The bill in equity, which was dismissed on the merits by the
decree appealed from, was filed by the appellant to restrain the
alleged infringement of reissued letters patent No. 6315, dated
March 2, 1875, based on the original patent, No. 142,154, dated
August 26, 1573, issued to James Eachus, the complainant.
The specification forming part of the original patent, as set
out in the record, is as follows:
"Be it known that I, James Eachus, of Coatesville, in the County
of Chester, State of Pennsylvania, have invented a new
Page 115 U. S. 430
and useful machine for cutting paper boards, of which the
following is a specification:"
"The nature of my invention consists in combining six adjustable
circular saws upon two shafts, set at any angle to each other, and
a two-way carriage supported by a frame and provided with guides so
as to work easily and carry the material to be cut. The object of
the invention is to trim and cut heavy paper used in the
manufacture of books and boxes."
"Figure 1 is a front view of my invention; Fig. 2, a side
elevation, and Fig. 3, a ground plan."
"In Fig. 3,
E is the frame, which should be strongly
constructed, and in the form of an L.
B B and
T T
are guides on frame
E.
A is a two-way carriage
constructed in such a manner as to play freely upon guides
B
B and
T T.
D and
F are saw shafts
mounted upon adjustable bearings bolted to frame
E.
C
C C and
S S S are circular saws, secured upon shafts
D and
F by adjustable collars."
"For the purpose of operating my machine, shafts
D and
F are provided with pulleys
P P. Rotation is
communicated by belts
H H, Fig. 2, from a shaft
G, on which are pulleys
P' P'."
"Upon carriage
A, Fig. 3, is placed the wet paper to be
cut. The pile is composed of a number of large sheets, as they are
taken from the paper machine. The carriage is then drawn upon the
guides
B B, saws
S S S cutting through the paper;
thence at right angles to the first direction upon guides
T
T, saws
C C C cutting through the pile in the new
direction, the result of the operation being to trim the edges and
cut each sheet in four."
"The saws can be adjusted upon shafts
D and
F
so as to trim and cut the sheets to any desired size."
"I make no claim to the arrangement of circular saws and
carriages working upon guides for the purpose of cutting logs,
blocks of wood, wood of any kind, or any other material except
paper, but"
"I claim the combination of shaft
D shaft
F,
saws
S S S and
C C C, carriage
A and
frame
E for the purpose of cutting binders' and boxmakers'
paper, substantially as shown and described. "
Page 115 U. S. 431
The drawings referred to are as follows:
image:a
The drawings accompanying the specification, which form part of
the reissued patent, are the same as the original except one
described as Fig. 4, which was added, but is unimportant.
Page 115 U. S. 432
The specification of the reissued patent is as follows:
"Be it known that I, James Eachus, of Coatesville, in the County
of Chester, and State of Pennsylvania, have invented a new and
improved process of cutting paper boards, of which the following is
a description, reference being had to the accompanying drawings, in
which --"
"Figure 1 is a front view of my machine for conducting my
process. Fig. 2 is a side elevation of such machine. Fig. 3 is a
top view, and Fig. 4 is a detail of a saw in the act of
cutting."
"Similar letters of reference indicate corresponding parts in
the several figures. "
"The object of this invention is to trim and cut heavy paper
used in the manufacture of boxes and books, and it consists in
subjecting the paper while in a wet state, as it is taken from the
papermaking machine, to the action of circular cutters having
serrated edges, whereby the sheets are cut evenly and economically,
and the trimmings can be returned to the paper machine without
regrinding or other treatment."
"In the annexed drawings, I have represented one practical form
of a machine for conducting my process, but I desire to be
understood as not confining myself to the precise construction of
such machine nor to the number of serrated cutters shown."
"In Fig. 3,
E designates the frame, which should be
strongly constructed.
B B and
T T are guides on
frame,
E.
A is a two-way carriage, which is
constructed in such manner as to play freely on the guides
B
B and
T T.
D and
F are saw shafts,
which are mounted upon adjustable bearings bolted to frame
E.
C C C and
S S S are circular saws or
cutters, having serrated edges, adapted for the purpose intended,
which saws are secured upon shafts
D and
F by
adjustable collars."
"For the purpose of operating this machine, shafts
D
and
F are provided with pulleys
P P. Motion is
communicated by belts
H H, Fig. 2, from a shaft
G, on which are pulleys
P' P'. The paper to be
cut is put upon the carriage
A. The pile is composed of a
number of large sheets as they are taken from the papermaking
machine in a very wet condition. The
Page 115 U. S. 433
carriage is then drawn upon the guides
B B, saws
S
S S cutting through the paper; thence at right angles to the
first direction upon guides
T T, saws
C C C
cutting through the pile in the new direction, the result of the
operation being to trim the edges of the sheets and cut each sheet
into four parts."
"The saws can be adjusted on shafts
D and F so as to
trim and cut the sheets any desired size."
"It will be seen from the above description that I take sheets
of paper, while they are in a wet condition, directly from the
papermaking machine and pass the saws over them, thereby trimming
their edges and leaving them of an equal thickness throughout and
dividing them into smaller sheets. This process of sawing cannot be
performed successfully and without tearing the surface of the
sheets unless the sheets are wet and in the condition in which they
leave the papermaking machine."
"I make no claim to the arrangement of circular saws and
carriages for the purpose of sawing logs or any kind of wood; nor
do I broadly claim the machine herein described for sawing
wood."
"I am aware that paper board has heretofore been sawed when in a
dry state, and I therefore lay no claim to such invention, which
leaves the edges of the paper thus sawed in a jagged condition, the
action of the saw teeth tending to separate the fibers of the paper
board in the line of the kerf, whereas when the paper board is
sawed in a wet state directly after leaving the paper-machine, the
edges are left smooth, the saws causing an interlocking of the
fibers in its path through the paper and the trimmings of the paper
being in a condition to be returned to the vat without regrinding,
which would not be the case with trimmings of paper board sawed in
a dry state."
"What I claim as new and desire to secure by letters patent is
the process of sawing paper board as herein described, consisting
in sawing the paper board while it is in the wet state in which it
is taken from the papermaking machine, substantially as described
and for the purpose set forth."
The only defenses set up in the answer are a denial of the
Page 115 U. S. 434
validity of the reissued patent, and a denial of the alleged
infringement.
MR. JUSTICE MATTHEWS delivered the opinion of the Court. He
stated the facts in the language above reported, and continued:
A comparison of the two patents, for the purpose of determining
the question raised as to the identity of the inventions described
in them, requires an interpretation of the original patent in the
light of the state of the art at the date when the application for
it was filed. And we have the material for ascertaining its meaning
in that view by means of the evidence on that point contained in
the record, which, although objected to on the ground that no prior
use or knowledge of the invention claimed had been specifically set
up in the answer as a defense, was nevertheless admissible for the
purpose of defining the limits of the grant in the original patent
and the scope of the invention described in its specification.
Vance v.
Campbell, 1 Black 427;
Brown v. Piper,
91 U. S. 37.
From that evidence, it appears that at the time of the alleged
invention of the appellant and for many years prior thereto, paper
boards for bookbinding or for making boxes were cut, trimmed, or
separated while in a wet or moist state as the paper in sheets came
from the mill by means of a handsaw, sometimes with teeth, and
sometimes ground with a curved line to a sharp edge. This was the
mode or process in universal use. Heavy paper coming from the
machine in a
Page 115 U. S. 435
dry condition was cut for similar purposes in one direction by
means of rolling shears -- that is, revolving circular disks,
operated on a shaft, their edges ground to an angle of about sixty
degrees, the same as a pair of scissors, and in the other direction
by straight shears, acting like ordinary scissors.
It is manifest from this state of the art that it was not open
to the appellant at the time he applied for his patent to claim as
his invention the discovery that heavy paper intended for the use
of bookbinders and boxmakers, could best be cut into proper shapes
and sizes while in wet sheets, as they came from the machine, nor
that the cutting could best be performed by cutters with serrated
edges. For this was matter of general knowledge and common
practice.
Accordingly, in the specification to his original patent, he
declared the nature of his invention to consist
"in combining six adjustable circular saws upon two shafts, set
at any angle to each other, and a two-way carriage supported by a
frame, and provided with guides so as to work easily and carry the
material to be cut."
Then follows a description of the machine which contains this
combination, and of the mode of operating it so as to effect the
result of cutting the large, wet sheets of heavy paper, placed on
the frames for that purpose, in both directions, into smaller
sheets of any desired sizes. This description refers to the
drawings, which show the machine with all its parts, and their
relations to each other, in their combination.
But none of these parts, either in their construction or mode of
operation or general function, is novel, for saws and shafts and
frames for carrying material to be cut had been in common use for
cutting other material, and were well known. Accordingly, the
appellant in his specification enters an express disclaimer as to
all such uses and the combinations and arrangements of well known
machinery by which they had been effected. He says:
"I make no claim to the arrangement of circular saws and
carriages, working upon guides for the purpose of cutting logs,
blocks of wood, wood of any kind, or any other material except
paper."
And thereupon states his claim precisely as follows:
"The combination of shaft
D,
Page 115 U. S. 436
shaft
F, saws
S S S and
C C C,
carriage
A, and frame
E for the purpose of
cutting binders' and boxmakers' paper, substantially as shown and
described."
It is plain, then, that the only invention exhibited in the
drawings or described in the specifications of the original patent
consists in the particular organization of the machine described,
whereby the various parts are combined and adjusted so as to fit it
to accomplish the specific result of cutting heavy paper when in
large sheets and in a wet condition, as received from the
papermaking machine, into smaller sizes and other shapes for use as
boards in bookbinding and boxmaking.
Whether the particular construction and arrangement of the parts
forming the combination and adjustment described was of itself
something novel, requiring invention, or whether the adaptation and
application of such a combination to the particular use declared
was an invention by reason of the novelty of the use and the new
result obtained, within the principle of the cases of
Stimpson v.
Woodman, 10 Wall. 117;
Tucker v.
Spalding, 13 Wall. 453;
Brown v. Piper,
91 U. S. 37;
Roberts v. Ryer, 91 U. S. 157;
Heald v. Rice, 104 U. S. 754;
Hall v. Macneale, 107 U. S. 90;
Atlantic Works v. Brady, 107 U. S. 192; and
Pennsylvania Railroad v. Locomotive Truck Co.,
110 U. S. 490 --
are questions not before us. It is sufficient to say that whether
for such an alleged invention the original patent could or could
not be upheld, it cannot be construed as good for any thing more or
other than that.
We turn now, for the purpose of comparison, to the reissued
patent. In the specification thereto, the patentee declares that he
has invented not a machine, but "a new and improved process of
cutting paper boards," of which a description follows; that the
drawings referred to are views of "my machine for conducting my
process;" that the invention consists
"in subjecting paper, while in a wet state, as it is taken from
the papermaking machine, to the action of circular cutters having
serrated edges, whereby the sheets are cut evenly and economically,
and the trimmings can be returned to the paper machine without
regrinding or other treatment;"
that, in the annexed drawings,
"I have represented one practical form of a machine
Page 115 U. S. 437
for conducting my process, but I desire to be understood as not
confining myself to the precise construction of such machine, nor
to the number of serrated cutters shown."
After describing the construction and operation of the machine,
by reference to the drawings, the specification proceeds:
"It will be seen from the above description that I take sheets
of paper, while they are in a wet condition, directly from the
papermaking machine and pass the saws over them, thereby trimming
their edges and leaving them of an equal thickness throughout, and
dividing them into smaller sheets. This process of sawing cannot be
performed successfully and without tearing the surface of the
sheets unless the sheets are wet and in the condition in which they
leave the papermaking machine."
Then follow these disclaimers:
"I make no claim to the arrangement of circular saws and
carriages for the purpose of sawing logs or any kind of wood, nor
do I broadly claim the machine herein described for sawing wood. I
am aware that paper board has heretofore been sawed when in a dry
state, and I therefore lay no claim to such invention, which leaves
the edges of the paper thus sawed in a jagged condition, the action
of the saw teeth tending to separate the fibers of the paper board
in the line of kerf, whereas, when the paper board is sawed in a
wet state, directly after leaving the paper machine, the edges are
left smooth, the saws causing an interlocking of the fibers in its
path through the paper, and the trimmings of the paper being in a
condition to be returned to the vat without regrinding, which would
not be the case with trimmings of paper board sawed in a dry
state."
The specification then concludes with the claim, as follows:
"What I claim as new and desire to secure by letters patent is
--"
"The process of sawing paper board as herein described,
consisting in sawing the paper board while it is in the wet state
in which it is taken from the papermaking machine, substantially as
described, and for the purposes set forth."
A comparison of the two patents makes it very clear that if the
patentee had in fact conceived the idea of enlarging the
Page 115 U. S. 438
scope of his invention by development from a machine into a
process, he has taken no pains to conceal or disguise his purpose.
For he entitled his original patent as for a new and useful machine
for cutting paper boards, while, with equal explicitness in his
reissue, he declared that he had invented a new and improved
process of cutting paper boards. This is at least a
prima
facie departure from the original grant, which would seem to
be serious, if not fatal, under a law that limits the power of the
Commissioner of Patents so as to issue a new patent only for the
same invention when the original has been surrendered as
inoperative or invalid by reason of a defective or insufficient
specification or by reason of the patentee's 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 mistake and
without any fraudulent or deceptive intention. If there had been
any doubt as to how the matter was understood by the patentee
himself, it has been removed by his testimony in the case, in
which, in answer to the question, "For what purpose did you ask a
reissue of your patent?" he said, "I was told that a process would
cover more than a mere machine, and so I applied for a
process."
Taken in this obvious sense, the reissued patent falls directly
under the condemnation of the law, as declared in
Powder Co. v.
Powder Works, 98 U. S. 126, and
other similar cases not necessary to be cited.
The attempt is made, in argument on behalf of the appellant, by
construction to convert the original patent into a patent for a
process in which the real invention described "consisted in
operating upon a peculiar kind of material with a peculiar kind of
cutter," and in which the claim was inadvertently framed so as to
cover merely the machine itself, and not the process in which it
was one only of the factors. But we have already shown, by
reference to the state of the art, according to which heavy paper
in a wet condition was cut by means of a saw, that the original
patent could not be construed as including such a process without
invalidating it, and, from the terms of the specification itself,
that no such process is described as the invention intended to be
claimed. The patent
Page 115 U. S. 439
is plainly limited by its language to the combination,
arrangement, and adjustment of the particular parts of the very
machine described for the uses to which it is declared to be
applicable. On the other hand, the claim of the reissued patent is
broad enough to cover the process of sawing paper boards in a wet
state by means of a hand saw, and if, for the purpose of saving it
from the necessary consequences of such a claim, it is restrained
by construction so as to include only the process described when
performed by means of circular cutters having serrated edges --
terms of limitation to be found in the specification -- it is still
broad enough to cover every arrangement, combination, and
adjustment in which these elements may be found, and this surely is
not the same invention as that described in the original
patent.
The decree of the circuit court dismissing the bill is
Affirmed.
