[United States Circuit Court-Southern District of New York.] THE DOANE & WELLINGTON MANUFACTURING COMPANY v. SMITH. Decided December 27, 1882. 24 O. G., 302. 1. WINTERGERST'S VAPOR-BURNER PATENT DECLARED INVALID. Reissue letters patent granted to Christoph Wintergerst July 1, 1879, for an improvement in vapor-burners, declared invalid, the scope of the invention as well as the claims in the original patent having been changed and expanded in the reissue. 2. RESISUES-PERMISSIBLE CHANGES FROM THE ORIGINAL. If in the reissue the description of the parts had only been more full and particular, or if distinct functions of the parts not before mentioned had been newly set forth, or functions before mentioned had been wholly omitted, so long as the devices and their mode of operation, as described, remained the same the reissue might not be voided for showing a different invention. 3. SAME-SAME. The law provides for and allows reissues for corrections, but not for alterations. Mr. Worth Osgood for the orator. Mr. James P. Foster for the defendant. WHEELER, J. : This suit is brought upon Reissue Letters Patent No. 8,784, dated July 1, 1879, granted to Christoph Wintergerst, assignor to Doane & Wellington, on an application dated April 30, 1879, upon the surrender of the original Letters No. 82,262, dated September 15, 1868, for an improvement in vapor-burners. There are defenses set up that the reissue is too broad for the original and void, and that the defendant does not infringe. The original patent was for the arrangement of a reservoir for the fluid, a tube to conduct the fluid to the burner, a burner regulated by a needlevalve operated by a thumb-screw, a ring over the burner to hold a thumbscrew projecting into it over the flame to divide the flame, and a winged plate behind the flame and connecting with the burner, acting as a reflector and as a generator of gas by conducting heat from the flame to the fluid by way of the burner. Each of these parts is conceded to have been old, and there was only one claim, which was for the arrangement merely. There is no description of the ring, except that it is over the hole in the burner for the escape of the gas to the flame with the thumb-screw in it, which divides the flame, andno office is assigned to it, except to support the screw where it would divide the flame, and none of the plate, except that it is a winged plate in the rear of the ring extending upward, and to act as a reflector and generator. In the reissue the ring is described as a "protector calculated to direct and steady the flow of fresh air, which is to be mingled with the gas before burning," as a "ring opening at both ends and affording a channel, through which the gas-jet is directed before being allowed to 66 impinge against the plate," and as serving "to direct the mingled air and gas upon the plate," and preventing "currents of air from disturbing the continued uniform flow of the burning mixture by confining the air-currents to certain directions," and the plate is described as a "flameplate," "against which the issuing gas is made to impinge as it flows from an orifice," as serving "to spread the flame," and as having "a burning at or very near the upper edge," and the illuminating-flame projects beyond this edge," and there are eight claims for different combinations of all or some of these parts. It is obvious from this statement that the invention described in the original is not the same as that described in the reissue. The ring described in the original is a mere ring, not a tube. In the reissue this part is still called a ring; but when its uses are described as being those of a protector calculated to direct and steady the flow of fresh air, and as being open at both ends, and affording a channel through which the gas-jet is directed, and as preventing currents of air from disturbing the flow by confining the aircurrents to certain directions, a tube or conduit is described which is quite different from a mere ring, having no office shown but to hold the dividing screw, and a plate against which the gas jet is to impinge, and on which the flame is to spread, and over and beyond which it is to burn and extend, is not the same as a reflector behind the jet and flame. These two are the most prominent features of the combination of the original and of the various combinations of the reissue, and a flameplate against which the gas-jet impinges, and over which with the mingling currents of air it spreads, and over and beyond which it burns . and the flame extends, and a shield on the opposite side of the jet affording a channel between the shield and flame-plate through which the jet is directed, and by which the currents are protected from disturbance, are prominent features of the defendant's burner which is claimed to be an infringement, and without which there could be no foundation for such claim. The original patent would not cover these devices of the defendant, and still the claim in the reissue which is said to be infringed is substantially the same as the claim of the original. The scope of the invention as well as of the claims is changed and expanded, in the direction, too, of covering the defendant's invention made subsequent to the original patent. Such a reissue seems to be wholly invalid. Gill v. Wells, 22 Wall., 1; James v. Campbell, 104 U. S., 356. If the description of these parts had only. been more full and particular in the reissue, or if distinct functions of the parts not before mentioned had been newly set forth, or functions before mentioned had been wholly omitted, so long as the devices and their mode of operation, as described, remained the same the reissue might not be avoided for showing a different invention, although it might be for the enlargement of the claim after such a lapse of time. Miller v. Bridgeport Brass Company, 104 U. S., 350. The inventor was required by law to set forth a description of his in vention in such full, clear, and exact terms as to enable any person skilled in the art to make and use it. (Act of 1836, sec 6). The description of the parts in the original consisted largely in stating what they were to do. The ring was to hold the dividing screw. The plate was to be a reflector. A person skilled in the art following the patent would construct them as such. The invention described consisted in these parts operating as such. The description in the reissue to some extent, at least, excludes these things and substitutes different things. So the reissue is not a correction which the law provides for and allows, but an alteration which the law does not allow. Further, Wintergerst was not the inventor of vapor-burners, nor of any of these parts constituting such burners. His invention consisted merely in the new arrangement of these parts in a burner. His patent did not and could not cover any other arrangement. The defendant had no right to take that arrangement even to improve upon, but all others were open to him. The defendant's arrangement is different from Wintergerst's. The defendant employs no rings, or screw, or reflector. Wintergerst's invention included all these. Leaving to Wintergerst all that he invented and patented, there was still room for the defendant's devices. Consequently, there is no infringement. Railway Company v. Langle, 97 U. S. 555. Let a decree be entered dismissing the bill of complaint, with costs. [United States Circuit Court-Southern District of New York.] SHUTER ET AT. v. DAVIS ET AL. Decided May 25, 1883. 24 O. G., 303. 1. INTERFERENCE-PRIORITY OF INVENTION-RES ADJUDICATA. The question of priority of invention having been determined in favor of the complainants in an interference proceeding in the Patent Office, it is res adjudicata as between the parties to it. 2. INFRINGEMENT-DEFENSE-WANT OF NOVELTY. But in a suit for infringement the defense of waut of novelty is undoubtedly open to the defeated parties. 3. PATENTABLE INVENTION-MECHANICAL SKILL-PUBLIC RECOGNITION. As between a patentable invention and the result of mechanical skill, the circumstances that the value of the new article was immediately recognized and that it supplied a want long felt but not before met should have due weight in favor of the sufficiency of invention. Mr. Henry McCloskey and Mr. J. Van Santvoord for the complainants. Mr. George H. Fletcher for the defendants. WALLACE, J.: The proofs satisfactorily establish infringement by defendants of complainants' patent. The defense that Mark Davis was the original and first inventor of the patented improvement, and that complainants obtained the patent in fraud of his rights, although supported by some. what impressive probabilities and the testimony of several witnesses, is met by strong opposing proofs on the part of the complainants. Under the circumstances the presumption arising from the grant of the patent to the complainants is not sufficiently overthrown, and must prevail. But it also appears that the defendants were parties in interest to the interference proceedings before the Patent Office between the complainants and Mark Davis, that proceeding having been set on foot by Mark Davis for the benefit of the defendants, to protect them from the complainants' patent, and under an agreement between him and the defendants, by which the defendants undertook to pay, and pursuant to which they did pay, the expenses of the proceeding. The question of priority having been determined in favor of the complainants in that proceeding, it is res adjudicata as between the parties to it. Hanford v. Wescott, 16 O. G., 1181; Greenwood v. Bracher, 1. Fed. Rep., 857; Peck v. Lindsay, 2 Fed. Rep., 688; Holliday v. Pickhardt, 12 Fed. Rep., 147. The defense of want of novelty does not come with very good grace from parties who endeavored to procure a patent to be issued to Mark Davis for the same invention, but is undoubtedly open to the defendants. The complainants' invention relates to tips for the insoles of boots and shoes, and their patent is for the tip as an improved article of manufacture. Their tip is formed of muslin or other textile material stiffened with shellac and pressed into the required shape by heated dies. Prior to their improvement tips had been made of leather, and usually in one piece with the insole, the tip being beveled to a fine edge. This mode of producing the tip required considerable time and skill, and was more expensive than was desirable, and the object of the patentees was to produce a less expensive substitute. The problem was to produce a tip sufficiently thin to require no beveling, but at the same time suffi ciently rigid to be a suitable substitute for leather. It is demonstrated by the proofs that the complainants' tips were immediately received with great favor by the trade, and to a large extent superseded the leather tips theretofore used. They were not only very much less expensive to manufacture, but they were much more readily adjusted to the insole by workmen, so much so that the workmen preferred to buy them and pay for them out of their wages rather than use the leather tip. Prior to the complainants' invention a patent had been granted to Horace W. George for an improvement in box-toes. His article was a molded box-toe or tip made of vulcanized rubber with or without an intermixture of fibrous or suitable material capable of being shaped in molds. This tip was also beveled. Whether it was practically a satis factory substitute for the leather tip does not appear. This patent is not an anticipation of the complainants. Neither a leather tip nor a vulcanized-rubber tip is the same thing as a tip of muslin or similar textile material stiffened with shellac. The complainants' tip was, therefore, new. Undeniably it was useful. It was therefore the proper subject of a patent, tuless the substitution of the muslin and shellac for leather or vulcanized rubber was such an obvious thing to persons skilled in the art that it did not involve invention. This is always a question of fact. In this case it would not be in the least doutbtful were it not that there was nothing new in pressing by heated dies musliu or similar textile material coated with shellac into such form and shape as was desired. But it was not obvious that when muslin coated with shellac might be pressed by dies into the form of a shoe-tip the beveled configuration could be dispensed with and that a serviceable, practical article could be produced. The circumstances that the value of the new article was immediately recognized, and that it supplied a want long felt but not before met should have due weight, and in this case go far to resolve all doubts in favor of the sufficiency of invention. A decree is ordered for complainants. [United States Circuit Court-Southern District of New York.] FISHER T. HAYES. SAME . NEIL. SAME v. SHAUGHNESSY ET AL. Decided April 12, 1883. 24 O. G., 304. PRACTICE IN THE COURTS-EXCEPTIONS TO MASTER'S REPORT. The plaintiff filed exceptions to the master's report. The defendant insisted that the exceptions could not be heard because no written objections were filed to the draft reports: Held, that, as the certificate of the master shows that the respective counsel were notified that the draft reports were ready; that they appeared before him; that plaintiff's counsel verbally objected to certain findings, which verbal objections were substantially the same as the written exceptions which have been filed, it will be sufficient if they are now reduced to writing and filed with the master nunc pro tunc. Messrs. Wetmore, Jenner & Thompson for the complainant. SHIPMAN, J.: The plaintiff has filed exceptions to the master's report in each of these three cases, and in each case the defendant insists that the exceptions cannot be heard because no written objections were filed to the draft reports. It appears from the certificate of the master that the respective counsel were notified that the draft reports were ready for their inspection and suggestions, wereupon they appeared before him; that the plaintiff's counsel verbally objected to certain findings, and that the written exceptions which have been filed are substantially the same as the ver bal objections which were presented to him when the draft reports were |