Claim 1 of reissued letters patent No. 6990, granted March 14,
1876, to Thomas R. Bailey, Jr., for an " improvement in hydrants,"
namely,
"In combination with a hydrant or fire plug, a detached and
surrounding casing C, said casing adapted to have an independent up
and down motion sufficient to receive the entire movement imparted
by the upheaval of the surrounding earth by freezing, without
derangement or disturbance of the hydrant or plug proper,
substantially as shown,"
is invalid as being an unlawful expansion of the original
patent.
The drawing of the original patent was materially altered, and
new matter was introduced into the specification of the
reissue.
"The decision in
Parker & Whipple Co. v. Yale Clock
Co., 123 U. S. 87, applied to this
case."
In the present case, the reissue was not applied for until
nearly eight years after the original patent was granted, and the
reissue was taken with the manifest intention of covering, by an
enlarged claim, structures which in the meantime had gone into
extensive public use and which were not covered by any claims of
the original patent.
Claim 3 of the reissue, namely "The combination of the hydrant
or fireplug pipe A, supply pipe B, valve D, casing C, and stuffing
box H, substantially as and for the purpose shown," is either an
unlawful expansion in regard to the casing of what is found in the
original patent or, if construed narrowly in regard to the casing,
is anticipated, on the question of novelty.
In equity for the infringement of letters patent. Decree
dismissing the bill. Complainants appealed.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity, brought in the Circuit Court of the
United States for the Eastern District of Michigan, by James
Page 127 U. S. 564
Flower, Thomas Flower, and George Flower, against the City of
Detroit, the Fire Commission of the City of Detroit, Benjamin
Vernon, President thereof, and the Board of Water Commissioners of
the of the City of Detroit for the infringement of reissued letters
patent No. 6,990, granted March 14, 1876, on an application filed
February 17, 1876, to Thomas R. Bailey, Jr., for an "improvement in
hydrants," the original patent, No. 75,344, having been granted to
said Bailey, March 10, 1868. Among the defenses set up in the
answer, it was alleged that new matter, not constituting any
substantial part of the alleged invention upon which the original
patent was granted, was introduced into the specification of the
reissue, and that the reissue is not for the same invention as the
original patent, and is void. The specifications and claims of the
original and of the reissue are here placed one after the other,
the parts in each which are not found in the other being in
italic:
"
ORIGINAL"
"To all whom it may concern:"
"Be it known that I, T. R. Bailey, Jr., of Lockport, in the
County of Niagara and State of New York, have invented a new and
improved hydrant fire plug, and I do hereby declare
that
the following
is a full, clear, and exact description
thereof, which will enable
those skilled in the art to
make and use the same, reference being had to the accompanying
drawings, forming part of this specification."
"This invention relates to
a new and improved method of
constructing fire plugs or hydrants,
and the invention
consists in operating a cylinder valve in a suitable case, and in
the arrangement and combination of parts connected therewith as
hereinafter described."
"Figure 1 represents a longitudinal central section of the
hydrant,
showing the parts of which it is composed and the
manner of their arrangement. Fig. 2
is a
cross-section of
Fig. 1 through
the line x
x."
"
Similar letters of reference indicate corresponding
parts."
"A represents the hydrant tube, from which
the water is
discharged. B is the horizontal section which is connected with the
'water main' and which
forms the valve chamber."
"C is a loose casing around the hydrant tube
for protecting
the tube from dirt, etc. D is the cylinder valve
which
has its seat at its lower end,
on elastic
or
leather packing, secured in a groove, as
seen in the
drawing at
a. E is a rod, having a screwthread on its
upper end, by which the valve is operated. F is a sleeve nut
which engages with the screw on the rod,
raising
and lowering
it a the nut is turned. This nut is turned by
a wrench on the head, G."
"The sleeve nut is
secured in the cap of the hydrant by
a collar, and packing under the hollow cylinder stuffing box H,
as seen in the drawing. J is a yoke, which is attached to
the rod E by a set screw, and
which is
secured in
the tube A and prevented from turning as it moves up and down by
projecting lugs, as
seen in Fig. 2,
and it will
be seen that the arrangement is such that the rod and valve may be
raised and lowered without being rotated.
This secures a
uniform and perfect bearing of the valve on its seat, the packing
a remaining undisturbed."
"Provision is made for the discharge of the waste water by an
orifice beneath the valve D
marked f, which orifice is
opened and closed by a valve
marked g, as seen in the drawing.
h is a wing
on the top of this valve."
"As the cylinder valve D descends, the angular flange
i
on its inside
strikes the wing
h and raises the
valve as
seen in the drawing,
thus allowing any
water which may remain in the hydrant to escape through the orifice
f and aperture
k.
It will be thus seen that
no water will be left in the hydrant to freeze in cold
weather."
"The tube A is secured to the horizontal section B by a ring nut
m, which contains recesses for packing rings around the
valve, as seen at
n n. Packing
around the valve
is secured by another ring nut
o and also under the end of
the tube A, as
seen in the
drawing."
"P represents the discharge pipe, with a screw for the
attachment of the hose, and a cap piece for covering the pipe when
the hydrant is not in use."
"
Having thus described my invention, I claim
as
new, and desire to secure by letters patent --"
"1. A hydrant or water plug,
constructed substantially as
shown and described; that is to say, with the parts A and B
connected together, as shown, and with a cylinder valve and a
waste water valve connected and operated
in combination
substantially as herein
specified."
"2.
The arrangement of the parts A, B, valve D, case C,
and stuffing box H,
as herein described, for the purpose
specified."
"
REISSUE"
"To all whom it may concern:"
"Be it known that I, T. R. Bailey, Jr., of Lockport, in the
County of Niagara and State of New York, have invented a new and
improved hydrant fire plug, and I do hereby declare the following
to be a full, clear, and exact description thereof, which
will enable
others skilled in the art
to which my
invention relates to make and use the same, reference being
had to the accompanying
drawing, which forms a part of
this specification."
"This invention relates to
improvements in the construction
of fire plugs or hydrants."
"
In the drawing, Figure 1 represents a longitudinal
central section of a hydrant,
according to my
invention;"
"Fig. 2, a cross-section of
the same through lines
x x of Fig. 1."
"
My invention consists in the following parts and
combinations, as hereinafter specified and claimed,
wherein"
"A represents the hydrant tube, from which water is discharged.
B is the horizontal section which is connected with the water main,
and which
may form the valve chamber."
"C is a loose
movable casing around the hydrant tube. D
is the cylinder valve,
having its seat at its lower end,
upon suitable elastic packing, secured in a groove,
as
shown at
a. E is a rod having a screw thread on its
upper end by which the valve is operated. F is a sleeve nut
engaged with the screw nut on the rod
E, lifting
and lowering
said rod as the nut is turned
one way or
another. This nut is turned by a wrench
or crank or other
suitable device on the head G."
"The sleeve nut is screwed in the cap of the hydrant by a
collar, and packing under the hollow cylinder stuffing box H. J is
a yoke, which is attached to the rod E by a set screw
or its
equivalent, and
it is
screwed in the tube A
and prevented from turning, as it moves up and down, by projecting
lugs, as
shown in detail at Fig. 2. It will be
noticed that the arrangement is such that the rod and
valve may be raised and lowered without being rotated,
thus
securing a uniform and perfect bearing of the valve on its
seat, the packing
a remaining undisturbed."
"Provision is made for the discharge of the waste water by an
orifice
f beneath the valve D, which orifice is opened and
closed by a valve
g. A wing
h is provided upon
the top of this valve."
"As the cylinder valve D descends, the angular flange
i
on its inside,
striking the wing
h, raises the
valve, as
shown in the drawing,
and allows any
water which may remain in the hydrant to escape
down
through the orifice
f and aperture
K, thus preventing
any retention of water above the freezing level."
"The tube
A' is secured to the horizontal section B by
a ring nut
m, which contains recesses for packing rings
around the valve, as
shown at
n. Packing
about the valve is
also secured by another ring
nut
o and also under the end of the tube A, as
shown in the
drawings."
"P represents the discharge pipe, with a screw for the
attachment of the hose, and a cap piece for covering the pipe when
the hydrant is not in use."
"@It will be observed that the casing C loosely rests upon the
main B or upon a branch projecting upward from the same. This
casing extends upward, enveloping the main portion of the water
pipe, A at least that portion which is subterranean. Said casing
extends upwards, and fits loosely about the plug or hydrant at the
portion A'. Above the upper terminus of the casing C is provided
the bead a upon the hydrant proper. Sufficient space is left
between the bead a and the upper terminus of the casing C to permit
of sufficient up and down play of the said casing C for the purpose
which will hereafter more fully appear. This distance between the
bead and casing may be adjusted to any desired distance, thus
lengthening or shortening it, by means of its screw attachment at
its base."
"The main function of the casing C is to prevent derangement of
parts during cold weather by the ground alternately freezing and
thawing around the hydrant or plug. This process of freezing causes
the surrounding earth, by its expansion, to lift or upheave, and
thus be liable to derange the hydrant or plug. This upheaval or
movement is received by the casing C, which, by its capability of
sliding loosely up and down, will accommodate the upheaval of the
earth above mentioned without any liability to derange the plug or
hydrant. This is the chief function of the casing C, although it
likewise serves the purpose of protection to the water pipe
A.@"
"
What I claim
is --"
"
1. In combination with a hydrant or fire plug, a detached
and surrounding casing C, said casing adapted to have an
independent up and down motion sufficient to receive the entire
movement imparted by the upheaval of the surrounding earth by
freezing without derangement or disturbance of the hydrant or plug
proper, substantially as shown."
"2.
In combination with a hydrant or
fire plug
pipe A, the
supply pipe B, and cylinder valve and
waste valve, connected and operated substantially as herein
shown and described."
"3.
The combination of the hydrant or fire plug pipe A,
supply pipe B, valve D,
casing C, and stuffing
box H,
substantially as
and for the purpose
shown."
The material difference between the descriptive parts of the two
specifications is that in the reissue, it is stated that the casing
C is movable, and that sufficient space is left between the bead
a, upon the hydrant proper, and the upper terminus of the
casing, C, to permit of sufficient up and down play of the casing,
C, to allow it to slide loosely up and down, to accommodate the
upward and downward movement of the earth during the process of
freezing and thawing, without any
Page 127 U. S. 570
image:a
liability to derange the plug or hydrant. The casing could not
thus slide loosely up and down unless sufficient space were left
between the bead
a and the upper terminus of the casing.
No suggestion of such arrangement is found in the specification of
the original patent, and the drawing of that patent shows no space
between the upper terminus of the casing and
Page 127 U. S. 571
the bead or flange above it. This is new matter introduced into
the specification of the reissue, contrary to the express
inhibition of ยง 4916 of the Revised Statutes.
Claim 1 of the reissue is for an invention not indicated or
suggested in the original patent -- namely the independent up and
down motion of the casing. In addition to this, the drawing of the
original patent shows a close contact between the top of the casing
and the bead or flange above it, so as absolutely to forbid any
such independent up and down motion of the casing as is covered by
the first claim of the reissue, while the drawing, Fig. 1, of the
reissue, shows a sufficient space between the top of the casing and
the bead or flange above it to admit of such independent up and
down motion. Issue having been joined, proofs were taken on both
sides, and the circuit court entered a decree dismissing the bill,
from which the plaintiffs have appealed. Its opinion accompanies
the record, and is reported in 22 F. 292. It held that the reissued
patent was in valid as matter of law upon a comparison of the
original with the reissue. We concur in this view.
It is sought to sustain the validity of the reissue by
attempting to show that the model filed in the Patent Office with
the original application exhibited the invention covered by the
first claim of the reissue. It is doubtful whether that fact is
satisfactorily established. But, irrespective of this, the case
falls directly within the recent decision of this Court in
Parker & Whipple Co. v. Clock Co., 123 U. S.
87. It was held in that case that what was suggested in
the original specification, drawings, or Patent Office model is not
to be considered as a part of the invention intended to have been
covered by the original patent, unless it can be seen from a
comparison of the two patents that the invention which the original
patent was intended to cover embraced the things thus suggested or
indicated in the original specification, drawings, or Patent Office
model and unless the original specification indicated that those
things were embraced in the invention intended to have been secured
by the original patent.
See also Hoskin v. Fisher,
125 U. S. 217. In
the present
Page 127 U. S. 572
case, it cannot be seen from a comparison of the two patents
that the original specification indicated that what is covered by
the first claim of the reissue was intended to have been secured by
the original.
In the present case also the reissue was not applied for until
nearly eight years after the original patent was granted, and the
reissue was taken with the manifest intention of covering, by an
enlarged claim, structures which in the meantime had gone into
extensive public use and which were not covered by any claim of the
original patent.
Infringement is alleged only of claims 1 and 3 of the reissue.
As to the casing C of the third claim, it cannot, any more than the
casing C of the first claim, be held to cover a casing which has
the independent up and down motion referred to. Such casing must be
construed to be the casing exhibited in the drawing annexed to the
original patent -- that is, one in which the up and down play is
restricted by the overlapping bead or flange. On any other
construction, claim 3 is an unlawful expansion in regard to the
casing of what is found in the original patent. In addition to
this, if the casing of claim 3 is only a casing which has no end
play, it is anticipated by what is shown in letters patent No.
19,206, granted to Race and Mathews January 26, 1858, which patent
was the subject of the decision of this Court in
Mathews v.
Machine Co., 105 U. S. 54.
The decree of the circuit court is affirmed.