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presumed that it is for the same invention as the original until the contrary appears.5 In comparing the two specifications, the question is not what the inventor might have set forth in the original patent, but what he did set forth as his invention. Differences in the Description and the Claims are not material, provided the inventions are the same. That the invention claimed in the re-issue would not have been an infringement of the former patent affords no test, since such patent must have stood or fallen by its own Claims, and the re-issue is not limited to these. In construing the respective specifications, their Descriptions, drawings, and models are to be taken together, not separately, and the character of the invention gathered from them as a whole.8 Drawings omitted

That if the specifications of the reissue are consistent with those of the original, the re-issue is valid, see Thomas v. Shoe Mach. Mfg. Co. (1878), 3 Bann. & A. 557; 16 O. G. 541; Herring v. Nelson (1877), 14 Blatch. 293; 12 O. G. 753; 3 Bann. & A. 55; Stevens v. Pritchard (1876), 10 O. G. 505; 4 Clifford, 417; 2 Bann. & A. 390; Tucker v. Tucker Mfg. Co. (1876), 10 O. G. 464; 4 Clifford, 397; 2 Bann. & A. 401; La Baw v. Hawkins (1874), 1 Bann. & A. 428; 6 O. G. 724; Chicago Fruit House Co. v. Busch (1871), 2 Bissell, 472; 4 Fisher, 495; Carew v. Boston Elastic Fabric Co. (1871), 3 Clifford, 365; 5 Fisher, 90 ; 1 O. G. 91; Sickels v. Evans (1863), 2 Fisher, 417; Clifford, 203; and cases cited in § 684, note 2, post.

prudent to disturb the present harmony of the law by the introduction into its authoritative statement of the new views which may safely be expounded and discussed in the notes.

That in comparing the re-issue with the original patent, the question is not what the inventor originally intended to patent, but what did he in fact invent and try to patent, see American Wood Paper Co. v. Heft (1867), 3 Fisher, 316.

That the question is not how the original might have described the invention, but how it did describe it, see Hammond v. Franklin (1885), 23 Blatch. 77; 22 Fed. Rep. 833; 30 O. G. 1324. 7 That if the inventions are the same, differences of description are immaterial, see cases cited in § 668, notes 1, 2, 3, ante.

That if the description, drawings, and model of the re-issue are identical with those of the original, the re-issue is valid though the Claims may differ, see Black v. Thorne (1872), 5 Fisher, 550; 10 Blatch. 66; 2 O. G. 388; and cases cited in § 668, notes 5, 6, 7, ante.

In this paragraph, and in the text generally, the doctrine that a re-issue is presumed to be for the same invention as the original until the contrary appears is adhered to, notwithstanding the apparent change of position in the later cases in the Supreme Court as indicated in § 664, note 2, ante. So many subordinate rules as to the construction of specifications, the burden of proof, etc., etc., have grown out of the former doctrine that it has not been considered

8 That the identity of the re-issue with the original is ascertained by comparing their drawings and specifications as a whole, not separately, see Searls v.

from the original patent by mistake may be inspected, and the model, as first filed in the Patent Office, may be examined.9 A dilapidated model may be aided by evidence disclosing its primitive condition, if not inconsistent with the drawings and Description; 10 and when a feature claimed in the re-issue is absent from the specification and drawings, the model will be presumed to contain it unless the model is produced. Where the model is lost, and the drawings are said to be incorrect, no change can be permitted in the latter to cure the defect, except upon the most conclusive evidence that the invention, as presented in the model, would have justified the change.12 In any doubt as to the scope of the re-issue specification the files of the re-issue application may be resorted to for its solution.13

Worden (1882), 21 O. G. 1955; 11 Fed. sufficient basis for a new Claim in a reRep. 501.

That the drawings and model originally filed may be examined in reference to the identity of the re-issue with the original, see Johnsen v. Beard (1875), 2 Bann. & A. 50; 8 O. G. 435.

That the identity of the original and re-issue may be shown by the original drawing or model, or by some part of the drawings which, by mistake, was omitted from the one shown in the original patent, see Ex parte Baldwin (1876), 9 O. G. 639.

10 That where a model is lost or destroyed it may be established by parol, see Meyer v. Goodyear's India Rubber Glove Mfg. Co. (1881), 22 O. G. 681; 11 Fed. Rep. 891; 20 Blatch. 91.

That a dilapidated model may be aided by evidence showing what it once was, if not inconsistent with the original specifications and drawings, in order to support a re-issue, see Aultman v. Holley (1873), 11 Blatch. 317; 6 Fisher, 534; 5 0. G. 3.

That the Office model alone is not

issue, changing the character of the invention originally patented, see Flower v. Detroit (1888), 127 U. S. 563; 43 O. G. 1348.

11 That where the specifications and drawings of the original do not show the feature claimed in the re-issue, only the inspection of the model can determine the matter, and if the model is not produced it will be presumed to contain the feature, see Hendy v. Golden State & Miners' Iron Works (1883), 17 Fed. Rep. 515; 8 Sawyer, 468.

12 That where the original model is lost and the drawings are said to be incorrect, the court should not change the position of any part represented in the drawing, except upon the clearest proof, see Royer v. Russell (1881), 20 O. G. 1819; 9 Fed. Rep. 696.

18 That the files of the re-issue application may be examined to show the scope of the re-issue, see Hopkins & Dickinson Mfg. Co. v. Corbin (1881), 103 U. S. 786; 20 O. G. 297.

§ 681

See also §§ 665, 666 and notes, ante.

§ 682. Identity of Subject-Matter of a Re-issued Machine-Patent,

how Determined.

In the case of a machine-patent, the identity of the re-issue with the original is determined by the application of a stricter and more conclusive test. A machine is an organism composed of physical parts so arranged as to operate in accordance with a pre-determined structural law. It is capable of exact representation in a drawing or series of drawings, and of equally exact reproduction in a model. Whatever may be the difficulties which attend its verbal description, the failure to indicate its essential parts and their method of arrangement by means either of the drawing or model cannot result from inadvertence, accident, or mistake. If not fraudulent, such failure would at least be evidence that the inventor did not comprehend the invention which he had undertaken to secure, and therefore could not be entitled to a patent. Hence the propriety of the rule that in a machine-patent the identity of the re-issue with the original is to be ascertained by comparing the models and drawings with each other, and that nothing can be embraced in the re-issue which is not found either in the models or the drawings annexed to the original patent. This rule works no hardship to the inventor, since his original patent protects all equivalent parts and arrangements of parts which can be organized under the same structural law, and at the same time it avoids the danger that through some alteration in the parts or their arrangement, as shown in the original drawings or model, a variation in the structural law might imperceptibly be made, and thus a new machine be claimed by the re-issue.

§ 683. Identity of Subject-Matter of the Re-issued Patent, how Determined when the Invention cannot be Represented by Drawings or Model.

In cases where the invention is incapable of representation by a model or by drawings, necessity requires that this question of identity should be settled by such methods as are most available. Language even at its best is ambiguous, and to compel the inventor to abide by the construction which might be put by others on his words alone, would often deprive him

of the most important fruits of his inventive skill. In determining the nature of the invention indicated in his original specification, and attempted to be covered in his original patent, the disadvantage under which he labors through the impossibility of interpreting his verbal description by pictorial or material representations is overcome, in the hearing on his application in the Patent Office, by permitting him to offer extrinsic evidence as to the true character and attributes of the invention which he has undertaken to describe. The

different invention, however satisfactory it might be in showing that the same was within the knowledge of an applicant at the time of applying for his original patent, could justify the Office in allowing its introduction therein by re-issue. To the extent of correcting such errors and omissions as are sometimes supplied by consulting the model and drawing filed with an original application, the clause of the statute under consideration, I think, clearly obtains. It might permit, for instance, of the consideration of all original papers filed in the case, and such other evidence of official action from which the intentions of the parties could be discovered or their rights determined. This prac tice was illustrated in the case of WinsIt low, 9 Official Gazette, 795, where the patent had been passed upon by the United States Supreme Court, and certain matter was held not to be a part of the patent, but where the Office considered the decisions of inferior courts, a dissenting opinion in the court above, together with numerous affidavits, including one from an examiner in the Patent Office, as showing clearly the fact that the applicant had made the invention and had intended to incorporate the same in his patent and believed that he had done so. No doubt existed in that case as to what the appli cant's original invention was, as shown by the records of the Office and the testimony of others relating thereto;

§ 683. 1 In Ex parte Dieckerhoff (1877), 12 O. G. 429, Doolittle, Act. Com. (430) "The first part of section 4916, requiring that no new matter shall be introduced into the specification, plainly refers to those cases accompanied by drawing and model; and, as was held in Seymour v. Osborne, this provision necessarily excluded the right in such cases to open the case to new parol testimony; but the express declaration, in the concluding clause of the section, that where there is neither model nor drawing amendments may be made upon proof satisfactory to the Commissioner that the proposed new matter or amendment was a part of the original invention, establishes a class of certain special cases, as the Supreme Court in the same case admitted. gives to such applicants the privilege of submitting proof as to matter not embodied in the original patent, and permits the exercise of discretion on the part of the Commissioner in the consider ation of such proof. Construing the whole of section 4916 together, as it should be, and keeping in mind the only real and lawful purpose of a re-issue application, to correct accidental mistakes in the original specification and drawing, there is nothing in the last clause, nor any previous one, to authorize a depart ure from the original invention, and the setting up in a re-issue of a substantially different invention. No amount of proof regarding an entirely

sources and the weight of this extrinsic evidence have not been definitely fixed by law. The statutes merely provide that in this class of cases the proof, upon which any matter omitted from the original specification may be regarded as a part of the original invention, must be satisfactory to the Commissioner, and under this provision papers filed in the Patent Office in connection with the case, and other evidence of official actions, have been received.2 But, upon principle, no evidence should be admitted inconsistent with the original specification, drawings, and model. To allow a re-issue for an invention of which no suggestion appears in the original specification, upon parol evidence alone, sets the whole question at large, and opens the door to the perpetration of the gravest frauds upon the public.3

§ 684. Identity of Subject-Matter of the Re-issued Patent Presumed until the Contrary Appears: Re-issued Patent,

how Construed.

The invention claimed in a re-issue is presumed to be identical with that attempted to be patented in the original,1 and

and that it was not definitely set forth and claimed was clearly an inadvertence that could be supplied by the character of proof mentioned. But I am aware of no decision of the Office or the courts which would justify a radical departure from the invention originally indicated or described by means of entirely extraneous proof."

In Hussey v. Bradley (1863), 2 Fisher, 362, Hall, J.: (371) “But it is well settled that in deciding upon these applications for a re-issue and the question whether the invention claimed on the re-issue is the same invention intended to be patented on the original application, the Commissioner of Patents is not confined to the Claims, nor even to the examination of the evidence furnished by the specification, models, and drawings accompanying the original application; and that any legal proof to show it to be the same

invention should be received. Ex parte
Ball; Ex parte Dyson; and Wilson v.
Singer; Law's Digest, 620-622." 5
Blatch. 134 (141).

2 That the original papers filed in the Patent Office, as well as other evidence, may serve to show whether the inventions are the same, see Ex parte Dieckerhoff (1877), 12 O. G. 429.

8 As to the mode of investigating this question of identity in the courts, see § 664, note 2, ante.

§ 684. 1 In Spaeth v. Barney (1885), 22 Fed. Rep. 828, Colt, J.: (829) "The re-issue of letters-patent by the Commissioner is prima facie evidence that such re-issue is founded on sufficient cause, and is in accordance with law. It is also presumed that the Commissioner acted within his authority under the statute, until the contrary is proved." 30 O. G. 997 (997).

Further, that the allowance of a

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