DECISIONS

IN THE

SUPREME COURT OF THE UNITED STATES,

OCTOBER TERM, 1874.

GILL v. WELLS.

1. An original patent of one Wells, for a hat-body machine, among other things, minutely described a specific device called a "chamber or tunnel," composed of two side pieces, a bottom piece, and a top piece, permanently united together, so as to form in fact a single tubular device, and described minutely the functions which this device performed. A reissued patent separated this "chamber or tunnel" into its several component parts, called by distinct names, viz., a "bottom guide," and a "top guide," and "side guides;" and ascribed independent functions to each of these parts, and claimed in succession each of these parts in combination with other parts of the hat-body machine. At the same time the description of this composite device, "the chamber or tunnel,” and its functions as such, which were contained in the original patent, were omitted entirely from the reissued specification. Held, that the reissued patent was invalid, as not being for the same invention as the original patent.

2. A complete description was given in the original patent of the combination of the four parts which constituted the "chamber or tunnel," and that patent did not contain the slightest evidence that the patentee ever made any other combination than that of all the four parts which together form this “tunnel or chamber." Held, that in such case, even if the patentee had subsequently discovered that he could accomplish a new and useful result by a combination of some of the several parts included in this "tunnel or chamber," he could not surrender and reissue his patent for this combination of a smaller number of the ingredients, because the reissued patent in that event would not be for the same invention as the surrendered original.

3. Such a description of a combination of other parts, besides the first-mentioned, would constitute new matter, the introduction of which into the

VOL. XXII.

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Statement of the case.

specification of a reissued patent is forbidden by section fifty-three of the Patent Act of 1870.

4. A patentee cannot legally surrender a patent for an invention consisting of a combination of old ingredients, and amend the descriptive parts of the specification by striking out the entire description of one of the ingredients of the combination and inserting in lieu thereof a full description of several other devices, without any allegation that they are the equivalents of the one whose description is stricken out.

5. The case of Gould v. Reese, 15 Wallace, 194, commented on.

6. An equivalent for the ingredient of a combination consisting wholly of parts that are old must be one which was known at the date of the original patent as a proper substitute for the ingredient left out.

ERROR to the Circuit Court for the Southern District of New York.

Mrs. Eliza Wells, administratrix of Henry A. Wells, sued Gill at law for infringement of letters-patent for an improvement in machinery for making hat-bodies. Original letterspatent had been granted to the said Henry, April 25th, 1846. The patent was reissued in 1856, in two parts, No. 396 and No. 400, to an assignee of Wells, and was extended by the Commissioner of Patents, April 17th, 1860; and again reissued in December, 1860, to the assignee of Wells, in No. 1086 and No. 1087. No. 1086 was again reissued to Burr, June 17th, 1862, in No. 1318. On the 2d of March, 1867, Nos. 1087 and 1318 were extended to Eliza Wells, as administratrix of Wells, by act of Congress; and on the 19th of May, 1868, No. 1087 was again reissued in No. 2942. On this the present suit was founded.

The cause was tried upon the general issue, with notice of certain special matters in defence, and a verdict for the plaintiff below for nominal damages was rendered.

The defendant excepted to certain rulings, instructions, and directions given below, and exceptions being taken the case was now before this court.

The subject of hat-forming machines and the art relating to the making of hats is set out by the present reporter in the case of Burr v. Duryee, which was a suit under a prior

*

* 1 Wallace, 531.

Statement of the case.

reissue of the already mentioned patent of Wells; and it is indispensable that the reader of the present case, unless he has already a knowledge of the subject in some other way, master the general history presented by that case, before he proceed with the present one.*

As stated in that case, Wells had been preceded by a machine of one Williams, in which there was a feed-apron for car rying the fur, a disintegrater, a fur conductor, a rotating cone, and an exhaust.

The Wells machine, as shown in his original patent and in the model filed by him in the Patent Office, consisted of certain parts organized together into a hat-forming machine, which consisted of

1st. Feed-aprons.

2d. A revolving brush.

3d. A tunnel or chamber.

4th. An upper hood and lower flap as adjuncts to the trunk.

5th. An exhaust, rotating, perforated cone.

These several parts are shown combined in Fig. 1, which is a copy of Wells's original patent drawing.

The functions of these several parts and their mode of operation were thus set out in the original patent of Wells:

"My improvements consist in feeding the fur (called the stock) after it has been picked, to a rotating brush between two endless belts of cloth, one above the other, the lower one horizontal and the upper inclined, to gradually compress the fur and gripe it more effectually where it is presented to the action of the rotating brush, which, moving at a great velocity, throws it in a chamber or tunnel which is gradually changed in form towards the outlet, where it assumes a shape nearly corresponding to a vertical section passing through the axis of the cone, but narrower, for the purpose of concentrating and directing

* For the better understanding of that case, the reporter deems it well to say that "the figure" referred to on page 550 of that report (in the 7th and 8th lines from the top of the page just named), is figure 21 on page 560, and not figure 10 on page 549, as might not unnaturally be supposed. The matter is put rightly in late editions of Volume I, but is not so in earlier editions.

Statement of the case.

the fur thrown by the brush on to the cone; this casing being provided with an aperture immediately under the brush, through which a current of air enters in consequence of the rotation of the brush and the exhaustion of the cone, for the purpose of more effectually directing the fibres towards the cone, which is placed just in front of the delivery aperture of the chamber or tunnel, which aperture is provided at top with a bonnet or hood hinged thereto, and at the bottom with a hinged flap, to regulate the deposit of the fibres on the cone or other former, with a view to distribute the thickness of the bat wherever more is required to give additional strength."

It will be seen that the marked feature of this invention here set out was a tunnel or chamber placed between the revolving brush disintegrating mechanism and the revolving perforated cone, this tunnel being adapted to collect or receive the fur from the disintegrating brush, to convey it towards the cone, and then to discharge it in a concentrated form against the revolving cone. The tunnel had an opening in front, under the revolving brush, through which a current of air entered. This current of air, constrained by the casing or walls of the tunnel, was plainly the direct agent in conveying the fibres to and discharging them on to the cone.

This tunnel was represented in the original model and patent as an integral structure, as shown in Fig. 2; and

although, like all tubular structures of rectangular section, it had a bottom and top and two sides, yet these were shown as made of uniform material and united rigidly and permanently together.

The patent also described two movable adjuncts to the