798 the creditors. i; t The prQvision is a·,reasonable o:ne,and in my
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obtain'a,s, dischl,\rge,dt will be debts by virtue of 'thebankrupt.la.w·· U Th,e applfcaWJn'foJ;diadharge 'is denied.' ", . . ' - :' ,.' , , ., ' . , , ' · ", ! · 't; ;
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NOT CoNct'ciJ BIVE UPON COURTS. .:'1""'" ,if', action'Of the ,patents ,in accepting a sUlTen.der ,and grantillg,/lre"i.ssueof is judicial in, its and presumed correct, but is not conclusive upon the court j but they may always to see whether th'et dig.. , Close a case iIi Which tue 'coillmissionet' has jurisdiction to grant issue; ., f, .' ':' . '. " · (}i,qnt v. (Jali!QfnilJ,(J().}8 0, G. 1340 j 8. C. 4 FED. 'REP: N
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S. IMPROVEMli:NT IN PRESERVE CANs 2 RE"lSsUE":'"VI\.1tIANCS RETWEEN RE-IssuE lI<ND' ORiG1NAL LETTERS. , An original in,. p.eser,ve cans, etc., 43,463) manufactured' cOlitaln.cd a 'claim, and that for producipg indelible lettering designs; sheet tin or tinned and sheet iron by a combination of -lithographic or plate the action of heat upon the surfjl,ce of the tin and upon metallic orll.prlnted,ol1- such surfac.e.; the process as described being for print. · ../ · ., · ',' · ,.j ;," · · ·;, -' ·
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ing the!:deslgn ,kith. metallic cOilors'on plates of' tin or sheet ir<m ,before,1JeiQg. tlj.eq in.a properlyCop.stn,Ipted 1urn.ace to the gradual actionpf temperature sufficiently high to' slightly a,malgamate the colors pI-intect' with' the surface of the tin. In the patent (No. 7;li56)ihe'aWlication of colors was not confined to plates of sheet tib.Cillj ]tlJlned, &heet iron, but in. eluded cans, boxes, I'lltd, ;.llor were the colors confined to metallic mineral' colors, for heating seemed to abandon the idea of amalgamating the colors with the surface of the being given for drying the colors. Held, that the re-issue was unauthorized and void.
or'
Frederick .J){u.I ../),tul NfiI.$h. ¢ :f[aU,. for: cOqlplainants. Rowland Cox, for defendant. NIXON, D.' J: This a suit 'fOran'alleged infringement of No,. 1877! the re-isBued f01">'fil1lprovementindecor.a.ting· tin' plates, CR.DS,". etc.. The
rent. ;of .the cc;>inpll(tlDants,: numbered 43,463, alld dated July .. 1864, .for a new ilIlprovementin preserve cans other llJrticles tin, a1?-d 'which had been previously pltta.tited in Franee on the thirtieth .of.Septl?lllberw Various defences have been set up in the answer, but the strength of the argument on the to have centered in the 'N;le, .different inv<;lp.tion from. described in the original patent. .. :, :The right of the owner of ,a patent to, surrender the same and the limitations upon the right, andCtake out a found in section 49.16 o(tlle It is providedinthis section that: "whenever. any is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the claiming' as his own invention pe had a, .right to claim as new, if the has arisen by inadvertence, accident, or mistake, and witho-q:t'" any fraudulent or'deceptive intention, the commis',. . ,' ", I, on the. of. such patent, · - - cause anew patent fQrthe.sa.m.e invention, and m.accordance with the correctedspecification,to be issued to the patentee- · · for the unexpired part of the term of the original patent. Such surrender shall take effect upon the issue of the amended ',1<·' ,
·:FLOWER V.RAlYNER.
patellt. 111, j ,'" ... ' B.ut 'ho new matoor shall be into the specific3I1ion, llOr,in' of· a mlJ.ellliriepaten.t, shall iihe model· or .elrawings be amended except each, by But,when thelte nilither model' nor -:drawing; amendlhents may be niaqe upon proof satisfactOry ,to·the· commissiOner that such new tnatter or amlm.dment was a .part Qf the originli.l rinvention,llind was omitteddrom the by mad. verlen<\e, accideIit,or mistake, as -·aforesaid/' " .A reading of the section sho'l\'S 'Sioner has power togran.t a re-issue only iwspeoial cas(;lsand under particulatdrCl1Il1stancas.. Th.e original patent mustM inoperative or in:valid i either fOr or insufficientapoo1l. :ficatlons',:or frOID/claiming as new more than the pwteJltee.ha.s the right to claim; and, in addition to this; the error which:iJs to befcorrected' must have arisen by inadvertence., Mcident,' or mistake, a.nd without any 'fraudulent or i'Iitention. lithe party interested can bring himself within -these conditions, and limitations, the .commissioner is' author4i'1ed to issue anew patent for the same inveJ;ltion. WhentM <>riginal shows upon its facetnat the grounds and reasons:for 'the re-issue do not exist, orwhere a comparison of the letters patent disclose different inventions, the re-issue is void, as an 'act unauthorized by the law; What, then,wtts the error or -defect in the original pateilt which justmes,the surrendeJl audre·issue in the present'case? On an' examination of the, letters we find claim; as f()l1ows: "A process for, the production of indelible lettering, designs, and' colored surfaces upon sheet tin or tinned sheet iron, by a combination of lithographic or plate printing, and ihe action of heat upon the surface of tin and upon the metallie colors printed on such surface of tin." Turning from the elaim to the specificatiQns; it will be perceived.that the pat-entees have used the same phraseology .in describing ,the nature of their invention, It is stated to be a process to 'produce indelible lettering, desigBs, etc., upon sheet tin by a combination of printing, and of beat upon the '-surface of tin,'and upon ,the metalliecolorsprintedon the ·tin. They then describe :howit is 'to be accomplished... "We
is
!
796
FEDERAL REPORTER.
prepare," say the patentees, "a lithographic stone in the usual way by lithographic printing. The stone is to be of a suitable size to correspond to a plate of sheet tin, large enough to cut a certain number of slips of sheet tin from, for. the manufacture of an equal number of cans. Metallic paint, of any desired color, is then applied to the surface of the stone, by means of a lithographic roller, in the usual manner, so as to cover the whole surface of the stone with color. The plate of sheet iron is then placed upon the colored surface ..of the stone, in the same manner as a sheet of paper is placed on the stone in the usual process of lithographic printing, and the stone, with the plate thereon, is then run through the lithographic press; after which the color will be i;mprinted upon the surface of the sheet tin. Another stone of the same size having been prepared by lithographic printing, and the lettering or designs, which are to appear on the snrface of the cans in the place of the labels, having been lithographed on the stone in the usual manner, metallio paint (of a color different from that with which the sheet tin has been covered) is put on the stone bya lithographic roller so as to adhere to the lithographed lettering or designs, in the same manueras if an impression had been made on paper. The plate of sheet tin, covered with a coat of color as above described, is then placed upon the stone, (the oolored surface in contact with the the lithographed: face of the stone,) .and, the thereon, is then fun thrQugh the lithographic. press; after which the lettering or designs will appear imprinted upqn the colored surface of the sheet tin. If it is desiredtohave only the lettering or design whiohshal1 serve the object of a label, and no coat of color, on the surface of the cans, the process of printing just described is'; of course, dispensed with, and the second process of printing only applied to. Aftera,llumbel' of plates of sheet tin have been thus printed, they are placed in a properly-constructed furnace-chamber, where they are exposed to the gradual action of a temperature sufficiently high to slightly amalgamate the colors printed on the sheettin plates with. the surface of· the latter. Any person can easily ascertain the proper degree of temperature required by
FLOWER V. RAYNER.
797
instituting a few experiments, during which the plates are to be very slowly heated, and from time to time to be inspected until the amalgamation required takes place;" There seems to ben:Qdifficulty or uncertainty in regard to the foregoing description of how the process was to be carried on, or of understanding' the nature. of the invention which was in the minds of the patentees. Their aim was to produce an indelible impression upon the surface of sheet tin, and this was done by transferring metallic paint from the surface of a stone prepared in the usual way for lithographic printing to the surface of the tin, and then fastening it there by the slow application of artificial heat. Paints with a metallic base ,were used, upon the theory that some sort of a fusion or amalgamation took place between the metallic base of the color and the metallic surface of the tin. The specifications of the original patent distinctly state, as the crowning result of the cooling of the plates after the application of. the process, "that the lettering, designs, or coat of color strongly united with the surface of the plates, and, in fact, with the body of them, 80 as to be indelible." , Thus construing the original patent, is the re-issue for the same invention? Without quoting largely its claims and specifications, it may' be said generally: (1) That in :the re-issue the application of colors and letters, by mea,ns 'OflL .press, is not confined to sheet tin or, tinned sheet iron, a.s: 'ih ,the original, but includes 'the· application to cans, box-es"or other metallic articles. The claims state that the process: is to be employed in lettering, decorating, and ornamenting sheet tin, an&, in addition thereto, articws manufactured from tin, as well. (2) That whilst in the original metallic 'colors-:that is, colors having metals for a base';""'only are spoken oLto be used in the processj a, preference seems to be given in the re-issue to mineral colors. ,The :word "metalliG," as 'qualifying colors, is dropped, and any kind of color may. be: taken, whether the base be a mineral; a metal, or a v..egetable or animal substance. Full directions for inixing and drying the .paint are alsO" added, 'altho.ugh no .suggestion'..'for the use' of dryers has' been made ildhe original. (3) ,That the'Bugges-
.FEDERAL. REPORTER.
t'ion.<in tliEj re.issue of 160 deg. Fahl'enheit as the proper generally required to cause the.printing to adhere tenaciously to the 'surface ,of the tin; would /:leern idea of aUlalgamatingrthe color with the tin, :mr distinctly indicated in the original" wa,sabandoned. Noth'ing likeamalgamaition oan take place by the application of any stlOh low degree of heat. ,': There are otherdifferenoes, but I think the foregoing aie 'fiufficient to bring the case principle of adjudged 'cases in which t:\1e re-issue has been void.. Acting upon the caution thrown out by Mr. Justice Bradley, speakingfor the whole' court, in RauwayCo. v. Sayles, 97 .U. S. 563, the courts are more and more inclined "to reganl with jealousyamd disfavor any attempts to enlarge the scope of an application once filed; or of a patent once granted,the effeoi of which would be to enable thep!1tentee to appropriate other inventions made prior to such alteration, or to appropriate that which has, in the meantime, gone into public use;."; After considering the provisions of. the original patent, and every suggestion therein mi!ode in regard to the nature and !scope of the invention, it is difficult to find a sufficient or satisfactory ground for a surrender and re-issue. There was no want of harmony between the claim and the specifications. The one corresponded with the other. The patentee clearly revealed what he proposed to do, to-wit, to indelibly print sheet tin by amalgamating metallic colors with the surfaoe of the tin, and the process by which it was to be accomplished. If he found, in actual practice, that the process would not produce the :desired result, or that he could have a better result by bringing iiLother instrumentalities, the office was open to him: for a new patent, but not for a re-issue of the ,original, incorporating therein any new or different ingredients. That the changes made n;lUst be regarded as new and unauthorized, appears from the decision of the court in the case of Russell v. Dodge, 93 U. S. 460. The original patent there was for a proceas of treating bark-tanned lamb or sheep-
FLOWER ''D. ,RA:UER;
skin: by means of a' compound inwnicli heated fat liquor was an essential ingredient., , In the a,:ehange WIJ,8 made ;by eliminating,the necessHy oi using' the' fat liquor in a. heated <state. a.nd,makingits use in that condition 'a ,tner& matter of c,onveiiience, and,by;insernng chl.im for the use: ()f fat liquor in the, treatment of leather igenerally. ' ",I The court such, a !ehl;lttlgeenlarged:thescope1iof aIidthat,therewas no doubt ofAheinvalidity'of ,change, made in the old,' specification by. the ineC8ssity of using: the .fSit liquor in A heated cqpq.ition,o,ndmaking in the new specification ,ita use in that: condition a me11eiIliaitter of tliairlsertionot an ,01ai111',. for tha- use ,of" fat'lil1uorin; the troo.tchar!lcte:r> ment of leat-hor 'generally,'OPeJl'8ted. to'e:Iilarge: and's(jope of ,the .invention. Theevident:.dbject'of ,the in ccrrxecrlianydefeets mr ElpeeificatioJ;l. or ,'but to' change both,: W. fact, a patentJora>different invention." . · , Y . ' What. is in cases 'of re·issue is elared :by the supreme court in, Powdeir 00. Vo' Powder; Worksj; 98,U. S. 1;38 j ,whilre it is said,: "The specification,m.ay; b& amended so' as ,to ,mQ.ke it 1110re clear and ditrtinct, ,( The qla.im maybe modified so as to make it moreconforma;ble 't&, the' 'rights of the p8ltentee; bat "the invention must! be:' the,a,ame. So ps.rticular is the law.upon 'this subject, taafit is, matter 'shall be' introduced int0 the IJpecification::,Thia prohibition is genooral, relating to 'aU ;by matter we sU¥pose tll)' :be' meantn'6Wi 1S11'b-l matte.r.isuch as. would ihavethe',effeet 6f·,dha1l'gitrg the invention or of introducing what might be' sllbject"ofan.. other Bipplicl1tiPn for It . ;. ltWl!Is iusistedon the argument that, ,as· the/powerJto ac.Qef)t.a Burrenderand issue ;new letterspatenLis vested exclusively jn tbl'l cOl!lltnissioner, his· decision is not OPeD to, colla-tera\, in' a. suit, f"Q1' infringement, the reo ii!lsue.: His l\ction 'in ,the matter is doubtless ,of aj,udicial character, and., ie"presumed to becQJ;rect until ,imptlac.hed;iri a regular way; and yet the court is not obliged to aooept.'.his
lor
800
FEDEn:A:L .REPORTER.
as final. This question has been recently examined bYiMrdustioe Field" sitting in thercircnit court, in the case af 'llhe(1iantPowde'1' 00. v. The Oalifornia 00.18 O.G. 1840,in·wltichhe holds tha.tthe examination of the original and re-"issu(ld patent'S by jhercourt!:is always allowable, "to see whether or not they disclollleoh their face a case in which the commissioner has authority to act, ortwhetherhe has exceeded his authority in issuing letters for an invention dilfe:tent· from t4at described in the original patent. If they dillllliose a case;liri ,which ,the commissioner'hlts no jurisdict1c>n: to act, or a case 'in which, by his determination, he haB:lexceeded,hisjurisdiction, the re-is$ued letters must fall." I ;Taking thisvie:w:of there-illlsue, I lIa.1enot thought it neemlBa.ry ito the opinion by formallyo:xiaminingthe otbElr !grounds otdefence so ably presented by:the counsel for the <tlefendants, viz.:: that the re'"issued'patent-ig void (1}f6r want of novelty, aud :(2) for "ant' of utility;; lit may 'be said; however, in regard to the fillst, that if :noresult is in fact re8£hed, by'the application ofthepaint by'IDeans of a press, different from 'that prodncedbythe use ;of the' bob aud stencil injapani1ing, it is questionable whether such a change Of method involVi8s. anything more 'than the .exercise' Gf skIll' ana good judgment''''More was':claimed in the' otiginal patent, to.wit,an indelible union ,by amalgamation offiletaUic colors "ith tbesuz:fa.oeoHhe ti;n.. But this 'seems to have been treated in:there-issneo,s,a matter of no consequence. What, thlm, isJeft for the invention but the substitution of old equivalent means lOll' the prddnctionQf possibly better, but not eut, results? -Sae Stimpson:v i ;Woodman, 10 Wall. 117; Smith v. Nichols,; 21 Wall. 112. ' In regard to the lack of utiIity,. jf the process is to become praeticallyusefnl,I think there must be, in its actual use, a wide departure froon the methods and means specified ihthe re-issue. The 'evidence shows that 160 deg. Fabrenheit is as much too, low in temperature,as an- hour and a. half is too short in time, to sufficiently harden the coloring. Courts indeed, -liberal in construing descriptions in patents, where i
ll'8.p.4
FED.
REp. 720.
EIRBY 'V.
ARMSTRONG.
801
particular degrees of heat are to be employed; but some apto be indicated by the patentee,and it should not be so wide of the mark as to involve invention' or frequent eXipeliment to ascertain the proper temperature. The complainant's bill must be dismissed, with costs.
Knmy v. ARMSTRONG and otheJ:s· .circuit Oowrt, D. Indiana.
Febmary, 1881.
1.
INFRINGEMENT-PROFI;rS-BuRDEN OF PROOF.
Where the patent is for an improvement in machines; the burden is on the complainant to separate the profits due to the improvement from the general profitB.of the business This rllle.is recognized, Dot reversed, in Elizabeth v. PafJement 00. 97 U. 8. 2,' SAllE-PROFITS DERIVED FROM IMPROVEMENT-PROOB'.
Where the complainant fails to show what, if any, definite part of the whole· profits were produced by his improvement, his recovery must be nominal only. S.
()Osts of reference taxed against complainant.
Mitchell cf Holmes, for complainant. Parkinson cf Parkinson, for defendants. G'RESHAM, D. J. Josiah Kirby filed his bill against Thomas Armstrong, Robert Armstrong, William L. Standish,and G. W. Geddes, charging that the defendants had infringed the complainant's letters patent, numbered 72,505, issued on the twenty-fourth day of December, 1867, for a new and useful improvement in bung cutting, with a prayer for an injunc. i tioil and a recovery of profits. On the hearing before' the' cirouit judge it was found thatthe defendantsG. W. Geddes and William L. Standish had infringed the rights ohhe complainant as to. the first, third, and fourth claims set forth in t.he letters patent. The two last-named defendants were enjoined froIIl the further using of the complainant's invention, and there was a reference to the master to take and state'an account of the profits which the defendants had made by infringing. v.5,no.9-51