464 HOLT
FEDERAL BEPOBTlm.
and others v.
KEELER
and another.
(OirlJuit Oourt, D. New York. August 1, 1882.) PATENT-VALIDITY OF REISSUE.
In the descriptive matter in the speciflcation in the original patent for an improvement in making wheels, granted January 23, 1866, it was said that "the type wheel is provided with yielding rims or flanges, made of India rubber or other elastic material, so that the types can be depressed on the surface to be marked with the requisite force to produce the desired impression. "" '" * This type wheel >II< >II< >II< is provided with projeeting flanges, b, made of India rubber or other soft and elastic material, so that by pressing the wheel down upon the surface to be marked the types are brought into contact with said surface with the requisite force to produce the desired impression;" and claim No.2 was as follows: "(2) The.yielding flanges, b, on type wheel, A, constructing and operating substantially as and for the purp!>,s'e described." October 26, 1875, a reissue was granted, and in the sp,,>cification the descriptive matter -was altered to the following: "The type wheel is provided with rims or flanges, preferably made of India rubber or other elastic material, so that the types can be depressed on the subject to be marked with the requisite force to produce the desired impression. The rims or flanges seem to keep the surface of the type in 'a plane parallel with the surface to be marked, which is otherwise often difficult, owing to the different lengths of lines of type, or the position of the type at the side of the surface of the type wheel. >II< >II< >II< This type wheel .. .. .. is provided with projecting flanges, b. n The claims of the reissue were these: "(2) The combination with a handle of a type wheel provided with flanges for keeping the plane of the type paralled with the surface of the article to be marked; (3) a type wheel provided with yielding flanges, constructed and operating substantially. as and for the purpose described." The wheels used by the defendants would not have infringed claim 2 or 3 of the original patent, but would infringe claim No. 2 of the 'reissue. because they have a handle and rigid flanges which keep the plane of the type parallel with the surface of the article to be marked. Held, that if there was any error in the original patent in not setting forth and claiming rigid flanges, or in stating that the flanges were to be elastlC, and were to be so arranged that the types were to be out of contact with the surface to be marked until by the yielding of the flanges through pressing down the wheel the types were to be brought in contact with such surface, the error was a plain one, apparent at onCe to the patentee, and as capable of being promptly corrected then as by a reissue after a lapse of more than nine years, during whieh the manufacture of wheels substantially the same as those of the defendants had heen entered upon, there being no infringement <,>f any claim of the original patent in respect to flanges, and that claim No.2 of the reissue could not be upheld as covering any flanges but such as were shown in the original patent, consequently the bilI must be dismissed, with costs.
George W. Hey, for plaintiffs. James A. Allen, for defendants. BLATCHFORD, Justice. This is a suit in equity brought on reissue of letters patent No.6, 714, granted to Horace Holt, one of the
HOLT V. KEELER.
465
plaintiffs, October 26, 1875, for an "improvement in marking wheels;" the original patent, No. 52,169, having been granted to him January 23, 1866. As questions concerning the validity of the reissue are raised, it will be useful to place the two specifications side by side. The left-band one is the specification of the original patent, and the right-hand one is that of the reissue. In eaoh the parts whioh are not found in the other are in italics: ORIGINAL. REISSUE.
Figure 1 represents a side elevation "Figure 1 represents a side elevation of this' invention. Figure 2 Isa of this invention. Figure 2 is a secsectional plan 01' top view of the same. tional plan or top view of the same. Similar letters of reference indicate Similar letters of reference indicate like parts. This invention consists like parts. This' irivention consists in a revolving type wheel. arranged in a revolving type wheel, arranged in a suitable handle 'in combination in a suitable handle, in combination with an ink roller, in such a manuer with In ink roller. in such a manner that, by carryiugsaid type wheel over that, by carrying said type wheel over the cover of a box, or over any other the cover of a box, or over any other surface, the types on said wheel pro- surfaoe, the types on said wheel produce an impression, and the marking duce an impression, and the marking of a box or other article can be ef- of a box or other article can be effected neatly and distinctly, with little fected neatly and distinctly, with little loss of time. The ink roller is com- loss of time, The ink roller shown in posed of a hollow cylindrical reser- the drawings is composed of a hollow voir, perforated with small holes, and cylindrical reservoir, perforated with surrounded by a strip of cloth or other small holes, and. surrounded by a absorbent material, so that the same strip of cloth or other absorbent mais capable of holding a supply of ink terial, so that the same is capable of for a large number of impressions. holding a supply of ink for a large The type wheel is provided with . number of impressions: The type yielding rims or flanges made of In- wheel is provided with rims or dia rubber or other elastic material, flanges, preferably made of India so that the types can be depressed on rubber or other elastic material, so the surface to be marked .with the that the types can be deprEtssed on th'e requisite f,orce to produce the desired surface to 1;Ie marked with the requiimpresslon, site force to pro(hice the desired impression. The rims 01' flanges serve to keep the surj'ace oj' the types in a plane parallel with the surj'aoe to be ma1'ked, which is otherwise often difficult, owing to the different lengths oj' lines of type, or the position oj' the type at the side oj' the surface oj' the and a coiled or other spdng is applied type wheel. It is also advantageous to sa.id type wheel in such q, . manner to use a coiled or other spring, Which, .that it carries the same back, after when applied to said type wheel, is I
v.13,no.9-30
466
I'ltDEBAL
each impression, to the starting point, . errarr-ged to. rmrrg' tha same back, and thereby the types are brought in . after each impression, to the starting contact with the ink roller,and sup-' point, and thereby the types are plied with the requisite quantity brought in contact with the ink roller, ink for the subsequent impression; and supplied with the requisite quanand, furthermore, the type wheel re- tity of ink for the subsequent impresadjusts itself in the reqUired position sion, and, furthermore, the type wheel for starting. readjusts itself in the required position for starting. A represents a wheel made of cast A represents a wheel made of cast iron or ot)ler suitable material, and iron or other suitable material, and arranged so that the desired can arranged so that the desired types can be applied to or inserted in its pe- be applied to or inserted in its periphery, either permanently,by means riphery, either permanently, by means of a strip of copper or other suitable of a strip of copper or other SUitable material, or so that said types can be material, or so that said types can. be <lhanged at pleasure. This type wheel changed at pleasure. This type wheel is mounted on an axle, a, which has is mounted on an axle, a, which has its bearings in a forked handle, B, and its bearings in a forked handle, B, it is provided with projecting flanges, and it is provided with b, made of India rubber, or other soft flanges, b. ana ela.ytic material, so that by preSsing the wheel down.upon the surface to 1Je marked, the types are brought i-n contact with said surface with the requisite force to produce the. desirea impression. As the wheel revolves, the types on As the wheel revolves, the types on . its circumference come in contact its .oircumference come in contact with the surface of the ink roller, 0, with the surface of the ink roller, C, which is mounted on an axle, e, hav- which is mounted on an axle, e, having its bearings in the extreme ends ing its bearings in the extreme ends {)f the forked handle, B. Suitable of the forked handle, B.. Suitable springs, d, draw the ink. roller towards springs, d, draW ink roller towards the type wheel, and, by disconnecting the type Wheel, and, by disconnecting said springs, th.e ink roller can be re- said ,the inir iroller can be removed from its seat. ' moved from its seat. Each of the fork of the handle has two slots,:-' one long and the other short,-which form main and secondary bearings /,01' the journals of the inking roller. When it is desi1'ed that the roller and wheel should be in contact, the journals oftheformershould be in the long Blots,. as .shown in. the dra'J)Jing, rep1'esents the roller in its position; but as it is sometimes mcBS,art! that the'. ma:rking .wheel and
BOLT V. JUllElLllla.
46Z
Said Ink roller may be made solid, similar to ordinary printers' rollers; but I prefer to make the same of a hollow cylindrical reservoir, e, to which access can be had by removing one of its heads. This reservoir is perforated with a large' number of small holes, and it is surrounded by a strip, f, of cloth or other absorbent material. By these means a large supply of ink can be carried in the, roller, and the marking wheel produces a number of impressions before it is necessary to recharge. the same. .A:. spring, g, applied to the axle of the (see figure 1,)1 carries the wheel, same back, until the stUd, 11" in the wheel, comes in contact with a pin,. i, projecting from the inner surface' of the forked handle. By this stud and pin the starting point or- the wheel is defined, and, by the action of the spring, the wheel is carried back to this starting point after each, operatioll. In moving back, the types, being in contact' with the ink roller, are supplied with the requisite quantityof ink for the SUbsequent operation. It is obvious that the starting point of the type wheel can be determined by other means besides the stud, h,and pin, i. By this simple device a large number of boxes or other packages can be marked neatly and distinctly with grt\llot dispatch.
roller should revolve independent of each other, as when distributing ink on the lattert or when. it is being used on a separate flat form, or when Bither the wheel or the roller, or both, are being cleaned, then the journals of , the latter'8hould be placed in the short slots 0" secondary bearings. Said ink roller may be made solid, similar to ordinary printers' rollers; but I have shown in the draWings a hollow cylindrical reservoir, e, to which access can be had by removing one of its heads. This reservoir is perforated with, a large number of small holes. The rolleris surrounded by a strw.l, of cloth or other absorbent material. By means of the 1'6861''/loir, if used, a large supply of ink can be carried in the roller, and the marking wheel produces a number of im· pressions before it is necessary to recharge the same. A spring, g, applied to the axle of the wheel, A, (see figure I,) carries the same back until the stud, 11" in the wheel, comes in contact with a pin, i, projecting from the inner surface of the forked handle. By this stud arid pin the starting point of the wheel is defined, and, by the action of the spring, the wheel is carried back to this starting point .after each operation. In moving back, the types, being in contact with the ink roller, are supplied with the requisite quantityof ink for the subsequent operation. It is obvious that the starting point of the type wheel can be determined by other means besidesthe stud, h, and pin, i. By this simple uevice a large number of boxes or other packages can be marked neatly and distinctly with great dispatch. I am aware that a patent was granted Edwin Crowley, dated JulyS, 1856, in which was shown 'handlf holding a tllpe wheel ana ,eUrtil ilnking roll6f'I,
a
468 arranged with a distributing band. This I do not claim; but I claim as and desire to secure by letters patent: 1. The combination, with a frame and handle, of a type wheel, provided with a stud-pin, for defining the stm·ting and stopping points, and an inking roller,constructed and operating substantially as specified. 2. The combination, with a handle, of a type wheel provided with flanges for keeping tM plane of the type parallel with the surface of the a/dicle to be marked. 8. A type wheel provided with yieldingflanges, constructed and operating substantially as and for tM purpose described. 4. A spring in combination with a type wheel and stop pin, or its equivalent, for retracting the type wheel to its fltarting point, substantially as and for the purpose set forth. 5. The combination of a type wheel with a combined inking roller and ink 1'88ervoir, constructed substantiallyas and for thepurpose described. 6. The combination of a ltandle and type wheel with a spring, for attracting the type wheel to its starting point, substantially as described. 7. In combination with an inking roller and its usual bearings, secondary bearings so armnged that the roller may Te110lve independently' of the wheel, substantially as set forth.
I claim as new, and desire to secure by letters patent:
1
I'
The answer in this case Imeges that the surrender of -the original patent was not made on account ,of any defect or insufficiency of the but with the fraudulent design of enlarging the claims, so as to embrace inventions not made by him prior to the time when the original patent was issued, and which are not embraced ,the'rein; that the reiljsue, in its description and claims, embraces matters claimed.therein as invention of Holt which were not invented by him. prior to the isslleof the Qriginal patent, and which are not
1I0LT V. KEELER.,
described or alluded to therein, such enlargement of the .cllliims of the reissue being produced substantially by the insertion of claims 1, 2,. and 7, which embrace new matter not shown in. the claims, specification model, or drawing of the original patent; and that the.reissued patent is for a different invention from the original patent, and is void. The only claims in the reissue which it is now contended have been infringed are claims 2 and 3. In the specification of theorig. inal patent, what is said about the flanges is this: "The type wheel is provided with yielding rims or flanges, made of India rubber or other elastic material, so that the types can 1;le depressed on the surface to be marked with the requisite f()rce to produce the desired, impression. ... ... ... This type wheel ... ... ... is provided with projecting flanges; b, made of India rubber or other soft and elastic material, so that, by pressing the wheel down upon the surface to be marked, the types are brought in COne tact with said surface with the requisite force to produce ihe desired impression."
The claim based on the' above' descriptive matter is original, as follows: "2. The yielding flanges b, on type wheel.4-. constructing and substantially as and for the purpose described."
2 .of the
.
The foregoing descriptive matter is altered, in the specification of the reissue to the following: "The type wheel is provided with rims or flanges, preferably made of India rubber or other elastic material, so that the types can be depressed on the subject to be marked with the requisite force to. c;lesired impression. The rims or flanges serve to keep the surface of the tYPes il;1 a plane parallel with the surface to be marked, which is otherwise often ditlicult owing to the different lengths of lines of type, or the position of the type at the side of the surface of the .type wheel .· · .,. This type wheel' .III '... * is prOVided with projecting flanges, b."
The claims' 'of the reissue, based on the matter in it, are these: . "2. Th,e C9mbination, .with a handle, of a type :wheel prbyided :wit]) ffllinges, for keeping the plaI!e, of the type parallel with the surface of the article to be marked. 3. A type'wheel provided with yielding flanges, constructed .and operating sllbstantially as and for the purpose described," .,
. There is in the original a distinct state.went that, the made of India ,rubber, or other elastic, yieldjng material, and there. is no ,sup:gestion that they can consistently with the ideas qfthe
470
FEDERAL REPORTER.
invention be made of any non-elastic, non-yielding material. They are also stated to be projecting flanges. This expression, with nothing more, would be satisfied by flanges projecting from and beyond the face of the type wheel, and would not necessarily mean that the flanges shouldproject to a distance beyond the line of the impression faces of the types. But the expression is, that they are projecting flanges made of elastic material "80 that,by pressing the wheel down on the surface to be marked, the types are brought in contact with said surface with the requisite force to produce the desired impression." This clearly implies that until the wheel is pressed down on the surface to be marked, the types are out of contact with that surface, because they are raised above it by reason of the fact that the flanges project further from the face of the wheel than the. types project from said face; and that, by reason of the fact that the flanges are elastic and yielding. the pressing down of the wheel will cause the flanges to' be compressed and. to yield, and will allow the' types to come into contact with the surface to be marked. It is true that figure 2 of the drawings of the original patent shows the face of the type projecting from the wheel to a greater distance than the flanges project from it. But in figure 2 of the drawings of the reissue the face of the type does not appear to project 1romthe wheel to a greater distance than the flanges project from it. Mr o'i Stark, an expert for the defendants, testifies that figure 2. of the drawings of the reissue shows the flanges to project more than the types, and that if they did not, the types could not be depressed in "the surface to be marked" to accomplish the result set forth in the specification., On the ot1,ler hand, Mr. Robertson, an expert for the plainti,ffs; testifies that he thinks the drawings of. the reissue are intended to represent the types as on or about the same level as the flanges; that the word "depressed" in the connection in which it is used means that the types must be depressed into the surface of the material; and that this where hard tpyes were used would necessitate the yielding of the flanges. It is very clear, however, that where hard types are used with elastic flanges, in the Holt wheel the flanges must project to some extent beyond the faces of the types in order to be operative as elastic flanges, unless the hard types enter the material that is 'being marked. Nothing is said in the original specification as to,the material of which the types are to be made, whether of hard metal or of elastic material, but it is shown that the model
.:
V.
deposited by Holt in the patent office with his original; al'plicati9D. showed types of hard metal with elastic flanges. It must therefore be held that the original patent admitted of the use of hard with elastic flanges. This being 80, it follows that the elastic flanges must have been intended to project beyond the faces of hard types in order to be operative, and such is the meaning of the Ian· guage of the original specification. That that language was. S9 un· derstood at the time by the inventor is stated by him in testi, mony. He says that when the original specification was submitted to him by his solicitor, he objected to that part of it which says, "that force is required to bring the printing surface down to a level or below the flexible bearers so that an impression could be taken, calling his attention to the fact that the bearers on the model were no higher than the face of the types." He says that the elastic in the filed model projected so as to be on a line with the face of the metal types. Yet the specification was allowed 'to go Qut in that shape. The inventor does not seem to have used rigid flanges until after the original patent was issued, or to have had any idea when he obtained his original patent of using rigid flanges. On,e opject in obtaining the reissue clearly was to procure a claim which shoqld cover flanges, whether rigid or not, in connection with a handle, while retaining the claim to a type wheel with yielding f1.anges suc.h as the original patent describes·. One form of the wp.eel has rigid flanges which do not project to a distance as far as the faces of the types. In this form of wheel there is a border around the types, but it is a part of the types, and is inked and an impression taken from it, and it is not a flange in.the sense of the Holt patent although it is the types being the other form of the defend· elastic and the flanges being ants' wheel, called the Barnes and Alien wheel, the elastic borderis omitted, the types being elastic and the flanges being rigid and not projecting as far as the face of the types. Neither of these forms of wheel would have infringed claim 2 of the original patent; nor,does either of them infringe claim :3 of the reissue. They do infringe claim 2 of the reissue, as it stands, because they have a handle and rigid flanges which keep the plane of the type parallel with the surface of the article to be marked, if claim 2 can be construed as covering any flanges but such as were shown in the original patent. The original patent was granted in January, 1866. The reissue was applied for in March, 1875, and granted in October, 1875. If
(72
r.BDEBAL
there was any error in the original patent.in not setting forth and claiming rigid flanges, or instating that the flanges were to be elastic, and were to be so arranged that the types were to be out of cantact with the surface to be marked until by the yielding of the flanges through pressing down the wheel the types would be brought in con· tact with such surface, the error was a plain one, apparent at once to the patentee, and as capable of- being promptly corrected then as after a lapse of more than nine years. Meantime, the manufacture of wheels, substantially the same as those of the defendants, had been entered upon, there being DO infringement of any claim of the original patent in respect to flanges. In view of all these facts, claim 2 of the reissue cannot be upheld as a claim covering rigid flanges such as the defendants use. The decisions to this effect are numerous. Bell v. Langle8, 102 N. Y. 128; Manuj'g Co. v. 'Ladd, ld. 408; Manulg Co. v. Oorbin, 103 N. Y. 786; Miller v. Brass Co. 3 Morr. Trans. 419; Bantz v. Frantz, 4 Mon'. Trans. 341; Matthews v. Machine 00. Id. 347; Johnson Railroad 00. ld. 931. It appears that the inventor held the legal title to his patent for inore than five years after it was issued, permitting the use of it by the Secombe Company for a royalty on each wheel. It does not appear that he was not at full liberty to apply for a reissue of it. In addition to what has been said about the defendants' wheel with the elastic border, it may be said that it extends wholly around the types and does not compass the entire circumferenoe of the wheel, and has the same operation whioh types in the same place would have, and its faoe is on the same plane with the faces of the types, and it is a part of the printing surfaoe. In all these respeotsit differs from what is described in the original speoification of Holt. It follows from these views that the bill must be dismissed, with costs.
B.A.RKE.& V. TODD.
4:78
BARKER
v.
TODDI
(Oi'l'()uitUourl, N. D., New Yqrk. 1. PATEFr-I:NFRINGEMENT.
July 29, 1882.)
Plaintiff's claim No. lin a patent was for an elastic bucket working by suction in the bore of a chain pump, and haying a drip orifice,allowing the the water above the bucket to escape down to the source of supply; and his claim No.2 was for a solid elastic bucket with an elastic bearing edge, and a convex or contracted upper portion, so that the bucket would readily yield and go up, but resist going down. Held, that these claims were infringed by the Stowe and Rumsey buckets, used by defendants, as they were both of them solid elastic buckets, haVing an elastic bearing edge, with the upper portion convex or contracted from said edge so that the bucket readily yields to any irregularities in the pump tube, and is easily drawn up, while it will resist moving downward; and such bucket is adapted to fit and work in the bore of a pump tube to raise water by suction, and is provided with a suitable orifice or outlet, through which the water above the bucket could e8eape. 2. BAME-PREVIOUS ExISTENCE OF FEATURES CLAWED·
. Where certain features have existed before their adoption by an inventor he can only claim modifications of the form embodying such features, and if other inventions differ in form there will be no infringement, 3. PATENTS No. 83,117 and No. 58,368 compared with that of plaintifi, and shown not to have anticipated the features of hii invention.
R. H. Duell, for plaintiff. A. P. Smith, for defendant. BLATCHFO.&D, Justice. This suit is brought on reissued letters patent granted to the plaintiff July 6, 18,75, for an "improvement in buckets for chain pumps, II the original patent having been granted to him June 20, 1871, and reissued to him May 19, 1874. The reissue of 1875 was sustained by this court in a suit brought by the patentee against James D. Shoots, and decided in January, 1882. The defendant has used two forms of bucket, the Stowe bucket and the Rumsey bucket. It is very clear that both of them infringe claims 1 and 2 of the plaintiff's patent. They are both of them solid elastic buckets, having an elastic bearing edge, with the upper portion convex or contracted from said edge s.o that the bucket will readily yield to any irregularities in the pump tube and be easily drawn up while it will resist moving downward; and the bucket is adapted to fit and work in the bore of a pump tube to raise water by suction, and is provided with a suitable orifice or outlet through which the water remaining in the pump tube above the bucket is allowed to escape down to the source of supply. All of these features are found in the plaintiff's bucket and in the Stowe and the Rumsey