bution of the fibers on the perforated cone or other former, as described. And I also claim a hinged flap for the purpose of regulating the delivery of the fibers to increase the thickness of the bat, where more strength is required, etc." The fourth claim, construed as it was by the court below, to wit: as excluding the trunk and all its parts from the combination, is not sustained by any description of the invention in the specification.

The only accounts given in the specification of the character of the invention, so far as it relates to machines for forming bodies, are found on the record, where it is stated in substance that:

"One of the leading features of the invention consists in combining with a rotating brush or picker, and a rotating, pervious, exhausted cone, a means whereby the requisite greater quantity of fur thrown by the picker toward the cone is caused to lodge upon the cone at the required distance from its base, to make the band of the hat body of the required thickness;" which " means" is stated to be the "bottom guide."

cation says the invention does produce, and excludes from the combination the peculiar feature of the machine, which the patentee describes as being the means by which, as a part of the combination, is produced the result, which is the fruit of the invention.

The claims in the original Wells patent are clear and explicit, as to the tunnel, and as to the hood and flap.

What is described and claimed is, in form and function, entirely different from the tunnel or chamber with its hood and flap described and claimed in the original.

The learned counsel for the plaintiff in Burr v. Duryee (68 U. S., XVII., 653), defined Wells' invention, as described in his original patent, to consist of three parts in combination. 1. The tunnel or chamber. 2. The perforated cone or former. 3. The picker or brush; and they say he regarded this combination of leading and essential parts as constituting the substance and essence of his invention of the machinery.

Although in the original, the honest, intelligible phrase, "tunnel or chamber," is found twelve times in the specification, it is not once found in reference to the invention described in this re-issue.

"The combinations of machinery invented by the said Henry A. Wells, have such a mode of operation that any given weight of fur which is placed on the feed apron will be delivered On this seventh statement of the invention, onto the pervious cone, so that any number of after twenty two years' deliberation by Mr. separate batches of fur, separately weighed and Keller and his clients, the words which had separately placed on the feed apron, will be been first chosen to describe the thing constructformed into bats suitable for hat bodies, cor-ed, and which the Supreme Court had adopted responding in weight and number with the sev- as the most apt phrase to define the great chareral batches of fur, and the fur fibers will be acteristic feature of the invention, was studiousdirected and controlled from the rotating, pickly omitted, and the words "plate, guide, de ing and disintegrating brush and picker to theflector," adopted in their stead. exhausted pervious cone or former, so as to be deposited and distributed thereon of equal thickness in the direction * * * and of unequal thickness in the direction, of the length as required, that the hat body may be made of the required strength, with the least weight of fur, that is, thick for strength at and about the band, and thin along the crown and tip."

Now, it is obvious that the combination of the parts named in the fourth claim, the apron, picker and exhausted cone, without the aid of any other part of the machine, will not produce the result thus described. It will not deposit the whole quantity of the weighed fur upon the cone, and will not properly distribute what it does deposit. The patentee does not claim that it will, and goes on to describe the "means" by which the fibers of fur are "guided and directed to be properly distributed," as being the bottom guide, top guide and side guides, which make up the trunk in the Wells machine.

The patentee is so well aware that these "guides," the trunk, are essential features of the Wells invention, that she says:

"In machines, in which the fibers are not properly directed, but are drawn to the surface by the action of the exhaust, the force thus induced gradually decreases as the apertures on the cone are closed up by the accumulation of the fur deposited on the outer surface thereof, and in consequence the required distribution cannot be obtained with certainty." The construction given to the fourth claim by the court below, gives the defendant in error a patent for a combination which has no power to produce the results which the specifi

The object of this change is perfectly obvious. Boyden & Gill had machines in operation, in which there was no device in form or substance like that shown or described in Wells' original patent. They had no tunnel or chamber or hood or flaps, with any such functions as those of Wells.

Gill, as well as Boyden, had some guides and directors, as Williams and Fosket had, before Wells' invention, and to gain some pretense for crushing these rivals, they obtained this reissue.

The complainants now seem to claim that any hat forming machine which had in it anything which guides the fur between the picker and cone, infringes their patent. If it have a top board or a bottom board or a side board, which in any way conducts the fur or in any way controls it, that is an infringing device, without having in it the other parts of the tunnel or chamber. And under the 4th claim, they claim that the defendants infringe without any guides whatever.

In each of the first three claims, a distinct and independent function is claimed for the top, the bottom and side guides, not in combination with each other, as forming an inclosed trunk, but as separate devices that may operate independently, and be infringed by the use of either alone.

There is not a word in this specification that refers in any way to the combination of these plates and guides into a tunnel or chamber, and there was not intended to be.

The trunk was discarded bodily, in name and description, and so thoroughly was "the

great characteristic" of the Wells' machine ex- | in the re-issue than the hood. We have above punged from the patent that no allusion to such a device is to be found in it.

To patch up a sort of relationship between the original and the re-issue, and to account for the great feature in the drawing which is ig nored in the re-issue, the following clause is in serted:

"In the machine illustrated by the accompanying drawings, the bottom plate, top guides or deflector, and side guides, are all united along their edges."

But there is in the re-issue no suggestion that such a union is essential, or even desirable, nor is there any allusion in the claims to any such union or relation of the various plates and guides.

The form of the aperture of the trunk, which in the original formed so distinct a feature, is entirely lost in the re-issue.

The tunnel in the original was at its outlet made to assume a shape nearly corresponding to a vertical section passing through the axis of the cone, but narrower, etc.

quoted the description of it in the original. In the re-issue it is thus alluded to at the close of the elaborate description of the plate which is at the bottom:

"And with a view to facilitate distribution, the plate is made in two parts, with the part beyond the supporting screw and nearest the cone, hinged to the other part and provided with a cam and lever, or other equivalent device."

Thus, the hinged flap, so distinct a feature of the original chamber, is absorbed into the bottom plate or guide, and becomes a useless part of it.

Our conclusion upon this view of the case is, that the re-issue is for a different invention from that shown in the original patent, and so is void.

"Re-issued letters patent must, by the express words of the section authorizing the same, be for the same invention, and, consequently, where it appears on a comparison of the two instruments, as matter of law, that the re"Its top is gradually elevated and sides con- issued patent is not for the same invention as tracted to make the delivery aperture nearly that embraced and secured in the original patof the form of the cone, but narrower and high-ent, the re-issued patent is invalid, as that er." state of facts shows that the commissioner, in granting the new patent, exceeded his jurisdiction"

There is nothing whatever in the re issue that indicates that the fur is deposited on a vertical section of the cone; nothing to indicate that it is not deposited on all parts of the cone at once, as in the Gill machine.

Indeed, the re-issue negatives the idea that the aperture is of the form of the cone at all, and there is nothing in the drawings that indicates that the aperture is not as wide at the top as at the bottom. The reasons given in the reissue for placing the side guides further apart at the picker than at the outlet are, that by this arrangement a much longer picker may be used and so a greater amount of fur may be thrown. We have quoted already a part of the description of these attachments to the tunnel or chamber, and shown that they were relied on exclusively to diversify the fur in thickness.

Clifford, J., Seymour v. Osborne, 11 Wall., 544 (78 U. S., XX., 38); Sickles v. Evans, 2 Cliff., 203; Cahart v. Austin, 2 Cliff., 528.

The great and peculiar characteristic of the Wells invention, the chamber or tunnel as described and shown in his original patent," is not described in the re-issue, upon any possible construction of it; because,

1. "The devices for guiding the fur fibers " are described and claimed as separate and distinct from each other, and not as parts of an entire chamber or tunnel.

2. Because the form of the fur current, as it strikes a vertical section of the cone, is an essential element in the original patent, and is not indicated in any way in the re-issue.

Although in the re-issue specification the 3. Because the hood and flap described in the hood is alluded to as "an additional deflector," original were wholly relied upon to vary the yet in the claims it is entirely ignored as a sep-distribution of the fur on the cone, and are igarate device, and is omitted or absorbed into the top or "guide and deflector for directing the fur fibers on the tip and upper part of the cone," as set forth in the second claim.

The re-issue says: "There is an upper guide or deflector" which, in the drawing, represents the top of the tunnel.

"And still further to diversify the distribution of the fibers, an additional deflector, somewhat in the form of a hood, is hinged to the end of the deflector nearest the cone.

But one "guide or deflector" is described in the second claim, and it is said to be "For directing the fur fibers onto the tip and upper part of the cone." Is the top of the trunk omitted, or is the hood omitted, or are they merged into one guide or deflector?

In either view, no such guide or deflector is found in the original patent. The tunnel is a closed, rigid trunk, and the hood is an adjunct to it, having a peculiar function as an element of it.

The hinged flap, which forms, in the origi nal patent, so distinct a feature, fares even worse

nored in the re-issue, and their functions, as claimed in the original, are ascribed "to the bottom plate or guide," and to the top or "guide and deflector.'

4. Because the 4th claim omits entirely any trunk, guide or deflector, and everything that can imply them.

The combination of an apron, picker and cone, with a trunk interposed, is not infringed by the use of a combination of less than all the parts.

Where three elements are claimed in a patent combination, the use of two of the elements only does not infringe the patent.

Gould v. Rees, 15 Wall., 187 (82 U. S., XXI., 39).

"Where the defendant, in constructing his machine, omits entirely one of the ingredients of the plaintiff's combination, without substi tuting any other, he does not infringe."

Gould v. Rees, Clifford, J., 15 Wall., 194 (82 U. S., XXI., 41).

The law is well settled, that a patent for a combination of old things applied to produce

Dodge v. Card, 2 Fish., 116; Hale v. Stimpson, 2 Fish., 565; District of Mass., Clifford and Lowell, J. J.

A patentee cannot repudiate one of the parts of his machine after another inventor has taught him how to dispense with it.

a new and useful result is not violated unless | bodies by the use of a "carding engine, "through all the parts or elements of the combination which the fibrous material was passed, and are used. from which it was thrown upon a cone; and the reason why this machine would not work practically is stated in the patent. This ma chine is referred to in the plaintiff's brief as the Williams machine; and it was patented in 1833. This Williams machine may properly be said to be a combination of a carding engine, a revolving fan and a perforated exhausted cone, for the purpose of forming a hat body. To it might or may be added devices for regulating the deposit of fibers on the cone, by controlling them on their passage from the fan to the cone; and if any such devices had been made, they might have been patented, in combination with the other elements of the Williams machine, for the purpose of performing the functions which they were able to perform.

Hale v. Stimpson, 2 Fish., 571: Lowell, J., cites Prouty v. Ruggles, 16 Pet., 336; Vance v. Campbell, 1 Black, 428 (66 U. S.. XVII., 171). "In order to constitute an infringement, the whole combination must be used; because he claims not the various parts, but the whole combination together."

Approved by Grier, J., Case v. Brown, 2 Wall., 328 (69 U. S., XVII., 818).

The inventor is limited to the precise combination shown in his original patent.

For this Williams combination Mr. Wells A claim for combination of several devices substituted the fundamental combination of his so combined together as to produce a particu- machine, now patented in the 4th claim, which lar result, is not good for a claim for "any mode consists of three parts: 1. The feeding apron, of combining those devices which would produce on which the separate batches of fur are placed. that result," and can only be sustained as a 2. A revolving brush or picker, which pervalid claim for the peculiar combination of deforms the double office of disintegrating the vices invented and described. fur and blowing it forward towards the cone. 3. The exhausted perforated cone, upon which the fur is deposited.

Burr v. Duryee, 1 Wall., 553 (68 U. S., XVII., 650); affirmed and applied in Case v. Brown (supra).

This simple combination, as a substitute for We have had occasion to remark in a late the Williams combination, for the purpose of case on this new art of extending patents for hat-forming, is claimed to be new and useful, machines into patents for a mode of operation, and is patented. How new or how useful, is a function, a principle and effect or result, so not a question before this court. That was in that by an equivocal use of the term equiva-issue before the jury, and was submitted to lent,' a patentee of an improved machine may them by Judge Woodruff, and found for the suppress all further improvements. It is not patent. necessary again to expose the fallacy of the arguments by which these attempts are sought to be supported, though we cannot hinder their repetition."

Starting with this combination, by which a very rapid action could be performed, and the fur delivered to the cone finely disintegrated, and in perfectly uniform quantities, successively, Mr. Wells proceeded to invent the devices by which the deposit of fur on the cone could be regulated, so that the thickness of the differ

Case v. Brown, 2 Wall., 328 (69 U. S., XVII., 818) Grier, J.; Whiting v. Swayne, 4 Fish., 131. Messrs. Edward Ñ. Dickerson, Chas. C. Beman, Jr., and Merwin R. Brewer, for defend-ent parts of the hat body could be varied as deant in error:

The patented machine is composed of parts which Henry A. Wells first combined for the purpose of forming hat bodies. The integers of this combination are, for the most part, mechanical devices, capable of separate existence and use in other combinations or machines; and the claims of the patent are founded upon the well settled principle, that new combinations of old devices producing a usful result, are patentable.

The machine performs two essentially distinct operations; the first of which relates to the separating of the fur and blowing it onto the cone; and the second to the modification of the current of fur, as it passes from the disintegrating apparatus to the cone; and Mr. Wells' invention in effect is: 1. An improvement in the means of disintegrating the fur, and throwing it onto the cone, which had been attempted before; and, 2. The creation of an entirely new idea, by which, as it is made concrete in the machine, the fur is distributed on the cone in varying thickness, which never had been attempted before.

The patent recognizes the fact that, "Prior to the invention of Henry A. Wells," an unsuc cessful attempt had been made to form hat

sired-a result that could not be produced by the use of the fundamental combination alone, which would either deposit the fur uniformly on the cone, or in an uncontrollable distribution.

This varied distribution results in two distinct effects; one of which is to make the tip of the hat body thin, and the other to make the band thick and the brim thin. Either of these results may be produced without the other; and neither is essential to a hat body, although both are valuable and desirable. A hat body of uniform thickness is good; but one of variable thickness better; and Mr. Wells' machine will make both kinds, as it may be used in whole or in part.

Exceptions.

First. The defendant below prayed the court to instruct the jury that he did not infringe the patent unless he used the specific devices mentioned in the patent, nor unless he used the entire trunk shown in the drawings and model of the Wells machine.

These modest requests Judge Woodruff declined to grant, being of opinion that mere form was not of the essence of this invention, and that this substance might be found in

shapes quite different from those specific ones to which the defendant below proposed to restrict the patent.

This view of the law surprised the defendant's counsel and they excepted.

His Honor, however, turned these requests into legal form, adding the necessary qualifications, and then granted them.

The ruling upon the fourth claim is the one to which most exception has been taken. It amounts to this: that the inventor of a combination of devices for performing a distinct part of an operation, which combination may be sup plemented by additional devices for perfecting or modifying its operation, may patent that combination, irrespective of such additional devices as he or others may invent.

It cannot be questioned that if Mr. Wells had stopped when he made the combination of the 4th claim, he might have patented that combi nation, which is obviously a great improvement on the Williams' combination; but if the plaintiff in error is right and Judge Woodruff wrong, then Mr. Wells lost the right to take such a patent, because he also invented devices for operating on the current of fur while it is passing from the picker to the cone of his first combination, and thereby improved the result proposed to be accomplished-which is absurd.

Mr. Justice Clifford delivered the opinion of the court:

titled to claim equivalents as any other class of inventors.

Re-issued patents, in order that they may be valid, must be for the same invention as the surrendered originals. Inoperative or invalid patents, which are so by reason of a defective or insufficient specification, or by reason that the patentee claimed as his own invention or discovery more than he had a right to claim as new, may be surrendered if the error arose by inadvertence, accident or mistake, and without any fraudulent or deceptive intention, and the provision is that the Commissioner, in that event, shall, upon the payment of the sum required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the proper party, as prescribed in the 53d section of the Patent Act. 16 Stat. at L., 206.

Unquestionably, the specifications in such a case may be amended to correct an error which has arisen by inadvertence, accident or mistake, if without any fraudulent or deceptive intention; but the express provision in the new Patent Act is that no new matter shall be introduced into the specification, and that in the case of a patent for a machine neither the model nor drawings shall be amended, except each by the other, which is a very important provision to secure the fulfillment of the condition that the re-issued patent shall be for the same invention as that secured by the original patent.

Matters of law only are in dispute here be

patent in suit, in order to understand the exact nature and scope of the controlling questions presented for decision.

Valid letters patent may be granted for an invention which consists entirely in a new com-tween the parties, as the judgment of the cirbination of old ingredients, provided it appears cuit court was rendered in a suit at law for the that the new combination of the ingredients pro- infringement of a patent, and the cause was reduces a new and useful result; but the rule is moved into this court by a writ of error to reequally well settled, in such a case, that the in vise the rulings and instructions of the circuit vention consists merely in the new combination judge, but it will be necessary to refer someof the ingredients, and that a suit for an in- what fully to the specification of the original fringement cannot be maintained against a par- patent, and to compare the same with the specty who constructs or uses a substantially differification of the re-issued patent, which is the ent combination, even though it includes the exact same ingredients. Alterations, however, in a combination, which are merely formal, do not constitute a defense to the charge of infringement, as the inventor of a new and useful combination of old ingredients, is as much entitled to claim equivalents as any other class of inventors, but they cannot suppress subsequent improvements which are substantially different from their inventions, whether the new improvement consists in a new combination of the same ingredients or of some newly discovered ingredient, or even of some old ingredient performing some new function not known at the date of the letters patent as a proper sub stitute for the ingredient withdrawn.

Old ingredients known at the date of letters patent granted for an invention, consisting of a new combination of old ingredients, if also known at that date as a proper substitute for one or more of the ingredients of the invention secured by the letters patent, are the equivalents of the corresponding ingredients of the pat ented combination. Such old ingredients, so known at the date of the letters patent granted, are the equivalents of the ingredients of the patented combination, and no others, and it may be added that that, and that only, is what is meant by the rule that inventors of a new combination of old ingredients are as much en

Separate examination of the numerous questions involved in the bill of exceptions will not be attempted, as it would extend the opinion to an unreasonable length, nor will it be attempted to pass in review more than two or three matters assigned for error in this court, as it is scarcely probable that many of them will be of much importance if the parties elect to go to a new trial.

Exact description of the invention was given in the specification of the original patent, which affords the most ample means to define the nature and scope of the improvement actually made by the patentee as secured by that patent.

My improvements, he says, consist in feeding the fur after it has been picked to a rotating brush, between two endless belts of cloth, one above the other, the lower one horizontal and the upper one inclined to gradually compress the fur and gripe it more effectually where it is presented to the rotating brush, which moves at great velocity, and throws it into a chamber or tunnel which is gradually changed in form towards the outlet, where it assumes a shape nearly corresponding to a vertical section passing through the axis of the cone, but growing narrower, for the purpose of concentrating and di