The evidence leaves no doubt in our minds that the first claim of Moffitt's reissued patent is broader than any claim of his original patent. The original patent covered an elongated heelshaped former, set eccentrically upon its shaft. This was an essential part of the invention described in the original patent. The specification declares: 'I use a 'former,' A, of a shape adapted to give the desired shape to the counter, and set eccentrically on the shaft, B.' The 'former' shown by the drawings is elongated and heel-shaped in cross-section. The specification further declares: 'The 'former,' as will be seen, projects further from its axis on one side than on the other, so as to conform nearly to the general form of the curves of the inside of the shaped counter. This gives a rolling action in addition to the squeezing over the whole body of the counter.' The specification of the reissued patent omits both of these statements, and thus allows a 'former' to be made, if desired, with a circular cross-section, and to be set concentrically on its shaft. It is therefore clear that it covers a contrivance essentially different from that described in the original specification and claim.
The first claim of Moffitt's reissued patent differs materially from the specification and first claim of the original patent in another particular. The original specification thus describes the means by which the blank stock is pressed against the 'former:' 'Beneath the former I place a roller, C, having a profile, as shown, the converse of and conforming to that of the former, the shaft of the roller having its bearings in the main frame, D.' It is also stated that 'instead of a single roll a pair of auxiliary rolls may be used, as in figure 4, one on each side of the single one.' In the first claim of the reissued patent the device of one or three rolls is expanded to cover 'any mechanism for holding and shaping the blank over' the 'former.'
It therefore appears that the specification and first claim of the original patent was intended to cover an elongated heel-shaped former, eccentrically set upon its shaft, against which the material of which the counter was to be made was pressed by a revolving roller or rollers, and that the first claim of the reissued patent was expanded so that it might cover a 'former' circular in cross-section, concentrically set, and revolving in the semi-circular groove of a stationary mould, by which the material was pressed against the former.
The difference between the device covered by the specification and first claim of the original patent, and the device which might be embraced by the specification and first claim of the reissued patent, is essential and palpable.
If the evidence proves any infringement, it is of the first claim only of complainant's reissued letters patent, and that such infringement is by the use of the machine covered by the Cote patent.
The purpose of the complainant to cover by his reissued patent the invention described in the Cote patent is clear, and is not denied. It is evident that the Cote machine does not infringe the original patent of Moffitt. The 'former' described in the original specification of Moffitt being elongated in cross-section and eccentrically set upon its shaft, could not have either a rotating or reciprocating movement in the semi-circular grooved mould of the Cote patent, and by no stretch of construction could the stationary grooved mould of the latter patent be considered the equivalent of the cylindrical revolving rollers of Moffitt's original patent.
The specification and first claim of the reissued patent is a plain attempt to include a device which was not and could not be fairly covered by the original patent. That claim is, therefore, for that reason void. Gill v. Wells, 22 Wall. 1; The Wood-paper Patent, 23 Wall. 566; Powder Co. v. Powder Works, 98 U.S. 126; Ball v. Langles, 102 U.S. 128; Miller v. Brass Co. 104 U.S. 350; James v. Campbell, Id. 356; Heald v. Rice, Id. 737; Bantz v. Frantz, 105 U.S. 160; Johnson v. Flushing & North Side R. Co. 105 U.S. 539. And the evidence shows no infringement of any other claim of the reissued patent.
The decree of the circuit court dismissing the bill was therefore right and must be affirmed.
See S.C.. 8 FED. REP. 147.
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This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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