EX PARTE PFAUDLER.

Decided October 25, 1882.

22 O. G., 1881.

1. REISSUE-EXPANSION OF CLAIM.

A patent for a machine cannot be reissued to cover a process or method, although such process or method may have been described in the original patent.

2. SAME-SAME.

Under recent decisions a patent cannot be reissued to cover an invention described, but not claimed, in the original patent.

APPEAL from the Board of Examiners in-Chief.

ART OF MAKING BEER.

APPLICATION of J. M. Pfaudler for reissue filed June 11, 1881.

Mr. James L. Norris for the applicant.

MARBLE, Commissioner:

On July 2, 1878, patent issued to applicant with the following claim: The combination of one or more section-pipes, A, each having branch pipes B, conrecting it with one or more fermentation-vessels, and the check-valve C, and stopcock D with the main pipe E, connected by branch pipe F and stop-cock G to the intercommunicating cylinders or receivers H, provided or connected with pressuregage N, safety-valve Q, and blow-off cocks I, substantially as and for the purpose set forth.

On August 26, 1879, applicant surrendered his original patent and filed an application for a reissue, in which "claims for the mechanical apparatus were joined with claims for the process or method embodied in or carried out by said mechanism."

On June 11, 1881, applicant erased the process claim from his reissue application, and filed this application with the following claim:

The process of treating beer or other fermentable liquids in the course of their manufacture, which consists in holding them in closed connected vessels under automatically-controlled pressure of carbonic-acid gas, acting solely on the surface of the liquid for settling the yeast, substantially as described.

I deem it unnecessary to state all the proceedings which have been had in the case, as the only question now to be considered is whether applicant is entitled in his reissue application to said process claim, the same not having been claimed in his original patent. The Primary Examiner and a majority of the Board of Examiners-in-Chief have rejected the application, holding that applicant is not entitled to make the claim, the latter basing their decision on the decision of the Supreme Court in the case of Heald v. Rice. 21 O. G., 1343.

Applicant claims that this invention was disclosed in his original patent by the following language:

The invention has for its object to provide an effective apparatus for equalizing the pressure in a series of hogsheads or other vessels containing beer, wines, or other

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liquids in a state of fermentation, and for regulating the pressure of the gas caused by such fermentations, so that it shall not exceed a certain number of pounds to the square inch previously determined and gaged in the said apparatus.

And again:

By this invention the fermentation can thus be kept operating at a uniform pressure to insure beer of uniform quality, and the hogsheads or other vessels need not be subjected to any more strain than what is necessary to insure the said uniformity.

Granting that the language above quoted from the original patent did disclose the invention now claimed, and, under former decisions of the courts, is a sufficient foundation upon which to base the present claim, the question arises whether, under recent decisions, the claim now made can be allowed. In the case of Heald v. Rice, above mentioned, the court said:

In cases of reissues of patents, inoperative or invalid by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, it is imperative that the new patent, when issued, shall be for the same invention, and that no new matter shall be introduced into the specification when, as in the present case, there is a drawing with reference to which the invention is described.

And again:

It appears, then, from the mere reading of the two specifications, that the invention described in the first is for the return-flue boiler, while that described in the second, abandoning the claim for the boiler itself, is for a particular mode of using it with straw as a fuel by means of an attachment to the furnace-door for that purpose. It might well be that Rice was entitled to patents for both separately or to one for both inventions; but it is too plain for argument that they are perfectly distinct. A patent consequently originally issued for one cannot lawfully be surrendered as a basis for a reissue for the other. They are as essentially diverse as a patent for a process and one for a compound, as in the case of Powder Company v. Powder Works (98 U. S., 134), where the reissued patent was avoided, although the original application claimed the invention both of the process and the compound. The case comes directly within the principle held in James v. Campbell, supra, that a patent for a machine cannot be reissued for the purpose of claiming the process of operating that class of machines, because if the claim for the process is anything more than for the use of the particular machine patented, it is for a different invention.

In the case of Campbell v. James (21 O. G., 337), referred to in the foregoing case, the court said:

A third addition in the reissued patent to the invention described in the original is that of the process of stamping letters with a postmark and canceling the postage. stamp, at one and the same blow or operation of the instrument, in the manner and by the means described and set forth. Leaving out of view the history of the art prior to the invention claimed by the patentee, what possible pretense can there be for contending that the general process was part of the invention which formed the subject of the original patent? Suppose it to be true that Norton was the first inventor of this process, was that process the invention which he sought to secure in the original patent? A patent for a process and a patent for an implement or a machine are very different things. Powder Company v. Powder Works, 98 U. S., 136. Where a new process produces a new substance the invention of the process is the same as the invention of the substance, and a patent for the one may be reissued so as to include both, as was done in the case of Goodyear's vulcanized rubber patent; but a process and a machine for applying the process are not necessarily one and the same invention. They are generally distinct and different. The process or act of making a post

mark and canceling a postage-stamp by a single blow or operation as a subject of invention is a totally different thing in the patent law from a stamp constructed for performing that process. The claim of the process in the present case, however, is not so broad as this. It is for the process or act of stamping letters with a postmark and canceling the postage-stamp, at one and the same operation of the instrument, in the manner and by the means described and set forth. Perhaps this claim amounts to no more than a claim to the exclusive use of the patented instrument or device. If it is anything more it is for a different invention from that described in the original patent. If it is not for anything more, the question is brought back to the instrument or device itself which forms the subject of the patent, and which has been already considered. Again:

Now, a mere inspection of the patents referred to above will show that after December, 1862, Norton could not lawfully claim to have a patent for the general process of stamping letters with a postmark and canceling-stamp at the same time, nor for the general combination of a post-stamper and blotter in one instrument, nor for the combination of a post-stamper and blotter connected by a cross-bar, for all these things, in one or other specific form, were exhibited in these prior patents. Any such claim, therefore, in the reissued patent of 1870, must be inoperative and void, as well because the thing claimed was anticipated in former patents as because it would be for a different invention from that contained and described in the original patent. We may therefore dismiss from consideration the third and fourth claims of the reissued patent, If they are to be construed as being broader and claiming more than the original patent, they are void; if to be construed as claiming nothing more, they are simply redundant, because the first and second claims embrace all that was in the original and more.

In the case of New v. Warren (22 O. G., 587), Wheeler judge, the court said:

There is no question but that a patent may be surrendered and reissued in divisions; but the patent cannot be broadened in that way any more than if reissued together. The claim of Division B is entirely new in the reissue. The description on which it was founded was in the original, and the process, if patentable at all, might have been claimed there, but it was not. According to numerous former cases it might be claimed in the reissue as well. As it is, however, it comes within the principle of Miller v. The Bridgeport Brass Company (21 O. G., 201) and Campbell v. James (Ibid., 337), and cannot be upheld now.

As a further reason for rejecting the patent the court held that the process described was the mere operation of the machine.

This latter case seems to be on all fours with the case under consideration. The application was a division of a reissue application. The original patent described the invention therein claimed, and, as the court said, under former decisions the reissued patent could have beeu sustained; but under the recent decisions above cited it could not be sustained. It is unnecessary to inquire what the former rulings of the court have been and how patents under such decisions were reissued. Under the recent decisions a patent cannot be reissued to cover an invention described, but not claimed, in the original patent. It can be reissued, if it be inoperative or invalid by reason of a defective or insufficient specification, or if applicant has claimed more than he was entitled to claim, for the purpose of clearly and distinctly describing the invention or restricting it, with such claims as will protect the in

ventor, but there can be no new matter nor any other invention than that originally described and claimed. If it be admitted that the pro. cess claim in this application was described in the original patent, it was not therein claimed, and hence cannot now be claimed by reissue. I find no error in the decision of the majority of the Board of Examiners-in-Chief, and therefore affirm the same.

MOORE v. BROWN.

Decided November 17, 1882.

22 O. G., 1882.

1. AMENDMENT OF PRELIMINARY STATEMENT-RULE STATED.

In view of the rulings in Le Roy v. Hopkins and Edison v. Nicholson, Held that where it is made reasonably certain that a mistake has been made in the preliminary statement, and that the party governed by such statement would not be permitted to introduce testimony which would develop the real facts in his case, that amendments will be allowed permitting the introduction of such testimony at any time before the testimony is closed.

2. SAME-OTHER SIDE TO TAKE FURTHER TESTIMONY.

If such amendment makes it necessary for the opposite party to take further testimony, either on his direct examination or in rebuttal, he must be permitted to do so on a proper motion.

MOTION to amend preliminary statement.

FASTENING FOR METAL LATHS.

APPLICATION of Aaron B. Moore filed February 10, 1882. Reissue application of Robert T. Brown filed May 22, 1882.

Messrs. A. H. Evans & Co., for Moore.

Mr. F. C. Somes associate attorney for Brown.

MARBLE, Commissioner:

On the 19th ultimo the Examiner of Interferences denied the motion of Brown to amend his preliminary statement, based on a misconception of the issue, on the ground that his explanation of the reason why he wished to make the amendment was not satisfactory, and was unsupported by the affidavits presented. The motion is brought under Rule 110 of the Rules of Practice, which reads as follows:

In case of material error in the statement, arising through inadvertence or mistake, it may be corrected on motion (see Rule 149), upon showing to the satisfaction of the Commissioner that its correction is essential to the ends of justice. The motion to correct the statement must be made, if possible, before the taking of any testimony, and as soon as practicable after the discovery of the error.

Brown alleges that when he filed his preliminary statement in this case he understood that the issue was the same as in the case of Brown v. Brown, heretofore decided, and that he did not, in fact, understandthe issue until after he had filed his preliminary statement and ordered a copy of Moore's specification. The issue in this case is thus defined:

The combination of the furring and lathing and a clamp or fastening consisting of a shank with a T-head, the latter bent down flat upon the lathing and embracing the furring.

In this claim the element about which there is a contest is the T shaped fastener or hanger. In his former interference with Brown the issue was much broader. In his preliminary statement, filed in this case, he says that

He first conceived of the invention involved in the said interference-to wit, the subject-matter of the third clause of the claim of his said application-some time prior to November 1, 1880; that he made a drawing of the same and disclosed the invention to others on or about the 1st of March, 1881, and on or before April 11, 1881, he had completed the model of the same.

In his amended preliminary statement he alleges that he made the invention in controversy and had a model of it completed on or about the 17th day of September, 1879. In support of his statement that he had the invention completed in September, 1879, the affidavits of several persons are filed, some of whom state that they saw the model with the T-shaped fastener in the fall of 1879, and others in the early part of the year 1880. If the statements in these affidavits are true—and I have no right to assume otherwise-the invention here in controversy was completed by Brown some time in the latter part of the year 1879. The only question, therefore, for consideration is, whether at this stage of the proceedings he should be allowed to amend his preliminary statement so as to be permitted to show the real date of his invention. Time and opportunity were given him to file a proper preliminary statement. The preliminary statements of both parties to the controversy were received and filed, and on the day fixed for publication were opened and published. Thereupon dates were fixed for taking the testimony of the witnesses of the respective parties. The testimony of the witnesses for Moore has been taken. At this stage of the case Brown comes in and offers to amend his preliminary statement, and alleges that he made a mistake therein because he did not understand what was involved in the issue between himself and Moore.

The rule above cited provides for the amendment of the preliminary statement where the error therein was material and arose from inadvertence or mistake, if such error or mistake is satisfactorily shown to the Commissioner. It also provides that the motion to correct the mistake should be made, if possible, before any testimony is taken and as soon as practicable after the discovery of the error is made.