from each other, and not as parts of an entire chamber or tunnel.

2. Because the form of the fur current, as it strikes a vertical section of the cone, is an essential element in the original patent, and is not indicated in any way in the re-issue.

3. Because the hood and flap described in the original were wholly relied upon to vary the distribution of the fur on the cone, and are ignored in the re-issue, and their functions, as claimed in the original, are ascribed "to the bottom plate or guide," and to the top or "guide and deflector."

4. Because the 4th claim omits entirely any trunk, guide or deflector, and everything that can imply them.

The combination of an apron, picker and cone, with a trunk interposed, is not infringed by the use of a combination of less than all the parts.

Where three elements are claimed in a patent combination, the use of two of the elements only does not infringe the patent.

Gould v. Rees, 15 Wall., 187, 21 L. ed. 39. "Where the defendant, in constructing his machine, omits entirely one of the ingredients of the plaintiff's combination, without substituting any other, he does not infringe."

Gould v. Rees, Clifford, J., 15 Wall., 194, 21 L. ed. 41.

The law is well settled, that a patent for a combination of old things applied to produce

a new and useful result is not violated unless and from which it was thrown upon a cone; all the parts or elements of the combination

are used.

Dodge v. Card, 2 Fish., 116; Hale v. Stimp. son, 2 Fish., 565; District of Mass., Clifford and Lowell, J. J.

A patentee cannot repudiate one of the parts of his machine after another inventor has taught him how to dispense with it.

Hale v. Stimpson, 2 Fish., 571; Lowell, J., cites Prouty v. Ruggles, 16 Pet., 336; Vance v. Campbell, 1 Black, 428, 17 L. ed. 171.

"In order to constitute an infringement, the whole combination must be used; because he claims not the various parts, but the whole combination together."

Approved by Grier, J., Case v. Brown, 2 Wall., 328, 17 L. ed. 818.

The inventor is limited to the precise combination shown in his original patent.

A claim for combination of several devices so combined together as to produce a particular result, is not good for a claim for "any mode of combining those devices which would produce that result," and can only be sustained as a valid claim for the peculiar combination of devices invented and described.

Burr v. Duryee, 1 Wall., 553, 17 L. ed. 650; affirmed and applied in Case v. Brown, supra. "We have had occasion to remark in a late case on this new art of extending patents for machines into patents for a mode of operation, a function, a principle and effect or result, so that by an equivocal use of the term 'equiva | lent,' a patentee of an improved machine may suppress all further improvements. It is not necessary again to expose the fallacy of the arguments by which these attempts are sought to be supported, though we cannot hinder their repetition."

Case v. Brown, 2 Wall., 328, 17 L. ed. 818, Grier, J.; Whiting v. Swayne, 4 Fish., 131. Messrs. Edward N. Dickerson, Chas. C. Beman, Jr., and Merwin R. Brewer, for defendant in error:

The patented machine is composed of parts which Henry A. Wells first combined for the purpose of forming hat bodies. The integers of this combination are, for the most part, mechanical devices, capable of separate existence and use in other combinations or machines; and the claims of the patent are founded upon the well settled principle, that new combinations of old devices producing a useful result, are patentable.

The machine performs two essentially distinet operations; the first of which relates to the separating of the fur and blowing it onto the cone; and the second to the modification of the current of fur, as it passes from the disintegrating apparatus to the cone; and Mr. Wells' invention in effect is: 1. An improvement in the means of disintegrating the fur, and throwing it onto the cone, which had been attempted before; and, 2. The creation of an entirely new idea, by which, as it is made concrete in the machine, the fur is distributed on the cone in varying thickness, which never had been attempted before.

The patent recognizes the fact that, "Prior to the invention of Henry A. Wells," an unsuccessful attempt had been made to form hat bodies by the use of a "carding engine," through which the fibrous material was passed,

and the reason why this machine would not work practically is stated in the patent. This machine is referred to in the plaintiff's brief as the Williams machine; and it was patented in 1833. This Williams machine may properly be said to be a combination of a carding engine, a revolving fan and a perforated exhausted cone, for the purpose of forming a hat body. To it might or may be added devices for regulating the deposit of fibers on the cone, by controlling them on their passage from the fan to the cone; and if any such devices had been made, they might have been patented, in combination with the other elements of the Williams machine, for the purpose of performing the functions which they were able to perform.

For this Williams combination Mr. Wells substituted the fundamental combination of his machine, now patented in the 4th claim, which consists of three parts: 1. The feeding apron, on which the separate batches of fur are placed. 2. A revolving brush or picker, which performs the double office of disintegrating the fur and blowing it forward towards the cone. 3. The exhausted perforated cone, upon which the fur is deposited.

This simple combination, as a substitute for the Williams combination, for the purpose of hat-forming, is claimed to be new and useful, and is patented. How new or how useful, is not a question before this court. That was in issue before the jury, and was submitted to them by Judge Woodruff, and found for the patent.

Starting with this combination, by which a very rapid action could be performed, and the fur delivered to the cone finely disintegrated, and in perfectly uniform quantities, successively, Mr. Wells proceeded to invent the devices by which the deposit of fur on the cone could be regulated, so that the thickness of the different parts of the hat body could be varied as desired a result that could not be produced by the use of the fundamental combination alone, which would either deposit the fur uniformly on the cone, or in an uncontrollable distribution.

This varied distribution results in two distinct effects; one of which is to make the tip of the hat body thin, and the other to make the band thick and the brim thin. Either of these results may be produced without the other; and neither is essential to a hat body, although both are valuable and desirable. A hat body of uniform thickness is good; but one of variable thickness better; and Mr. Wells' machine will make both kinds, as it may be used in whole or in part.

Exceptions.

First. The defendant below prayed the court to instruct the jury that he did not infringe the patent unless he used the specific devices mentioned in the patent, nor unless he used the entire trunk shown in the drawings and model of the Wells machine.

These modest requests Judge Woodruff declined to grant, being of opinion that mere form was not of the essence of this invention, and that this substance might be found in

Shapes quite different from those specific ones to which the defendant below proposed to restrict the patent.

This view of the law surprised the defendant's counsel and they excepted.

His Honor, however, turned these requests into legal form, adding the necessary qualifications, and then granted them.

Re-issued patents, in order that they may be valid, must be for the same invention as the surrendered originals. Inoperative or invalid patents, which are so by reason of a defective or insufficient specification, or by reason that the patentee claimed as his own invention or discovery more than he had a right to claim as new, may be surrendered if the error arose The ruling upon the fourth claim is the one by inadvertence, accident or mistake, and withto which most exception has been taken. It out any fraudulent or deceptive intention, and amounts to this: that the inventor of a combi- the provision is that the Commissioner, in nation of devices for performing a distinct part that event, shall, upon the payment of the of an operation, which combination may be sum required by law, cause a new patent for supplemented by additional devices for perfect- the same invention, and in accordance with the ing or modifying its operation, may patent that corrected specification, to be issued to the propcombination, irrespective of such additional de-er party, as prescribed in the 53d section of the Patent Act. 16 Stat. at L. 206. vices as he or others may invent.

It cannot be questioned that if Mr. Wells had stopped when he made the combination of the 4th claim, he might have patented that combination, which is obviously a great improvement on the Williams' combination; but if the - plaintiff in error is right and Judge Woodruff wrong, then Mr. Wells lost the right to take such a patent, because he also invented devices for operating on the current of fur while it is passing from the picker to the cone of his first combination, and thereby improved the result proposed to be accomplished-which is ab

surd.

Mr. Justice Clifford delivered the opinion of the court:

Unquestionably, the specifications in such a case may be amended to correct an [*16 error which has arisen by inadvertence, accident or mistake, if without any fraudulent or deceptive intention; but the express provision in the new Patent Act is that no new matter shall be introduced into the specification, and that in the case of a patent for a machine neither the model nor drawings shall be amended, except each by the other, which is a very important provision to secure the fulfillment of the condition that the re-issued patent shall be for the same invention as that secured by the original patent.

Matters of law only are in dispute here between the parties, as the judgment of the oirValid letters patent may be granted for an cuit court was rendered in a suit at law for invention which consists entirely in a new com- the infringement of a patent, and the cause was bination of old ingredients, provided it appears moved into this court by a writ of error to rethat the new combination of the ingredients vise the rulings and instructions of the circuit produces a new and useful result; but the rule judge but it will be necessary to refer someis equally well settled, in such a case, that the what fully to the specification of the original invention consists merely in the new combina-patent, and to compare the same with the tion of the ingredients, and that a suit for an specification of the re-issued patent, which is infringement cannot be maintained against a the patent in suit, in order to understand the party who constructs or uses a substantially exact nature and scope of the controlling quesdifferent combination, even though it includes tions presented for decision. the exact same ingredients. Alterations, however, in a combination, which are merely 15*] *formal, do not constitute a defense to the charge of infringement, as the inventor of a new and useful combination of old ingredients, is as much entitled to claim equivalents as any other class of inventors, but they cannot suppress subsequent improvements which are substantially different from their inventions, whether the new improvement consists Exact description of the invention was given in a new combination of the same ingredients in the specification of the original patent, or of some newly discovered ingredient, or even which affords the most ample means to define of some old ingredient performing some new the nature and scope of the improvement acfunction not known at the date of the letters tually made by the patentee as secured by that patent as a proper substitute for the ingredient patent.

withdrawn.

Separate examination of the numerous questions involved in the bill of exceptions will not be attempted, as it would extend the opinion to an unreasonable length, nor will it be attempted to pass in review more than two or three matters assigned for error in this court, as it is scarcely probable that many of them will be of much importance if the parties elect to go to a new trial.

My improvements, he says, consist in feedOld ingredients known at the date of letters ing the fur after it has been picked to a rotatpatent granted for an invention, consisting of a new combination of old ingredients, if also ing brush, between two endless belts of cloth, known at that date as a proper substitute for one above the other, the lower one horizontal one or more of the ingredients of the invention and the upper one inclined to gradually comsecured by the letters patent, are the equiva-press the fur and gripe it more effectually lents of the corresponding ingredients of the where it is presented to the rotating brush, patented combination. Such old ingredients, which moves at great velocity, and throws it so known at the date of the letters patent into a chamber or tunnel which is gradually granted, are the equivalents of the ingredients changed in form towards the outlet, where it a shape nearly corresponding to a of the patented combination, and no others, assumes and it may be added that that, and that only, vertical section passing through the axis of the is what is meant by the rule that inventors of cone, but growing narrower, for the purpose of a new combination of old ingredients are as concentrating and directing the fur thrown by much entitled to claim equivalents as any the brush to the cone. other class of inventors.

Currents of air enter at the same time 707

through an aperture immediately under the it is hinged to the upper part of the delivery brush, in consequence of the rotation of the aperture of the chamber and that it is conbrush and the exhaustion of the cone, for the nected with an eccentric by means of a cord 17*] *purpose of more effectually directing and bell crank passing over a pulley, so that the fibres towards the cone, which is placed each revolution of the eccentric carries the hood just in front of the delivery aperture of the up and down to direct the discharge of the chamber or tunnel, which aperture is provided fibers and to distribute the same onto the cone, at the top with a bonnet or hood, hinged there- giving a greater thickness in the parts of the to, and at the bottom with the hinged flap to hat which form the brim and edge than on the regulate the deposit of the fibers on the cone top and crown, and he suggests the means to or other former with the view to distribute the be employed by the manufacturer when it is thickness of the bat wherever more is required desired still further to diversify the distributo give additional strength to the manufac- tion of the fibers. ture.

Means are also described for holding the fibres composing the bat onto the cone, so that the bat may be removed from the cone or former before the hardening process is applied, and for that purpose the representation is that the patentee first covers it with felted or fulled cloth, and then he employs one or two metallic cones, one to put over the bat after it has been surrounded with the moist cloth, for the purpose of making pressure on the fibers and to allow hot water to circulate when the whole is immersed therein to harden the bat preparatory to felting, and the other metallic cone is to be placed within the perforated one on which the hat has been formed, and which is necessarily thin and weak, for the purpose of resisting the pressure of the surrounding water, consequent upon a partial vacuum produced within, when the whole is withdrawn from the

water.

Intelligent description is also given of the cone and of the functions which it performs, and of the whole mode of operation from the time the fibers are placed on the feed apron until the hat is formed, but there is no trace of any suggestion or intimation that the operation can be performed or the panted result be produced without the chamber or tunnel. Instead of that it is unquestionably true that the chamber or tunnel is a material ingredient of the combination and an essential feature of the described invention. Unmistakable support to that view, if any be needed beyond what is disclosed in the description given of the same, is also derived from the claims [*19 of the patent, three of which, in express terms, describe the invention as a combination, and include the chamber or tunnel as one of the ingredients of the combination. Besides the evidence in that direction, derived from the first three claims, the fourth claim is for the

the proper distribution of the fibers, which device is obviously but a mere appendage of the chamber or tunnel in terms included in the described combination.

Special reference is then made to the draw-employment of the hinged hood to regulate ings, and a detailed description is given of every device included in the apparatus and of the functions which the respective devices of the apparatus perform. Superadded to those details is a general description of the mode in which the described apparatus operates and of the result which it accomplishes, in substance as follows: As the fibers are first presented they are acted upon by the brush, which moves with great velocity, and they are properly laid by its downward action, but when liberated they are carried down the curved surface of the chamber or tunnel, and at the lower edge of that device they meet a current of air that enters a narrow aperture near the bottom of the chamber or tunnel, which extends the whole length of the brush, and prevents the 18*] fibers from *falling and resting on the bottom of the chamber or tunnel and carries them onto the perforated cone.

Such a combination, if new and useful, and if it produces a new and useful result, is the proper subject of a patent to secure to the owner or proprietor the exclusive right to make, use and vend the thing patented for the period allowed by the Patent Act. Beyond doubt such a patent is valid and operative, but the rights of the patentee under it differ in one respect from those of a patentee for an invention which consists of an entire machine, or of a new and useful device, as the rights of a patentee for a mere combination of old ingredients are not infringed unless it appears that the alleged infringer made or used the entire patented combination. Gould v. Rees, 15 Wall., 194, 21 L. ed. 41. Minute description is also given of the cham- Invalid and inoperative patents may be surber or tunnel and of its appendages and of the rendered and re-issued for the same invention, functions which it performs, as follows: that but Congress never intended that a patent it extends over and under the brush and is so which was valid and operative should be rearranged as to have a slight motion, the axis issued merely to afford the patentee an opof which is the same as that of the brush, and portunity to expand the exclusive privileges that its bottom rests on set screws to regulate which it secures, to enable him to suppress the delivery end of the same relatively to the subsequent improvements which do not conflict cone; that its forward end is provided with a with the invention described in the surrendered hinged flap regulated by a cam lever as the patent. Evidence of a decisive character to means of regulating the delivery of the fibers: negative the theory that such a practice finds that its top is gradually elevated and that the any support in the Act of Congress, besides sides are contracted to make the delivery aper- what existed before, is found in the new Patture nearly of the form of the cone but nar-ent Act, which expressly provides that no new rower and higher; that its upper part is provided with a hood so curved as to correspond generally with the curve of the top of the cone. Particular description is also given of the mode in which the hood is arranged and of the functions which it performs, as follows: that

matter shall be introduced into the specification; and in case of a machine patent, that neither the model nor the drawings shall be amended except each by the other.

Two or three only of the errors assigned will be much considered. They are in sub- [*20

1. That the whole description of the chamber or tunnel and its appendages is left out of the specification of the re-issued patent, and that it contains a full description of other devices different from the chamber, in form at least, to perform the functions of the chamber and its appendages as described in the original specification.

stance and effect as follows: (1) That the, secured by it is or is not the same as that of court erred in refusing to instruct the jury the original. Wide differences between the two that the re-issued patent is invalid because it specifications are manifest in two important is not for the same invention as the original. particulars: (2) That the court erred in refusing to instruct the jury that the defendant's machine did not infringe the fourth claim of the plaintiff's patent unless it had the feeding device of the original patent in combination with the rotating brush or picker and the pervious cone and the chamber or tunnel described in the original specification. (3) That the court erred in instructing the jury that the re-issued patent is valid as respects the fourth claim if the combination of the three ingredients therein mentioned was new and could be usefully employed for the purpose of facilitating the making of hat bodies, supplemented by any known means of guiding the fur in such a way as to bring, by the operation of these three devices, the fur to the cone so as to make a hat body, or if those three devices would make a hat body without the aid of other means of protecting the fur against escape that would be serviceable for any purpose, then it was patentable, even without the trunk, which is also called the chamber or tunnel.

Material matters are left out of the specification when compared with the original, and it is beyond dispute that new features are introduced in the description of the devices to be employed in guiding the fibers of the fur when taken from the feeding mechanism by the rotating brush or picker. They are picked and thrown towards the cone as in the other specification, in which it has already appeared that the representation is that they are guided and directed in the manner and for the purpose specified by the chamber and *its append- [*22 ages. Instead of that, the description in the re-issued specification is that the function of guiding and directing the fur is effected by the Three or more important propositions of pat- following means. Nothing is said about the ent law are involved in the exceptions covered chamber, but the description is that a plate is by the assignment of errors, which it becomes provided and placed under the brush, and that important to restate with some care, because it extends towards the pervious cone, an open neither the prayers for instructions, nor the space being left between that end of the plate rulings of the court in refusing the same, nor which is nearest the picker and the concave the instructions given, nor the assignment of part below the feeding mechanism that a curerrors, are in every respect free from ambiguity. rent of air may enter freely to assist in carryPerhaps no one of the prayers for instruc- ing the fibers towards the cone as they are tion corresponds in precise terms with either thrown by the brush or picker, and the further of the first two propositions; but it is never-representation is that the plate guides the theless true that many of them, as applied to fibers as they are traveling and prevents too the separate claims of the patent, did raise great an accumulation of them immediately the questions involved in those propositions, around the lower edge of the cone, the greatand it is equally certain that the court in sev-est thickness of the bat being required to be eral instances ruled to the effect that the re- deposited some distance above, that the bat issued patent was not invalid for the reason when made may be thickest at and about the assigned, and that the machine of the defend- junction of the rim and crown, technically ant did infringe that of the plaintiff, even termed the band, and that it also prevents though it did not contain the chamber or tun-waste, as otherwise many of the fibers would nel described in the plaintiff's original specifi- be carried by the force of gravity below the cation. influence of the currents traveling towards the 21*] *Filled as the record is with proofs to cone, particularly towards the close of the establish the truth of the preceding state-operation, when the currents induced by the ments, further argument upon the subject is exhausting fan become very faint. unnecessary. Throughout the trial it was the Desciption is then given of the mode in constant aim of the defendant to defeat the which the plate is adjusted and of the funcplaintiff's action upon the three grounds men- tions which it performs as follows: that it tioned: (1) That the re-issued patent was in- rests on an adjusting screw, so that that end valid because it was not for the same inven- of it which is nearest the cone can be readily tion as the original. (2) That the defendant elevated or depressed relatively to the base of did not infringe the plaintiff's invention be- the cone, as it may be desired to vary the discause his machine did not contain the cham-tribution of the fibers with a view to make ber or tunnel of the plaintiff's invention, nor its appendages. (3) That the re-issued patent was invalid as it respects the fourth claim of the same, because the combination contains only three of the four ingredients described in the original specification, and does not include either the chamber or tunnel or its appendages.

Unquestionably, these several defenses were pressed in many forms, and all must agree that the court refused to sustain any one or all of them as often as they were presented by the defendant.

Attention will next be called to the specification of the re-issued patent as the best means by which to determine whether the invention

hats with a broad or narrow rim and with the rim thicker or thinner relatively to the other parts, the plate being made in two parts with a view to facilitate the distribution, the part beyond the supporting screw and nearest the cone being hinged to the other part and being provided with a cam or lever or other equivalent device.

Provision is also made for a device called an upper guide or deflector, which, as the representation is, extends from the feeding mechanism over the rotating brush or picker, an! forward of it towards the cone to direct the fibers and effect a *proper distribution [*23 of them on the top of the cone and down the sides thereof towards the base; and the fur

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