^ ma to 1903 Cornell University Library arV1621 Patentable invention. 3 1924 031 175 445 olin.anx The original of tliis book is in tlie Cornell University Library. There are no known copyright restrictions in the United States on the use of the text. http://www.archive.org/details/cu31924031175445 Patentable Invention BT EDWAED S. RENWIOK, Oivil and Mechanical Engineer^ AND Expert in Patent Causes, EOCHBSTEE, N. Y. THE lawyers' CO-OPEEATIVE PUBLISHING CO. 1893. ■r- /I NS-Hli Entered according to Act of Congress, in the year eighteen hundred and ninety-three, by EDWABD S. RENWICK, In the OfBce of the Librarian of Congress, at Washington, D. C. E. R. ANDREWS, PRINTER, ROCHESTER, N. T, PEEFAOE. TTTANY works upon the Law of Patents for Inventions have been published, but they have been written by jurists who have not been mechanics or inventors, and have not been familiar with the working of an inventor's mind. On the other hand, the decisions of the courts upon the question of what constitutes inven- tion have been so contradictory, and of late years have been so frequently at variance with the earlier decisions, that at the present time unless the subject-matter of a patent is wholly new it is practically impossible to pre- sume whether it is likely to be regarded as an inven- tion in the estimation of a court or is not. The diverse constructions of the law as to what con- stitutes invention are especially unfortunate in view of the creation of the present nine appellate courts; it being evident that unless these courts shall decide upon some common rules by which invention can be determ- ined and the decisions of the different courts can be harmonized there will result the anomaly that the de- cisions upon the same subject in one appellate circuit will clash with those in another. What such rules are to be must be determined by the courts, who alone have authority to deal with such matters; but it seems but fair that the views of inventors upon the subject should be considered; and the object of the author in publish- ing this book has been to endeavor to present these views. The author believes that he has some qualifica- tions for the work because his practice as a Solicitor of IV PUEFACE. Patents, and as Expert in Patent Causes for forty-three years, and his engagement as Expert in probably a greater number of patent suits than it has fallen to the lot of any other expert to have been connected with, has brought him into intimate relations with inventors; and besides, he is an inventor himself, one of the inventions in which he was concerned, the original self-binding harvester ( patented to Watson, Eenwick & Watson, May 13, 1851, and to Watson & Eenwick, August 16, 1853 ), of which he was a joint and the principal in- ventor, being of such importance that the present grain crops of the United States could not be harvested with- out its use. Various decisions of the courts are referred to in the subsequent pages, and the book might have been greatly enlarged by multiplying these references and printing them in full. It has however been deemed sufficient to cite only such decisions as are directly to the matters treated of, and to give the references to the reports of them, so that the originals may be examined by those who wish to do so. New Yoke, February 1, 1893. Table 'OF Contei^ts. Fart I. PATENTABLE INVENTION. § 1. The Statute - 1 § 2. Dictum of the Court 1 § 3. Determination of Invention by Assumption of the Ac- tion of a Peculiar Mental Faculty, a mere Opinion. 3 § 4. Invention a Change from what is Old 3 § 5. Determination of Invention by Rules and Evidence . 4 § 6. Exceptions to General Rules 4 § 7. Invention by Change of Form _ 5 § 8. Invention by Change of Size- 9 § 9. Invention by Change of Proportions 11 § 10. Invention by Change of Material. / 13 §11. Invention by Change of Location _ 13 § 13. Invention by Change of Arrangement 15 § 13. Invention by Application of an Old Thing to a New Purpose -- - 17 § 14. Invention by Application of an Old Device to Per- form its Usual Function 24 I 15. Invention by Substitution of one Old Device for Another _ 36 §16. Invention by Duplication- 31 § 17. Invention by Change of Direction of Jlotion 33 § 18. Invention by the Practical Application of the Discov- ery of a New Property of Matter. 34 §19. Invention Determinable by Rules and Evidence 34 § 20. Objections to Rules, and Replies Thereto 36 § 21. Fallibility of Opinion Formed after the Event 37 § 22. Extent of Change Required for Invention 39 v VI TABLE OF CONTENTS. Part II. INVENTIONS PATENTABLE BY LAW. § 33. Classes Enumerated in the Statute 41 A USEFUL ART. §24. Definition of a Useful Art _ 41 §25. Processes Simple and Compound 41 § 36. Pnceisan Invention even if its Phys'cal Operations are Old 43 § 37. Novelty of Result not Essential to Invention in a Process _ 4-3 § 38. Novelty of Implements, Tools, or Machines, or of Physical Operations, not Essential to Invention in a Process 43 § 39. Simultaneous Action of Operations not Essential to Invention in a Process 44 § 30. Invention may Exist in a Process when the Opera- tions are Old in the same Art 44 § 81. A Compound Process may be an Invention even -when its Operations are Old both Individually and in their Relation to other Operations 45 § 33. Process an Invention if the Old Order of Old Opera- tions be Changed with a Beneficial Result 47 § 33. Process may be a Mechanical one only 47 § 34. Processes the Operations of which are Functions of Machines 49 § 35. Invention in a Mechanical Process by the Change of Order of Old Operations 50 § 36. Defective Specifications of Process Patents 52 §37. Proper Form of a Claim to a Process 53 MACHINES. § 38. Definition of a Machine 53 §39. Machines Simple and Compound- 53 § 40. Combinations as Understood by the Courts 54 §41. New Doctrine of Aggregations. _ _. 55 § 43. Result of Doctrine of Aggregations . . _ 59 TABLE OF CONTENTS. Vll § 43. Mechanical Difference Between an Aggregation and a Combination 64 § 44. Conditions under which a Combination Exists 67 §45. Patentable Combinations 68 §46. Substitutions in Old Combinations Patentable _. 69 § 47. Devices Required to Make a Patentable Combination 74 §48. Rule as to Combination Claims 77 §49. Generic Combination _ __ 78 §50. Specific Combination 78 §51. Peculiar Combination __ 79 § 52. Particular Combination _.. 80 § 53. Four Classes of Combinations 81 § 54. Instance of a Generic Combination 81 § 55. Instance of a Specific Combination 81 §56. Instance of a Peculiar Combination 82 § 57. Instance of a Particular Combination 83 §58. Multiplicity of Combinations Possible .- 84 A MANUFACTUBB. § 59. Definition of a Manufacture 84 § 60. Invention in an Article of Manufacture 86 § 61. Process of Making an Article of Manufacture is not a Distinguishing Characteristic of it 90 COMPOSITIONS OF MATTER. § 62. Definition of a Composition of Matter 98 § 63. A Mechanical Composition of Matter __ 93 §04. A Chemical Composition of Matter 9^ § 65. Distinguishing Characteristics of Compositions of Matter 94 § 66. Invention by Substituting one Ingredient for Another in a Mechanical Composition of Matter __ 95 § 67. Invention by Substituting one Ingredient for Another in a Chemical Composition of Matter 97 § 68. Invention by Change of Proportions of the Ingre- dients of a Composition of Matter 98 PATENTABLE DESIGNS. §69. The Statute of 1842 98 Vlll TABLE OF CONTENTS. § 70. Dictum of the U. S. Supreme Court 99 § 71. Definition of a Design 100 § 72. Inadequacy of Protection by Limitation of Patent- able Designs to Decorative _ 101 § 73. Comparison of Act of 1842 witli Sec. 4929 as to Use- ful Designs - 102 § 74. Classes of Patentable Designs - 103 § 75. Novelty Necessary in a Patentable Design 104 § 76. Rules as to Patentability in Designs 106 I* ART III. INVENTION PATENTABLE IN A REISSUE PATENT. § 77. Definition of a Reissue Patent. 109 § 78. Patentee's Right to Reissue a Defective Patent 109 § 79. Analogy of the Reissue of a Patent for Invention to the Reformation of a Deed for Real Estate 110 § 80. Statute as to Reissue 110 § 81. Invention Claimable in a Reissue Patent According to the Former Construction of the Act 112 § 82. Evidence as to the Original Invention 113 § 83. Examples of Reissue Patents with Enlarged Claims.. 114 § 84. Revision of Reissue Patents by the Courts 116 § 85. Former Construction of the Act Maintained up to about 1880 116 § 86. New Legal Construction of Act Relating to Reissues. 116 § 87. New Legal Construction of the Statute of Reissue Incomprehensible to the Mechanic 126 § 88. Objections to an Unwarranted Restriction of the Claim of a Reissue Patent 127 § 89. Understanding of the Law of Reissue by Mechanics. 130 §90. Grounds for the Understanding of the Mechanic 131 § 91. Understanding of the Mechanic same as Courts Prior to about 1878 133 § 92. Fraudulent Reissues 134 § 93. Period Allowed for a Reissue 135 TABLE OF CONTENTS. IX § 94. Period Allowed for Reissue by New Legal Construc- tion 136 § 95. View of the Mechanic as to the New Construction of the Period Allowed for Eeissue 137 § 96. Actual Invention Rarely Set Forth Correctly in an Original Patent 139 § 97. EflEect of Value of Invention upon the Necessity for Reissue 139 § 98. Injustice of Restriction to a Fixed Period for Reissue 140 § 99. Doctrine of Dedication to the Public for Part of Full Invention not Claimed in Original Patent 140 § 100. Dedication to Public of Unclaimed Part of Invention of Original Patent not Recognized by Earlier Decisions .^ 142 § 101. Reissue must be Applied for within a Reasonable Period - 144 § 102. Reasonable Period for Reissue 146 § 103. Reasonable Period for Reissue with Reduced Claims 148 § 104. Equitable Right of a Manufacturer Before Reissue to Continue to Manufacture Subsequently 148 § 105. Frequent Course of Infringing Manufacturers 150 § 106. Equitable Construction of Law of Reissue 151 Table of Oases. This table is not a list of all the cases that have been adjudi- cated by the courts, but contains only the titles of those cases which have been selected as typical, and which illustrate the sub- jects treated in this volume. A. Adams, H. H., v. Joliet Mfg. Co., 3 Bann. & Ard. 1 33 B. Bailey Washing & W. Mach. Co. v. Lincoln, 4 Fish. Pat. Cas. 379 134 Bantz ». Elsas, 1 Bann. & Ard. 351 184 ». Frantz, 105 U. S. 160, 26 L. ed. 1013 _ 137 Battin v. Taggert, 58 U. S. 17 How. 74, 15 L. ed. 37 116, 134, 136, 144 Black ». Thoi-ne, 10 Blatchf. 66 134 Blake v. Stafford, 6 Blatchf . 195 , 134 C. Cahoon v. Ring, 1 CliflE. 592 16 Calkins b. Bertraud, 6 Biss. 494 134 Clements v. Odorless Excavating Apparatus Co., 109 U. S. 641, 27L. ed. 1060 117 Cochrane ii. Deener, 94 U. S. 780, 24 L. ed. 139 50 Coon V. Wilson, 113 U. S. 268, 28 L. ed. 963 _ 146 D. Davoll ». Brown, 1 Woodb. & M. 53 - 62 Dorsey Harvester R. R. Co. «. Marsh, 6 Fish. Pat. Cas. 387.. 134 Xll TABLE OF CASES. B. Earle «. Sawyer, 4 Mason, 1 4, 37, 38, 39 Eickemeyer Hat Blocking Mach. Co. v. Pearce, 10 Blatchf . 408.. - ."- 134 F. Foote V. Silsby, 1 Blatchf. 445, 3 Blatchf. 364, 370 33, 33 Freeman v. Asmus, 145 U. 8. 336, 341, 86 L. ed. 685, 691. .120, 135 Furbush v. Cook, 3 Fish. Pat. Cas. 671 74, 76 a. Gage v. Herring, 107 U. S. 640, 27 L. ed. 601 117 Gibson v. Harris, 1 Blatchf. 167.:... 184 Goodyear v. New York Gutta Percha & I. B. Vulcanite Co. 3 Fish. Pat. Cas. 313 13 V. Wait, 5 Blatchf . 468 - 134 Gorham Co. v. White, 81 U. S. 14 Wall. 535, 30 L. ed. 786.. 99 Grant v. Raymond, 81 U. S. 6 Pet. 318, 344, 8 L. ed. 376, 385 110, 133, 143, 151 H. Hailes v. Van Wormer, 87 U. S. 30 Wall. 353, 33 L. ed. 341 86 Hancock Inspirator Co. v. Jenks, 31 Fed. Rep. 911 40 Hussey v. Bradley, 5 Blatchf . 134 134 I. Ives «. Sargent, 119 U. S. 653, 30 L. ed. 544 145 James v. Campbell, 104 U. S. 356, 36 L. ed. 786 117, 136 Jordon v. Dobson, 3 Abb. U. S. 898 _ 134 K. Knight V. Baltimore* O. R. Co., Taney, 106 146 TABLE OF CASES. Xlll L. Lehnbeuter v. Halthaus, 105 U. S. 96, 26 L. ed. 940 103 M. McClurg V. Kingsland, 45 U. S. 1 How. 202, 11 L. ed. 102.. 149 Mahn v. Harwood, 112 U. S. 354, 361, 28 L. ed. 665, 668.... _117, 135, 141 Many v. Sizer, 1 Fish. Pat. Cas. 21.. 39 Marsh ®. Seymour, 97 U. S. 848, 24 L. ed. 963 134 Matthews «. Boston Machine Co., 105 U. S. 54, 26 L. ed. 1022 137 Miller v. Bridgeport Brass Co., 104 U. S. 350, 26 L. ed. 783 _ ..119, 126, 137, 141, 144 Morris v. Eoyer, 2 Bond, 66 134 Mowrey v. Whitney, 81 U. S. 14 "Wall. 620, 20 L. ed. 860... 19 N. Neilson v. Harford, Webster Pat. Gas. 295, 310, 338 22 New Process Fermentation Co. ■». Maus, 123 U. S. 413, 30 L. ed. 1193... 45 New York Belt. & Pack. Co. «. Magowan, 27 Fed. Kep. Ill, afE'dinl41U. S. 333, 35 L. ed. 781 26 O. O'Reilly v. Morse, 56 U. S. 15 How. 62, 14 L. ed. 601.. .112, 134 P. Parham v. American Button-hole, O. & S. M. Co., 4 Fish. Pat. Cas. 468 _ __ 134 Parker v. Hulme, 1 Fish. Pat. Cas. 44 32 Pearce v. Mulford, 103 U. S. 113, 36 L. ed. 93 1 Potter «. Holland, 4 Blatchf. 338 134 Prentice «. Stearns, 113 U. S. 435, 38 L. ed. 1059 _ 110 Providence Rubber Co. v. Goodyear, 76 U. S. 9 Wall. 788, 19 L. ed. 566 34, 115, 134, 136 XIV TABLE OF 0ABE8. E. Eeckendorfer v. Faber, 93 U. S. 347, 23 L. ed. 719 55 Eeedy «. Scott, 90 U. S. 33 Wall. 353, 33 L. ed. 109... 134 Rubber Step Mfg. Co. ■». Metropolitan R. Co., 3 Bann. & Ard. 353 - 35 8. Seymour v. Marsh, 9 Phila. C. C. 380 134 0. Osborne, 78 U. S. 11 Wall. 516, 30 L. ed. 33. . .15, 63, 134 Silsby V. Foote, 61 U. 8. 30 How. 378, 15 L. ed. 953 24 Smith V. Downing, 1 Fish. Pat. Cas. 91 39 «. Goodyear Dental Vulcanite Co., 93 U. 8. 493, 23 L. ed. 983 90 Stimpson v. Westchester R Co., 45 U. S. 4 How. 380, 11 L. ed. 1030 134 Stockton v. Maddock, 10 Fed. Rep. 132 40 Swain Turbine & Mfg. Co. v. Ladd, 102 U. 8. 408, 26 L. ed. 184.... 117 T. Teese v. Phelps, 1 McAllister, 48 40 ToplifE V. Topliff, 145 U. 8. 156, 170, 36 L. ed. 660, 661.... __ .117, 119, 125, 145 Tuck 8. Bramhill, 6 Blatchf . 95 148 W. Westinghouse v. Gardner & R. Air Brake Co., 2 Bann. & Ard. 55 134 Wheeler v. Clipper Mower & Reaper Co., 10 Blatchf. 181... 134 Wilson V. Rousseau, 45 U. 8. 4 How. 646, 11 L. ed. 1141... 114, 134, 136 Winans v. Denmead, 56 U. 8. 15 How. 330, 14 L. ed. 717. . .6, 8 Woodward «. Dinsmore, 4 Fish. Pat. Cas. 163 134 Woodworth v. Wilson, 45 U. S. 4 How. 712, 11 L. ed. 1171.. 114 Wyeth V. Stone, 1 Story, 373 31 TABLE OF CASES. XV T. Tale Lock Mfg. Co. •». Berkshire Nat. Bank, 135 U. S. 342 34 L. ed. 168 146 PART I. PATENTABLE INVENTION. § 1. The Statute. Section 4886 of the Revised Statutes of the United States declares that — " Any person who has invented or discovered any nevf and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discov- ery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor." The statute, however, does not define what is meant by the word "invented" or what is meant by the term "invention," and consequently the determination of what constitutes invention is left to the courts. § 2. Dictum of the Court. As to what constitutes invention the following dictum was pronounced in 1880 by the United States Supreme Court {Pearce v. Mulford, 102 U. S. 113, 26 L. ed. 93): "But all improvement is not invention, and entitled 1 1 2 PATENTABLE INVENTION. to protection as such. Thus to entitle it, it must be the product of some exercise of the inventive faculties." What these faculties are, or how they are to be dis- tinguished from the constructive faculty of the mind, is a matter that is loft by the Court in profound obscur- ity. No two persons can agree as to the line of demar- cation between the two faculties, because from the variations in the characters of the minds of men, their differences in training and in experience, a change- which to one mind appears to have involved tlie exer- cise of the so-called inventive faculty, is thought by another (after the event) to have been the result of merely the constructive faculty or of mechanical skill. Hence to test the existence of invention by the assump- tion of the exercise of mental faculties by which it has- been produced, and which are indefinable, amounts simply to an attempted determination of a truth by mere judicial opinion, without reliance upon evidence and without recourse to rules by which a just conclu- sion can be reached. § 3. Determination of Invention by Assumption of the-' Action of a Peculiar Mental Faculty a mere Opinion. To the scientific mechanic the procedure of deter- mining the nature of an effect by an assumption of a cause by which it may or may not have been produced,, is contrary to the method of proceeding in other cases. Thus, the faculties of the mind are forces, and, as with other forces, we know nothing of them except by their effects. "We know nothing of the real constitution of the forces of electricity and heat; it is true that we have hypotheses that electricity is a fluid of some un- known kind, and that heat is a form of motion, but PATENTABLE INVENTION. O these are but hypotheses which suit the present condi- tion of human knowledge. On the other hand we know that when a certain effect is produced, the action or pres- •ence of the agency, whether heat, or electricity, or some •other impalpable force, is to be inferred. It is the same with the impalpable forces of the human mind, such as those we call the constructive faculty and the inventive faculty; their action is to be inferred from the effects produced; and we should determine whether one or the •other faculty has acted by the nature or character of the 'effect, instead of attempting to classify the effects as in- ventions or as mere skillful constructions falling short ■of invention, by an assumption that in some cases the inventive faculty has been exercised, while in others only the constructive faculty has acted, — an assumption which is incapable of proof in every case, and is a matter of mere opinion. § 4. Invention a Glian^e from what is Old. On the other hand, it has been well said (1 Robinson, Patents, p. 114) that "an invention is an unchangeable fact to which the law must conform." If this be true, then that fact, like any other fact, should be susceptible •of being proved by evidence, and should not be deter- minable by the mere opinion of the court before whom the question of invention is tried. An invention, ac- cording to the statute first quoted, must be "new;" hence it must of necessity amount to a change from that which has previously been known, and if the question •of how much or how little change is required to consti- tute invention is to be determined in every case by the mere opinion of the court, formed in every case after ihe event, the matter is at once removed from the domain 4 PATENTABLE INVENTION. of evidence and ie cast upon the sea of uncertainty where it is subjected to the varying qualities and the shifting^ views of the minds of judges, who, however well trained in the science of law, have as a general rule no personal experience in the operation of an inventor's mind. § 5. Determination of Invention by Kules and Evidence. If the nature or character of the thing or efEect pro- duced is to determine whether it is to be classified as an invention or as a mere construction produced by mere mechanical skill, the question naturally arises, by what, rules, if any exist, are we to measure this nature or char- acter. On this subject it appears that the earlier decis- ions of the courts differ materially from many of those- of later years in the respect that certain definite rules, are deducible from the former, and those which have fol- lowed in the same line; while according to many later decisions of our highest court, invention is a matter of mere opinion formed by the court after the event. Ac- cording to the earlier decisions and those which have- followed in the same line, a change was decided to be new under the Patent Law when it had not been known or used before {Earle v. Sawyer, 4 Mason, 1); and to be usef al if it would accomplish the purpose for which it was designed, and was not noxious or hurtful. These- two requirements of novelty and utility are clearly sus- ceptible of proof by evidence; and it is deducible from the earlier decisions and those which have followed in the same line, that a change which involves those re- quirements is an invention within the meaning of the- Patent Law with certain well defined exceptions. § 6. Exceptions to the General Bnles. These exceptions are that the change, even when new PATENTABLE INVENTION. 5 and useful, does not amount to invention when it is either one of the following matters: A simple change of form, (using the language of the old Act of 1793) or (using the language of later days) a mere change of form. A mere change in size or degree. A mere change in proportions. A mere change of material. A mere change of location. A mere change of arrangement. A mere application of an old thing to a new purpose; or a double use of an old thing, as such an application is frequently styled. A mere application of an old thing to perform its usual functions with its usual mode of operation, or move- ment. A mere substitution of one old device for another. A 7nere duplication of old devices. A mere change of the direction of movement of a mov- ing device. The discovery of a new property of matter. The word mere as above used is significant and impor- tant, because it involves the proposition that there are changes of some kind in each of the above respects which are not mere changes, but are substantial and amount to invention when the changes are new and useful. A con- sideration of a few cases will demonstrate the correctness of this proposition. § 7. Invention by Change of Form. As an instance of a change of form which was an in- vention and patentable, we have the case of the Winans coal car of conoidal form. Previous to the date of his t) PATENTABLE INVENTION. invention it had been customary to make the bodies of ■coal cars of rectangular form; and, as these had flat sides which were subjected to transverse as well as tensile strains, sufficient material had to be used to maintain them in shape under the. internal pi'essure of the coal. By reason of the change of form from rectangular to •conoidal, the internal pressure of the coal did not tend to distort the car body; the material of the sides of the body was subjected to tensile strains only, instead of to transverse as well as tensile strains; and as the resist- ance of wood and iron to tensile strains is greater than their resistance to transverse strains, the car body could be made of thin material and of light weight, and as a consequence much less dead weight of car had to be drawn over the railroad than was required with cars having bodies of the old rectangular form. Winans' patent was infringed, and the case finally •came before the United States Supreme Court. Winans V. Denmead, 56 U. S., 15 How. 330, 14 L. ed. 717. In the case of this patent the defendant appears to have relied mainly upon the assumption that the terms of the patentees claim restricted the invention to the identical In this case the centrifugal machine adapted to hold the moulds was new and was patented as a machine; the process was new as applied to the drainage of sugar, because the fact that sugar could be drained, in that way was a discovery, and the process of draining sugar centrifugally was an invention. But was the sugar, when drained centrifugally, a new and patentable article of manufacture because of the process by which it was produced when every one of the qualities and properties of the article were identical with the sugar drained by gravitation? We think not, and that the former was simply the same old article produced by a new process and by the operation of a new machine. Hence the theory that an article, which differs in no material quality or property or mode of operation from some old article, is characterized by the "defined manner" or process by which it is made, and that if it be made by a different process it is a new article, appears to be un- sound and illogical. If a person has produced an article, and such article possesses new attributes, the article itself is new and useful; if the process by which the article is made has heretofore been unknown, that pro- cess is new and useful; if a special machine has been devised to manufacture the article, that machine is new and useful; and in each case if the change from what is old or the thing done does not fall within the exceptions previously noted in § 6, ante, that change or thing A PATENTABLE COMPOSITION OF MATTER. 93 should be legally and properly a patentable invention. If but one of the three things done happens to be new, and the patentee makes the mistake of omitting or neg- lecting to claim it, and of claiming one or both the other things which turn out to be old, that course is a grave misfortune to the patentee, as the patent would be void for want of novelty; but that unfortunate fact for the patentee does not, in our opinion, Justify a court in sustaining a void patent by the mechanically illogical and unsound theory that the process by which an article is made is in some recondite way enibodied in and char- acterizes the article. COMPOSITIONS OF MATTER § C2. Definition of a Composition of Matter. A composition of matter may be defined as a compound of two or more substances which possesses a property or quality that is not possessed by the substances individ- ually. The substances used constitute the ingredients of the composition or compound. Composition of matter may be classified as mechanical and chemical. § 63. Mechanical Composition of Matter. Gunpowder is an intimate mixture or composition of charcoal, saltpetre, and sulphur in certain definite rela- tive proportions, and it has the property of rapidly evolving an immense volume of gases by its combustion. If these ingredients be intimately mixed in the condition of powder and no further operation be performed upon the mixture, the product is what is commonly known as meal powder, and it burns rapidly in air without ex- ploding. ' 94 A PATENTABLE COMPOSITION OF MATTEE. If meal powder (such as above mentioned) be subse- quently changed in its structure 'by being formed into grains, the grained compound, commonly known as gun- powder, in burning evolves gases with such intense rap- idity as to produce the effect known as explosion. In the case of gunpowder, whether in the condition of meal powder or in the granular condition, the mixture is a purely mechanical composition of matter, as may be proved by the fact that the ingredients may be separated or dissociated unchanged in their chemical composition, by the mechanical operations of lixiviation and washing. § 64. Chemical Composition of Matter. Another instance of a composition of matter is nitro- glycerine, which is produced by the simultaneous action of nitric and sulphuric acids upon glycerine. In the compounding of this article the peculiar chemical com- position and properties of both the nitric acid and the glycerine are changed, their chemical constitution is broken up, and some of the constituent elements of the two ingredients combine chemically in changed definite proportions to form a new chemical substance which is a violent explosive and differs in its properties from those of the substances by whose action it is produced. § 65. Distinguishing Characteristics of Compositions of Matter. The first two instances above mentioned (§ 61) show that a composition of matter may be distinguished from other substances by its ingredients and by the properties or qualities attained by compounding them, even when the compound is a mechanical mixture. The second example shows that a composition of matter may be dis- A PATENTABLE COMPOSITION OF MATTER. 95 tinguished from another, as grain powder is distinguished from meal powder, by its structure, even when the com- position having the new structure is a mechanical mix- ture of the same ingredients and in the same proportions as are found in another composition (meal powder) pro- vided a useful property or new mode of operation is imparted to the mixture by the change of its structure, and in this case the change of structure is not within the category of a mere change of form, but is a substan- tial change. The last example of a chemical composi- tion (nitroglycerine) shows that a composition of matter may be distinguished from others not only by its prop- erties or qualities, but also by its chemical constitution when its elements are chemically combined. In each of the three cases the novelty of the composition and the new property or mode of operation are susceptible of proof by evidence, and the composition, if new and ca- pable of being utilized for any useful purpose, is an inven- tion and should be a j)atentable one, however simple and obvious it may appear to be after it has been produced. % 66. 'invention by 'Substituting One Ingredient for An- other in a Meclianical Composition of Matter. The first above two examples (§ 63) may be considered as instances of original compositions of three ingredients combined together to produce the useful effects incident to compounding them, but the question arises whether the substitution of a different ingredient in a known mechanical compound in place of one of the ingredients of that compound does or does not constitute an inven- tion. Let us test this matter by an illustration. Nitro- glycerine is a free flowing explosive liquid and therefore has its particles in such intimate relationship that pres- 96 A PATENTABLE COMPOSITION OF MATTER. sure upon one of its particles is propagated throughout the mass, and a slight blow or jar detonates the mass. This property of explosion by a slight blow producing pressure renders the handling of nitroglycerine exceed- ingly dangerous. Nobel discovered that when the liquid nitroglycerine is compounded mechanically with a fossil earth in a powdery condition this property is neutralized; the explanation of change of effect or mode of operation appearing to be that whereas in the liquid nitroglycerine its particles are in such intimate relationship as to be in concussive contact, they are separated when the nitro- glycerine is mechanically compounded with a powdered solid substance and concussive contact is prevented. The name of Dynamite was given to this new compound, and it was a new and very useful invention, for while it possesses the valuable properties of nitroglycerine as an intensely active explosive, it is free of the risk of explo- sion by a slight jar or blow incurred in handling and transporting it. Dynamite is a mechanical composition of liquid nitro- glycerine and a powdered solid, and after Nobel's dis. covery new dynamites were devised in which the powdered fossil earth used by Nobel was replaced by other solid substances in the condition of powder. In one of these new dynamites the solid ingredients employed were the game as those of gunpowder; that is to say, the producer of the new dynamite compounded nitroglycerine with meal powder instead of with fossil earth powder. Was this change a mere substitution of one material for an- other, or was it more? When the original dynamite was exploded the solid matter with which the nitroglycerine was compounded was incombustible and inert to produce gases. Hence the volume of gases produced was that A PATENTABLE COMPOSITION OF MATTER. 97 incident to the explosion of the nitroglycerine of the compound alone. With the new dynamite the powdery solid matter was combustible, and when the compound was exploded the gas produced was the sum of those evolved by the nitroglycerine and of those evolved by the meal powder, and this was a new mode of operation. In the respect that the meal powder in the new com- pound neutralized the dangerous property of unmixed nitroglycerine for handling, the meal powder was the equivalent of the fossil earth powder, and the new com- pound clearly embodied Nobel's invention; and if this had been all that the meal powder did, the change from fossil earth powder to meal powder (each being an old pulverulent material) would have been a mere substitu- tion of one well known pulverulent material for another; but in the respect that the change imparted to the new compound the new mode of operation, the change was not a mere substitution of one ingredient for another, but produced a substantially new composition of matter, analagous to a new combination of old mechanical de- vices. Hence in the case of such a change in a mechan- ical composition the product is an invention which should be patentable; and in such a case the question whether invention exists is not a matter of .mere opinion but is capable of proof by evidence. § 67. Invention by Substituting One Ingredient for An- other in a Cliemical Composition of Matter. The same principles hold good in cases of chemical compositions. Thus, common salt, chemically known as chloride of sodium, is a chemical compound of sodium and chlorine, one atom of each. The atom of sodium may be replaced by an atom of calcium, in which case the chemical compound is known as the chloride of cal- 7 98 PATENTABLE DESIGNS. cium. But the properties or qualities of the two chlorides are wholly dissimilar in several important respects, and consequently if some person had produced the chloride of calcium subsequent to the existence of the chloride of sodium, the change would not have been a mere substi- tution of one known ingredient (calcium) for another (sodium) in an old composition of matter, but would have been an invention. § 68. Invention by Change of Proportions of the Ingredi- ents of a Composition of Matter. There is also the question with reference to a compo- sition of matter, whether a change of the proportions in which the same ingredients are compounded does or does not constitute an invention. We have an instance of such a change in the case (previously referred to in § 9) of the soft vulcanized rubber, or composition of rubber and sulphur invented by Charles Goodyear, and the hard vulcanized compound of rubber and sulphur (Vulcanite) subsequently invented by Nelson Goodyear. In the lat- ter case the change in the proportions of the sulphur to the rubber produced a compound (vulcanite or hard rubber) having qualities in many respects different from those of the older soft rubber compound of Charles Good- year. Hence the change was not a mere change of pro- portions, but was a substantial one amounting to inven- tion, and it was recognized as such by the court. PATENTABLE DESIGNS. § 69. The Statute of 1842. By the Patent Act of 18423 a new class of articles commonly known as designs were made proper subjects PATENTABLE DESIGNS. 99 of patents. The section of that Act relating to this subject is in the following words: "That any citizen or citizens, or alien or aliens hav- ing resided one year in the United States and taken the oath of his or their intention to become a citizen or citi- zens, who by his, her, or their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture, whether of metal or other material or materials, or any new and original design for the printing of woolen, silk, cotton, or other fabrics, or any new and original design for a bust, statue, or has relief or composition in alto or lasso relievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern or print, or picture to be either worked into or worked on, or printed, or painted, or cast, or otherwise fixed on any article of manufacture, or any new and original shape or configuration of any article of manufacture not known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their application for a patent therefor, and who shall desire to obtain an exclu- sive property or right therein to make, use, and sell and vend the same or copies of the same, to others, by them to be made, used, and sold, may make application in writing to the Commissioner of Patents expressing such desire, and the commissioner, on due proceedings had^ may grant a patent therefor, as in the case now of appli- cation for a patent." § 70. Dictum of the United States Supreme Court. In the leading decision on this subject {Oorham Co. v. White, 81 U. S. 14 Wall. 535, 30 L. ed. 736) by the 100 PATENTABLE DESIGNS. United States Supreme Court the court made the follow- ing dictum: " The acts of Congress which authorize the grant of patents for designs were plainly intended to gire encour- agement to the decorative arts. They contemplate not so much utility as appearance, and that, not an abstract impression or picture, but an aspect given to those objects mentioned in the acts. It is a new and original design for a manufacture, whether of metal or other material; a new and original design for a bust, statue, ias relief, or composition in alto or iasso relievo; a new or original impression or ornament to be placed on any article of manufacture; a new and original design for the printing of woolen, silk, cotton or other fabrics, a new and useful pattern, print, or picture, to be either worked into, or on, any article of manufacture; or a new and original shape or configuration of any article of manufacture — it is one or all of these that the law has in view." § 71. Deftnition of a Design. The design of an article whatever it be, is the appear- ance of the thing, as distinguished from its structure; and according to the above quoted decision a design to be patentable under the Act of 1843 must have been decorative as distinguished from useful, and conse- quently only those designs were patentable under this decision which are decorative. While this decision was apparently required under the language of the Act of 1842, it does not follow that it applies to all cases which may arise under the language of the Act now in in force. U. S. Revised Statutes, § 4929. Every mechanic and manufacturer knows that there are multi- PATENTABLE DESIGNS. 101 tudes of strictly useful shapes or configurations of articles whose appearances are so attractive or whose configurations are so useful as to insure large sales of them in preference to other articles of the same mechan- ical structure, but of different forms or configuration. These useful shapes and configurations are gotten up frequently with great labor and expense, as in the case of stoves, but as under the dictum in the Gorham case such useful shapes and configurations are not decorative, patents for them have been declared void by the courts. § 72. Inadequacy of Protection by Limitation of Patent- able Designs to Decorative. It is well understood by manufacturers that whenever one has produced an article of new and useful shape or configuration which takes the market, but whose struc- ture is not protected by a patent, his rivals in the trade immediately copy this shape or configuration in articles of the same structure made by them; and they thus deprive the originator of the reward to which he should be equitably entitled by reason of the labor and money he has expended. In cases where the articles are made of cast iron or of plastic materials all that is frequently necessary in order that copies of articles of new and use- ful forms or configurations may be produced is to pur- chase in the market those of the original manufacturer, to dress them up, and to use them as patterns for pro- ducing fac-simile imitations. Hence, either the language of the Act of 1842 or the interpretation of it in the Gorham case fell short of protecting a large class of meritorious manufactured articles which have no novelty in structure, and therefore are not patentable as machines or articles of manufacture, but have new and useful 102 PATENTABLE DESIGNS. shapes or configurations which.', while not decorative, are of value to the manufacturers because their appear- ance pleases the eyes of the users and gives the articles a preference in the market. § 73. Comparison of Act of 1843 with Section 4929, as to Useful Designs. If the language of the United States Court in the Gorham case (which is that of the Act of 1842) be com- pared with the Act now in force ( § 4939 ) it will appear that in one respect the two differ: Thus, the language of the Act of 1843 and of the court in the Gorham case is "a new and original shape or configur- ation of any article of manufacture;" while the language of the present Act is "any new, useful and original shape or configuration of any article of manufacture; " and it is somewhat significant that the word " useful," which the language of the Act of 1843 omits, is affixed to but one of the classes of articles enumerated in the present Act, and is not found in the denomination of any other of those classes. At the time the Design Act of 1843 was asked for, it was understood by mechanics and manufacturers that a law was wanted which would protect manufacturers in the use, among other things, of their patterns for cast- ings; and that when they had succeeded in producing useful forms or configurations of articles of manufac- ture, which had no patentable features of structure, they should be protected from having these forms or configurations copied wholesale by their rivals in trade. The Gorham decision was made under the original Act of 1843, which does not contain the word "useful" and has since been repealed, and as the language of the PATENTABLE DESiaNS. 103 present Act differs from that of the repealed Act under which the decision was rendered, it does not follow that the present Act, like the original Act of 1S43, excludes from its purview the protection of a new, useful, and original shape or configuration of any article of manu- facture which is not decorative. The United States Supreme Court appears to be leaning to this view, because in the case of Lehnheuter v. HoWiaus, 105 U. S. 96, 26 L. ed. 940, they, by their decision, admitted a a show case of a useful design to be patentable when there was nothing strictly decorative about it. § 74. Classes of Patentable Designs. The present Act divides the articles to be protected into four classes as follows: 1. Any new and original design for a manufacture, bust, statue, alto relievo or has relief. 3. Any new and original design for the printing of woolen, silk, cotton, or other fabrics. 3. Any new and original impression, ornament, pat- tern, print, or picture to be printed, painted, cast, or otherwise placed on or worked into, any article or manu- facture. 4. Any new, useful and original shape or configura- tion of any article of manufacture. While the' first three of these classes are undoubtedly decorative, the last class is "useful" as distinguished from decorative; and in view of the language of the Act, and of the equitable consideration that manufac- turers should be protected in the use of those useful forms or configurations of articles which they have pro- duced and which approve themselves to the public, it is but just that the language of the present Act should, if 104: PATENTABLE DESIGNS. possible, be so construed as to include in the purview of the last class those appearances which are not strictly decorative but are useful. § 75. Novelty Necessary in a Patentable Design. A design to be patentable must be new; but the ques- tion of how much or how little novelty constitutes a patentable design as distinguished from designs previous- ly known does not at present seem to be well settled. In the Gorham case the court, when speaking upon the infringement of a design for spoons, said: "We are now prepared to inquire what is the true test of identity of design. Plainly, it must be sameness of appearance, and mere difference of lines in the draw- ing or sketch, a greater or smaller number of lines, or slight variances in configuration, if [not] sufficient to change the effect upon the eye, will not destroy the sub- stantial identity. * * * So a pattern for a carpet, or a print, may be made up of wreaths of flowers arranged in a particular manner. Another carpet may have simi- lar wreaths, arranged in a like manner, so that none but very acute observers could detect a difference. Yet in the wreaths upon one there may be fewer flowers, and the wreaths may be placed at wider distances from each other. Surely in such a case the designs are alike. The same conception was in the mind of the designer and to that conception he gave expression. * * * "We hold, therefore, that if, in the eye of an ordi- nary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other." PATENTABLE DESIGNS. 105 In the Gorham case there was no evidence before the court bo the effect that the general configuration was not new, but there are many cases of designs where the general configuration is old and the only noyelties are in the features or details. Thus, while the appeal in the Gorham case was pending, a manufacturer submitted to the author two pieces of carpet showing designs; the one patented, the other made by the manufacturer. He was threatened ^yith a suit under the patent and wanted an expert opinion as to whether he did or did not infringe. In each of the two designs there was a plain ruby ground; in each there was a lattice formed figure of narrow stripes of shaded yellow leaves crossed diagonally so as to form what may be termed diamond panels; and in each diamond space or panel there was a group of shaded yellow leaves. The general configura- tion, the arrangement of figures, and the general appear- ances of the two designs were the same, so that an ordinary purchaser who saw the two in different stores and was not an acute observer accustomed to compare designs (which was the test in the Gorham case) would be very likely to take one for the other. The author informed the manufacturer of the Gorham appeal then pending, and of the complainants view of the case, which was subsequently taken by the Supreme Court, and said that if the court on appeal should decide that when a patentee specified his design by details (as the Gorham Company did, in the descriptive part of their patent in suit) the patentee was restricted to substantially the same details or features, then the manufacturers' design was not an infringement. But if the court, on appeal, should take the view that it was the general appearance of the design that determined the question of substcantial iden- 106 PATENTABLE DESIGNS. tity, then the manufacturer infringed, because his de- sign was substantially identical with the patented design in the general configuration and arrangement of the figures, and in their colors. "But," said the manu- facturer, "I have something else to show youj" where- upon he produced a roll of a dozen specimens of carpet, the design of every one of which was a lattice formed pattern of shaded leaves forming diamond shaped pat- terns with groups of shaded leaves in the panels; in each case also the colors were the same as those of the pat- ented design and of the manufacturers design (shaded yellow leaves upon a ruby ground); the figures were all of nearly the same dimensions; and the only differences were in the details or features of the leaves. In fact each of the old designs was as close an a|)proximation in the general appearance to the patented design, as the manufacturers' was which was claimed as an infringe- ment. "Now," said the manufacturer, "all these dozen specimens were old at the date of the patentee's design patent, how do these affect the matter?" If the view of the Supreme Court in the Gorham case be the rule of law applicable to all cases of design pat- ents, then in such a case as the above the manufacturer's design infringed; but in that event the patent was void when judged by that same rule (especially as illustrated by the carpet example referred to in the decision), because the patented design was anticipated by the old designs, as the appearances of the former as closely resembled each of the old designs, as the manufacturer's design resembled the patented one. § 76. Rules as to Patentability in Designs. Such a decision in such a case would, however, work great injury to producers of design patents, because PATENTABLE DESIGNS. 107 there are a host of cases in which the novelty of the de- sign is its details only, the general appearance being old. Hence the reasonable rules to a mechanic on the subject of designs appear to be that when the general configur- ation is new the patent may be broad enough in its scope to cover it: but when the general configuration is old, while the details of the design are new, then a patent may be granted for the design characterized by the new details, which should be specified in the de- scription; and such a patent should be valid. The two cases are esactly analagous to a patent for a generic combination in machines, and a patent for a specific combination; and while there may be but one patent for the general appearance of a design, there may be a number of subsequent patents for designs having new specific peculiarities of the same general appearance; and these subsequent patents, while all included in the purview of the generic design patent may be all patent- able independently of each other. PAET III. INVENTION PATENTABLE IN A REISSUE PATENT. § 7 7. Definition of a Reissue Patent. A "reissue patent," properly so designated, is a new patent taken out by the original patentee, or his legal representative, upon the surrender of the original patent and for the residue of the term thereof, with a corrected specification setting forth correctly the invention which the patentee intended to be protected by his original patent, but which that patent is either inoperative to protect, by reason of a defective or insufficient specifica- tion, or is invalid to protect by reason of the patentee having claimed as his own more than he had a right to claim as new. § 78. Patentee's Right to have a Reissue of a Defective Patent. That a patentee who had a defective patent had an equitable right to surrender it and to have a corrected patent issued to him when the defect "arose from inad- vertence or mistake and without any fraud or misconduct on the part of the patentee," was admitted by the Su- 109 110 EEISSFE PATENTS. preme Court in the decision in the case of Grant v. Ray- mond, 31 U. S. 6 Pet. 218, 8 L. ed. 376; and this right was conceded in January, 1833, before the first special statute on the subject of reissues became law in July, 1832. Hence the first statute on the subject and those which have succeeded it have merely embodied in statute law the equitable right to which the patentee was con- ceded to be entitled before the first statute was passed, and have provided a special proceeding for the correction of defective patents. § 79. Analogy of tlio Keissne of a Patent for Invention to tlie Reformation of a Deed for Real Estate. The right of a patentee to have a defective patent reformed or corrected by reissue is in accordance also with the practice of courts of equity with reference to instruments defining other property. Thus, in actions iinder deeds with reference to land it has been well set- tled that if the deed under which the plaintiff claims title is not effectual to convey the land by reason of a mistaken description, equity will relieve the plaintiff by reforming the deed. Such relief can be obtained only in a suit in equity brought for that purpose. Prentice V. Stearns, 113 U. S. 435, 28 L. ed. 1059. With inven- tions, the patent is the deed, and the statute relating to reissues (§ 4916) has provided the mode of its reforma- tion without the necessity of a suit in equity. § 80. Statute as to Reissue. The statute now in force (.§ 4916) is in the following words : "Whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by REISSUE PATENTS. Ill reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mis- take, and without any fraudulent or deceptive intention, the Commissioner shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent for the same invention and in accordance with the corrected specification, to be issued to the pat- entee, or, in the case o£ his death or of an assignment of the whole or any undivided part of the original patent, then to his executors, administrators, or assigns, for the unexpired part of the term of the original patent. Such surrender shall take effect upon the issue of the amended patent. The Commissioner may, in his discretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued letters patent. The specifications and claim in every such case shall be subject to revision and restriction in the same manner as original applica- tions are. Every patent so reissued, together with the corrected specifications, shall have the same effect and operation in law, on the trial of all actions for causes thereafter arising, as if the same had been originally filed in such corrected form; but no new matter shall be in- troduced into the specification, nor in case of a machine patent shall the model or drawings be amended, except each by the other; but when there is neither model nor drawing, amendments may be made upon proofs satis- factory to the Commissioner that such new matter or amendment was a part of the original invention, and was omitted from the specification by inadvertence, acci- dent or mistake, as aforesaid." 112 EEISSUE PATENTS. § 81. InTention Claimable in a Reissue Patent According to the Former Construction of the Act. The reissue patent is required to be " for the same InTention" as the original patent; but the judicial in- terpretation of these words has varied greatly in different ages of the United States Supreme Court. Under the practice of the United States circuit courts and of the United States Supreme Court prior to about 1877, it was settled law that the reissue patent was to be for the same invention which the patentee intended to be secured by the original patent. Thus, in the case of O'ReiUy v. Morse, 56 U. S. 15 How. 62, 14 L. ed. 601, in which the reissue patent of Morse was in suit and had a specifica- tion and claims materially different from those of the original patent. Chief Justice Taney (an admitted strict constructionist) delivered the decision of the Supreme Court in reference to the reissue of the Morse patent with "additional specifications" to those contained in the original patent, in the following language: " We do not think it necessary to dwell upon the objec- tions taken to the proceedings upon which the first patent was issued or to the additional specifications of the reis- sued patent of 1848. In relation to the first, if there was any alteration at the suggestion of the commissioner, it appears to have been a matter of form, rather than of substance; and, as regards the second, there is nothing in the proof or on the face of the reissued patent to show that the invention therein described is not the same with the one intended to be secured by the original patent. It was reissued by the proper lawful authority; and it was the duty of the Commissioner of Patents to see that it did not cover more than the original invention. It must be presumed, therefore, that it does not, until the EEISStJE PATENTS. 113 contrary appears. Variations from the description given in the former specification do not necessarily imply that it is for a different discovery. The right to surrender the old patent and receive another in its place, was given for the purpose of enabling the patentee to give a more perfect description of his invention, when any mistake or oversight was committed in his first. It necessarily, therefore, varies from it." The words "intended to be secured by the original patent" are worthy of note, as well as the last sentence above quoted. Under this construction of the law any patentee who had a patent that was inoperative to protect him in the use of his entire invention by reason of insufficient claims was properly permitted to surrender his original patent and to take out a reissue patent for the residue of the term of the original patent, and with claims broader in scope than those of the original patent, pro- vided it was shown to the satisfaction of the commis- eioner of patents that the broader claims were embodied in the original invention at the date of the original ap- plication, and provided that the defect of the specifica- tion of the original patent had arisen from inadvertence, accident or mistake, and without any fraudulent or deceptive intention. Eeissue patents so taken out were sustained by the courts. § 82. Evidence as to the Original Invention. In some cases parol evidence as to omissions in the specification of the original patent was admitted; but as such evidence was liable to be fraudulent, it was received with great caution. In the majority of cases the fact that the subject-matter of the new claims of the reissue was 114 EEISSUE PATENTS. found embodied in the patentee's model filed in the Patent Office with the application for the original patent, or in. the patentee's original drawings on file in the Patent Office, or was described (although not claimed) in the specification of the original patent, was considered con- clusive evidence that such subject-matter formed part of the invention intended to be patented by the original patent, and for which the law authorized him to receive a reissue patent. § 83. Examples of Reissue Patents with Enlarged Claims. Thus in the case of the Woodworth planing machine (patent dated December 37th, 1828) the specification of the original patent did not describe or claim pressure rollers for holding the rough boards to the bed of the planing machine against the tendency of the revolving planing blades to draw it from that bed; yet in the reissue patent " for the same invention," granted Jiily 8th, 1845 (during the extended term of the patent), the administrator of the patentee was permitted to describe and base two claims upon these pressure rollers upon the ground that there was satisfactory evidence that they formed part of the invention of Wood worth at the date of his application for the original patent. The validity of the reissue patent was subsequently affirmed by the United States Supreme Court in the cases of Wilson v. Rousseau, 45 U. S. 4 How. 646, 11 L. ed. 1141, and Woodworth v. Wilson, 45 U. S. 4 How. 712, 11 L. ed. 1171. Another instance of the enlargement by reissue of the scope of the claims of the original patent is found in the case of the patent of Charles Goodyear for the manu- facture of vulcanized India rubber. The language of the claim of the original patent was: / REISSUE PATENTS. 115 "I claim the preparing and curing the compound of india rubber, sulphur, and a carbonate or other salt or oxide of lead, by subjecting the same to the action of artificial heat, substantially as herein described." This claim, although perfectly operative to protect as much as was recited in it, rendered the patent inopera- tive to protect the full or entire invention made by ■Goodyear because it was limited in scope to the use of " a carbonate or other salt or oxide of lead," and it was undoubtedly the fact that each of these substances was absolutely useless and inoperative in the vulcanizing process and amounted to a mere adulterant. Hence infringers of the entire invention of Goodyear escaped the purview of the claim by leaving out the adulterants recited therein. The patent was divided upon the re- issue and the claim to one of these reissue patents was as follows, viz: "What is claimed as the invention of Charles Good- year, deceased, is the new manufacture of vulcanized india rubber {whether with or without other ingredients) chemically altered by the application of heat, substanti- ally as described." The scope of the claim in the reissue was thus greatly €nlarged or broadened as compared with that of the claim of the original patent; but as there was no reason- able doubt that the subject of the reissue claim was within the invention or discovery of Goodyear at the date of his application for the original patent, the reissue patent was sustained on appeal by the United States Supreme Court. Providence Rubber Co. v. Goodyear, 76 U. S. 9 Wall. 788, 19 L. ed. 566. In this case one of the grounds of appeal was that Goodyear's two reissue patents were invalid, "because they are broader than 116 BEISSTJE PATENTS. the claims of the patent surrendered by the execu- tor." And on this point the Supreme Court declared, " It is the right of the patentee and his representatives to enlarge or restrict the claim so as to gire it validity and secure the invention; " thereby reiterating the judg- ment of the same court in a similar case of the enlarge- ment of the scope of a claim by reissue. Battin v. Tag- gert, 58 U. S. 17 How. U, 15 L. ed. 37. The reissue of the telegraph patent of Morse has already been referred to in § 81. § 84. Eevision of Keissue Patents by the Courts. The grant of reissue patents like that of original patents is subject to revision by the courts, who have always had the power to decide whether the reissue is or is not fraudulent, and whether the subject-matter of the claims of the reissue did or did not constitute the original invention of the patentee at the date he applied for the original patent. Hence any error made by the Commissioner of Patents in the grant of the reissue could and always can be corrected in the courts. § 85. Former Construction of the Act Maintained up to About 18S0. The practice of permitting patentees to surrender patents which were inoperative to protect the real or full invention made by the inventor by reason of too narrow claims, or were invalid by reason of the patentee having made too broad claims, thereby " claiming as his own invention more than he had a right to claim as new," was conceded by the courts up to about 1880. § 86. New Legal Construction of Act Relating to Reissues. In 1880 a new departure was taken by the United States Supreme Court who then discovered that the REISSUE PATENTS. IIT previous practice of the court, composed of such judges as Marshall, and Story, and Nelson, and Curtis, was wrong, and that "it was never intended to allow a pat- ent to be enlarged; but to allow the correction of mis- takes inadvertently committed, and the restriction of claims which had been improperly made or which had been made too broad." Swain TurMne & Mfg. Go. v. Ladd, 102 U. S. 408, 36 L. ed. 184. This dictum was followed by another restricting the right of the patentee by reissue still more narrowly. Thus, in the case of James v. Cam;p'beU, 104 U. S. 356, 26 L. ed. 786, the court said, " the law does not allow them [patentees] to take a reissue for anything but the same invention described and claimed in the original patent." The ground of this dictum appears to be that if a reissue claim is of broader scope than any claim of the original patent, then the reissue patent is not "for the same invention" as the original patent. This dictum is affirmed in the cases of Gage v. Herring, 107 U. S. 640, 37 L. ed. 601; Glements v. Odorless Exca- vating Apparatus Go. 109 TJ. S. 641, 37 L. ed. 1060; Mahn v. Harwood, 113 U. S. 354, 38 L. ed. 665. This modern construction of the law of reissue by the Supreme Court appears at first view to have been relaxed in the recent case of Topliff v. Topliff, 145 U. S. 156, 36 L. ed. 660, in which the scope of the claim in suit (the 3d) appears to have been materially enlarged by the omission of a requirement characterizing the combina- tion claimed in the original patent, and characterizing also the claim of the first reissue patent; but the opinion of the court shows that in their view the enlargement was only in appearance and not real. The invention was an improvement in the spring 118 EEISSUE PATENTS. appliances of wheel carriages. As shown in the draw- ings, it contained two half elliptic springs (one at each side of the body) and the rear ends of these side springs were connected with radial arms secured to one rock- shaft or rock-rod (called in the reissue patent the con- necting rod B) while the front ends of the same two side springs were connected with radial arms secured to a corresponding rock- shaft (called the connecting rod B' in the reissue patent). The rear rock-shaft or rock- rod was crosswise of the springs and parallel with and secured to the rear axle, while the front rock-shaft or rock-rod was parallel with and secured to the bolster over the fore axle. The claim of the original patent contained the restric- tion that the rock-rods or connecting rods should be "secured directly to the front and rear axles." This restriction was evidently erroneous because the front rock-rod was not secured to the front axle but to the bolster. The claim of the first reissue patent corrected this error by requiring that connecting rods be " secured directly to the hind axle and front bolster;" but in claim second of the second reissue to which the opinion of the court relates, this restriction was wholly omitted, as the language of the claim is: " The combination of the connecting rods BB', pro- vided with arms at their ends, with the half elliptic springs AA', substantially as and for the purpose set forth." In this case there certainly appears to the mechanical engineer to be a substantial enlargement of the scope of the claim of the original patent and of the first reissue thereof. The opinion of the court, after admitting the change of the language of the claim by the omission of EEISSUE PATENTS. 119 the requirement of the claim of the first reissue, states: "Whether this be an enlargement of the original claim or not, it is for substantially the same invention, and in view of the fact that the reissue was applied for as soon as the mistake was discovered, and before any rights in favor of third parties could be reasonably expected to have attached, or had in fact attached, we think this reissue is not open to the objections which have proved fatal to so many since the case of Miller v. Bridgeport Brass Co. 104 U. S. 350, 26 L. ed. 783, was decided." After referring to the later decisions of the same court from Miller v. Bridgeport Brass Co. the opinion states: "From this summary of the authorities it may be regarded as the settled rule of this court that the power to reissue may be exercised when the patent is inopera- tive by reason of the fact that the specification as origi- nally drawn was defective or insufficient or the claims were narrower than the actual invention of the patentee, provided the error has arisen from inadvertence or mis- take, and the patentee is guilty of no fraud or deception; but that such reissues are subject to the following quali- fications : " First, That it shall be for the same invention as the original patent, as such invention appears from the speci- fication and claims of such original." Topliff V. Topliff, 145 U. S. 170, 36 L. ed. 661. The other two qualifications mentioned in the opinion are not quoted here as they have reference to the period during which a reissue may be applied for, and to the action of the Commissioner of Patents. Upon considering the above quotations it appears that although the scope of the claim of the reissue patent 120 EEISSTJE PATENTS. appears to have been enlarged upon the reissue, yet the court reiterates the requirement that the invention claimed in the reissue shall be "for the same invention as the original patent as such invention appears from the specification and claims of such original." While, therefore, there is an apparent enlargement of the scope of the claim of the reissue, the court must have been of the opinion that there was no actual enlargement of scope beyond the claim of the original patent, because this is the only conclusion that is compatible with "the settled rule" above quoted; and when the opinion is viewed in the light of this "settled rule" the decision does not change the newer Supreme Court construction of the laws of reissue to the effect that the invention claimed in a reissue to be " the same invention " mentioned in section 4916 must be the same as is described and claimed in the original patent. It has been alleged that the opinion rendered in the ToplifE case is an indication that the views of the present United States Supreme Court on reissues have been modi- fied; this allegation being based upon the understanding that the claim of the ToplifE reissue patent is broader in scope than that of the original patent. But any pre- sumption of such indication is effectually nullified by the opinion of the court in next succeeding case of Free- man V. Asmus, 145 IT. S. 236, 36 L. ed. 685. In the latter case the invention in controversy was an improvement in blast furnaces for smelting iron ore; and in order that the decision may be appreciated it is necessary to give some idea of the nature of the inven- tion. The interiors or cavities of blast furnaces have approximately the form of two superimposed truncated cones, the lower with the small end downward, and the EEISSUE PATENTS. 121 upper with the small end upward and with its large end joined to the large end of the lower cone. The lower portion of the lower cone is technically called "the hearth" of the furnace and the blast is introduced through nozzles (called "tuyeres") inserted in the walls of the hearth at a distance of from two to four feet above its bottom. The outer sides of the wall of this hearth are technically termed "breasts." In blast furnaces previous to the patented invention in suit there was at one side of the hearth an opening which extended hori- zontally outward in the form of a rectangular passage. This rectangular passage was called the "fore-hearth." Its outer end was closed by the "dam" which retained the molten iron, and the dam was fitted at one of its lower corners with an orifice called the "tapping-hole," which was stopped with a mixture of clay and sand while the smelting was going on, but was opened at certain periods of the day or "tapped" to permit the accumu- lated molten iron to escape. The inner end of the fore- hearth was bridged over by a part of the wall of the hearth (proper) above the wall of the fore-hearth, but the horizontal space between this bridge wall (called "the tymp") and "the dam" was left open when the furnace was constructed. A blast furnace constructed on this plan is said to have an "open breast " at the side from which the molten iron is permitted to run out; while the other breasts of the hearth, at each of which there is nothing corre- sponding with the fore-hearth, but in which there is only the nozzle (the tuyere) for the blast, are termed "closed breasts." While the blast was on such a furnace the open top of the fore-hearth between the "tymp" and the "dam" 122 EEISSUE PATENTS. was covered and closed by a layer or tamping of clay and sand surmounted by a heavy iron plate to prevent the blast from blowing out under the tymp. As the scoria or slag (technically called "cinder") formed by the com- bination of the earthly matters of the ore and coal with the flux used, accumulates rapidly in the process of smelting, it had to be permitted to flow out over the dam, and for this purpose the crust of tamping covering the fore-hearth was occasionally perforated or tapped. After each casting of the molten iron, the iron plate over the fore-hearth was removed, the crust of tamping and any concretions of slag and the dead coals were de- tached and shoveled out, live coals were drawn forward into the fore-hearth, and the tamping and plate were replaced. But after the slag accumulated to about the height of the dam, which generally took place about an hour after casting, it became necessary to clean out the fore-hearth again in order to get the slag or cinder to iiow freely through it and from it. This operation, technically called "raising cinder" and "working the furnace," was a very hot and laborious one, and some- times it had to be repeated several times between succes- sive tappings of the molten iron. Moreover, while it was in progress the blast had to be largely shut off from the furnace, thereby temporarily lessening or stopping the smelting operation. The actual invention of Liirmann, the inventor of the reissue patent in suit, consisted of the entire suppression of the fore-hearth of the blast furnace, so that the side of the hearth from which the iron and slag were drawn out became a "closed breast" instead of an "open breast," and in the combination of the blast furnace having this closed breast with a device called " a water EEISSUE PATENTS. 123 cooled cinder block " inserted in the closed breast at the proper height for the &ow of the slag or cinder; such water cooled cylinder block being substantially a short pipe having hollow walls or channels through which water was caused to circulate to keep it from being in- jured by the heat of the furnace. The through passage of this water cooled cinder block was closed by a plug and was opened when necessary to permit the cinder to flow out. By this invention the places of tapping both molten iron and cinder were brought close to the cavity of the hearth proper of the furnace, so that they were in a hotter locality and not liable to become clogged, the fore- hearth was suppressed, and all the severe labor previously required in working the furnace and cleaning out the fore-hearth was dispensed with. Moreover, as the blast had to be shut o2 during working a furnace with an open breast, while by Liirmann's invention the blast could be kept oh continuously between the castings and an addi- tional blast nozzle or tuyere could be inserted in the new closed breast, the output of the furnace was materially increased. Liirmann's invention, therefore, was a most valuable one and made a revolution in the management of the blast furnace. It came into immediate use, and is universally used in the great blast furnaces of the pres- ent age. Liirmann's original patent was issued November 5th, 1867. The application by his assignee (Asmus) for its reissue was filed November 3d, 1868, within one year of the issue of the original patent. In the original patent the cinder block is designated the slag discharge piece, but the device is the same as in the reissue. The claim of the reissue which was in suit is not found in the orig- inal patent and is as follows, viz: 124: EEISSUE PATENTS. "A blast furnace with a closed breast where the slag is discharged through an opening or openings cooled by water, substantially as set forth." This claim might have been properly appended to the specification of the original patent because the drawing of that specification showed and the descriptive portion described a blast furnace with a closed breast, as well as the slag discharge piece forming the opening through which the slag was discharged, and also the cooling of the said opening by the circulation of water through the channels in the walls of the said slag discharge piece. It appeared from the oath of the assignee when making application for the reissue that Liirmann was the inventor of the invention claimed in the reissue ; and it appeared from the opinion of the circuit judge that there was nothing set up by the defendant in the equity case in the circuit court to anticipate Liirmann in the invention of the subject-matter recited in the claim. Unfortunately however for the patentee, the specification of the reissue contains some interpolated descriptions of alternative constructions of some of the minor details of the blast furnace which are not found in the original patent. The scope of the new claim would have been precisely as broad without these inter- polations as with them; but the fact of their interpola- tion is the basis of an objection of the Supreme Court to the reissue on the ground that the specification thereof contained new matter not found in the specification of the original patent. The opinion of the Supreme Court states that: "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 EEISSUE PATENTS. 125 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 conti'ary, the whole purport of that specification shows that it was intended to claim only a slag piece or cinder block constructed and attached in a specific manner, as is set forth in the statement of the attorney of Asmus, accompanying his application for the reissue." The opinion of the Supreme Court then refers to the cases of Mahn t. Harwood and others following it, closing with the statement that "there is nothing in- consistent with the foregoing views in our decision in Topliff T. Topliff." Freeman v. Asmus, 145 U. S. 241, 36 L. ed. 691. The foregoing examples are sufiScient to show that the present construction of the law of reissue by the Supreme Court is at variance with that of the same court previous to about 1880 as referred to in § 83, ante; and that, whereas previous to about that date a patentee was permitted to claim in a reissue the real or actual invention made by him as demonstrated by a comparison of what he did at the date of his application for the original patent with the state of the art at the date of his invention, the present construction of the law sub- stantially requires the claim or claims of a reissue patent to be no broader in scope than what is described and claimed in the original patent, however defective or insufiicient the description or claims of the original pat- ent may be to protect the real or entire invention which the inventor invented or discovered prior to his applica- tion for that patent, and notwithstanding the fact that the real invention made by the inventor is found shown 126 REISSUE PATENTS. and described (although not claimed) in the drawings and description of the specification of the original pat- ent, and is thereby disclosed to the public. On the other hand, the same court has declared that "the law authorizes a reissue when the patentee has claimed too much so as to enable him to contract his claim." Miller v. Bridgeport Brass Co. 104 U. S. 350, 26 L. ed. 783. Inasmuch as section 4916 (§ 80, ante) of the Patent Act requires that in every case provided for in it the new (reissue) patent shall be issued "for the same inven- tion," the dictum of the court last above quoted, when taken in connection with that in the case of James v. CampMl, 104 U. S. 356, 26 L. ed. 786, and "the settled rule " set forth in the case of Topliffy. Topliff (previously quoted) necessarily involves the conclusion that, even when the claim of the reissue patent is less in scope than that of the original patent, the present United States Supreme Court regard the invention claimed in such reissue patent as "the same" as that "described and claimed in the original patent." § 87. New Legal Construction of the Statute of Eeissue Incomprehensible to the Mechanic. This new judicial construction of the law to the effect that when the scope of the claims is enlarged the reissue patent is not for "the same invention " as that for which the original patent was issued, while when the scope of the claims is reduced the reissue patent is "for the same invention" as that for which the original patent was issued, unsettled the well settled practice of the courts from the date of the earliest decision upon the validity of reissue patents, and rendered valueless an enormous EEISSUE PATENTS. 127 amount of patent property honestly acquired. It is possible that the correctness of the new view may com- mend itself to the mind trained in the subtleties of the law, but to the mind of a mechanic it is not compre- hensible in view of the well known aphorism that " it is a bad rule which will not work both ways." To the mechanic, the practice under this view of the law ap- pears analogous to the following: A man intends to sell and gives a deed for a piece of property which at its north side really measures 100 feet, but the measure- ment in the deed is by inadvertence, accident, or mis- take, specified to be 80 feet, this error of the deed cannot be corrected, because if corrected the piece of property then specified in the reformed deed would not be "the same " as that for which the original deed was given; and this, notwithstanding the fact that the intent of the seller was to convey and the intent of the purchaser was to purchase the entire property which at the date of the transaction had its north side 100 feet broad. If how- ever the piece of property really measures only 80 feet at its north side, but by inadvertence or mistake the measurement in the original deed is given as 100 feet, this error may be corrected, and the piece of property referred to in the reformed deed is still "the same" as that for which the original deed was given notwithstand- ing the difference in the specified measurement. § 88. Objections to an Unwarranted Restriction of the Claim of a Reissue Patent. The view that the law restricts an inventor in a reissue to claims which are equal to or no greater in scope than the claims of the original patent, thereby debarring a a reissue with an enlarged claim to which the inventor 128 EBISSUB PATENTS. was Justly entitled at the date of his application for the original patent, does not appear to be sound for the fol- lowing reasons: 1. Because no language to that effect is found in the law. 2. Because if the view that the words "the same invention " mean the invention claimed in the original patent, then a construction of the law which permits claims narrower in scope than those of the original patent to be made upon its reissue, but at the same time forbids the making of claims broader in scope, is not only inconsistent with that part of the law which spe- cially permits the issue of a reissue patent "for the same invention " when the scope of the claim is reduced, but is illogical; it being plain that a thing which is smaller than another is no more the same as such other, than a thing which is larger than it; and it being also plain that if the claims in the reissue are to for the same invention which is claimed in the original patent, then the scope of the claims cannot be either narrowed or enlarged by reissue, because in either case the invention so claimed would not be the same as that recited in the claim or claims of the original patent. 3. Because it involves the conclusion that the specifi- cation and claims of the original patent correctly describe and claim the real invention which the patentee invented or discovered, and that tliey cannot be " insufificitot " by claiming less than the real invention, and that the patentee cannot make a mistake in the statement of invention made in his original specification; whereas the statute is specially provided for cases among others in which the patent is inoperative because the specifica- tion in either its description, drawing or claim, one or EEISSCTB PATENTS. 129 more, is "defective or insufiQcient; " and authorizes the issne of a new patent with a " corrected specification " when such insufficiency has arisen from inadvertence, accident or mistake and without fraudulent or deceptive intention. 4. Because a legal construction of the language of the Act, restricting the scope of claims in a reissue to the scope of the claims of the original patent deprives the inventor of relief when his original patent is "inoper- ative" by reason of a specification "defective or insuffi- cient," from an erroneous description or from claims " defective or insufficient," to protect against infringe- ment the entire invention which he made or discovered before applying for a patent; the taking out of such an inoperative patent being the greatest "mistake" that can be committed. 5. Because to debar the patentee on a reissue from claims broader in scope than the claims or statement of invention given in the specification of the original patent, when his original application (description, drawing or model) shows that he had then described the subject matter of such broader claims, and when the patentee has sworn to their invention in his application for the reissue, and when the state of the art at the date of his original application shows he was then entitled to them, is under color of law to transform the defective claims or defective statement of invention of the patentees Original patent into sophistical evidence that he did not invent that which the state of the art at the date of his original application shows he had then invented or discovered. 6. Because the said view is in conflict and inconsistent with the last clause of the same section (4916), which 9 130 EEISSUE PATENTS. in certain cases permits the insertion into the reissue of "new matter " which "was a part of the original inven- tion and was omitted from the specification" [of the original patent] " by inadyertence, accident or mistake; " it being plain that if " new matter " is introduced into a reissue patent the invention set forth in it cannot be " the same" as was described and claim^ed in the original patent which did not contain this matter. 7. Because it is at variance with the practice of courts of equity in reforming instruments relating to other property. § 89. Understanding: of the Law of Keissue by Mechanics. The view of the mechanic and inventor as to the law of reissue has always been that the law gives the inventor the right to claim in a reissue whatever he had a right to claim at the date of his original application in view of the state of the art at that date, whether the scope of the reissue claim must for that ptirpose be broader or nar- rower than that of the original patent, and whether the statement of invention in the specification of the reissue be broader or narrower in scope than the statement in the specification of the original patent; provided how- ever that the defect or insufficiency of the original patent has arisen from inadvertence, accident, or the mistake of himself or of his solicitor who solicited the patent, or of the Patent Office officials who granted it, and without fraudulent or deceptive intention; and provided further that the subject-matter of the enlarged claim is found in his model or sample filed in the Patent Office with the application for the original patent, or in the draw- ings of the original patent, or in the descriptive portion of the specification thereof; and provided lastly, that EEISSUE PATENTS. 131 when there is neither model nor drawing accompanying the application for the original patent, new matter or amendment may be introduced into the specification of the reissue patent upon proof satisfactory to the commis- sioner that the same was part of the original invention and was omitted from the specification by inadvertence, accident, or mistake. § 90. Grounds f6r the Understanding' of the Mechanic. This view of the law is founded upon what is believed to be a strict construction of the language of the Patent Act as a whole; the determination of what is meant by the words "the same invention" in section 4916, uf>on the subject of reissues, appearing plain upon a consider- ation of the preceding sections of the Act; and it being presumed that unless the word " invention " in any section is qualified (which is not the case in section 4916 relating to reissues) it means the same thing in one section as it does in the others. Thus, section 4886 recites that — "Any person who has invented or discovered any new and useful art, etc., may * * * obtain a patent therefor." The language of the next section, 4887 is, — " No person shall be debarred from receiving a patent for his invention or discovery," etc. And the language of section 4888 is — "Before any inventor or discoverer shall recive a pat- ent for his invention or discovery, he shall make appli- cation therefor in writing," etc. Lastly, section 4916 (on reissues) provides that — "Whenever any patent is inoperative, etc., * * * the commissioner shall, on the surrender of such patent 132 EEISSUE PATENTS. and the payment of the duty required by law, cause a new patent for the same invention * * * to be issued * * * to the patentee." "With the light which the said earlier sections of the Patent Act shed upon section 4916, can there be a rea- sonable doubt that "the same invention" mentioned in section 4916 (relating to reissues) is the " invention or discovery " to which the preceding section 4887 and 4888 relate, and is the thing "invented or discovered," as recited in section 4886, before the application for the patent is made by filing it in the Patent OflBce? That "invention or discovery" is undoubtedly the one for which the inventor has the right under conditions pre- scribed in the law to " obtain a patent; " and having that right, it necessarily follows that the scope of the patent shall be commensurate with the invention or discovery "invented or discovered" by him previous to making his application for the patent. If the original patent falls short of this, or gives the inventor more than this, then in either case the inventor has not received a patent "for the same invention" which he "invented or dis- covered;" and which section 4886 states he " may obtain a patent " for; and in equity he is entitled to a reforma- tion of the instrument (that is, the patent) so as to re- lieve him of the injury done him in case the patent is " inoperative " by reason of the description and claims of the specification being "defective or insufficient" to protect the entire invention, or is "invalid by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new." Can there also be a reasonable doubt that the words "the same invention," as used in section 4916 relating to reissues, is the "invention or discovery" (recited in EEISSUE PATENTS. 133 sections 4887 and 4888) whicli the inventor "invented or discovered" (as recited in section 4886) lefore he made ajpplication for his original patent, as distinguished from the thing erroneously described, or defectively or insuffi- ciently claimed in the specification of his original patent by inadvertence, accident, or mistake? This construction of the law makes all the provisions of section 4916 harmonious and logical, because if the reissue patent is to be "for the same invention" which the patentee "invented or discovered " previous to mak- ing his application for the original patent, and which the patentee had the right to "make application " for and to " obtain," then so long as the reissue patent is issued for that invention it will be "for the same in- vention " specified in the Act, whether the scope of the reissue claims be enlarged, or be the same as in the orig- inal patent, or be reduced (when the patentee in the original patent has claimed "more than he had a right to claim as new"), or be enlarged by the making of amendments or the introduction of new matter, as pro- vided in certain cases in the last clause of section 4916. § 91. Understanding of the Mechanic Same as Courts Prior to about 1878. The foregoing construction of the words "the same invention" as used in the section relating to reissues appears to be that which was taken by the great expo- nents of the law who formed the United States Supreme Court prior to 1877, as well as by the judges of the United States circuit courts, as appears from the typical decisions referred to in § 83 and from numerous other cases. In the case of Grant v. Raymond, the Chief Justice (Marshall) nsed the foil owing language: "But the new" 134 EEISSUE PATENTS. [reissue] " patent and the proceedings on which it issues have relation to the original transaction." Orant v. Ray- mond, 31 U. S. 6 Pet. 218, 8 L. ed. 376. He does not say the claim of the original patent, or the statement of invention made therein.* § 92. Fraudulent Reissues. Cases have undoubtedly occurred in which the claims of a reissue patent have been broadened beyond the scope of the original invention made or discovered by the pat- entee. Such reissues are fraudulent, and as the courts not only have the power to declare them as such, but have frequently exercised that power, and no doubt will * See also : Stimpson v. West Chester S. Co. , 45 U. S. 4 How. 380, 11 L. ed. 1030; Wilson v. Rousseau, 45 U. S. 4 How. 646, 11 L. ed. 1141; O'Seilly v. Morse. 56 U. S. 15 How. 62, 14 L. ed. 601; Batiin v. Taggert, 58 tJ. S. 17 How. 74, 15 L. ed. 37; Gibson v. Hatris, 1 Blatchf. 167 (Nelson); Po