446
:1'ED£Rl.U REPOMER.
vol. '48.
"i
... ,J
·,A,.lo!lNsToN & Co.,;tLiJilitedl'v. AMERICANIlEA:Tl INsutATI,NG Co·· , ,Li ':'/i;' Limitedl.Jtt"al. ,: ,Y! ' · j,
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conductinll" covering composed of layers with ad" while formed llectionll of a .. 'Dea&of,O'ne'haIUnoh'orll1ore, llubstantially'!lS llhcwn'anftdeBcribed.... , In the reis. , ;,:IlU.... WOftlll, or, RWrn, omitted. j but, il; . '. appeared tl\ata coverIng for the o,nl;l-half oe lu'Oparatlve an.d uS'aless; ..', ,in. clJj W.00,la laCk the DOD:jdj).ndU'etmg,p1'.0.»e."rty.Bod woti. Ml . . .. . ,practiC;B '9f tbe tIl,:<entioo, the of, greater tlJjo!i:nesll. ana: mUllt bejaiJd the 'infringmg tQicknells. Held t,iJat, all the oWission dId noti Jteally enlargll the patentee's rigl11lS;tbe change was' muna., tillfillil, did not avoi4JtIJ6 pa.tent. " '; . . B. SAME.· ' . . "',',. .', . '. ," , ,, ' Ihthe claim of the rale'sue, the wordll' "'o'tcioated" were' 'iJlS'ettM after the word "satJ:u..tod.;'" .HeW,tha.t the two words' were used evidently-as alternatJve expres" the " ,
non.
Jam,ea}-{(ayand.'"'..jiakeweU, Before ACHESON and R:E:E.D, JJ.
for I , · .
W.
;P?f"ce, .
,. I
ACHES&N','J. The plaitiHfi', the assignee'of patent No. 8, 752,dateq June 10, 1879, inventor, John C. Reed,assues the. defendant forthE('infringernent thereof. The in,signor, venti<?n, which is an ,41 coverings'rqr and pipes;'consists of a c6ve:tiJ:lg, Qf1ayers or pings of paper' saturated 'or coated with \niaterial,and comp.res!!ed, while into,tu,pular sections; and capable of beas placed' arOu,lld the pipes or other ,ing .surlaces:u) 'be' covered. I The the method of making the covering: " , ".' .. covering from plfop,er·.for purpose I
prefer, and 'generally etoploy, wbat .is' termed paper. :tbough other be used. ppona revdlving mandrel ulated tOl" whloh tbe coypring is intended, and generally a seotionotpipe:of tliesame diameter as the pipe to the covering is to be applied, Lwinq.£ or wrap roofing :Q'9tber paper. the same time applylug t,o the layersLo adhea,ion. making tion on thefreeeOd of the paper, s() as to tbe wrIJPping!!:firmly and smoothly. In addition 'to 'tpetraction, which will compact thecpvering,I, lllakeuseof pressure by'means of weighted fdction bar or plilte; or in manner,soRstoi,nsure a dense,flrm structure This operation is continued lIntil a covering of sufficient thickness has'been applied to the pipe, ,when, if tbe qoveringhasbeen fOfllJCMl on this pipe,'{tak-ing the place of a mandr.el,.,). u.po. . w.hi.c.b it.'.lS. to rero.ain.".. . .e.. ove.l'i.n.g:J;Ila.y. . . tiniS.he.d by.. . app.I.Y." .ing a :suitahle !,:pat of paint, which and rapidly done by revol,,:'! 'lng'tbe pipe before its removal; l1ut, it' .the ('.overing has been formed Qn a mandrel 01" pipe witb which it is not intendedtduse it, it may be coated with paint at the time. and then withdrawn from the mandrel, to be afterwards
A. JOHNSTON
.tCO.
'II. l\MERICAN HEAT INSULATING CO.
447
\Vitb,pa.int. , The proved advantage/for this covering are that it is tough and strong, ,coIDl?P/¥ld, ,RCa; pi)rous material as to form a dense, firm can be made atone place, witho\lt.packing or boxing to the place .where it is to beu,seq; is not liable .to breakage by falling Or any ordinary blows; can he cHi by mechanics; Clinbe¢asUyapplied by persoll,S 9f no mech.aqicals}dll; can be and replaced at will for thee;amination alld repair of tubing; is neat, in lippearan<:e,nnd will not ,s,oil or damage the finest machiPery ortubtngto whiehJt mlty ,be applied; apd can be produced at much leSIi cost than other. for the like .purposes. ' The of the reissue are two, namely: ;.. . ,Anon.conducting boilers, pipell, and other surfaces, composed of l!'yerll or wrappings, of paper saturated .0rcoatOO; with adhesive material, and compressed \vhile being formed into sections, substantially as "escribed" As 1\ new article of a Don-conducting<-(jovetlng for;boilers; pipes, and othl'r surfac6s,composed of layers or wrappiJigsof paperssturatedfor coated with sUitable adhesive material, Rnd beingtormed into tubulal' sectionsfdivided longitudinally, so 8StQ placed around the pipes or other sUl,'faces to be substan. tially as forth ·." . . ' . ' Defense is made itnproveIilent was destitute of patentable Tosustain'tWs position, a great number of prior patents were introduced, which we:have C8l.'efully examined. To discuss them in de.tail wowdunduly extend this opinion and subserve no good purpose· .' the previpus of tll{!srtds fairly disclosed, in the specification of the reiss\ledpatent; We content ourselves, then, with saying that, in our judgment, none oithe prior patents contains or suggests the 'Reed invention··. The proofs entirely, us that Reed's improvement was novel in and· of, gy:eat utility. It was, indeed,s meritorious ,inventj,on, ".nd the' patent E!hpuld be dealt with in a liberal; Uponthe question oUn(ringement, the case is free from any doubt whatever.. ,The mak1l,llnd the, identical covering. described in the reiEiSue,:lind made by the def3cribedmethod" Theonly.difference in practiced:by the par·ties is that, whereas the plaintifl'applies the liquidflour-pastliHppne sidt:l oolyaf the paper, theidefendant to. bpth sidell; :b»tt\l,e;result istbe;same. and, the difference in the adhesive mi%ture is wholly immateriaL is perte(ltly clear that the' defendant'scoverhigwould havejIlfp,nge1l ;the original equally. as, it infringes the reisssue. oLtQe patent is contested, the defendant inthan oLtheoriginal patent, and WSiS appljed for too expanpatept,·NQ. 171,425., having been granted De,lj.nd. tlul:appljcation. for ,the reissue not filed until April p, 'rhe:o.riginatPAtent had ,one claimjas 'follows: :' .
}vhieh It is to remain, or it can be cut longiand appJiE!d asillllstrated in the drawings, and coated
448
r;',J
',nl'
',I,.nDlmAL
REPORTER,·vol. 48. "
..As'a new articJe'of a non-condllcting'coverlng composed of layers bfwrapptflg6 of:'paper satutated with adhesi,ve. material, and coln· pressed while being formed into tubular sections of a thIckness of one-half i1j.ch or more.. as shown and
The alleged undue broadening of the patent consists in two particulars, namely-First, in ithat the words, "of a thickness of one-half inch or more," which were'ill the original Claim, are oplitted from the reissue; and,second, by the insertion of the new words "or cO,ated" after the words, 1118yers or wra.ppings of paper saturated." Under the rule as now firmly settled, it conceded that the reissue 'of a patent for original claim niust'be applied for the· sole purpose of enlarging promptly, and that'an unexplained delay of three years 'and three months would be unreasonable'and indefunsibIe.Mill&r:,v. Brass '00:,104 U. S. 350. The open question here is whether, in fact, ofthe reissue was to broaden the original Claim; for, if this was not sO,then the reissue is!valid. GagtH. Herring,·107 U. S. 640; 2 Sup; 'Ct. Rep.:S19; Reed v. Oliase, Fed. Rep. 94; ,Eames v. Andrews,' 122. 'O'.S. 40, 1 Sup. Now, if we were shut up to a comparison of what ,J;neJElly, appears on the facl;lofthe originaLpatent andou the ,face of the-'reissue, it,might seem .that the omission from the latter of the words, "'of'a thickness of Qne-half inch or more;" 'was a material chang-e, and .one 'prejudicial to the public. But the proofs bring us to a different eonelu'sioi'l. Itis most clearly shown that a covering ,for .the desired purpose, of less thick· ness thanone-half.inehj would lack the necessary non-conducting prop:erty, and would be useless, and that in the actual practice of the invention .the' covering is al ways of greater thickness. The defendant's coverings, as well as the p1a.intiff's,exceed that thickness, and must dost> for any beneficial use; ,'A one-half i'nch;cotering is 000 tllin to retain the heat and prevent radiation. The thickness actuaHy'employed· ranges from one inch to 'one and .a 'half in rare' cases' exceeding the Jato ter,thiokness.. When,. therefore, we'oonsider thea.l't-ttiwhich the invention relates, and the requirementsiof that art, we find that,the mention intIre original patent of"a thicknass of one-halfillchor more" was merely ofa feature essentialtoanon-conducting!cover'ing. In;the nature of the case, it would have been implied, in the absence of express statement. Observe, the original speCification epl>ke of the covering as a "thorough non-conductorj" described, the method of manUfacture "to insure a firm, dense structure throughout;" and directed that the winding operation be continued until a covering" of sufficient' thickness" has Deen obtained. Manifestly, this meant a sufficient thickness to obtain the non-conductthat ing property, and to anyone skilled in the art it would for this a thickness of at 'least one-half inch waR necessary.', A change in the form of expression which possibly might be interpreted as extending th&scope of a patent toinoperative and useless things could scarcely be deemed a broadening ofthe claim: But such a construction is rather to be .Theequity of the case requires the court to regard practical results, and, if these are tocdntrol, then plainly the omission
Ot. Rep. t073.
,"',
, '
,'.
,
N02TRROP'S . EX'RS V. RASNER.
449
from the reissue of the words, "of 8 thickness of one-half inch or niore," did not really enlarge tne rights of the patentee, or abridge the rights of the public. Hencethe case is without the reason of the rule which prevailed in MiUer v. Brass Co., supra, and other like cases. Undoubtedly the inv.ention described' in the reissue is the same invention described in the original patent, and we think;the claim ofthe original and the first claim of the reissue are substantially identical, notwithstanding the omission in the latter of any reference to the thickness of the tubular sections. This view, it seems to us, is fully warranted by the reasoning and, conclusion of the supreme court upon the subject of reissues, as expressed in Eames v. Andrwlt, 8upra. - With respect to the introduction' into the claims of the words "or coated," We have no difficulty. Evidently "saturated" and "coated" are alternative expressions, to designate the same thing. To understand the meaning which the patentee attached to the word "saturated," to)ook into the specification, which, both in the original and the directs the "applying mixture to the to qause ;adb-esion." Beyond any question, it is to this application Ol:CQatiog the patentee refers by the term "saturated." "Saturated with a,dhesive IIlaterial" is .the exact language. Possibly he might have chosen a more apt word; hut, if he made a wrong selection, the slip is not fatal. No the specification can fail to discern h,is meaning. However, it i/:!satistactorily snown that while the gluten and starch of the paste, applied as directed by the patent, do not penetrate through the papyr, the ploistu!e does permeate it. that there is saturation resulting from the application of the adhesive mixture and the compression which . follows. .. All toihe second claim of the rdssue, little need be said. If no. eX,. pansioIl;.qf the qriginal claim is to be found. in the first claim of the re-, issue, is. none in the claim, forit contains a limitationnopn the original claim,by reasono(the introduction of the words "divided, longitudinally" /!ofter the \Vords "tubular Let ,8 dei,l1 favor. of the plaintiff. cree be
""e
NORTHROP'S
Ex'Ra ".RASNER et ale
(OCrcutt Oourt, W.D. PennsYZvanta. December 10, 189L) L PATENTS POR INVBNTloNS-mVBNTION-,),[e·ULLIO.CBILINGS;
.. BAMB--E;x.TIllNTOll' CLAIMS-PRIOR ART;
v.48F.no.6-29
