being as to the loss or damages in excess of the defendants' profits which the plaintiffs sustained by reason of the infringement, and the master having properly found that by reason of the infringement the plaintiffs lost the specified sales, the damage is fairly estimated by the amount which the plaintiffs would have received for the goods, deducting the cost of manufacture and of sale. In the cost of sale the store expenses-such as clerk hire, storage, freight, &c.-should be estimated upon sales of any large amount. In this case, in view of the fact that the principal part of plaintiffs' faucets are sold by Mr. Adee, of New York, this class of expenses upon sales of about $3,800 would add such a trifling amount to the existing expenses of conducting the plaintiffs' business that it is not desirable to subject the defendants to the expense of sending the case back to the master for a reaccounting. The amount, if any, which would be deducted from the $1,615.14 would be very small. The defendants' exceptions are overruled. The motion by the plaintiffs for treble damages is denied. [United States Circuit Court-Northern District of Illinois.] EVANS v. KELLY ET AL. Decided January —, 1880. 23 O., G. 192. CONSTRUCTION OF PATENTS-INFRINGEMENT. A patent claim must be construed in the light of the specifications, and where the specifications described the entire article parts of the description cannot be separately considered to show an infringement of one of the parts. Messrs. Lawrence, Campbell & Lawrence for the complainant. DRUMMOND, J.: I do not think this case is so clear as to warrant the court in allowing the injunction to issue. As I understand the claim set forth in the plaintiff's patent, it is for a covering made of a particular material, being a non-conductor of heat, in sections, so as to be easily put on and off any drum, pipe, steam-generator, &c., in a way described. There is a particular description given of the manner in which this covering is applied around the steam-pipe. It is not clear that there is claimed absolutely the mere construction of a covering of a non-conducting material made in sections, so as to be put on and taken off the steam pipe, drum, &c., easily, but in the particular way which is described. It is not necessary for me to decide here whether a claim for that in itself would be patentable, because, as it seems to me, the claim which is set up here is for the covering of the material put on in the way described. This is the claim : The shells or tiles A A, constructed and applied to steam pipes, drums, or other heated vessels so as to produce a non-conducting covering, either with or without the confined air-space between the said shells and the vessel covered thereby, substantially as and for the purpose herein before set forth. I admit, in order to properly construe the claim, we have to take the description given in the specifications of the subject-matter of the claim and apply it to the description therein contained. Adopting that rule here, it seems to me we cannot sever the claim from the description contained in the specifications, and that we must assume that it is coextensive with that description. If it was intended to claim parts of that which is described in the specifications as a whole, it should have been so stated; but where it claims the whole as described we cannot sever one part of the description from another, but we must take it in its totality and apply the description to the claim. That is the view which now occurs to me in reference to this patent, and it is material, for this reason-that while the patent may be sustainable as described in the specifications and as claimed, it might not be if separated into its various parts; and if we construe the claim in that way there might be so much doubt that I do not think I ought to grant an injunction. Whether the patent can be sustained, and whether, with a more liberal construction, it can be said that there is an infringement by the defendant of the claim set forth in the patent, is the question. I give these views now, not that they will be absolutely binding upon the court when the case comes to final hearing, but only for the purpose of showing that it is not so free from doubt that the court ought, under the circumstances, to issue an injunction. I think in all cases it ought to be clear to the mind of the court before an injunction is issued. [Supreme Court of the District of Columbia.] EX PARTE VON HEFFNER-ALTENECK. Decided December, 1882. 1. PUBLIC USE AND SALE-EX PARTE AFFIDAVITS. An application for a patent cannot be rejected on the ground that the invention was in public use and on sale for more than two years before the time of filing the application, when the only proof before the Commissioner consists of mere ex parte affidavits taken without notice and cross examination. 2. SAME-SAME—ALLEGATIONS BY OTHERS SHOULD BE PROVED. The law confers upon the Commissiouer authority to institute an inquiry into allegations of public use and sale of the invention, such as would bar the patent. This proceeding, on which the Commissioner acquires his information through the testimony of others, is a kind of judicial inquiry, and when the testimony is furnished by those in adverse interest, it becomes substantially a contest, and in such case justice requires that the fate of the application be determined by proof which conforms to the fundamental canons of the law of evidence, according to which ex parte affidavits taken without opportunity to cross-examine are in no case admissible upon the merits of a cause. APPEAL from the Commissioner of Patents. Cox, J.. In this case it appears that Alteneck's application has been rejected by the Commissioner on the ground that his alleged invention was in public use and on sale for more than two years before the time when his application for a patent was filed. This is a sufficient ground for the rejection of an application for a patent if it be sufficiently established. The appellant complains that no notice was given him of the intention to take and file affidavits, and that no opportunity was given him by the Commissioner to cross-examine the affiants, and so the facts appear. When the Commissioner has personal knowledge of the prior use and sale or other fact pertinent to the question of patentability he is authorized to act upon that knowledge; but when he does not possess such knowledge, and has to acquire his information through the testimony of others, the examination becomes a kind of judicial inquiry, and when the testimony is furnished by those in adverse interest it becomes substantially a contest, although the proceeding is in form ex parte. In such case justice requires that the fate of the application be determined by proof which conforms to the fundamental canons of the law of evidence. According to these ex parte affidavits taken without opportunity to cross-examine are in no case admissible upon the merits of a cause, though, from necessity, they are relied upon to determine collateral issues that spring up during its progress. It appears that time was given to Alteneck within which to rebut the allegations of public use and sale made in the affidavits. The right to cross-examine is, however, quite as important as the right to rebut. It is clear that if the statutes authorize the Commissioner of Patents, with the approval of the Secretary of the Interior, to institute proceedings for inquiring into allegations of public use or sale of an invention, such as are made by the affidavits in this case, and if, in such proceedings, the law contemplates the examination and cross-examination of witnesses, then it cannot be in accordance with law finally to reject an application for a patent upon mere ex parte affidavits taken without notice and cross-examination. We have examined the statutes, and are of opinion that sufficient authority exists to warrant the Commissioner of Patents in instituting an inquiry into allegations of public use or sale of an invention upon which a patent is claimed having occurred more than two years before the application for the patent was filed. As it seems to be the duty of the Commissioner of Patents to examine these questions thoroughly whenever they arise bona fide in connection with an application for a patent, and as no such examination appears to have been made in this case, in which the usual methods of examination and cross-examination under oath were resorted to, we do not think the Commissioner was justified in finally rejecting Alteneck's application for a patent, and cannot confirm his decision. [Supreme Court of the United States.] MOFFITT v. ROGERS ET AL. Decided October 30, 1882. 23. O. G., 270. REISSUE-EXPANSION OF SPECIFICATION-NEW MATTER. Where it appeared that the specification and claim of the original patent were 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 claim of the reissue was expanded so that it might cover a "former" circular in cross-section, concentrically set, and revolving in a semicircular groove of a stationary mold, by which the material was pressed against a "former," Held that the claim was a plain attempt to cover a device which was not, and could not be, fairly covered by the original patent, and that the claim is for that reason void. APPEAL from the Circuit Court of the United States for the District of Massachusetts. Mr. J. E. Maynadier, Mr. Geo. Harding, Mr. H. A. Banning, and Mr. W. A. McLeod for the appellant. Mr. T. L. Wakefield and Mr. Chauncey Smith for the appellees. STATEMENT OF THE CASE. This is a suit in equity brought for the infringement of reissued letters patent, dated December 8, 1874, granted to the complainant, John R. Moffitt, for an improvement in the manufacture of heel-stiffeners for boots and shoes. The original patent bore date May 21, 1872. "Heel-stiffeners" or "counters," as they are sometimes called, were formerly made by hand, the leather being shaped upon the last while wet by the blows of the shoemaker's hammer. Previous, however, to the date of the complainant's original letters patent ready-made molded counters were manufactured by placing the counter-blank across the opening of the mold and forcing it into the mold by a plunger or former, or by placing the blank upon the back of the stationary former and forcing it around the former by the pressure of the mold. Counters had also been shaped on machines by which a rolling pressure was applied. As early as 1853 machines, known as the "Nichols," were employed. This machine had a rotating "former," circular in cross-section, which was applied by pressure to another circular roller, conforming to this "former" longitudinally, the object being to set leather into the proper shape either for soles or heel-stiffeners. In the specification of his original patent, Moffitt declared: In "molding" to shape ready-made counters or stiffeners for heels of boots and shoes made of various materials, but usually of waste bits of leather, a difficulty exists by reason of the peculiar shape required, in getting an equal or sufficient pressure upon all parts of such counter, so as to get uniform hardness throughout, and also a further difficulty in getting a true and proper permanent form throughout all parts, because the material will differ in character in different parts of the same counter, some of it, especially in leather, being of a more spongy nature than other parts. This difference or lack of homogeneity prevents an uniform solidity, and precludes the true preservation of the shape which a mold may impart. The object of my invention is not only to make more perfect ready-made shaped counters than can be made by any "molding" process, but also to make a new article of manufacture, viz, a "rolled” counter, prepared, solidified, and uniformly hardened and set to shape by a rolling pressure, such rolling action producing a new as well as better article, and admitting of producing the same from material hitherto found too intractable, such as leather board, sheet metal, &c. Instead, therefore, of shaping the stiffener in a mold, I employ no mold of any kind, but use a moving "former," A, devised by me, of a shape adapted to give the desired shape to the counter, and set eccentrically on a shaft, B, the shaft being arranged to have a continuous or a reciprocating rotary movement, either by hand or by power, as desired. Beneath this "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. The shaft of the "former" has its bearings in a swing-frame, E. F is a treadle-strap, whereby the swing-frame may be pulled down to give any required degree of pressure, and which also permits the eccentric former to rise and fall, as in its movements it rides and rolls over the surface of the counter, the counter-piece being placed centrally upon the "former" and being rubbed and rolled as well as squeezed between them while being brought to shape. The "former," as will be seen, projects farther 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 a shaped counter. This gives a rolling action, in addition to the squeezing, over the whole body of the counter. The cross-section of the "former," as shown by the drawings and model, was elongated, with one or both ends semi circular. The specification proceeds: The end g of the "former" need not be a plane, as shown in Fig. 1, but instead may be rounded at its opposite end, as shown in Fig. 3, so that it may be continuously revolved and in either direction. In such case I prefer to place the shaft through its center or equally distant from both its ends. Instead of a single roll a pair of auxiliary rolls may be used, as shown in Fig. 4, one on each side of the single one. The claims were thus stated: I claim 1. The described apparatus for rolling to shape heel-stiffeners or counters. 2. I also claim, as a new article of manufacture, heel-stiffeners or counters shaped and compacted by a rolling action, as described. 3. I also claim the process herein described of shaping and setting to shape heelstiffeners or counters by rolling, as distinguished from molding. The specification of the reissued patent is substantially the same as that of the original patent, with the following exceptions: For the term "rollers" in the original specification the words "supports or rollers" are substituted in the reissued specification and the word "mechanism> in the first claim of the reissue. In the reissued specification the requirement that the "former" should be set eccentrically on a shaft and the statement that the "former" projects farther from the axis on one side than the other are omitted. |