FREEMAN v. ASMUS.

As we are of opinion that the decree below must be reversed, because of the invalidity of the reissue, it is unnecessary to consider any other question.

The only claim of the reissue which, it is now contended, was infringed, is the first claim, which reads as follows: '(1) A blast furnace with a closed breast, where the slag is discharged through an opening or openings cooled by water, substantially as set forth.' Claims 2 to 7, inclusive, of the reissue are sustantially in the same language as claims 1 to 6 of the original. Claim 1 in the reissue is entirely new, and it is not contended here that the defendant infringed any of the claims of the original patent, or any claim of the reissue other than claim 1.

It was held by the circuit court that, while claim 1 of the reissue was not embraced in the original, the matter claimed by that claim was so embraced; that the language of the original specification clearly described the closed-breast furnace; that a furnace built in accordance with the language of the original would be necessarily closed-breasted; that the other element of claim 1 of the reissue, 'where the slag is discharged through an opening or openings, cooled by water,' was no less clearly described in the original; that the drawings originally filed showed the same; that claim 1 of the reissue might, therefore, have been embraced in the patent as first issued, or introduced into the reissue without changing the specificiation; that the change made by the reissue simply expressed the same thing in different terms; that claim 1 of the reissue was, therefore, not an enlargement of the invention; that such additional claim, omitted through inadvertence, accident, or mistake, might be secured by means of a reissue, if applied for within a reasonable time; that in this case the application was made a little after the expiration of one year; and that the question whether the omission occurred through inadvertence, accident, or mistake, was a question for the commissioner of patents.

But we are of opinion that these views cannot prevail in the present case. It is apparent, from the description contained in the specification of the original patent, that Lurmann considered his invention to consist essentially of a removable slagdischarge piece, cast with numerous channels or pipes running through it, formed with a dovetail at its upper end, fitted into the bottom of a stationary metallic plate connected with the furnace, and provided with channels or pipes, so that water might flow through the slag-discharge piece and plate, conjointly or separately, that they might be cooled while the furnace was in operation. The slag-discharge piece was made removable, and provided with one or more holes, the middle portion of the holes being cylindrical, but each end being conical or flaring. By regulating the flow of water through the slag-discharge piece, its temperature could be lowered sufficiently to allow a coating of slag to choke the discharge opening, which coating could be melted out by diminishing the flow of water, and thus allowing the temperature to rise. The opening could be closed by an iron block when necessary.

The fundamental devices claimed by Lurmann as his improvements were (1) the metal plate, C, provided with water channels; (2) the removable slag-discharge piece, provided with water channels; and (3) the method of regulating the discharge of the slag by raising and lowering the temperature of the slag-discharge piece.

The first claim of the original patent claimed a slag-discharge piece provided with a water circulation, connected with a water-cooled plate, C, having small hour-glass-shaped discharge openings, and capable of being removed from the furnace when desired. The slag-discharge piece of the second claim was of the same character as that described in the first claim. The third claim was for the shape of the slag-discharge opening, flaring at its ends, and of diminished diameter in the middle. The fourth claim was for the combination of such slag-discharge piece and a series of water channels or pipes. The fifth claim was for the combination of the metallic plate. C, with a series of water channels or pipes. The sixth claim was for regulating the discharge of the slag by varying the temperature of the water-cooled slag-discharge piece.

Asmus, in his testimony, states that his reason fro obtaining a reissue was to make the meaning of the whole invention as clear as possible; that the reason why he did not apply sooner for the reissue was that, in arranging a number of furnaces, they differed more or less in construction, and he had to adapt his construction according to the circumstances; that this made it necessary to give the construction quite different shapes, retaining always the main points; that experience caused him, in order to prevent mistakes, to find a formula which expressed the spirit of the invention in the clearest way possible, and which flowed plainly from the technical description given in the original patent; and that the experience and the reasoning derived from it took up some time. When asked what kind of mistakes he referred to, he said. 'That difference in shape might be taken for a different thing.'

This testimony shows that, instead of desiring merely to remedy formal defects which appeared on the face of the papers, Asmus waited until experience and reasoning had shown him the broadest formula in which to express the claims of his patent, so as to cover all possible modifications.

While the petition for the reissue states that Asmus believes that the original patent 'is inoperative and invalid by reason of a defective specification,' he does not make that allegation in his oath, but states in the latter merely that the patent 'is not fully valid and available to him;' and in the statement accompanying the petition and oath, his attorneys say that the claim in the original specification is confined to a slag-discharge piece or cinder block, constructed and attached in a certain specific manner, and that the new first claim is added 'with the view to cover the whole ground of the invention.' A comparison of the original specification with that of the reissue shows that the only substantial change made is to insert in the latter enlarged definitions and descriptions of the alleged invention, and the new and enlarged first claim.

In the assignment of July 12, 1867, from Lurmann to Asmus, which bears date the same day as the signature of Lurmann to the original specification, the latter says that his invention 'is fully described in the specification pertaining to said application, which I have signed under oath.' The inventor did not swear to the specification filed for the reissue; and although his oath was not required to it, as the law stood at the time the reissue was applied for, yet the fact remains that the reissue was wholly the work of the assignee and not at all of the inventor; and it by no means followed that the inventor would ever have asserted that there was any error in the original specification or claims, arising from inadvertence, accident, or mistake.

The new matter inserted in the specification of the reissue, and hereinbefore set forth in italics, in connection with the omission from the reissue of the parts in brackets contained in the original, constituted a broader definition on which to found claim 1 of the reissue,—a claim to 'a blast furnace with a closed breast, where the slag is discharged through an opening or openings, cooled by water, substantially as set forth.' In addition to the description in the original of the connection of the slag-discharge piece with the metallic plate, C, it is also stated in the reissue that such slag-discharge piece may be attached to the plate, C, 'in any other desirable manner, or cast solid with the same, if desired.' This is new matter, as is also the addition, in the specification of the reissue, that, in the drawing, the plate, C, is shown above the slag-discharge piece or cinder block, but that it may also be placed below, or in any other desirable position in relation to the same. So also, it is added in the specification of the reissue that the invention can be applied to blast furnaces of the common construction 'by removing the forehearth and closing the aperture left in the breast of the furnace under the tymp stone by inserting the plate, C, with the cinder-block, D.'

But the material point is the extension of the invention claimed, by the addition of claim 1 of the reissue, the words in which, 'substantially as set forth,' refer to the new matter in the reissue, that the in the original specification which indicates cooled with water, in such a manner that the tymp, or forehearth, and the wall stone can be dispensed with.' The intention manifestly was to construe the first claim so as to cover any kind of blast furnace with a closed breast, having a slagdischarge opening, cooled in any manner or to any extent by water. There is nothing in the ogiginal specification which indicates that any such claim was intended to be made in the original patent. On the contrary, the whole purport of that specification shows that it was intended to claim only a slag-discharge piece or cinder block, constructed and attached in a specific manner, as is set forth in the statement of the attorneys of Asmus, accompanying his application for the reissue.

This case was decided in the circuit court, May 14, 1886; and both before and since that there have been numerous decisions in this court which require that the present reissue be held invalid, although it was applied for within less than a year after the granting of the original patent. Those cases are Mahn v. Harwood, 112 U. S. 354, 5 Sup. Ct. Rep. 174, 6 Sup. Ct. Rep. 451; Coon v. Wilson, 113 U.S. 268, 5 Sup. Ct. Rep. 537; Ives v. Sargent, 119 U.S. 652, 7 Sup. Ct. Rep. 436; Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, 8 Sup. Ct. Rep. 38; Matthews v. Manufacturing Co., 124 U. S. 347, 8 Sup. Ct. Rep. 639; Hoskin v. Fisher, 125 U. S. 217, 8 Sup. Ct. Rep. 834; Flower v. Detroit, 127 U. S. 563, 8 Sup. Ct. Rep. 1291; Yale Lock Co. v. Berkshire Nat. Bank, 135 U. S. 342, 10 Sup. Ct. Rep. 884; Electric Gas-Lighting Co. v. Boston Electric Co., 139 U. S. 481, 11 Sup. Ct. Rep. 586.

In Mahn v. Harwood, a reissue was held invalid, where it was clear that the only object of it was to enlarge the claims of the original patent. The description was not altered in the least. The claims in the original were clear and explicit, one of them being retained substantially in the reissue. Nothing was altered or changed, except to multiply the claims and make them greater, and that was done, not for the benefit of the original patentee, but for that of his assignee.

In Coon v. Wilson, the application for the reissue was made a little more than three months after the granting of the original patent; but it was said that a clear mistake, inadvertently committed, in the wording of the claim, was necessary, without reference to the length of time; that there was no mistake in the wording of the claim of the original; that the description warranted no other claim and did not warrant the claim of the reissue; that the description had to be changed in the reissue to warrant its new claim; and that the description in the reissue was not a more clear and satisfactory statement of what was described in the original, but was a description of a different thing, so ingeniously worded as to cover what was claimed in the reissue.

In Ives v. Sargent, the doctrine of Coon v. Wilson was approved and applied.

The whole subject was reviewed in Parker & Whipple Co. v. Yale Clock Co., and the dicta in the case of Seymour v. Osborne, 11 Wall. 516, were considered; and it was held that what was suggested or indicated in the original specification was not to be considered as a part of the original invention intended to be covered by the original patent, unless it could be seen, from a comparison of the two patents, that the invention which the original was intended to cover embraced the things thus suggested or indicated in the original specification, and unless the original specification indicated that those things were embraced in the invention intended to have been secured by the original patent. The cases of Mahn v. Harwood and Coon v. Wilson were cited and approved.

The case of Parker & Whipple Co. v. Yale Clock Co. is cited and applied in Matthews v. Manufacturing Co., in Hoskin v. Fisher, in Yale Lock Co. v. James, 125 U. S. 447, 464, 8 Sup. Ct. Rep. 967, and in Flower v. Detroit.

In Yale Lock Co. v. Berkshire Bank, a reissue was held invalid, although it was applied for only 13 days after the granting of the original, because there was not a clear mistake, inadvertently committed, in the wording of the claim; and the cases of Coon v. Wilson, Ives v. Sargent, and Parker & Whipple Co. v. Yale Clock Co. were cited and applied.

In Electric Gas-Lighting Co. v. Boston Electric Co., a reissue was held invalid because there was no inadvertence, accident, or mistake such as would authorize a reissue, with new claims, and the sole object of the reissue was unlawfully to expand the claims.

We are of opinion that the present reissue is invalid, so far as the first claim of it is concerned, because it is not for the same invention as the original patent, and is, therefore, within the express exception of the statute, (Act July 4, 1836, c. 357, § 13, 5 St. p. 122.) There is nothing inconsistent with the foregoing views in our decision in Topliff v. Topliff, 12 Sup. Ct. Rep. 825.

The decree of the circuit court is reversed, and the case remanded to that court, with a direction to dismiss the bill, with costs.