Argument of counsel.

Messrs. George S. Boutwell and Henry F. French, for appellants.

Their invention, if valid for anything, is valid only to the extent of the claim in their original patent.

The Davidsons were not the inventors of elastic tubing, for Herman E. Davidson admits its existence and his knowledge of it at the time when he claims to have begun his periments.

Nor were they the inventors of an elastic bulb or chamber, for these are shown in different forms in defendant's exhibits "D," "C," "H," "B," and "I," and in complainant's exhibit “17.”

They were not the inventors of the valvular arrangement: for this is shown in many of the exhibits.

They did not invent the spheroidal form of an elastic bulb; for that is described as old by Herman Davidson.

Nor did they invent "a syringe having an elastic sac with flexible tubes terminating in valve boxes containing valves arranged for the purpose of eduction and ejection when the sac, tubes and valve boxes are in or nearly in the same axial line," for these devices, with precisely the same arrangement, are shown in the barrel syringe.

Nor were they the inventors of a syringe having an elastic bulb or chamber, flexible tubes and a suitable valvular arrangement; for both the Thiers syringe and the barrel syringe fall within this description, which is the substantial part of, and is quoted from, the claim in the reissued patent.

The reissued patent claims "a syringe having an elastic bulb or chamber, flexible tubes and a suitable valvular arrangement when organized, so as to operate substantially as described."

It cannot be claimed that any single element of the instrument is new. Every part is old. The claim is substantially, if not technically, for a combination. It is the arrangement or organization which is claimed as new and useful.

Argument of counsel.

If the fair and natural construction of the reissued claim includes any syringe of which the Davidsons were not the original and first inventors, then the claim is broader than the invention, and so is void.

We submit that such construction clearly includes both the Maw and the Thiers syringe.

The original claim describes a bulb in the words, "prolate spheroidal shaped elastic sac." The word "chamber" was not there. It was not in the caveat, and it was used in the reissued claim with a purpose and meaning.

It is in no sense a synonym with bulb. Every bulb is a chamber, but a chamber is not necessarily a bulb,

Unless the court can say that chamber means nothing more than bulb, the claim is broader than the invention, when construed in reference to the Maw syringe.

The drawings are part of the description, and it may be said that the claim is only for a syringe with bulb or chamber tubes and valves, organized in the particular manner shown in the drawings.

Now, the drawings in the reissue are the same as in the original patent, and show the tubes and bulb in the same axial line.

But the complainants are compelled to go further, and say that their reissue covers not only the form shown in their drawings, but all other forms where the same parts are organized so as to operate substantially as described;" using the word "operate" in the sense to produce effect. This, we submit, is not a fair construction.

The word operate relates to the mechanism of the syringe, not to the final result of its use.

In this sense all modern syringes operate alike. They not only inject fluids, but they do so by means of pressure upon elastic chambers, through flexible tubes and valves.

If this is what is meant by operating as described, then the claim is too broad, as including the old Maw and Thiers Syringes already exhibited.

The original patent was neither "inoperative" nor "in

Argument of counsel.

valid," nor was the specification defective or insufficient, and the reissue was, therefore, without authority of law. Burr v. Duryee, 1 Wall. 531 [7 Am. & Eng. 224]; Case v. Brown, 2 Wall. 320 [7 Am. & Eng. 360].

The patent is wholly void, as well for the invention claimed in the original patent, as for the broader claim found in the reissued patent, because syringes containing all that is claimed as the invention of the Davidsons were known and used in this country long before their alleged invention.

The syringe made by the appellants is a combination of old parts, substantially different from the Davidson syringe in structure and effect.

1. Our bulb is not their bulb, but different in this, that ours has but one aperture, while theirs has two.

2. The arrangement or organization differs in this, that in ours the fluid in the bulb is above the point of delivery, and we have gravity to aid in expelling it; while in theirs one-half of the fluid is below the center of the bulb.

3. Ours has a three-way piece not found in theirs, and which cannot be used with theirs.

4. Ours is so constructed as to receive other pipes for various purposes.

These differences, we submit, constitute ours a different instrument, different in its combination of parts and different in its mode of operation.

The principles involved in the discussion are too familiar to the court to require particular statement. McCormick v. Talcott, 20 How. 405 [6 Am. & Eng. 410].

That the complainant is limited to the peculiar combination of devices invented and described, is well settled. Case v. Brown, 2 Wall. 320 [7 Am. & Eng. 360]; Burr v. Duryee, 1 Wall. 531 [7 Am. & Eng. 224].

Messrs. B. R. Curtis and Causten Browne, for appellee. The original patent, the application for which was filed April 2, 1856, shows, in the description and drawing, iden