G18

FEDERAl.I ,REPORTER,

vol. 44.

The first claim of the patent, baving been assel'tedandpQt in controversy by the complainant, and b.eing adjudged void for want of novelty I Ulust be disclaimed. Upon filing ,a ,proper disclnimer, the complainants are entitled to the usualdeoroo; but without ; Thesecondsu.it betweenth;e,parties is brought upon two later p;1tents granted to Mr. Smead (No!ko5:a,157 nnd 363,971) for minor improvementsupon the dry closet of! ,the patent which has been considered. rhequestions of the.validitytmdthe infringement of these patents have little discussed by counsel, and may be briefly disposed of. ';I.lhe,ellrHer of these two patents·.so far as it relates to the claims now in contr.versy, is for a modification of the principal patent and covers impr(i\lemfitnts by. which. air is let. into the vault from the exterior of the and by which a fan:is employed in the vent shaft to.createa dmught. It could not involve invention to devise either one orbQth of .tIIlesemodifications. Inventioilcannot be reasonably asserted of making a hole in the wall of the building to let air into a vault, or of using the Jim to .a. draUght of air. As to the later of these two .the. transverse partition located in the v8ult,which is .the subject of the firstcla,iw, is serviceable, and adds somewhat to the effidiencyof the closet. . When, constructed, as that claim implies, of absorbent material, the improvement seems to be new and patentable. :But in view oithe Ross patel)t, the second claim is without patentable novelty. Upon filing as to the second claim of patent No. 363,971,thecomplainants .will have a decree upon the first claimtwithQut :costa. ,': 1"1
"if:, .

LUMBER (Circuit 'CoUrt,

,',t'

Co. tI.

et

ale

.

is.:vl :j'; '-.'

. Oll'

York. December 1,1890.)

LETTERS.

,'. No. 10,420, for an improvement in fire-proof 'cotnpositlOn, was for'''a: colnpbllitIon to be used for fire proofing, and other purposes, consisting of kaolin * * *, prepared with water, machine-pressed, dried, .·burned, .and ..dapted when qurnllji to be sawed or wrought with edged tools.» The i "clltim of 'the orif.nal patent' Nq: 248,094, granted October 1881, to Charles G. ,. ,Gilman, .wa.s. f..or a com.f.O.Sitia'nlto, b e used for fire-p.roofi.ng;a.n d .other purposes., .. ... : consistillK' of kaolin *. with water, machine-pressed, dried, burned, · .'and, SUbsequent to firing, 'sil-weu'or wrought with edged tools. " Held, that the ", I of,tliereissue wa!!' invention different and broader than, the original, " anI! was in'Va!id.. .' 'j" i "
b"

lo'p.£TENTS POR

:' ·

, :"

I ," ·

.

FOR

patent.

Oll' REISSUE AND' I'tiGINAL. . ' is not void :1iecilhise'ilne division of the· reissue is identical with the

" ': (; . I i I

,.' , Wb:en a bl1\foi:' infringeiilen't,' based on reissued letters patent, tenders profert · 1 !. alld oyer of :tbe original pf the reissue, and as the instrumen.ts are public . ·.at ",ll.tj.,D:lre/l OI!¢U t.? ·.they are presented &II parts of the · . bill, and obJectlOils to thel1" v..hdlty 'may betaken by demurrer. ,.'.

OYlllR.

. :p,n clemllrrQrto a qillfo.r, reissued letters !patent tb.QrQ may be "lIpeeialltl'ounds thereof, whioll relate to each of the reissUes separately, and the de.,:" 1JI'IJl'1'er. may be sUltaiu6cl iI4, aw ill part.' !" '. d I , . · .

,:

,,!:.1 ;,' "

.

INTERNATIONAL TERRA COTTA LUJlf:'BER

cO. v.

MAURER.

619'

On: Demurrer. I This action is based upon reissued letters patent, No. 10,419 and No.' 10,420, now owned by the complainant. The original patent, No. 248,094, was granted to Charles q.Gilman, October 11, 1881, for an improvement in fire-proof composition. Subsequently, the patent was surrendered and issued in two divisions. The bill alleges as follows: "On the eleventh day of Octobel", 1881, letters patent of the lTnited States numbere(! No. 248.094. signed, sealed and executed in due form of law, and date the day and year last aforesaid, were issued to said Charles Carroll Gilman, whereby thpre was secured to him and to his heirs and assigns for the term of seveliteen years, from the eleventh day of October, 1881, the' full and exclusive right of making. using and vending the said improvement throughout the United States and the territories, thereof, as by a certified copy of said h·tters patent. in court to be produced, willmore fully appear. ... '" "'; That said Charles Carr01l Gilman having for' and laWful canse surren-, dered said letters patent No. 248,094 to thecornmissioner of patents, and having made due application therefO!' 011 the 10th day of October, ]883, and hav-' ing in all things complied with the acts of congress in such case made and' provided, on the eleventh day of December, 1883, Ilew letters patent nurhbered reissue No. 10,419 and re,ssueNo. 1O,42U, were issued to Gilman 1'Orou8 Terra Cotta Company, of New York, N. Y., as assignee of said Charles Carroll Gilman for the same invention for the rpsidtie of said term of seventeen years, as by said last mentioned J>litentsor a duly 'certified copy the'reof in court to produced, will appear. It The demurrer disputes the validity of the reissues for the following reasons: (1) The original patent wlis not inoperative or invalid,by reason ofa nefectiveor insuffiCientspecification"or by reason of the'patentee claiming as his own invention or discovery more than be had s' right to claim as new; nor did any inadvertence, accident or mistake occur in the procuring of the orginal patent. Hence both reissues were granted, without authority of law and are' invalid. (2) Reissue No. 10,420 describes and claims a dift'erent invention from that described and claimed in the original patent, and is there/ore invalid. (3) The patentee Was guilty of laches in applying for the reissues, and hence, they are im;alid. , ' Cowen, for complainant. Robert N. KenylJn, for defendants.
COXE, J. The complainant contends that the original letters patent are no part of the hilI and that the questions affecting the validity ofthe reissues cannot be considered on demurrer. It will be observed that the' a verments of the bill ha ving reference to the original are a) most identical, with those employed in alleging the reissues, Upon which the action is' founded. In each instance the language is explicit and exact, leaving' no doubt that the ,pleader intended to make allthese instrumelltsa part, of the bill withoutincumbering the record with copies, in Profert and oyer are,tendered in the most formal manner. The instruments thnsallegedare public documents, at all tImes open to It. is; thought, ,therefore, that they are presented,to the court as 'pa'rt of ' tbehillalld that objections thereto may be biken by 25 Fed. Rep.'484. .. ;, ! : . . , . I

FEDERAL REPORTER,

vol. 44.

In the original specification the patentee, after stating that he is the inventor ora new and useful composition of matter, proceeds to describe ingredients .of which it is composed and the various steps by which the composition is reduced to the form of logs ready for sawing. He then says: "On cooling, the logs are removed to the mill and sawed into planks, boards, and dimension stuff, as lumber from wood is manufactured, and subsequently fashioned in the workshop into such forms and articles as demanded by purchasers. This material, being free from grit and tough in texture, can be cut, sawed, bored, grooved, planed, and carved with edged tools, and ·before or after snch treatment can, after slipping and glazing, be submitted to a second firing, with fine results in ornamentation obtained." On the 10th of October, 1883, the application for a reissue was filed. Reissue No. 10,419 (division 1) with the exception of a few immaterial verbal.changes is identical with the original. At the head of the printed copy of the !>pecification of No. 10,420 (division 2) furnished by the patent-office, are these words: ,. Application for reissue filed October 16, 1883,'1 It isurged that this date must be considered as the date of the application. This position is untenable: First, because an unverified declaration of this character is not proof (Electrical Accumulator Cb. v. .tulien Electric 90., 38 Fed. Rep. 117, 140;) and, second, because the allegation of the bill that the application was made on the 10th of 00tpber, 1883, is .admitted by the demurrer. Regarding division 2 it is the attempt is made to claim a much broader invention by argued theorl1ission of one of the elements of the origInal. The claims in questlon are here placed side by side, the italics in each show the matter not 19und in the other.
Original.

Division 2.

"A of matter to be used " A composition of matter to be used and other purposes, for fire-proofing and other purposes, for consisting, of kaolin clay, free from consisting of kaolin clay, free from sand or sandy clay, and resinous saw- sand or sandy clay, and resinous sawin the proportions specified, pre- dust, in the proportions specified, prepared with water, machine-pressed, pared with water, machine-pressed, dried, burned, and, subsequent to fir- dried. burned, and adapted. when 'lng, sawed or wrought with edged burned, to be sawed or wrought with tools. in manner described in the fore- edged tools in a manner descriued in g?ing " the foregoing specification". The original claim covers a composition of matter having the following ipgredients and features combined in the proportion and manner described. (1) Kaolin clay, free from sand. (2) Resinous sawdust. (3) water. (4) Machine pressed. (5) Dried. (6) Burned. (7) Sawed or wrought after firing. In division 2 the last element (7) is omltte:d from. the claim and the description is correspondingly altered. The compositioq claimed is completed without this additional step. True, the suggestion is made that the composition may be sawed or wrought with tools, but whether this is done or not is entirely optional. The language "and adapted, when burned, to be sawed or wrought with edged tools" has no legal significance and might as well hani been'omitted from the claim. A log untducy,ed ,by saw'oredged

INTERNATIONAL TERRA COTTA LUMBER CO. V. MAURER.

621

tool would infringe the reissue, but not the original. 'To this extent, therefore, the claim is expanded; it seizes upon structures which would escape from the grasp of the original. It is said that the element of sawing and cutting was no part of the original invention. This may be so, but there can be little doubt that it was fully described in the specification and made a part of the claim of the original, and that the object of the reissue was to get rid of it. By reason of the omission the reissue, in question, is for a different and broader invention. The demurrer not only attacks the bill in its entirety, but there are special grounds of demurrer which relate to, each of the reissued letters patent separately. This practice is proper. Eq. Rule 32; Nm'th v. Earl of Strafford, 3 P. Wms. 148; 1 Daniell, Ch. PI. & Pro (Perk. Ed.) p. 650. The demurrer may be sustained in part, and overruled in part. Powder Co. v. Powder Works, 98 U. S. 126, 140; Novelty 00. v. R0U88, 39 Fed. Rep. 273. The special demurrer marked "Fifth" relates to so much of the bill as refers to reissue No. 10,420, and clearly presents the question above discussed, viz.: that the reissue is not for the invention originally patented. This demurrer should be sustained. Manufacturing Co. v. Ladd, 102 U. S. 408; Coon v. Wilson, 113 U. S. 268, .5 Sup. Ct. Rep. 537; Plow Co. v. Kingman, 129 U. S. 294, 9 Sup. Ct. Rep. 259; Yale Lock Manuf'g Co. V. Berkshire Nat. Bank, 135 U. S. 342, 379, 10 Sup. Ct. Rep. 884. Very little is said in defendants' brief regarding No. 10,419 (division 1) but it is insisted that it is void because, being identical with the inal, there was no defect in the latter justifying a reissue. It is argued that if the reissue is valid now the original must have been valid and operative in October, 1883, and, therefore, the commissioner was without jurisdiction to grant the reissue. No authority is cited in support of this contention and, on principle, no just reason can be advanced in its behalf. Although I have been unable to find a decision based upon precisely this state of facts the case which approximates it most closely is Giant Powder Co.v. Nitro Powder 00., 19 Fed. Rep. 509. The court there says: "Patents may be reissued in divisions. It is not necessary that all cfaims in the reissue should be included in one patent. They are often issued in divisions, and I suppose that a patent might be reissued in divisions in the identical language as to some of the claims, the changes being included in another or separate division or patent; that is to say. all claims. or inventions which are fully covered and operative may be reissued by themselves in one division in the identical language of the original surrendered patent, and all other claims, on amendments to the specifications, and covering the Invention shown by the amended specifications, in another division or patent;" A patentee who reissues his patent for the purpose of correcting acler':' ical error or improving the phraseology of the descriptiDn may donn unnecessary act but why should it work a forfeiture of an in'v'entioiljnstly his own? The public are iIi no way. affected; they lose nothing; the patentee gains nothing. To hold the reissue invalid, in such Cirimm· stances, would be to follow an ingenious syllogism to an arbitrary and inequitable conclusion. It frequently' happens that a -patent Jis reissued

622

FEDERAL REPORTER',

vol. 44.

""itb:tbe,otiginal speciftcati91il and and a hUIillJerof new ell:dmf The cour,tshavefr:equently held the new claims ,to be invalid"hut have permitted,the original claims to stand. Gage v. Herring" l07U. ,So 640,2 Sup. Ct.: ,Rep. 819; Mahn v. Harwood, 112 U. S. 354, 5,S1;lp. Ct. Rep; 174; Walk: Patents, § 248. There can he no real distinction between these cases Rnd the case at bar. The special demurrer t;nark.ed "Fifth" ie sustained, in other demurrer is overruled.

ON ,. REHEARING.

(Februal'y 7,1891.)

in holding that

COX1!l, J.Arehearing, is asked upon the ground that the court erred

tbe reissue, divisioll 2, is lor a different invention from that described .io,the original patent. Upon this proposition, an argument is presented which states the complainant's position more fuBy th(ln at the of the demurrer. The teason assigned lor the omisl!liol) to make this,argumentat that time is that the complainant's counsl}l·dtici notthPJtl.l'uUy appreciate ,the importance of division ·2, 'and was under the imptession that .the decision would turn upon other questions to wbich gr,eater;,attention WRS given. It is doubtlul whether, in any view, a rehearing 8hould be granted. No new proposition of law or fact is advanced.T:houghelaborated, strengthened, and enriched with new illustr/l.tions,it is still tile old argul1lentwhich is reasserted. That the eontentum pf the cpmplainallt was not presented as fully as its counsel 9Q;ulll is to be regretted, lor impressions are sc)rnetimes formed at cause which mighthll.ve been prevented or modified at time, but w,hich iUs difficult ,tolemove by subsequeilt argument. III thepresent rinsmoce,however, the· fact that the complainant's brief ",afplOt so full upon the point in question as upon the other branches of the in.d:uced what .was intended to be an unusually thorough 'Aa a result,:the court was unable to'find a decision of the supreme court or of a circuit court, since 1882, sustaining a reissuehaving infirmHiesH:ke those of division 2. It should be remembered that ilie· patent is not lor a machine, but .for a new composition of matter, prbducedby:a formula'c0l1sisiing of seven progressive steps which are described with miilutenessand accuracy. 'The question then is, can the otpiCQne step and insist that the pruduCt of:siJe; steps is sa,nlEl: (,nven.tion: ,as .th.e o('seven:steps? If hema,y omit step No.. the same COfllPosition,. }Vhy may he not omit step No. or steps"NosJ6, and 7, and, still inaist'that the invention' has not been 9A{lPged? In <iftscribing ,No.;7.l;Je is unusuallypredsc. Btl intrafprmali ty. which ,is accorded/to. the other steps.: :Jle, .When j,hle, red ueed to: a :plastic mass {mm,th!,! tubs apd pl.l<lii!led; when sufficiently: dry; the loge, to . the, and purped;; andwhe.n they tafe sufficiently u!iUandsl;l:weq.. The proposition is now a,d\ranceq .th,e Jpe, l3.tep. This jsasserted

INTERNATIONAL: rimRA COTTA:

LuMBERi t6. v.

MAURER

623

by counsel, not by the inventor. The latter expressly states that the invention is the result of.all thedescfibed steps'. He nowhere intimates that his composition can be produced by less than all. If conjecture were permitted, we might infer that the seventh step could be omitted, but the inventor does not say so. On the contrary he says: "1 am aware'that fike compositJonshave tleen made from'a:very early day, and that English and American patents have been granted therefor * ,* *,; but I thl\t,l,1o of this chat:acter,sdfal" as I can learn;'has been mil,lleof material, with tbe same and .in tl.le, same 1;Jlanner, and wi,tho ut these materials, proportions, and, treatment, as described, the {ijU' wbichI assert Cl:lnnot be reached. " The complainant's brief upon this motion proceeds upon the theory that all of the description and claim relating to sawing-:and fully:dneseventh of the specification is devoted to this subJect-might As.'well have been omitted. That the composition :is not 'changed or modified in the least by being sawed into planks, etc., and that no feature is th:e inventidnbty this process; It would seem that this propositioJlisbased largely,upoD. speculation. How can it beassertedj asa fact, of new composition of matter? Howean it be said tioIlO£; the saw upon the .logs "onco<:>ling," admitting light and air to the thus exposed" performs no Junction and produces no' result; ordinary one, and,especially, how can it he said in the described teetb"of thePatentei:l'S assertion tllat no part of . byl;lim. can omitted 1. E;ven in the pithy and ingenious 'illustration of the Qwuplainant'&,counsel,-where the invention relateato a liquid concludes with a statement thatthe'fbiid is "subsequently to. ;boiling and cooling; bottled for use, as described,"-'a case can readily be where the exclusion of light arid air, 'by a very important feature '10 the ,fluid or from losingstrengtb and vitality, Surely,! if the patentee should, that "unless the said mixture, imnlediately after, it becomes cool, is placed in stone bottles and tightly corked, in the ,m.anner descdbed, it will be' impossible to produce the said composition,"th,e court wpuld hardly venture to hOld, that the patentee was ignoralltQ(his own iQvention, and that it was produced in a different manner from the one described by him. Those'who are familiar.with patent litigation will recall numerous instances where the highest quality of invention and the most phenomonal results are attributed by learned counsel and enthusiastic scientists to processes and proceedings, apparently, far more trivial. The conclusion cannot be resisted that the reissue in question is within the rule so often laid down by the supreme court. It was thought at the argument of the demurrer, and it is still thought, that it is for the interest of both parties that this important question, which lies at the threshold of the litigation, should be determined before they are subjected to the expense and delay incident to the taking of final proofs in an action in equity. The motion for a rehearing is denied.

a

I'EDEBAL REPORTER,

vol. 44.

MENTZ V.THE SAMMY. MARTIN et

al: v.

SAME.

(CCrcutt COUrt, E. D. Louisiana.

ON ApPIUL. .

October 25, 1890.)

"

"

In" casas involving questionS· of faot only, depending on conflioting evidence and the orediblllty of witnesses, the oircuit oourt in admiralty wlll not disturb the decrees of the district court, where there is no preponderance of evidence, and no additional evidence oflel'ed 011. appeal. FOllowlni Duncan v. Th,e Nic1wlw, ante,

802.

In Admiralty. R. DeGraYt for libelant. Frank for claimants.
PARDEE, J. To this C8.'le" tried and submitted at the last term of court, I have given a careful and laborious examination. The questions presented are questions of fact. The proper decision of· them· depends upon the credibilitJ' to be given the witnesses. The examination given the case raises some little doubt as to whether the case made by the libelant is not overturned by the claimants' evidence, But this doubt is not.of such magnitude, nor so well 'supported by the evidence, that the court can say that the findiJ)g of the district court based upon the same evidence" with opportunities to hear and observe witnesses,:is incorrect. For the reasons given in the case of The Nicholls, ante, 302, Gust decided,) the decree of the disfrictcourtwill·be affirmed. The following decree will be entered in the cause: This cause came: on to be heard on the transcript of appeal, and was argued by Mr. DeGray for the libelants and Butler 'for the claimants. Whereupon, and for the aforesaid reasons, it is ordered, adjudged, and decreed that 'the libelant,Mrs. Amelia Mentz, wife of E. D. Mentz, do have and recover from Martin & Dreibholz, claimants, and owners oLthe steam-boat Sammy, and from Newell Tilton, surety on tl16ir release bond,.in solido, the sumo! 8400 damages, and all costs of the circuit and district courts.

I'