vertical diaphragm extending around between them a short distance inside of the flanges, forming an annular chamber between the diaphragm and flanges, all held together by a bolt and nut in the center of the plates, with an aperture leading from the feeding tube below, through the lower plate, each side of a bar left across for the bolt, so as to pass the air and gas upward through the tube and lower plate into the space between the plates, thence laterally in all directions through the diaphragm into the chamber outside of it, and thence in an unbroken sheet horizontally through the aperture between the flanges to the flame, thus supplying a continuous flame all around the edge of the upper plate and effecting thorough combustion of the gas.

In the specification of his patent he described the whole of this ar rangement, set forth the nature of his invention as consisting in forming a chamber in the burner between the perforated diaphragm and the external opening, and in the employment of a vertical diaphragm in combination with an annular opening around the same; and the claim was the combination of a vertically-arranged diaphragm with the external annular opening, as therein shown. The specifications of the reissue are not materially different from those of the original, but the claim is very much enlarged. It is expanded into two. The first is the combination of the outlet, the perforated diaphragm, and the chamber intermediate between the diaphragm and outlet, substantially as described. The second is substantially the same as the claim of the original patent. Had there been no burners for gas-stoves before, or none with a perforated-diaphragm chamber between that and the outlet and outlet beyond, he would have been entitled to hold this whole arrangement free from nvasion; but as there were burners having all these elements, arranged n the same order, although of different form and capacity, he was entitled only to his particular form of devices which were really different from those which had been in use or known before and the combinations of those devices with each other or with others, so as to produce a new result or an old result in a new way. Railway Company v. Sayles, 97 U. S., 554. He had a new form of diaphragm, a new form of chamber between it and the outlet, and a new form of outlet to the flame. He was entitled to these forms and to his combination of them, but not to the forms of others or to their combinations.

Since this suit was brought he has filed a disclaimer to every burner described in the first claim except those constructed of the two plates bolted together by the bolt and holding a perforated diaphragm between them.

If the patent should be construed broadly enough to cover all forms of diaphragms, mixing chambers, and outlets, separately or in combination, it could not be sustained at all without something to cut it down to the particular devices and arrangement of Kelly. The bolt is no part of the combination of either claim. It is used in the construction of this particular form of burner, and the reference to it in the disclaimer

is merely descriptive of that form, without taking away or adding anything. So of the plates holding a perforated diaphragm between them. In this construction they hold a vertical diaphragm between them. If the patent will cover any other form of diaphragm held between them, the disclaimer does not disown the other form; if it does not, the disclaimer will leave this particular form. So in either case the disclaimer leaves the whole where it was before, and the reissue is to be looked at as if no disclaimer had been filed.

As there is nothing described in the reissue that was not described in the original patent, either as to devices or nature of the invention, it cannot be said that the invention in one is different from that in the other, although the claims attempting to cover the invention are so different. The reissue is therefore as valid as the original would have been if it had been the same as the reissue.

Construed in the light of the things which existed before, it will cover the new form of devices invented by Kelly and their arrangement, and those only-the two plates with flanges, the continuous aperture between the flanges, the vertical diaphragm, and the annular chamber between the diaphragm and flanges. The patent seems to be good for these.

The defendant uses two plates bolted together as Kelly's are, the lower one without any upturned flange, the upper one with projections downward around the edge for distance-pieces, between which and the lower plate the diaphragm is held.

This is not the combination of either claim of the plaintiff's patent. The vertical diaphragm and the annular chamber are wanting. Still the defendant has appropriated a part of Kelly's invention. He has taken the two circular plates held together by a bolt at the center, made projections on the upper in place of the flange, with spaces so as to permet an outward flow of gas that will unite into a continuous sheet of flame on the outside and against the edge of the upper plate, accomplishing the same result as Kelly. The changes in the form of the plates are circumstantial and not material, made necessary by the change in the location of the diaphragm, and not on account of any new function or mode of operation given them.

Generally, where a patent is for a combination of known parts, materials, or elements, it is not infringed by the use of any number of the parts, materials, or elements less than the whole, for the patent in every such case is for that identical combination, and nothing else, and a combination of any less number of parts is a different thing. Prouty v. Ruggles, 16 Pet., 336. But where some of the parts of the combination are new, and those parts are taken and used in the same manner, but with different things from the rest of the combination patented, a part of the patented invention is taken, although the whole is not, and it is an infringement to that extent. Sellers v. Dickinson, 6 Eng. Law and Eq., 544; Union Sugar Refinery v. Matthieson, 2 Fish., 601. Here the horizontal plates, bolted together in the center, with a diaphragm be

tween them, were altogether new for this purpose. They formed a suitable chamber for the mixed gas and air after they had passed the diaphragm and an external outlet, useful in form and location. The defendant has appropriated these new parts to the same use by connecting them with the horizontal diaphragm and other devices to accomplish the same result as Kelly's combination, although the other devices are different from Kelly's. This is an infringement to that extent. Johnson v. Root, Curtis on Pat., sec. 332, note; Newton v. Grand Junc. R. W., 6 Eng. Law and Eq., 557.

It is said that fastening horizontal plates together in the center by a bolt and nut, as these are, was old and well known before Kelly's invention, which is doubtless true; but it was not a known method of forming a head for a burner to a gas-stove to make use of such plates. The object was not to fasten the plates together. It was to make a chamber for the inflammable mixture after it had passed the diaphragm, and to provide a suitable outlet for it to the flame, so as to burn all around the top of the burner. These plates fastened in that way Kelly discovered would furnish the required chamber and an outlet for an unbroken sheet of the inflammable material, which was most desirable for the purpose. He patented that discovery in all its parts, and is entitled to the protection of it which the law affords.

As the plaintiff filed his disclaimer after suit was brought, he would not ordinarily be entitled to any costs in the suit. Rev. Stats. U. S., sec. 4922. But in this case the disclaimer was not necessary to sustain the patent to the extent it is held valid, was inoperative, in the view taken of it, upon the patent, and has had no effect in maintaining the suit. Under these circumstances it does not come within the provisions of the statute denying costs, and no reason is apparent why costs should not be allowed as if nothing had been done about a disclaimer.

Let a decree be entered for an injunction and an account accordingly with costs.

[United States Circuit Court-Southern District of New York.]

TIFFT v. SHARP ET AL.

Decided May 8, 1880.

17 O. G., 1284.

1. The invention covered by Reissue No. 7,077 to E. J. Caldwell is so restricted by the state of the art as to embrace and be infringed by only the exact structure claimed and described.

2. The annular series of perforations are more numerous in the patented device than in others, but to make them thicker if they were needed thicker was mere workmanship, not invention.

Mr. B. F. Lee for the complainant.

Mr. A. v. Briesen for the defendants.

WHEELER, J.:

This suit is brought for an alleged infringement of Reissued Letters Patent No. 7,077, to the plaintiff, assignee of Elijah J. Caldwell, for an improvement in gas-stoves. Among other defenses the defendants deny infringement.

The patent has four claims, the first, second, and fourth of which only are claimed to be infringed. All of them are for combinations of parts. The combination of the first claim is of a perforated diaphragm through which air and gas pass and become mixed, a chamber between the diaphragm and outlet, and an annular outlet consisting of a series of perforations, through which the material passes from the burner. That of the second claim is of a gas-supply pipe, an air-cylinder, a perforated diaphragm above them, through which the air and gas pass, a cap above the diaphragm, and an annular outlet below the top of the cap; and that of the fourth claim is of a laterally-projecting flange overhang. ing the outlet with a burner containing the parts mentioned in the other claims.

From all the evidence in the case it satisfactorily appears that none of these parts by themselves were new to these purposes except the lat erally-projecting flange. The perforations of no annular series had been placed so closely together probably as Caldwell placed them; but such series had been made before, and it was mere workmanship, not invention, to make them thicker if they were needed thicker. Perhaps the combination of the flange around the top with the rest of a burner made a new burner and a new combination in a burner, so as to be patentable; but if so the patent would properly cover only the precise form of burn er so made, including the flange, and the flange itself as a part of the patented combination or patented burner. Hence the patent would not be infringed but by that exact form of burner throughout or by such a flange with some other form of burner. Sharp v. Tifft, So. Dist. N. Y., Oct. Term, 1879. The defendants are not shown to have used either that form of burner or the flange with any other form. Therefore the patent cannot be upheld to an extent broad enough to make what they have done an infringement.

Let the bill be dismissed, with costs.

[United States Circuit Court-Southern District of New York.]

MATTHEWS v. LALANCE AND GROSJEAN MANUFACTURING COMPANY. Decided April 28, 1880.

17 O. G., 1284.

1. Where a bill brought upon five several letters patent for distinct inventions charges the defendant with infringement by making certain structures, each containing inventions contained in each of the patents, and a plea is filed denying that each structure embodied inventions claimed in each of the patents, and issue is joined

and proofs taken, the bill will not be dismissed upon showing that two of the patents were not infringed. Such plea amounts to no more than a denial of an allegation of the bill, and upon the issue as to such allegation, whether raised by plea or answer, the plaintiff can recover, even though defendant's structure embodied in it the inventions covered by only one, two, three, or four of the patents. 2. Even though the facts stated in such plea were found for the defendant, the proper disposition of the case would be to overrule the plea as bad in substance.

Mr. A. v. Briesen for the plaintiff.

Mr. B. F. Lee for the defendant.

BLATCHFORD, J.:

This bill is brought for the infringement of five several letters patent. The bill alleges that the defendant made, used, and vended to others to be used "soda-water and other fountains, each made according to and employing and containing the inventions described and claimed in each of the above-named letters patent and reissued letters patent." The defendant put in a plea to the bill. The plea sets forth that the bill is brought for the infringement of five separate letters patent (designating and identifying them as the same which are set up in the bill), "all of which said letters patent are for separate and distinct alleged inventions" (a fact which the bill shows)—

Which several alleged inventions are not in point of fact connected together in use or operation, and are not in point of fact conjointly embodied in any of the soda-water and other fountains manufactured, used, or sold by this defendant, so that the said plaintiff, by his single bill of complaint aforesaid, seeks to compel this defendant to uaite five separate and distinct defenses depending severally upon distinct and different proofs, so as to complicate the defense and embarrass this defendant in its answer to the said bill of complaint, and that it is not true, as alleged in said bill, that the said defendant has made, constructed, used, and vended to others to be used soda-water and other fountains, each made according to and employing and containing the inventions described and claimed in each of the above-named letters patent and reissued letters patent.

The plaintiff put in a general replication to the plea, in the form of the usual general replication to an answer, substituting the word "plea" for the word "answer." Both parties have treated the putting in of this replication as taking issue on the plea, within the meaning of Rule 33, in equity, and have taken proofs on the question as to whether a certain structure made by the defendant contains mechanism covered by a claim or claims in each of the five patents sued on. The testimony for the plaintiff is addressed to establishing the fact that each of the five patents is infringed by such structure. The testimony for the defendant ignores three of the patents, and is addressed to establishing the fact that two of the five patents are not infringed by such structure. The case has been heard on these pleadings and proofs. The plaintiff asks for a decree overruling the plea, with costs, on the ground that the defendant's structure infringes each of the five patents, and granting the injunction against infringement which the bill prays for, and refusing to the defendant leave to answer the bill. The defendant asks that the bill be