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GILL V. WELLS, 89 U. S. 1 (1874)

U.S. Supreme Court

Gill v. Wells, 89 U.S. 22 Wall. 1 1 (1874)

Gill v. Wells

89 U.S. (22 Wall.) 1


1. An original patent of one Wells, for a hat body machine, among other things, minutely described a specific device called a "chamber or tunnel," composed of two side pieces, a bottom piece, and a top piece, permanently united together so as to form in fact a single tubular device, and described minutely the functions which this device performed. A reissued patent separated this "chamber or tunnel" into its several component parts, called by distinct names, viz., a "bottom guide" and a "top guide" and "side guides," and ascribed independent functions to each of these parts and claimed in succession each of these parts in combination with other parts of the hat body machine. At the same time, the description of this composite device, "the chamber or tunnel," and its functions as such, which were contained in the original patent, were omitted entirely from the reissued specification. Held that the reissued patent was invalid, as not being for the same invention as the original patent.

2. A complete description was given in the original patent of the combination of the four parts which constituted the "chamber or tunnel," and that patent did not contain the slightest evidence that the patentee ever made any other combination than that of all the four parts which together form this "tunnel or chamber." Held that in such case, even if the patentee had subsequently discovered that he could accomplish a new and useful result by a combination of some of the several parts included in this "tunnel or chamber," he could not surrender and reissue his patent for this combination of a smaller number of the ingredients, because the reissued patent in that event would not be for the same invention as the surrendered original.

3. Such a description of a combination of other parts, besides the first-mentioned, would constitute new matter, the introduction of which into the

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specification of a reissued patent is forbidden by section fifty-three of the Patent Act of 1870.

4. A patentee cannot legally surrender a patent for an invention consisting of a combination of old ingredients and amend the descriptive parts of the specification by striking out the entire description of one of the ingredients of the combination and inserting in lieu thereof a full description of several other devices, without any allegation that they are the equivalents of the one whose description is stricken out.

5. The case of Gould v. Reese, 15 Wall. 194, commented on.

6. An equivalent for the ingredient of a combination consisting wholly of parts that are old must be one which was known at the date of the original patent as a proper substitute for the ingredient left out.

Mrs. Eliza Wells, administratrix of Henry A. Wells, sued Gill at law for infringement of letters patent for an improvement in machinery for making hat bodies. Original letters patent had been granted to the said Henry April 25, 1846. The patent was reissued in 1856, in two parts, No. 396 and No. 400, to an assignee of Wells, and was extended by the Commissioner of Patents, April 17, 1860, and again reissued in December, 1860, to the assignee of Wells, in No. 1086 and No. 1087. No. 1086 was again reissued to Burr, June 17, 1862, in No. 1318. On the 2d of March, 1867, Nos. 1087 and 1318 were extended to Eliza Wells, as administratrix of Wells, by act of Congress, and on the 19th of May, 1868, No. 1087 was again reissued in No. 2942. On this the present suit was founded.

The cause was tried upon the general issue, with notice of certain special matters in defense, and a verdict for the plaintiff below for nominal damages was rendered.

The defendant excepted to certain rulings, instructions, and directions given below, and exceptions being taken the case was now before this Court.

The subject of hat-forming machines and the art relating to the making of hats is set out by the present reporter in the case of Burr v. Duryee, [Footnote 1] which was a suit under a prior

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reissue of the already-mentioned patent of Wells, and it is indispensable that the reader of the present case, unless he has already a knowledge of the subject in some other way, master the general history presented by that case before he proceed with the present one. [Footnote 2]

As stated in that case, Wells had been preceded by a machine of one Williams, in which there was a feed apron for carrying the fur, a disintegrater, a fur conductor, a rotating cone, and an exhaust.

The Wells machine, as shown in his original patent and in the model filed by him in the Patent Office, consisted of certain parts organized together into a hat-forming machine which consisted of:

1st. Feed aprons.

2d. A revolving brush.

3d. A tunnel or chamber.

4th. An upper hood and lower flap as adjuncts to the trunk.

5th. An exhaust, rotating, perforated cone.

These several parts are shown combined in Fig. 1, which is a copy of Wells's original patent drawing.

The functions of these several parts and their mode of operation were thus set out in the original patent of Wells:

"My improvements consist in feeding the fur (called the stock) 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 inclined, to gradually compress the fur and grip it more effectually where it is presented to the action of the rotating brush, which, moving at a great velocity, throws it in 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 narrower, for the purpose of concentrating and directing "

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"the fur thrown by the brush on to the cone, this casing being provided with an aperture immediately under the brush, through which a current of air enters in consequence of the rotation of the brush and the exhaustion of the cone, for the purpose of more effectually directing the fibers towards the cone, which is placed just in front of the delivery aperture of the chamber or tunnel, which aperture is provided at top with a bonnet or hood hinged thereto, and at the bottom with a hinged flap, to regulate the deposit of the fibers on the cone or other former, with a view to distribute the thickness of the bat wherever more is required to give additional strength."

It will be seen that the marked feature of this invention here set out was a tunnel or chamber placed between the revolving brush disintegrating mechanism and the revolving perforated cone, this tunnel being adapted to collect or receive the fur from the disintegrating brush, to convey it towards the cone, and then to discharge it in a concentrated form against the revolving cone. The tunnel had an opening in front, under the revolving brush, through which a current of air entered. This current of air, constrained by the casing or walls of the tunnel, was plainly the direct agent in conveying the fibers to and discharging them on to the cone.

This tunnel was represented in the original model and patent as an integral structure, as shown in Fig. 2, and


although, like all tubular structures of rectangular section, it had a bottom and top and two sides, yet these were shown as made of uniform material and united rigidly and permanently together.

The patent also described two movable adjuncts to the

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discharging end of the tunnel, one called the "hinged hood," placed above, and the other called the "hinged flap," placed below. The hinged hood is shown in Fig. 1 at s, and the hinged flap at q.

Nothing was said in the original specification to lead one to suppose that any result whatever could be accomplished without the union of the bottom, the sides, and the top into this integral structure called the "chamber" or "tunnel;" and the interposition of that "tunnel" between the disintegrating brush, F, and the pervious vacuum cone, O. Moreover it was not suggested in the original patent, nor was there anything to lead anyone to suppose that if the tunnel or chamber was entirely removed, the feeding mechanism and the disintegrating apparatus could in any useful way whatever cooperate with the previous cone.

There were four claims of this patent relating to the mechanism.

The first claim of the original patent of 1846 pointed clearly to a combination of the peculiar feeding mechanism, bb1, the disintegrating brush, F, and the tunnel or chamber, M, in front of the brush.

The second claim pointed at the combination of the chamber or tunnel, M, and the perforated cone, O, in front of it.

The third claim pointed at the combination of the tunnel or chamber, M, and the upper hinged hood, S.

The fourth claim pointed at the combination of the tunnel or chamber, M, with the lower hinged flap, q.

It will be observed that into each of the four combinations set out in the four claims above respectively, the entire tunnel or chamber (composed of a bottom, sides, and top, united together) entered as an integral device.

The first feature of invention claimed looked to the function which, as an integral device, this tunnel performed at its receiving end with reference to the feeding and disintegrating brush.

The second feature claimed looked to the function which this same tunnel as an integral device performed, at the discharging end, in reference to the perforated vacuum cone.

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The third and fourth features claimed respectively concerned this same tunnel as an integral device, viewed in connection with the movable adjuncts at the upper and lower part of its discharging end.

In the several successive reissues of this patent, granted in 1856, April 17th, 1860, and December, 1860, this device was called a "tunnel or chamber;" was uniformly described as an integral device, and no hint was given that it could be entirely removed or that it could be separated into its elementary parts, and that either of its several elementary parts could alone perform any useful purpose in connection with the disintegrating brush and cone. After the patent had been extended by Congress, the extended patent was reissued May 19th, 1868 (that is to say, twenty two years after the date of the original patent), with specification No. 2942, presenting two distinct features of invention not exhibited in the original patent or in any prior reissue, viz., 1st, that there existed in the Wells invention a direct combination between the feeding machinery, the disintegrating brush, and the pervious cone, independent of any intermediate device between the disintegrating brush and the cone. Such a combination would be represented to the mind by dropping out the chamber or tunnel from the Wells patent, drawing Fig. 1, at page 98 U. S. 4, supra, and thus producing


A special claim, No. 4, was inserted in this reissue to point out and secure this combination to the representatives of Wells. It was in the following language:

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"The combination of the feeding apron, on which the fur can be placed in separate batches as described, the rotating brush or picker substantially as described, the rotating cone, or 'former,' provided with an exhausting mechanism substantially as described, the said combination having a mode of operation substantially such as described."

The second marked change in this last reissue, No. 2942, from either of its predecessors was the omitting from the specification the words "tunnel or chamber" always theretofore present in the specifications, and employing no distinctive term as applicable thereto as an integral device. At the same time that all mention of this integral device theretofore called the "tunnel or chamber" disappeared from the specification, that device in the new description was split up into four parts, each of which parts was treated as if it was in itself an integral device, and a specific designation was given to each part. Thus, instead of it being stated as it had been done in the previous issues that there was a "tunnel or chamber" extending from the brush toward the cone, it was stated in the last reissue that "from the under part of the rotating brush x x, there is a plate f, which extends towards the pervious cone." Again, it was stated that "there is an upper guide or deflector r, which extends over the rotating brush forward of it toward the cone." Again, it was stated that "on each side there is a guide m, extending from the picker brush toward the cone." These devices, called respectively for the first time in this reissue "plate f or bottom plate," "upper guide or top guide," and "guide m or side guides," had no names or designation by letters or otherwise whatsoever given to them in either of the prior reissues. Moreover, all statement of the function performed by the "tunnel or chamber" regarded as an integral device, which function had been theretofore regarded as the mode of operation of the Wells machine, disappeared in this reissue, and special functions were assigned to each of these parts, thus treated as integral devices in this reissue. Finally, in the claiming part of the specification, combinations between

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each of these several newly recognized integers and the other parts of the machine were carved out. Thus, Claim 1 covered the combination of the disintegrating brush, the "bottom plate or guide f f," and the rotating pervious vacuum cone. This combination would be shown by


Claim 1 was in the following language:

"The combination of the rotating brush or picker, substantially such as described, the rotating pervious cone, provided with an exhausting mechanism substantially as described, and the bottom plate or guide substantially as described for directing the fur fibers towards the lower part of the cone, and preventing the fibers going to waste, the said combination having the mode of operation specified, and for the purpose set forth."

Claim 2 covered the combination of the feeding mechanism, the disintegrating brush or mechanism, the "top guide or deflector," and the pervious vacuum cone. This combination would be shown in Fig. 5.


This Claim 2 was in these words:

"The combination of the feed apron, the rotating brush or

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picker, substantially as described, the rotating pervious cone, provided with an exhausting mechanism, substantially as described, and the guide or deflector, for directing fur fiber on to the tip and upper part of the cone, substantially as described, the said combination having the mode of operation specified, and for the purpose set forth."

Claim 3 embraced the combination of the disintegrating mechanism, the "side guides or either of them," and the previous vacuum cone. This combination in an alternate


form would be illustrated by Fig. 6, where only one side guide is involved, and by Fig. 7, where both side guides are shown.


Claim 3 was in these words:

"The combination of the rotating brush or picker, substantially as described, the rotating pervious cone provided with an exhausting mechanism, substantially as described, and the side guides, or either of them, substantially as described, to prevent fur fibers from getting out of the proper influence of the current traveling to the cone, and to protect the traveling fibers from disturbing currents, the said combination having the mode of operation specified, and for the purpose set forth. "

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Such being the claims of this reissue, No. 2942, on which the present suit was brought, it becomes necessary to describe the defendant's machine -- the machine, namely, alleged to have infringed. It consisted of a machine shown in Fig. 8.

This machine had a single feed apron A, a rotating picker B, which revolved in the direction shown by the arrow, throwing the fur against a "cut off board" F.


The fur is carried to the machine on the feeding apron A, and passes between rollers C and D, and by the action of the picket cylinder B, it is thrown against a cut off board F, whence it passes into the top of box I. The fan T creates a blast in the direction of the respective arrows, drawing the air and fur in the box I downwards, and as this current of air passes through the apertures in the cone the fur is deposited on said cone N.

The current of air can be regulated by means of the registers

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S, which are within the cone N, the lower one of which can be turned on shaft R, and serves to open or close the apertures of the upper disk so as to produce a current of air of the desired strength.

The court below, after describing to the jury the Wells "trunk," consisting of a bottom, top, and sides, and its mode of operation as a "trunk," proceeded to charge them as follows:

"Now gentlemen, having said what I have in relation to the combination of the three parts to the trunk, this instrumentality for controlling the passage of the fur from the picker to the cone, and mode of restraining this fur, so it shall not go to waste, and which is claimed to be new, you will perceive that it consists of a top, bottom, and sides; I have been asked to say to you that it is essential to a just construction of this patent that those sides should be united. No doubt that they are united in the model that is produced; and if the dividing of them into four pieces would make no substantial change, if the instrumentality would be the same substantially, and operate in the same mode, no man could sever them and say he was not an infringer; and if not then the union of the edges at the corners is not of the substance of the invention. Therefore I am not able to say that one has not infringed who did not use a trunk that was constructed with its corners solid or united in the manner that is here exhibited. If I had a case of that sort, I should submit to you the question whether a man who took the thing as we see it here and divided it at the corners, and set it up, had made anything more than an attempt, colorable, to evade the patent, without producing any substantial difference, either in the instrumentality or in the mode in which the result was effected."

"Such being the model which is produced here -- for if you perceive that, in any respect, I have erroneously conceived it or misstated it, you will correct me -- I have only recurred to it for the purpose of giving application to the views, mainly of law, bearing upon the question. I say this being substantially an account of the machine which Mrs. Wells, the plaintiff, patented in the reissue, which is the foundation of this suit, has, for reasons doubtless sufficient to her, divided the claim of the specification into several parts, and she has done so apparently

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under the idea that if she dealt with the machine as a unit, as an aggregate, the invention might be appropriated with impunity by a party who used a portion of its effective, original, and useful parts, leaving out some others. An inventor is at liberty when he has made an invention, if it consists of several distinct, effective, new devices, which as an aggregate, may constitute, in his judgment, the best machine in the world, but of which certain of the parts may be omitted, and it still be an effective, new, and useful machine -- I say that the inventor is at liberty, in taking out his patent, to protect himself against that species of innovation by claiming the separate, new, and useful parts of the machine by themselves."

"For illustration. A party patenting a machine may introduce ingenious and new devices which may be better than any other for the purpose, but some of which could be supplied by old devices, if he patents the machine and the combination containing his new devices, patents only a combination. A party who might think he could make a machine substantially useful for his purpose by omitting these devices and supplying their places by old devices having different operation and character would be at liberty to do so and thus, practically, a large benefit, or perhaps the whole benefit that is due the inventor, might be lost. I say the patent law therefore permits the inventor not only to patent the machine as an aggregate, but to patent the new devices which enter into it, so that another may not avail himself of his ingenuity in that respect. That is the reason why reissues often become necessary, because in the original patent the party did not claim distinctly the separate items of the property which he had a right to claim. And in that view I suppose the plaintiff here has claimed the combination of the rotating brush or picker, substantially as described, the rotating pervious cone, provided with an exhausting mechanism, substantially as described, and the bottom plate or guide, substantially as described, of which is called the trunk for directing the fur fibers toward the lower part of the cone, and preventing the fibers going to waste, which combination has the mode of operation specified and for the purpose set forth."

Upon this instruction of the court below, and upon the refusal of the court below to instruct the jury that the reissued patent, No. 2942, was invalid because it was not for

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the same invention as the original patent -- matters to which the defendant excepted -- the first principal decision of this Court is based.

The only other matters assigned for error and noticed by the court were:

That the court erred in refusing to instruct the jury that the defendant's machines did not infringe the fourth claim of the plaintiff's patent, unless it had the feeding device of the original patent in combination with the rotating brush or picker and the pervious cone, and the chamber or tunnel described in the original specification.

That the court erred in instructing the jury that the reissued patent is valid as respects the fourth claim if the combination of the three ingredients therein mentioned was new and could be usefully employed for the purpose of facilitating the making of hat bodies, supplemented by any known means of guiding the fur in such a way as to bring, by the operation of these three devices, the fur to the cone so as to make a hat body, or if those three devices would make a hat body without the aid of other means of protecting the fur against escape that would be serviceable for any purpose, then it was patentable, even without the trunk, which is also called the chamber or tunnel.

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