ther representation is that the under surface event, he can secure the full benefit of the exof that guide or deflector nearest the picker clusive right to each of the several inventions, brush is flat or parallel with the axis of the by separate claims referring back to the depicker brush, and thence, towards the other scription in the specification, and if, by inadend, concave and of a gradually increasing vertence, accident or mistake, he should fail concavity towards the cone, and that the ap- to claim any one of the described combinations, paratus may be supplied with an additional he may surrender the original patent and have deflector further to diversify the distribution a re-issue, not only for the combination or of the fibers, somewhat in the form of a hood, combinations claimed in the original, but for which is hinged to the end of the deflector any which were so omitted in the claims of nearest the cone, so that it can be moved by the original patent. a cord passing over a pulley or a lever actuated by an eccentric or a cam on a shaft. Guides are also provided on each side of the deflector, extending from the picker brush towards the cone to prevent the fur fibers from escaping laterally out of the proper influence of the currents which are traveling towards the cone, and which otherwise would go to waste, and also to prevent the fibers which are traveling towards the cone from being disturbed by lateral or foreign currents, not induced by the rotating brush or picker or by the exhausting of the cone.

No allusion, even, is made to the chamber or tunnel in describing the apparatus for guiding and directing the fibers thrown by the rotating brush or picker, except at the conclusion of the description, where the patentee states that, in the machine illustrated by the accompanying drawings, the bottom plate, top guides or deflector and side guides are all united along their edges, which is an express admission that it is the chamber or tunnel and its appendages in the original specification that performs all these functions, and that the description given in the re-issued patent is a new feature, describing devices different in form and with different names from the description given of the means to accomplish the same end in the original patent.

Differences so wide between an original and a re-issued patent, show that it was a bold measure to grant as well as to ask for such a re-issue. Examples of the kind, if any, it is believed, are very few in which such a re-issued patent has been granted where there is not 24*] a word in the original specification to support the theory that the patentee ever invented anything except his described combination, which, it is admitted, consisted of four ingredients, all of which were old. Complete description is given, in the original specification, of that combination, but the specification does not contain the slightest evidence that the patentee ever made any other combination than that which embodies the four described ingredients.

Cases arise where a patentee, having invented a new and useful combination consisting of several ingredients, which, in combination, compose an organized machine, also claims to have invented new and useful combinations of fewer numbers of the ingredients and, in such cases, the law is well settled that, if the several combinations are new and useful and will severally produce new and useful results, the inventor is entitled to a patent for the several combinations, provided that he complies with the requirement of the Patent Act and files in the Patent Office a written description of each of the alleged new and useful combinations, and of the manner of making, constructing and using the same.

He may give the description of the several combinations in one specification and, in that

Very different rules, however, apply in a case where the only invention described in the original patent is the one which includes all the ingredients of the machine, provided there is no suggestion, indication or intimation that any other invention of any kind has been made. Such a patentee as the one last mentioned, may subsequently discover that he can accomplish a new and useful result by a combination embracing less than the whole number of the ingredients *included in [*25 the prior patented combination, but he cannot secure the right and privilege of a patentee in the combination of the smaller number of the ingredients by a surrender of his first patent and a re-issue of the same which shall include the second combination as well as the first, because the re-issued patent, in that event, would not be for the same invention as the surrendered original. Vance v. Campbell, 1 Black, 428, 17 L. ed. 171.

Nor could that change be allowed under the present Patent Act for another reason, equally decisive, which is, that the description of the other combinations, beside the first, would constitute a new matter, the introduction of which into the specification of a re-issued patent is expressly forbidden by the 53d section of that Act. Such a prohibitory provision, it should be remembered, is new, and was not in force when the re-issued patent in suit was granted. 16 Stat. at L., 206.

None of the prior Patent Acts contained any such prohibition, but they all provided in terms that the re-issued patent must be for the same invention as the original, and that the inventor, before he shall receive a patent for his invention, shall file in the Patent Office a written description of the same and of the manner of making, constructing and using the same, in such full, clear, concise and exact terms as to enable any person skilled in the art to make, construct and use the invention.

as

Where the ingredients are all old, the invention, in such a case, consists entirely in the combination, and the requirement of the Patent Act that the invention shall be fully and exactly described, applies with as much force to such an invention as to any other class, because, if not fulfilled, all three of the great ends intended to be accomplished by that requirement would be defeated. They are follows: (1) That the Government may know what they have granted and what will become public property when the term of the monopoly expires. (2) That licensed persons desiring to practice the invention may know, during the term, how to make, construct and use the invention. (3) That other *in- [*26 ventors may know what part of the field of invention is unoccupied.

Purposes such as these are of great impor tance in every case, but the fulfillment of them is never more necessary than when such inquires arise in respect to a patent for a ma

chine which consists of a combination of old side guides mentioned in the specification of ingredients. Patents of that kind are much the re-issued patent, nor is it pretended that if more numerous than any other and, consequently, it is of the greatest importance that the description of the combination which is the invention should be full, clear, concise and exact.

the several devices named had been described in the original specification the description of these several devices would have been a good description of the chamber or tunnel and its appendages which are embraced in the invention secured by that patent within the meaning of the Act of Congress, which requires that the description shall be full, clear, concise and exact. Clearly it could not be, as it would not accomplish any one of the three great purposes before named as the purposes for which the description is required.

Patient search has been made in vain for any trace of the description of any other invention in the original patent, than that of the combination of all the ingredients of the apparatus described by the patentee as the one used by him to effect the described patent ed result. Unable to discover in that specification any description of any other invention Equivalents are, doubtless, allowed to a than that, the court is of the opinion that patentee or owner of the patent to [*28 none other was secured by the original patent. shut out infringements, but the Patent Act Argument to show that an invention con- furnishes no support to the theory that the sisting of a combination of three ingredients patentee may surrender a patent for an invenwhich are old is not the same as that of a tion consisting of a combination of old ingrecombination of four old ingredients is quite dients, and amend the descriptive parts of the unnecessary, as the negative of the proposi- specification by striking out the entire detion is as well settled in the patent law as it scription of one of the ingredients of the comis in mathematics. Vance v. Campbell [supra].bination and inserting in lieu thereof a full Four propositions were decided in that case description of several other devices without which have an important application to the any allegation that they are the equivalents case before the court: (1) That a patentee, of the one whose description is stricken out, in a suit for an infringement of an invention or any explanation whatever showing the consisting of a combination of old ingredients, reason why the change was made. cannot in his proofs abandon a part of such combination and maintain his claim to the rest, for the reason that unless the patented combination is maintained the whole of the invention falls. (2) That the patentee in such a suit cannot be allowed to prove that any part of the combination is immaterial or useless. (3) That the combination is an entirety, and that if one of the ingredients be given up the thing claimed disappears, which is an obvious truth, as the invention in such a case consists simply in the combination. (4) That the clause which provides that the suit shall 27*] not be defeated where the *patentee claims more than he has invented, in case he shall disclaim such part, applies only where the part invented can be clearly distinguished from that improperly claimed, which shows that the clause cannot apply to a patent granted for an invention consisting of a combination of old ingredients. Case v. Brown, 2 Wall., 320, 17 L. ed. 817; Burr v. Duryee, 1 Wall., 566, 17 L. ed., 656.

Whether one device is or is not an equivalent for another, is usually a question of fact, and often becomes a difficult issue to decide. Grave doubts were at one time entertained whether the patentee of an invention consisting of a combination of old ingredients was entitled to equivalents, but it is now well settled that he is, just as much as the patentee of any other class of inventions; but it is very important to understand what is meant by an equivalent of an ingredient in such a combination. Questions of the kind usually arise in comparing the machine of the defendant, in a suit for infringement, with that of the plaintiff, and the rule is that if the defendant omits entirely one of the ingredients of the plaintiff's combination, without substituting any other, he does not infringe, and if he substitutes another in the place of the one omitted, which is new or which performs a substantially different function, or even if it is old but was not known at the date of the plaintiff's patent as a proper substitute for Enough has already been remarked to show the omitted ingredient, he does not infringe. that all the principal claims of the original Carver v. Hyde, 16 Pet., 514; Brooks v. Fiske, patent recognize the chamber or tunnel and 15 How., 212; Stimpson v. R. Co., 10 How., its appendages as one of the primary ingredi- 329; Prouty v. Ruggles, 16 Pet., 341. By an ents of the patented invention, and it is abso-equivalent in such a case it is meant that the lutely certain that the specification of that ingredient substituted for the one withdrawn patent contains neither suggestion, indication performs the same function as the other, and nor intimation that the original patentee made any other invention to accomplish the described functions than the one which includes the whole four described ingredients.

Suppose that it is so; still it is insisted by the plaintiff that the plate, deflector and side guides which are described in the specification of the re-issued patent are substantially the same thing as the chamber or tunnel of the original patent, and that those devices taken together are legally to be regarded as the equivalent of the chamber or tunnel and its appendages as described in the specification of the original patent.

Even a glance at the original specification is sufficient to show that it does not contain any description whatever of the plate, deflector or

that it was well known at the date of the patent securing the invention as a proper substitute for the one omitted in the patented combination. Gould v. Rees, 15 Wall., 194, 21 L. ed. 41. Hence it follows that a party who merely substitutes another old ingredient for one of the ingredients of a patented combination *is an infringer, if the substitute [*29 performs the same function as the ingredient for which it was substituted, and was well known at the date of the patent as a proper substitute for the omitted ingredient; but the rule is otherwise if the ingredient substituted was a new one or performed substantially a different function, or was not known at the date of the plaintiff's patent as a proper substitute for the one omitted, as in that event

he does not infringe. Cliff., 504.

Roberts v. Harnden, 2, the new specification the description of an equivalent for the same, which is denied, still Inconveniences past estimation would result it is clear law that the substituted ingredient if those rules should be applied in defining the cannot be regarded as a legal equivalent, withrights of a patentee to make amendments to in the meaning of the Patent Law, unless it the specification of an original patent when performs substantially the same function as applying for a re-issue, as it would open the the ingredient withdrawn, and was well known door in every case to issues of fact whether as such an ingredient at the date of the origthe substituted device is or is not an equiva-inal patent and as a proper substitute for the lent for the one withdrawn, within the rules ingredient which was included in the patented defining what is meant by that term, which combination. issues of fact might be determined one way in one case and another and a different way in another case. Nor can those rules be applied in such a case consistently with the language of the section allowing a surrender and reissue, which is limited to the correction, of errors which have arisen by inadvertence, accident or mistake, nor without an utter disregard either of the condition that the re-issue shall be for the same invention as the original, or of the clause of the 26th section, which provides that before any inventor shall receive a patent for his invention he shall file in the Patent Office a written description of the same in such full, clear, concise and exact terms as to enable anyone skilled in the art to make, construct and use the same.

Substitution of one ingredient for another may, perhaps, be made in cases where it would be competent for the court to decide, as matter of law, that the ingredient substituted is an equivalent for the one withdrawn, as where a spring is substituted for a lever to produce power, or where a weight is substituted for a spring to produce pressure, but the court could seldom or never, in a suit at law, undertake to determine without a jury whether a particular 30*] ingredient *substituted in a re-issued patent was or was not known at the date of the original patent as a proper substitute for the one withdrawn from the combination described in the original specification.

Questions of the kind usually arise where it becomes necessary to determine whether [*31 the defendant is guilty of an infringement in case it appears that he has not used all of the ingredients of the patented combination of the plaintiff. Repeated decisions of this court have settled the rule in such cases that if the ingredient substituted by the defendant for the one left out in the defendant's machine was a newly discovered one, or even an old one performing some new function, and was not known at the date of the plaintiff's patent as a proper substitute for the ingredient left out, the charge of infringement cannot be maintained. Gould v. Rees, supra; Seymour v. Osborne, 11 Wall., 555, 20 L. ed. 42; Vance v. Campbell, 1 Black, 428, 17 L. ed., 171; Prouty v. Ruggles, supra.

Tested by these considerations, the court here is of the opinion that the judgment of the circuit court must be reversed for three reasons, as follows: (1) That the prayer for instruction presented by the defendant, that the re-issued patent is not for the same invention as the original, was improperly refused. (2) That the circuit court improperly refused to instruct the jury that the defendant did not infringe the plaintiff's patent unless the apparatus had the feeding device of the original patent in combination with the rotating brush or picker and the pervious cone and the chamber or tunnel described in the original specifiViewed in the light of these several sugges-cation. (3) That the circuit court erred in tions the court is of the opinion that it is not instructing the jury that the re-issued patent competent for a patentee, when he surrenders is valid as respects the fourth claim if the an original patent, to amend the specification for the new patent by striking out from the original the correct description of one of the ingredients of the patented combination, and to substitute in its place the description of other devices not well known at the date of the original patent as a proper substitute for the ingredient whose description is stricken

out.

2. Just the same considerations are involved in the second proposition, which, therefore, requires no further discussion, as it is fully maintained by the reasons given in support of the first proposition.

combination of the three ingredients therein mentioned is new and could be usefully employed for the purpose of facilitating the making of hat bodies, supplemented by any known means of guiding the fur in such a way as to bring the same, by the operation of these three devices, to the cone, so as to make a hat body. or if those three devices would make a hat body without the aid of other means of protecting the fur against escape.

Two errors are contained in that instruction, as follows: (1) It gives an erroneous definition of an equivalent for the ingredient of a combination consisting wholly of such as 3. Even grant that neither of the rules laid are old, as the substituted ingredient in such down in the two preceding propositions are a case must be one which was known at [*32 correct, still the court is unhesitatingly of the the date of the original patent as a proper opinion that the judgment in this case must substitute for the ingredient left out, which be reversed for the reason that the instructions latter qualification is entirely omitted in the given to the jury are erroneous, inasmuch as instruction given to the jury. (2) But the they do not correctly define the meaning of instruction is also erroneous because it would an equivalent as applied to the ingredients of allow a patentee to secure, in a re-issued patan invention consisting entirely of a combina-ent, inventions for combinations fewer in numtion of ingredients all of which are old.

Assume the theory that the patentee of such a patent, in effecting a re-issue, may strike out from the original specification the description of one of the ingredients of the patented combination and insert as a substitute therefor in

ber than the whole described in the original patent, though the original patent contained no description whatever of any such invention, in violation of the express provision of the Patent Act and of the decisions of this court. Judgment reversed with costs and the cause