Reissued letters patent No. 4106, bearing date Aug. 23, 1870,
granted to Charles Guidet for an improved stone pavement, are void,
as before his application there were in use pavements consisting of
rough blocks of the same form, and arranged in substantially the
same way, as that described in his specification. His claim is for
rougher side surfaces than those found in the old pavements,
although he does not state the degree of roughness required, and
the change being only in degree, is not patentable.
This is a bill in equity filed Jan. 29, 1874, by Charles Guidet,
against the City of Brooklyn, wherein he alleges that the defendant
was then making and using a stone pavement which, in whole or in
part, was substantially the same in construction and operation as
that for which reissued letters patent No. 4106, bearing date Aug.
23, 1870, were granted to him. The prayer of the bill is for an
injunction and account.
The answer of the city denies the alleged infringement of the
letters, and sets up that the pavement, which is their subject
matter, was, with Guidet's knowledge and consent, in public use for
more than two years before the date of his original application,
and that he was not the original and first inventor of it, the same
having before that date been described in various publications and
publicly used in certain specified localities of a number of cities
in the United States.
Upon final hearing, the court dismissed the bill, and Guidet
appealed here. The remaining facts are stated in the opinion of the
Court.
MR. CHIEF JUSTICE WAITE delivered the opinion of the Court.
The invention of Guidet covered by his reissued patent may
fairly be stated thus:
"Take stone blocks in the form of
Page 105 U. S. 551
parallelopipeds, with the ends sufficiently smooth and the sides
sufficiently rough, and put them together in a street pavement so
that the ends will be parallel to the street, and the sides at
right angles."
How large the blocks should be, how smooth the ends, or how
rough the sides is nowhere stated. All that is left to the judgment
and skill of him who does the work.
The evidence leaves no doubt whatever in our minds that
pavements made of blocks of stone broken into the general form of
parallelopipeds, and set on edge with their ends parallel to the
street and their sides across it, were in use long before the date
of Guidet's invention. This is conceded, in fact, both in the
original patent and the reissue; for in the original it is said, "I
do not claim broadly, as my invention, a pavement composed of
blocks made in the form of parallelopipeds," and in the reissue, "I
am aware that pavements have been produced of blocks made in the
form of parallelopipeds." The difficulty had been, undoubtedly,
that the spaces between the sides of the blocks, in ordinary use
before his invention, were not sufficient to furnish a firm
foothold for draught animals, especially after the surfaces had
been worn smooth. How to remedy this defect was the problem to be
solved. Formerly it had been done, as is said in the reissued
patent, by interposing between the adjoining blocks thin strips of
wood or stone. As a substitute for this, he chamfered the edges of
the broad sides, and thus got the advantage of placing the blocks
close against each other and keeping the pavement firm while he
secured on the surface the necessary open joint to furnish a good
foothold. That, as it seem to us, was all there was of his
invention, and we are by no means inclined to hold it was not
patentable to him. By taking the block of stone in ordinary use and
substituting the chamfered edge on the broad side for the narrow
strip of wood or stone, he got the space needed for the joint, and
he solidified the pavement by bringing firmly together the stones
that furnished the surface to be used for travel.
But after he had obtained his patent, he seems to have found
that, by selecting blocks sufficiently rough on their sides, the
joints could be made open enough for all practical purposes
Page 105 U. S. 552
without chamfering, and so in his reissue he abandoned that
feature of his patent and claimed for rough side surfaces only. In
this way, as it seems to us, he left the field of invention and
entered that of mechanical skill only. Pavements of stone in the
form of parallelopipeds being confessedly old, he has really done
no more than suggest the best kind of stone to be used in that way.
The pavements in Rochester and Buffalo, which it is agreed
antedated his invention, were laid in all substantial respects like
his. The quality of the stone was different, and the side surfaces
were comparatively smoother than his, though to some extent they
were rough. He, as has already been seen, does not say what degree
of roughness is required. The effect of his specification and claim
is that if blocks are selected with their sides rough enough,
joints can be made that will furnish a suitable foothold without
the use of strips and without chamfering. It is true that in
Rochester and Buffalo, sand may have been used to some extent to
keep the blocks apart, but that was only another way of doing what
it is agreed had been done before. What he did was to show that if
stone were used with rougher side surfaces than those found in the
old pavements, all artificial means of keeping the transverse
joints open might be abandoned, and the requisite surface secured.
This was simply carrying forward the old idea, and doing what had
been done before in substantially the same way, but with better
results. The change was only in degree, and consequently not
patentable. Clearly the reissued patent cannot be sustained.
Decree affirmed.
