mechanism form a yielding bearing, their action must be sluggish and uncertain compared with that of the coiled springs. The difference is that between a dead weight and an elastic force in a place where the elastic force is essential. The Mechwart mill, therefore, does not anticipate the second claim of the complainant's reissued patent.

Neither the Poole nor the Poole & Miller patent has the yielding bearing. In the Poole patent, when the rolls are set they are so firmly held in position that something must break before an unyielding foreign substance can pass between the rolls. In the Poole & Miller patent a toggle joint is used. The inner rolls are movable, being journaled in boxes which slide backward and forward in frames to which they are fitted. When the toggle is straightened (or extended) these rolls are forced into grinding position, and there inflexibly held until, by movement of a hand-lever, the toggle is thrown into a zigzag position, and then the rolls are forced apart by coiled springs, which have no other office. The Gray patent No. 235,761 relates exclusively to mechanism for controlling the hopper gates or slides. These patents do not anticipate claim 2 of complainants' reissue. In the Gray patent No. 238,677 there are two through-shafts, each parallel with the set of rolls over which it is placed, and connected, by eccentric and transverse shafts, to movable arms, in the upper ends of which the outer rolls are mounted. The transverse shafts are provided with coiled springs, forming yielding bearings, substantially as in complainants' patent. The ends of the through-shafts are provided with crank-arms pivoted to a connecting horizontal rod, serving as a hand-lever, by moving which from either side of the machine all the eccentrics are moved simultaneously, and the outer rolls thrown instantly into or out of operative position. All the parts of this combination are old. The claim is limited to the combination of the movable arms, the transverse shafts, the eccentrics, and the horizontal rod, by moving which the rolls are thrown apart or together, and, in our opinion, does not interfere with claim 2 of complainants' reissue, which is limited to a single through-shaft and a hand-lever rotating it to operate the four transverse shafts simultaneously, and, by moving the pivoted journal-arms, carrying the movable rolls to spread or set the rolls. It follows that the second claim of complainants' reissued patent is sustained.

It was urged upon the hearing that the entire reissued patent must be held to be invalid if claims 1 or 2, or both, were found to be invalid. That does not follow. We are satisfied from the testimony that claim 1, which we hold to be invalid, was made in good faith in the honest belief that Odell was the original inventor of the combination covered by that claim. Where it appears that claims in a reissued patent were made to broaden the invention, and thereby to cover intermediate inventions or improvements, the fraud may so vitiate all the claims in the reissued patent that all will be held to be void. But one claim in a reissue may be void without necessarily invalidating the other claims.

Packing Company Cases, 105 U. S., 566; Gage v. Herring, 107 U. S., 646; S. C., 2 Sup. Ct. Rep., 819. The invalidity of a claim in a reissued patent does not impair the validity of a claim reproduced from the original patent in the reissued patent. Schillinger v. Greenway Brewing Company, 20 O. G., 495; Fetter v. Newhall, 25 O. G., 502.

The fourth, fifth, and sixth claims of complainants' reissued patent are substantially reproductions of claims in the original patent. The fifth and sixth claims differ only in form from the fourth, and we therefore, and in accordance with a stipulation filed by counsel, consider only the fourth. The defendants rely upon the Wegman patent, April 7, 1883, application filed February 10, 1883, patented in England in 1879, to anticipate the fourth claim. We are of opinion that the English patent does not show in the drawings nor describe in the specification simultaneous operation of the roll-controlling and of the feed-controlling mechanism. The American patent, of date later than complainants' patent, cannot be brought in to supply the deficiencies of the English patent. We therefore hold that the Wegman patent does not anticipate the fourth claim of complainants' reissued patent, which is sustained. There is no evidence that prior to Odell's invention the combination of mechanism for simultaneously controlling the gates and the rolls was known or used, and there is no doubt in our minds that it is a valuable and patentable improvement. Loom Company v. Higgins, 105 U. S., 591. If the inventor could not claim singly the parts of a combination capable of separate use because he uses them in combination, or, to state the proposition as counsel for defendants put it, because he does not desire the operation of any apart from the others, the result would be that each constituent of the combination would be free to the public. The mechanism for controlling the gates might be of great value operated separately, and the same might be true of the mechanism for controlling the rolls; but if the inventor is limited to a claim for the combination simply because, in his opinion, it adds to the value of each and is an improvement to operate them simultaneously, it follows that he is compelled to abandon to the public a large part of the value of his invention. Such a construction is too narrow. We prefer the doctrine stated by Judge Blatchford in Wheeler v. Reaper Company (10 Blatchf., 181) that he knew no rule

Which forbids the inventor who has omitted to claim separate new devices, or severable and distinct combinations, in the original patent, making a surrender and taking reissues for the distinct combination or separate devices. If the devices covered by the reissues were in fact new and useful, and if they are shown in the original specification, drawings, or model, then the patentee is entitled to secure the exclusive use of each separately by a reissue embracing each.

Miller v. Brass Company (104 U. S., 350) and James v. Campbell (Id., 370) do not sustain the proposition made on behalf of the defendants that a reissued patent is void if the claims of the original patent are expanded. These cases, and others of later date, distinctly recognize

that the claims of an original patent may be enlarged by reissued letters to include the entire invention, or, in separate claims, the distinct patentable features of the invention; provided, first, that there be no unreasonable delay in applying for the reissue, and, second, that between the date of the original patent and the date of the application for the reissue rights which would be recognized in equity in favor of others shall not have intervened. The Supreme Court calls attention to the rule

That the claim for a specific device or combination, and an ommission to claim other devices or combinations apparent on the face of the patent, are in law a dedication to the public of that which is not claimed.

The court says that this legal effect of the patent cannot be revoked except by surrender and reissue on proof of inadvertence, accident, or mistake in framing the original specification or claim, without fraudu lent or deceptive intention on the part of the patentee, and without laches or unnecessary delay. There is a suggestion in Miller v. Brass Company of two years as the limit to the delay permissible, with a reference, by way of analogy, to the evidence of abandonment afforded by the inventor's consent to the public use of his invention for that length of time before his application for a patent; but there is no rule fixing a precise limit of time. The rule relating to abandonment is statutory, and therefore rigid, and to be applied according to its letter. The rule relating to reissues is equitable, and therefore flexible, and to be applied according to equity. What is a reasonable time is a question, when a reissue is attacked, to be decided by the court upon the case presented; and, as we understand it, the Supreme Court has purposely avoided prescribing any rule which would interfere with the decision of each case upon the equities arising upon the facts of that case.

We do not think that it is apparent in this case, as it was in Miller v. Brass Company and in James v. Campbell, that there was no inadver tence, accident, or mistake in the framing of the specification and claims of the original patent. On the contrary, precisely such an inadvertent omission as is claimed by the complainants was supplied by the introduction of the first and second claims of the reissue might be made by an inventor in whose mind the combination was the thing of greatest value. Moreover, in this case the delay was but a little more than four months, and there is no averment in the answer, nor is there any evidence, that between the date of the original and that of the reissue any rights of others intervened. In the late case of Wooster v. Handy (21 Fed. Rep., 51), decided by Mr. Justice Blatchford, July 22, 1884, he

says:

The rule laid down by the Supreme Court is that where it is sought merely to enlarge a claim there must be a clear mistake and inadvertence, and a speedy application for the correction, with no unreasonable delay; that in such a case a patentee cannot wait until other inventors have produced new forms of improvement and then apply for such an enlargement of his claim as to make it embrace those new forms, and that when it is apparent from a comparison of the two patents that the reissue is made

to enlarge the scope of the patent, the court may decide whether the delay was un. reasonable, and the reissue therefore void. This view has been repeatedly asserted and applied by the Supreme Court in numerous cases decided since those in 104 U. S.

The remaining question is whether the defendants are infringers of the second and fourth claims of the complainants' reissue patent. The defendants' mill-that which they were manufacturing when this suit was brought-is so constructed that, by means of a sleeve on the throughshaft and an arm connected to the outside lever, journaled on this shaft, the gates or slides controlling the feed-discharge may be moved without moving the rolls, and by moving the inside lever which is attached to the through shaft the roll-controlling mechanism is operated. Both levers may be grasped at the same time and moved together, and thus simultaneously adjust the rolls and the gates or slides. This mechanism is substantially, almost identically, that of the complainants' mill, including the transverse shafts with the coiled springs, forming yielding bearings.

Prior to the bringing of this suit, and up to March, 1883, defendants manufactured another mill shown in the Livingston patent, No. 284,135, in which a single lever served to operate the through-shaft and simultaneously move both sets of mechanism. An interference between Liv. ingston, defendants' assignor, and Odell was decided in favor of Odell March 31, 1883, and since that date the defendants have not manufactured nor sold that mill. The bill in this cause was filed June 6, 1883. If the complaint were only on account of the manufacture and sale of that mill, the case would not be one for injunction. The remedy at law would be complete. It is true, as urged by counsel for complainants, that it has been heldth at stopping infringement will not prevent an injunc tion; but the cases have been where the manufacture was stopped at or after the bringing of the suit or the indications were that the defendants, having once been wrong-doers, were likely to be so again as soon as released from court. If a defendant has, before suit brought, abandoned the manufacture and sale of the infringing machine, and the court is satisfied that the abandonment was in good faith and final, the injunction ought to be refused upon the principles of equity applicable to injunction. However, as we find that the defendants in this case are infringers, we think it well to retain the whole case under our control, and the injunction and order for an account may be made to apply to the manufacture and sale of both mills; but the complainants must first file a disclaimer of the first claim of their reissued patent, and this decree must be without costs. See sections 4917, 4922 Rev. Stat. U. S., and Gage v. Herring (107 U. S., 646; S. C. 2 Sup. Ct. Rep., 819).

Mr. Justice MATTHEWS stated that he concurred in the conclusion and in the reasoning of Judge SAGE'S opinion.

[Supreme Court of the United States.]

MORRIS ET AL. v. MCMILLIN ET AL.

Decided November 17, 1884.

29 O. G., 951.

1. Letters Patent No. 63,917, granted April 16, 1867, to John S. McMillin, for an improvement in applying steam-power to the capstans of steamboats and other craft, declared void for want of patentable invention:

2. The only field of invention left for the patent to cover was the application by the old and familiar arrangements of shafts and cog-wheels of the power of an auxiliary engine to a capstan instead of a windlass. It is plain that no such ingenuity as merited the issue of a patent was required for this improvement, but only the ordinary judgment and skill of a trained mechanic.

APPEAL from the circuit court of the United States for the western district of Pennsylvania.

For the opinion of the court below see McMillin v. Barclay (5 Fish., 189) and McMillan v. Rees (17 O. G., 1222).

Mr. Rowland Cox for the appellants.

Mr. W. Bakewell and Mr. George N. Christy for the appellees.

Mr. Justice WOODS delivered the opinion of the court:

The bill was filed against the appellants to restrain the infringement of Letters Patent No. 63,917, granted to John S. McMillin, one of the appellees, dated April 16, 1867, for a new and useful improvement in applying steam-power to the capstaus of steamboats and other crafts. The invention as described generally in the specification consisted

A is the deck; A', the boiler-deck; B, the capstan; C, the hoisting-engine; F, the wooden frame- work of the engine; D, the engine-shaft; E E, the hoisting-rollers connected with the engine-shaft by the cog-wheels a and b. G is a vertical shaft extending from the hold of the boat to the cargo wheel-shaft g; with the latter it is connected by the bevel-wheels cd. His a horizontal shaft in the hold of the boat at the