1. The first claim of reissued letters patent No. b644, granted
to John W. Gosling Nov. 4, 1873, for an "improvement in step covers
and wheel fenders for carriages," if construed to be broad enough
to cover the structure made in accordance with the specification
annexed to letters patent No. 90,584, granted to John Roberts May
25, 1869, is void because the invention is not new, nor is it
embraced in the original letters.
2. The invention covered by the claim of Gosling's original
letters (
post, p.
106 U. S. 42) was new, and they are adequate to secure
it.
This was a bill filed by Gosling wherein he alleges that, being
the first inventor of a new and useful improvement in step covers
and wheel fenders for carriages, he obtained
Page 106 U. S. 40
letters patent therefor, No. 62,406, bearing date Feb. 26, 1867;
that on his surrendering them, reissued letters No. 5,644, dated
Nov. 4, 1873, were granted to him for that invention, and that
Roberts, the defendant, was infringing them. He prays for an
injunction, an account, and general relief.
Roberts denies as well the alleged infringement, the novelty,
and utility of the improvement described in the reissued letters,
as Gosling's claim to be the first inventor thereof. He also sets
up as a defense that they are void because they include matters not
covered by the original letters.
The court, upon a final hearing, dismissed the bill, and Gosling
appealed.
The specifications and claims which are set forth in the opinion
of the court refer to certain drawings. Those annexed to Gosling's
original letters are as follows:
image:a
Page 106 U. S. 41
The drawings annexed to his reissued letters are as follows:
image:b
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
As a material question in the case arises on the difference
between the specifications and claims of the original and the
Page 106 U. S. 42
reissued patents, they are subjoined [one after another], the
portions in each which are not found in the other being in
italics:
"
ORIGINAL"
"
This invention
relates to a cheap and simple
device for preventing the accumulation of mud and dust on the steps
of carriages, &c., and also for guarding the clothes of the
rider from coming in contact with the wheels on entering or leaving
the vehicle."
"In the accompanying drawings, Fig. 1 shows the position of my
fender when the carriage door is open,
and Fig. 2
represents it when the door is closed. A represents the body of a
carriage, B the rear wheel, C the door, and D the step; E is a
yielding plate, which may be made of sheet
steel
or other suitable material, and the upper end of said plate is
hinged or otherwise secured to the door C,
whilst its
lower end is connected to a bar H, having an eye
h, which
engages with a suitable aperture in the flange
d of the
step. This provision of the perforated flange
d and eye
h enables the
plate E to turn in either
direction as the door C is opened or closed. The
flexibility of
the plate E
enables it to bend
up in the act
of opening or closing the door (see dotted lines in Fig. 1), and
its elasticity enables it to hold the door firmly in either closed
or wide open position. When the door is shut, the plate E closes up
over the step D and
this prevents the wheel from throwing
dirt
upon said step, as clearly shown in Fig. 2; but as
soon as the door is opened, the
plate E
turns on the
pivot device d h at its lower end, thus uncovering the step and
serving as a fender to prevent the
occupant's clothes
from coming in contact with the hind wheel of the carriage, as
represented in Fig. 1.
The yielding plate E acts as a spring to
hold the door either open or shut, and also prevents said door from
striking against the wheel when opened. The said plate E may
be covered with leather or painted, or may consist wholly of
leather."
"I have selected for illustration the preferred form of my
invention, but reserve the right to vary the same, it being
susceptible of various modifications. For example, instead of being
pivoted to the step D, the lower end of the plate E may be hinged
or otherwise coupled to a frame projecting from the carriage body
and passing under the step. In some cases,
for example,
when the distance from the wheel to the body is short, I provide
slots on both step and fender, or one of them, to partially or
wholly relieve the plate of the flexion incident to opening or
closing the door."
"I claim
herein as new and of my invention a combined
step cover and wheel fender for carriages, consisting of the
flexible plate E,
whose upper end is attached to the
carriage door, and whose lower end
is connected, d h, to
the step
or other fixed object, the whole being arranged to
operate substantially as
herein described and for the
purpose set forth."
"
REISSUE"
"
My invention
consists of a cheap and simple
device for preventing the accumulation of mud and dust on the steps
of carriages, &c., and also for guarding the clothes of the
rider from coming in contact with the wheels on entering or leaving
the vehicle."
"In the accompanying drawings, figure 1 shows the position of my
fender when the carriage door is open; figure 2 represents it when
the door is closed. A represents the body of the carriage, B the
rear wheel, C the door, and D the step; E is a plate, which may be
made of sheet metal or other suitable material, and the upper end
of said plate is hinged or otherwise secured to the door C.
The lower end
of the combined cover and fender E
may be connected to the bar H, having an eye
h
which engages with a suitable aperture in the flange
d of
the step. This provision of the perforated flange
d and
eye
h,
by reason of its loose character, permits
the
cover and fender E to turn
freely in either
direction as the door C is opened or closed. The
cover and
fender E
I prefer to make of flexible material so that it
may bend in the act of opening
and closing the door
(see dotted lines in Fig. 1), and its elasticity enables it to hold
the door firmly in either the closed or wide open position,
when the cover and fender are connected, as shown, to the step
D. When the door C is shut, the plate E closes up over the
step D and prevents the wheel from throwing dirt
over the
step, as clearly shown in Fig. 2, but as soon as the door is
opened, the
cover and fender E,
being attached to the
door C, is of course carried with the door, and thus the step is
uncovered, and the plate E then occupies such a position as to
enable it to serve as a fender to prevent the
rider's
clothes,
on entering or leaving the carriage, from coming
in contact with the hind wheel of the carriage, as represented in
Fig. 1. The said plate E may be covered with leather or painted or
may consist wholly of leather."
"I have selected for illustration the preferred form of my
invention, but reserve the right to vary the same, it being
susceptible of
being made to assume various
forms
and modifications. For example, instead of being pivoted to
the step D, the lower end of the plate E may be hinged or otherwise
coupled to a frame projecting from the carriage body and passing
under the step. In some cases, when the distance from the wheel to
the body is short, I provide slots on both step and fender, or one
of them, to partially or wholly relieve the plate of the flexion
incident to opening or closing the door."
"
The important feature of my invention is the plate E,
attached to the door of the carriage and operating, by reason of
such attachment, as a step cover when the door is closed and as a
wheel fender when the door is open."
"I claim:"
"1.
In combination with the step D and the door C, the plate
E, attached to the door to operate as a step cover when the door is
closed, and a wheel fender when the door is open, substantially as
and for the purpose specified."
"2. A combined step cover and wheel fender for carriages,
consisting of the flexible plate E,
the upper end
of
which is attached to the carriage door and the lower end to
the step,
all being combined to operate as a step cover, wheel
fender, and a spring connection to retain the door in the opened
and closed positions, all substantially as set forth."
Attention is at once arrested by certain marked differences
between the two specifications. The drawings are alike. In the
original specification, the plate E is described as a yielding
plate, while in the reissue it is merely a plate. In the original,
it is said that the lower end of the plate E
is connected
to the step through a bar with an eye in it which engages with an
aperture in a flange on the step. In the reissue it is said that
the lower end of the plate E
may be so connected. In
the
Page 106 U. S. 45
original, the plate E is described as being flexible. In the
reissue, the inventor says that he prefers to make it of flexible
material. In the original, it is said that the elasticity of the
plate E enables it to hold the door firmly either closed or open.
In the reissue, it is said that such elasticity will produce that
effect when the plate E is connected to the step as shown in the
drawings. In the original, the description is that as the door is
opened, the plate E turns on the pivot device at its lower end,
which connects it to the step. This is omitted in the reissue. In
the original, the plate is said to act as a spring to hold the door
either open or shut. This is omitted in the reissue. The object of
these changes is apparent. Unless the plate E is connected at the
bottom with the step, the door cannot be kept open or closed by the
operation of elasticity in the plate, for no elasticity can be
developed unless the plate is held at its bottom. In the original,
the holding of the plate at its bottom to the step is made the
rule; in the reissue, it is made the exception. In the original,
the plate is said to be flexible and is not said to be ever other
than flexible. In the reissue, only a preference for flexibility is
asserted. The object of these changes is to arrive at a claim for a
plate not held at its bottom to the step. Accordingly, the reissue
makes the statement, not found in the original, that the important
feature of the invention is to have the plate attached to the door,
and thus operate as a step cover and a wheel fender. The first
claim of the reissue is not found in the original, and grows out of
the changes above mentioned. It is a broad claim to a combination
with the step and the door of the plate E, attached to the door, to
operate as a step cover and a wheel fender, substantially as and
for the purpose specified. The second claim in the reissue is
substantially the same as the single claim of the original. It
combines the features of the attachment of the plate, at its bottom
to the step and at its top to the door, and of elasticity in the
plate to hold the door open or closed.
The defendant's apparatus is a piece of material rigidly
attached at its top to the door, and not attached at its bottom to
the step, and operating as a combined step cover and wheel fender.
It is plain that this construction did not infringe the claim of
the original patent. It is alleged that it infringes the
Page 106 U. S. 46
first claim of the reissue. The defendant obtained a patent, No.
90,584, May 25, 1869, for an "improvement in step covers and wheel
fenders for carriages." It was granted more than four years before
the plaintiff applied for his reissue. The defendant's apparatus is
constructed substantially in accordance with the description in
that patent. That apparatus has on the rear part of the door
elastic guards, which come against the wheel when the door is open.
The claim of the patent is to the combined arrangement.
It is shown by the evidence that prior to the plaintiff's
invention a combined wheel fender and step cover was in use in
several forms, the step cover being attached by a vertical arm or
vertical arms to the bottom of the door by a rigid connection, and
swinging back by the opening of the door, the vertical arm or arms
then serving as a wheel fender. In those structures, the step cover
was a horizontal plate, projecting from the lower end of the
vertical arm and overlapping and covering, when the door was shut,
the horizontal step and being parallel with it. The defendant's
structure differs from these old forms solely in having the
vertical arm, which is rigidly attached to the lower part of the
door, so extended in width as to itself cover the step and permit
the horizontal part of the step cover to be dispensed with. There
is no difference in principle or mode of operation between the old
structures and the defendant's structure. The difference is merely
in form and shape. The plaintiff departed in his original patent
from the principle of the old structures by joining his step cover
to the step and having the vertical plate yielding and flexible, so
that its elasticity may keep the door open or closed. This, so far
as appears, was a new invention, and he was entitled to claim it.
He did claim it, and the original patent was adequate to secure it
to him. The first claim of the reissue, if construed so as to cover
the defendant's structure, must equally cover the old structures
referred to. They had combined a step and a door and a plate
attached to the door, the plate operating as a step cover when the
door was closed, and as a wheel fender when the door was open.
Extending the vertical arm in width, so as to dispense with the
horizontal projection from it and make the vertical arm wide enough
to cover the
Page 106 U. S. 47
step, or contracting the vertical arm in width and putting on
the lower end of it a horizontal piece parallel with the step and
overlying it, involved no new principle of structure or
operation.
There is no suggestion in the specification of the original
patent that the plate E is to be used, disconnected at its lower
end from the step, or to be any other than a yielding plate so
arranged as to keep the door open and shut, in addition to acting
as a step cover and wheel fender. The first claim of the reissue,
if construed so as to cover the defendant's structure, is void for
want of novelty, being anticipated by the old structures referred
to. Moreover, if so construed, it is invalid as being for a
different invention from any invention found in the original
patent. And if it is so limited as to be no broader than the claim
of the original patent, there has been no infringement of it. Under
any view, the decree of the court below was correct, and it is
Affirmed.