McDowell v. Ideal Concrete Mach. Co.

BAKER, Circuit Judge (after stating the facts as above). In General Electric Co. v. Richmond St. Ry. Co., 178 Fed. 84, 102 C. C. A. 138, this court said: — 820 — “Without the existence of one or the other of two conditions precedent, the Commissioner of Patents is not authorized to grant a reissue. Either the original specification must be defective or insufficient, or the original claims must embrace more than the patentee had a right to claim as new. But neither condition is available unless the error arose from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention.” ___, . In the present case the mistake, if any, did not inhere in the drawings or in the specification (apart from the claims), nor did the patentees claim more than they were entitled to claim as new. So if the word “specification” in the second sentence of the above quotation is to be limited to that part of the patent which precedes the formal claims, this case would be at an end. In the Richmond Case, how* ever, the Commissioner’s jurisdiction to grant a reissue was invoked on the grounds that the original specification did not describe with sufficient definiteness or accuracy the action of the magnetic arc-extinguishing device, and that the term “arc deflector,” as used in the specification and in claims 10, 11, 12, and 13, was uncertain and ambiguous; and it was therefore unnecessary to state the construction given to the word “specification,” which appears in the opinion in exactly the same context as in the statute. [1, 2] By settled interpretation the, word “specification” in the first sentence of section 4916, Rev. St. (U. S. Comp. St. 1901, p. 3393), may cover the entire original patent. The inquiry, therefore, is what are the conditions under which a reissue may lawfully be granted in lieu of an original patent unaltered save by the addition of enlarging claims ? One condition is that, on surrender of the original patent, a new patent “for the same invention” shall be issued. Other conditions, emphasizing the one just stated, are that “no new matter shall be introduced into the specification”; and, the original and reissue here being for a machine, and no model being filed, that “the drawings shall not be amended.” For example if, in a patent for improvements in an old art, the drawings fully exhibit a complete and operative machine made up of 20 elements; the specification (apart from the claims) clearly explains the machine, its working principle and the best mode in which the patentee has contemplated applying that principle, and also particularly points out that the patentee’s contribution to the art consists (a) of the combination, in the machine, of elements 1,'2, 3, and 5, (b) of elements 2, 3, 4, and 6, (c) of elements 5, 6, 7, and 9, and (d) of elements 6, 7, 8 and 10 (all in accordance with section 4888 [U, S. Comp. St. 1901, p. 3383]); and the claims distinctly cover (a), (b) , and (c) — then there would be a basis for an application for a reissue by showing, say, that claim (d) had been drafted but had been inadvertently omitted by a copyist. Conversely, if claims (a), (b), (c) , and (d). were in the original and by mistake some part of the description of the machine had been omitted, or there had been a failure in the statement of invention to include (d), there would be grounds for a reissue. In the first example the patent (partly operative) would be inoperative to protect a part of the invention, described, but not claimed; in the second, claimed, but not explained — 821 — and described. In both, there would be a defective or insufficient patent which was inoperative to secure fully to the inventor a monopoly of the subject-matter disclosed in the patent as his invention or inventions. Continuing the illustration suppose that ,the original patent, after describing the machine as aforesaid, and particularly pointing out that the invention or inventions consisted in (a), (b), (c), and (d), had distinctly claimed (a), (b), (c), and (d). In what respect is the patent inoperative or invalid? True, the drawings and description showed a machine of 20 elements. But any one on reading the patent would have the right to believe and to act on the belief, so far as the owner of the patent is concerned, that elements 11 to 20, and every combination thereof, were open to free use, and that elements 1 1o 10 were open, and also every combination of .them except (a), (b), (c), and (d). Now, if the truth was that the inventor in constructing the machine had made new and useful combinations among elements 11 to 20 and also broader inventions than those described and claimed among elements 1 to 10, it would seem that from his point of view they were all one and the same invention or group of inventions. But if enlargement is to come, not from evidence contained in the original patent (or in the proceedings to obtain it), but from what the inventor subsequently says (truthfully or untruthfully) was in his mind prior to filing the original application, a region 'of danger, of temptation to fraud and deception, would be opened wide which Congress has commanded should be kept closed. For the reissue must be limited to the same invention that the inoperative patent discloses as the invention. “Reissued letters patent must, by the express words of the section authorizing the same, he for the same invention, and consequently where it appears on a comparison of the two instruments, as matter of law, that the reissued patent is not for the same invention as that embraced and secured (attempted to be secured?) in the original patent, the reissued patent is invalid, as that state of facts shows that the Commissioner, in granting the nfew patent, exceeded Ms jurisdiction.” Seymour v. Osborne, 11 Wall. 516, 544, 20 L. Ed. 33. “Invalid and inoperative patents may be surrendered and reissued for the same invention, but Congress never intended that a. patent which was valid and operative should be reissued merely to afford the patentee an opportunity to- expand the exclusive privileges which it secures, to enable him to suppress subsequent improvements which do not conflict with the invention described in the surrendered patent.” Gill v. Wells, 22 Wall. 1, 19, 22 L. Ed. 699. “The original patent was not inoperative nor invalid from any defective or insufficient specification. The description given of the process claimed was, as stated by the patentee, full, clear, and exact, and the claim covered the specifications; the one corresponded with the other. * * * The evident object of the patentee in seeking a reissue was not to correct any defects in specification or claim, but to change both, and thus obtain, in fact, a patent for a different invention.'’ Russell v. Dodge, 93 U. S. 460, 464, 23 L. Ed. 973. “The Legislature was willing to concede to the patentee the right to amend Ms specification so as fully to describe and claim the very invention attempted to be secured by his original patent, and which was not fully secured thereby, in consequence of inadvertence, accident, or mistake; but was not willing to give him the right to patch up his patent by the addition of other inventions, which, though they might be his, had not been applied for by him, or, if applied for, had been abandoned or waived.” — 822 — And at this point the Supreme Court tells such an inventor how he may properly invoke the Commissioner’s jurisdiction: “For such inventions, he is required to make a new application, subject to such rights as the public and other inventors may have acquired in the meantime.” Powder Co. v. Powder Works, 98 U. S. 126, 138, 25 L. Ed. 77. In considering an argument, based on certain general statements in Seymour v. Osborne, that whatever was suggested or indicated in the original specification, drawings or model, was to be considered a part of the invention, even though not stated to be, or described as, a part of the invention the Supreme Court said: "In these extracts from the opinion it is seen that the court adheres strictly to tlie view that, under the statute, the Commissioner has no jurisdicion to grant a reissued patent for an invention substantially different from that embodied in the original patent, and that a reissue granted not in accordance with that rule is void. In what is there said about redescribing the invention, and about including in the new description and new claims what was suggested or indicated in the original specification, drawings or patent office model, it is clearly to be understood, from tbe entire language, that the things so to be included are only the things which properly belonged to the invention as embodied in the original patent; that what that invention was is to be ascertained by consulting tbe original patent; and that, while the new description inay properly contain things which are indicated in the original specification, drawings or patent office model (though not sufficiently described in the original specification), it does not follow that what was indicated in the original specification, drawings, or patent office model is to be considered as a part of the invention, unless the court can see, from a comparison of the two patents, that the original patent embodied, as the invention to be secured by it, what the claims of the reissue are intended to cover.” Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, 98, 8 Sup. Ct. 38, 44, 31 L. Ed. 100. “There is no evidence of an attempt to secure by the original patent the inventions covered by the first eight claims of the reissue, and those inventions msut be regarded as having been abandoned or waived, so far as the reissue in question is concerned, subject, however, to the right to have made a new application for a patent to cover them; in other words, those eight claims are not for the same invention which was originally patented.” Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, 102, 8 Sup. Ct. 38, 46, 31 L. Ed. 100. “In the. present case, the original patent was not inoperative or invalid by reason of a defective or insufficient description of the invention, for the text of the specification of the reissue, aside from the claims, is substantially the same as that of the original. Nor was the apxilication for the reissue made because Tirrell in the original had claimed as his invention more than he had a right to claim as new, for his oath declares that the defect consists in the ‘omission of claims.’ The object of the reissue was to prevent the patent from being confined to the apparatus illustrated in the drawings and described in the specification of the original, and to enable it to cover apparatus covered by patents issued subsequently to the original.” Electric Gas Co. v. Boston Electric Co., 139 U. S. 481, 500, 11 Sup. Ct. 586, 593, 35 L. Ed. 250. “It was held by the Circuit Court that, while claim 1 of the reissue was not embraced in the original, tlie matter claimed by that claim was so embraced; that tlie language of tbe original specification clearly described tlie closed-breast furnace; that a furnace built in accordance with the language of the original would be necessarily closed-breasted: tliat tlie oilier element of claim 1 of the reissue, ‘where the slag is discharged through an oxiening or openings cooled by water.’ was no less clearly described 'in the original; that tlie drawings originally filed showed the same; that claim 1 of the reissue might, therefore, have been embraced in the patent as first issued, or introduced into the reissue without changing the specification; that tlie change made by the reissue simply expressed tbe same thing in different terms; that claim 1 of — 823 — the reissue was, therefore, not an enlargement of ilie invention; that such additional claim, omitted through inadvertence, accident or mistake, might be secured by means of a reissue, if applied for within a reasonable time: that in this case the application was made a little after the expiration of one year; and that the question whether the omission occurred through inadvertence, accident or mistake, was a question for the Commissioner of Patents. * * But the material point is the extension of the invention claimed, by ihe addition of claim 1 of tiie reissue, the words of which, ‘substantially as set forth,’ refer to the new matter in the reissue, that the slag Is discharged 'through an opening cooled with water in such a manner that the tymp, or fore hearth, and the stove wall can be dispensed with.’ The intention manifestly was to construe the first claim so as to cover any kind of blast furnace with a closed breast, having a slag-discharge opening cooled in any manner or to any extent by water. There is nothing in the original specification which indicates that any such claim was intended to be made in the original patent. On the contrary, the whole purport of that specification shows that it was intended to claim only a slag-discharge piece or cinder block constructed and attached in a specific maimer. ® * * We are of opinion that the present, reissue is invalid, so far as the first claim of it is concerned, because it is not for the same invention as the original patent.” Freeman v. Asmus, 145 U.S. 226, 235, 239, 241, 12 Sup. Ct. 939, 941, 36 L. Ed. 685. [3] Boyle’s original patent for an improvement in flushing apparatus for water-closets was granted January 1, 1884. Application for reissue was filed January 2, 1885. Boyle’s affidavit stated that the original was inoperative because “the principal claims are defective or insufficient in that they are, or appear to he, limited to combinations embodying the ‘flushing-chamber F’ as an essential element, whereas that chamber is not essential to his invention in its generic features'’; that the original specification stated that his invention introduced “a new principle for operating double-trapped or siphon water-closets, namely, that of producing the requisite vacuum by causing the falling flushing water to act as an injector and draw air along with it”; that in his early experiments he had devised forms in which “flushing chamber F” had no part in the operation: that in describing his invention to his attorney, he did not describe the first constructions devised by him, but'only the preferred constructions; that in November, 1884, he noticed a patent to Hanson, “showing Boyle’s said invention in a form almost identical with one of the said constructions originally invented by Boyle”; that thereupon he consulted his attorney, who advised him of the defect or insufficiency of his original patent; that, prior to being so advised, he had no suspicion that his patent was defective or insufficient; and that he thereupon instructed his attorney to prepare an application for reissue. “The opinion of the Circuit Court, in speaking of the contention that the original patent was inoperative to protect the invention intended to be covered by it, said that such patent certainly protected the flushing apparatus that was claimed as a whole in the first claim, and carefully described in the, specification; that it protected also all the combinations which were claimed in iis several claims; ihat it was not necessary to change the specifications or drawings to secure fully the apparatus claimed in the several claims of the original patent; that that was the identical apparatus which Boyle intended to manufacture; that, therefore, it could not be said that the original patent was ‘inoperative or invalid’ in the sense that Boyle could not hold what he claimed, and intended to manufacture, because his original specification was either defective or insufficient ; that what Boyle meant by asserting that the original patent was inoperative was only that a particular combination of — 824 — parts niigtit 'have been claimed originally that was not claimed, and that his original patent was inoperative to protect snch particular combination, because no right to the protection of it had been asserted. * * * We are unanimously of opinion that these views of the Circuit Court are sound. * * * Tlie defendant had no flushing chamber in any flushing apparatus made by it; and such flushing chamber was an essential element in the specification and drawings of the original patent, and was one of the necessary elements in each of the six claims of the original patent as made.” Huber v. Nelson Mfg. Co., 148 U. S. 270, 282, 285, 290, 13 Sup. Ct. 603, 607, 37 L. Ed. 447. Turning now to the original patent in question, the first thing noted is the admission that machines for manufacturing concrete blocks are old. “The principal object of our invention” is to provide a simple and cheap machine in which the face-design can be changed by the substitution of a single plate* “The principal novel feature of our invention”, resides in constructing the mold and cores so that the block is formed face downward. “Our invention consists of a pivotallymounted mold formed of hinged sections, a pair of horizontally-movable cores or plungers for forming the hollow interior of the blocks,, an upright supporting frame on which the molds and movable cores are mounted, and means for moving said cores into and out of the mold.” “Our invention” is then particularly described, and next the operation of “our invention” is given, the machine and its mode of operation being as shown in the statement of the case. On this disclosure and declaration of invention were based three claims which fully protected the machine as portrayed in the drawings, as described in the specifiction, as intended to be manufactured by the patentees, and substantially as manufactured by their assignee. More nearly than the others, claim 6 of. the reissue can be read upon appellant’s machine, the construction and operation of which have been given in the statement. By its wording claim 6 covers every combination of frame, longitudinally-movable core, and five-plate mold, in which the “bottom plate is adapted to be swung up to vertical position and the front plate to horizontal position to carry the molded block to discharging position.” Whereabouts in the original patent is there any disclosure that appellant’s machine, or its mechanical equivalent, was the invention of Borst and Groscop? Not in the original claims, for if appellant’s machine were the mechanical equivalent of the claimed machine, it would not have been necessary to apply for a -reissue in order to maintain an injunction suit. Not in the original drawings, for they picture accurately appellee’s machine and nothing else. (To enable the drawings to disclose appellant’s machine or its mechanical equivalent, it would be necessary to violate the command that “the drawings shall not be amended.”) Not in the original description of the construction and mode of operation, for it describes accurately the construction and mode of operation of appellee’s machine and nothing else. (To enable the specification- to point out the construction and mode of operation of appellant’s machine or its mechanical equivalent as being the invention of Borst and Groscop, as being something beyond the mere mechanical equivalent of the machine which they had already particularly pointed out and distinctly claimed, it would be necessary to violate the command that “no new — 825 — matter shall be introduced into the specification.”) Nowhere is found any suggestion that the rear wall, with end walls hinged thereto, may be rigidly affixed to the frame, and that the bottom and front walls may be rigidly affixed to each other and mounted upon a single pivot. No intimation that the block may be carried to discharging position three-fiftlis free of the mold, instead of four-fifths locked in the mold. Not even an obscure hint that other forms of concrete block machines (beyond mere mechanical equivalents of the form particularly pointed out and distinctly claimed) liad ever been devised or even thought of by Borst and Groscop, unless such a hint is lurking in their statement that “our invention consists of a pivotally-mounted mold formed of hinged sections,” with cores and supporting frame. Appellee’s mold is formed of hinged sections, each of the five separately movable upon its hinge. Only two of appellant’s sections are separately movable. Appellee’s mold, as an entirety, is not “pivotally-mounted,” but the description points out that all of the walls, except the rear one, move forward as a unit, and so the general statement is essentially true when applied to appellee’s machine. There is no teaching that during the movement of the moist and plastic block the end plates are not necessary. The general statement should be read as a part of the entire document. and, so read, it applies to appellee’s machine and nothing else. If appellant’s machine were covered by a patent, it would be a pretty reckless expert who would cite Borst and Groscop’s aforesaid general statement of invention as an anticipatory disclosure of appellant’s invention. In the Freeman Case, supra, the drawings and specification of the original patent showed and described the features embodied in the reissue claim. But they were shown and described as parts of a blast furnace, not as parts óf the patentee’s invention of improvements in blast furnaces. And because neither statement nor claim of invention (either perfectly or defectively made) pointed out the added features, the reissue was declared void. Here, appellee is in a weaker position, for neither drawings nor specification showed appellant’s machine or its mechanical equivalent. In the Huber Case, supra, the inventor, before applying for his patent, made a device like the one which the defendant subsequently adopted. And in his original specification he stated that his invention introduced “a new principle for operating double-trapped or siphon water-closets, namely, that of producing the requisite vacuum by causing the falling flushing water to act as an injector and draw air along with it.” The inventor’s first form of device, his patented form, and the defendant’s form, equally employed the “new principle.” But because the inventor, in his original patent, showed no way of employing the “new principle” except by the use of a combination in which a flushing-chamber was an essential element, the enlarged claims of the reissue were struck down. Here, appellee is still weaker. There is no claim that Borst and Groscop, before applying for their patent, ever in fact made a machine of the form and mode of operation of appellant’s machine. And their original specification did not contain even a — 826 — general statement of “a new principle for operating” concrete block machines which was common to the two. We hold that the original patent was not inoperative or invalid; that the reissue claims in suit were not for the same invention that was meant to be, and was, in fact, secured by the original patent; and that the Commissioner was therefore without jurisdiction to grant the reissue. o The decree is reversed, with the direction to dismiss the bill for want of equity. Footnotes [*] For other cases see same topic & § number in Dec. & Am. Digs. 1907 to date, & Rep’r Indexes