Mr. Justice CLIFFORD
delivered the opinion of tbe court to the following effect.
The case presents two principal questions for decision:
1st. Whether the reissued patent granted to Evans for improvement in paper shirt collars is a valid patent.
2d. Whether the reissued patent originally granted to Gray for improvements in turn-over shirt collars is a valid patent.
Infringement is admitted.
The defendants allege that the reissued patent of Evans is not for the same invention as the original. This, if true, is sufficient to show that the patent is invalid even if the patentee was the original and first inventor of the improvement described in tbe original patent.
Power to surrender patents for the purpose suggested in the act of Congress implies that the specification may be corrected to the extent necessary to cure the defects and to supply the deficiencies to render the patent operative and valid, but the interpolation of new features, ingredients, or devices which were neither described, suggested, nor substantially indicated in the specification, drawings, or patent-office model were never allowed, and by a recent act of Congress it is provided that no new matter shall be introduced into the specification, nor, in the case of a machine patent, shall the model or drawings be amended except each by the other.
Repeated decisions also have established the rule that parol testimony is not admissible, in an application for a reissued patent, to enlarge the scope and effect of the invention beyond what was described, suggested, or substantially indicated in the original specification, drawings, or patent-office model, as the purpose of a surrender and reissue is not to introduce new features, ingredients, or devices, but
to render effectual the actual invention for which the original patent should have been granted.
Unless, however, it is apparent upon the face of the new patent that the commissioner has exceeded his authority, his decision is final and conclusive, as the jurisdiction to reissue patents is vested in hipi subject to a single exception, that if there is such repugnancy between the old and the new patent that it must be held, as matter of legal construction, that the reissued patent is not for the same invention as that embraced and secured in the original patent, then the reissued patent is invalid.
Whether a reissued patent is for the same invention as the surrendered original or for a different one, must very largely be determined by a compai’ison of the two instruments, as the decision must necessarily depend upon the question whether the specifications and drawings of the reissued patent are not substantially the same as those of the original; and if not, whether the omissions or additions are or are not greater thau the law allows to cure the defects of the original specification.
Instruments so widely different as are the original patent to Evans and the reissue of it
can hardly be compared within the usual meaning and ordinary application of that word, as they really have substantially nothing in common, so far as respects the description of the invention which they respectively profess to secure. Examples where the difference between the original and reissued patents is as manifest as in this case may perhaps arise, but none such were referred to in the argument of such a striking character, nor are any such withiu the recollection of the court where the difference between the reissued and original patents is so pervading as in the ease in decision.
Wide differences in that regard were exhibited in the case of
Gill
v. Wells, recently decided by this court,
but they were by no means as striking and unmistakable as those disclosed in this record. Here the dissimilarity extends to
every part of the description of the invention. There it had respect only to one of the elements of the patented combination.
Attempt was made in that case to emasculate the combination described in the original patent by leaving out one of the material elements in order to give the exclusive right a more comprehensive effect in prosecuting suits for infringement, but in the case before the court the reissued patent is different throughout from the invention embodied in the original patent.
Proof of that proposition is found also in the respective claims of the patents as well as in the respective specifications. What I claim as new and desire to secure by letters-patent, says the original patentee, is a shirt collar made of parchment-paper and coated with varnish of bleached shellac; but the patentee of the reissued patent claims as an article of new manufacture a collar made of long-fibre paper without referring to a coating of any kind; nor is the question affected in the least by the fact that the claim of the respective patents concludes with the phrase, “substantially as described,” because the description of what is claimed, as given in the respective specifications, is even more widely different than the claims of the respective patents.
Instead of the phrase employed in the claim of the original patent, the specification to which it refers states that the nature of the invention consists first in making shirt collars of a fabric known to the trade as parchment-paper, or paper prepared with animal sizing, and second, in coating one or both sides of paper shirt collars with a thin varnish of bleached shellac, which, as there represeute’d, not only adds smoothness, strength, and stiffness to the fabric, but also, being a repellent of water, prevents perspiration or other moisture from entering the collar.
Nor will any attempt to construe the claim of the reissued patent by the specification have any tendency to remove the difficulty in the way of the complainants, as the specification is to the same effect as the claim, and shows conclusively that the manufacture there described is a collar made of
long-fibre paper manufactured in' the manner and by the means therein minutely described; that the paper there described is not the parchment-paper described in the specification of the original patent, nor is it paper prepared with animal sizing, nor, does the specification or claim of the reissued patent contemplate or require that either side of the collars shall be coated with varnish of bleached shellac for any purpose. Animal sizing, according to that patent, may be
used
or it may be omitted, and one or both sides of the paper may be covered with a thin varnish of bleached shellac or such a coating may be
omitted
altogether, which shows that those two requirements of the original patent are not a material part of the invention embodied in the reissued patent.
Authorities to support the proposition that a reissued patent is invalid if not for the same invention as the surrendered original are scarcely necessary, as the rule is universally acknowledged.
2.
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Mr. Justice CLIFFORD
delivered the opinion of tbe court to the following effect.
The case presents two principal questions for decision:
1st. Whether the reissued patent granted to Evans for improvement in paper shirt collars is a valid patent.
2d. Whether the reissued patent originally granted to Gray for improvements in turn-over shirt collars is a valid patent.
Infringement is admitted.
The defendants allege that the reissued patent of Evans is not for the same invention as the original. This, if true, is sufficient to show that the patent is invalid even if the patentee was the original and first inventor of the improvement described in tbe original patent.
Power to surrender patents for the purpose suggested in the act of Congress implies that the specification may be corrected to the extent necessary to cure the defects and to supply the deficiencies to render the patent operative and valid, but the interpolation of new features, ingredients, or devices which were neither described, suggested, nor substantially indicated in the specification, drawings, or patent-office model were never allowed, and by a recent act of Congress it is provided that no new matter shall be introduced into the specification, nor, in the case of a machine patent, shall the model or drawings be amended except each by the other.
Repeated decisions also have established the rule that parol testimony is not admissible, in an application for a reissued patent, to enlarge the scope and effect of the invention beyond what was described, suggested, or substantially indicated in the original specification, drawings, or patent-office model, as the purpose of a surrender and reissue is not to introduce new features, ingredients, or devices, but
to render effectual the actual invention for which the original patent should have been granted.
Unless, however, it is apparent upon the face of the new patent that the commissioner has exceeded his authority, his decision is final and conclusive, as the jurisdiction to reissue patents is vested in hipi subject to a single exception, that if there is such repugnancy between the old and the new patent that it must be held, as matter of legal construction, that the reissued patent is not for the same invention as that embraced and secured in the original patent, then the reissued patent is invalid.
Whether a reissued patent is for the same invention as the surrendered original or for a different one, must very largely be determined by a compai’ison of the two instruments, as the decision must necessarily depend upon the question whether the specifications and drawings of the reissued patent are not substantially the same as those of the original; and if not, whether the omissions or additions are or are not greater thau the law allows to cure the defects of the original specification.
Instruments so widely different as are the original patent to Evans and the reissue of it
can hardly be compared within the usual meaning and ordinary application of that word, as they really have substantially nothing in common, so far as respects the description of the invention which they respectively profess to secure. Examples where the difference between the original and reissued patents is as manifest as in this case may perhaps arise, but none such were referred to in the argument of such a striking character, nor are any such withiu the recollection of the court where the difference between the reissued and original patents is so pervading as in the ease in decision.
Wide differences in that regard were exhibited in the case of
Gill
v. Wells, recently decided by this court,
but they were by no means as striking and unmistakable as those disclosed in this record. Here the dissimilarity extends to
every part of the description of the invention. There it had respect only to one of the elements of the patented combination.
Attempt was made in that case to emasculate the combination described in the original patent by leaving out one of the material elements in order to give the exclusive right a more comprehensive effect in prosecuting suits for infringement, but in the case before the court the reissued patent is different throughout from the invention embodied in the original patent.
Proof of that proposition is found also in the respective claims of the patents as well as in the respective specifications. What I claim as new and desire to secure by letters-patent, says the original patentee, is a shirt collar made of parchment-paper and coated with varnish of bleached shellac; but the patentee of the reissued patent claims as an article of new manufacture a collar made of long-fibre paper without referring to a coating of any kind; nor is the question affected in the least by the fact that the claim of the respective patents concludes with the phrase, “substantially as described,” because the description of what is claimed, as given in the respective specifications, is even more widely different than the claims of the respective patents.
Instead of the phrase employed in the claim of the original patent, the specification to which it refers states that the nature of the invention consists first in making shirt collars of a fabric known to the trade as parchment-paper, or paper prepared with animal sizing, and second, in coating one or both sides of paper shirt collars with a thin varnish of bleached shellac, which, as there represeute’d, not only adds smoothness, strength, and stiffness to the fabric, but also, being a repellent of water, prevents perspiration or other moisture from entering the collar.
Nor will any attempt to construe the claim of the reissued patent by the specification have any tendency to remove the difficulty in the way of the complainants, as the specification is to the same effect as the claim, and shows conclusively that the manufacture there described is a collar made of
long-fibre paper manufactured in' the manner and by the means therein minutely described; that the paper there described is not the parchment-paper described in the specification of the original patent, nor is it paper prepared with animal sizing, nor, does the specification or claim of the reissued patent contemplate or require that either side of the collars shall be coated with varnish of bleached shellac for any purpose. Animal sizing, according to that patent, may be
used
or it may be omitted, and one or both sides of the paper may be covered with a thin varnish of bleached shellac or such a coating may be
omitted
altogether, which shows that those two requirements of the original patent are not a material part of the invention embodied in the reissued patent.
Authorities to support the proposition that a reissued patent is invalid if not for the same invention as the surrendered original are scarcely necessary, as the rule is universally acknowledged.
2. Suppose, however, the two may be so construed as to obviate that objection to the reissued patent, still the second defence of the respondents remains to be considered, that the patentee in the original patent is not the original and first inventor of the alleged improvement.
Usually the patent when introduced is
prima facie
evidence to support the affirmative of that issue, but the representations of the specification may be such as to afford satisfactory proof that the alleged invention is neither new nor useful. Equivalent views were expressed by the Circuit Court in disposing of the question involved in the present issue, and in those views the court here entirely concurs.
Nothing was known to the supposed inventor respecting paper made of long fibre when he obtained his original patent, except that he previously found, as he states in his reissued patent, a sample of it ready made, suitable for such a purpose, and that he used it and filed it with his original application for a patent. Where he found it does not appear,
nor does it appear for what purpose he used it, except that he filed it in the patent office. He does not even state that the original patentee knew who made it, nor that he had any knowledge of the process by which it was made. Viewed in any reasonable light the narration shows that the sample was made by another and not by the supposed inventor, and it affords a strong ground of presumption that he knew nothing respecting the process of manufacturing such paper, or of the constituents of the manufacture, except what is matter of common knowledge.
Hard stock, it is now said, must be used in larger proportions than is required for other descriptions of paper, and that the pulp must be 'subjected for a greater length of time to the long-beating process, so that the fibre shall be not only long but fine, in order that the paper may be strong, smooth, and even, and that the fibre shall become bedded in the thickness of the paper so as not to mar the surface. Neither of such requirements or conditions was contained in the original specification, from which it may be inferred that the original invention did not include the discovery of the constituents of the paper to be used for the purpose, nor the process by which the paper was to be manufactured. Conclusive support to that proposition is found in the specification of the original patent, in which the patentee states that he takes the parchment-paper known to the trade, or paper prepared with animal sizing, and covers one or both sides of it with thin varnish of bleached shellac, and having allowed it to dry, the paper is then passed between polishing rollers, such as are in general use for polishing paper or cloth, which operation finishes the fabric ready to be made into collars.
Enough appears in these suggestions to show that the specification of the original patent does not describe the process of making paper possessing the qualities of longfibre paper, but the making of collars out of parchment-paper, showing that the discovery that for a good paper collar the manufacturer must have .paper which possesses the qualities of long-fibre paper is a subsequent discovery..
Nor does the statement in the reissued specification, that he produced such a paper or caused it to be produced, strengthen the case for the complainants, because the same specification states in effect that he found a sample of such paper suitable for the purpose and that he used it and filed it with his original application, showing conclusively that the paper existed prior to his supposed invention.
Improvements in the manufacture of paper have often been made, and it may be that the discovery at that period of the constituents for making such paper or of the process by which paper possessing the described properties could be produced would have been the proper subject of a patent. Sufficient appears to show that the patentee learned from his experiments that he wanted paper of the qualities described in the reissued patent, and the evidence proves that ho said so to the paper manufacturer, but it is clear that he did not communicate any information to the manufacturer respecting the process by which such paper could be produced, nor did he give the manufacturer any directions upon the subject. Information of the kind he could not communicate for the best possible reason, which is that he was utterly destitute of any knowledge as to the constituents of such paper or the process by which it could be manufactured. Such paper was eventually produced by the manufacturer to whom the patentee applied to make the attempt, after many experiments as to the character of the materials suited to the end, and as to the mode of operation best adapted to effect the desired result, without any assistance whatever from the patentee.
Good paper collars may unquestionably be manufactured from that product, but it is nevertheless true that the patentee is not entitled to a patent for the collars as a new manufacture, for several reasons: (1.) Because he did not invent either the product or the process by which the product is obtained. (2.) Because the collars, apart from the paper of which they are made, are identical in form, structure, and arrangement with collars previously made of linen, paper of .different quality, and other fabrics. (3.) Because
it appears that the patentee is not the original and first inventor either of the paper or of the process by which the paper is made, or of the collar which is denominated a new manufacture.
Articles of manufacture may be new in the commercial sense when they are not new in the sense of the patent law. New articles of commerce are not patentable as new manufactures, unless it appears in the given case that the production of the new article involved the exercise of invention or discovery beyond what was necessary to construct the apparatus for its manufacture or production.
Nothing short of invention or discovery will support a patent for a manufacture any more than for an art, machine, or composition of matter, for which proposition there is abundant authority in the decisions of this court.
Suffice it to say that it is not pretended that the original patentee invented either the paper or the process, but the claim in argument is that he was the first person to conceive the idea that paper possessing the described qualities was desirable for the purpose of making such collars, and that inasmuch as he was not a paper manufacturer he had a right to employ trained skill to produce the desired product, and that he, under the circumstances, should be regarded as the actual inventor because he made known to the manufacturer that paper of such qualities would be useful, and because he employed the manufacturer to engage in the effort to produce the desired article; but the patentee communicated no information to the manufacturer as to the constituents or ingredients to be used, or as to the mode of operation by which they were to be compounded in order to produce the desired result.
Where a person has discovered a new and useful principle in a machine, manufacture, or composition of matter, he maj’ employ other persons to assist in carrying out that principle, and if they, in the course of experiments arising from
that employment, make discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general to be regarded as the property of the party who discovered the original principle, and they may be embodied in his patent as part of his invention.
Doubt upon that subject cannot be entertained, but persons employed, as much as employers, are entitled to their own independent inventions, and if the suggestions communicated constitute the whole substance of the improvement the rule is otherwise, and the patent, if granted to the employer, is invalid, because the'real invention or discovery belongs to the person who made the suggestions.
Apply that rule to the present ease and it is clear that the original patentee was not entitled to a patent either for the paper or the process, as he never made any invention or discovery upon the subject.
II.
We
come now to consider the reissued patent of Gray ; one defence to which is that the patentee is not the original and first inventor of the improvement.
Three claims are contained in the reissued patent, substantially as follows: (1.) The turning over of a paper or a paper and cloth collar by a defined line, whether pressed into the material by a die or pointed instrument, or by bending it over the edge of a pattern or block of the proper curve or line, substantially as described. (2.) So turning the part B of a paper or paper and cloth collar over towards the part A, in a curved or angular line, instead of a straight line, substantially as and for the purpose described. (3.) So turning the part B on to or towards the part A, in .the manner described, as that a space shall be left between the two parts.
This third claim it is admitted is substantially the same as the second claim, in consequence of which those two claims will be considered together.
1. Collars of paper or paper and cloth, if turned over on
a defined line, are covered by the first claim, whether the line is curved, angular, or straight, and whether the line is made or pressed into the fabric by a die or any pointed instrument, or marked'or effected by bending the material over the edge of a pattern or block of the proper or preferred line or curve. Evidently, therefore, it is intended to cover collars turned over on a defined line effected in any possible manner or by any practicable means, if made of paper or paper and cloth. Shirt collars are turned over or down on a curved line in order to prevent the collars from puckering or wrinkling when bent in a circle, and in order to cause the part turned over or down to set out a little from the band portion of the same, so as to admit a necktie between the band and the part of the collar which is turned over.
Manifestly these objects are precisely the same whether the collar be all paper, paper and cloth, or all linen. Hence it is difficult to perceive upon what ground it can be held that any change in the manner of turning down a collar on a curved line, if made of any one of these fabrics, is patentable, if collars of either of the other fabrics have been turned down before in the same manner and precisely for the same purpose.
Evidence is exhibited which shows that many years before the patent was granted in this case paper envelopes and the tops and bottoms of paper boxes were produced by shapers of steel pressed on the material so as to produce defined lines by which the material could be folded. Satisfactory proof is also exhibited that collars made of paper and cloth were, several years earlier than the date of this invention, folded over a piece of metal in a straight line, which is the same process as that described in the specification of this patent, as it appears that t.he material was bent over a pattern or block to give the proposed curve or line.
Plenary evidence is also exhibited showing that linen collars were ironed on blocks with a groove in the block by which the collar received a defined line for the folding, which accomplished the same purpose as the pattern or block.
Proofs were also exhibited showing that paper collars,
long before the alleged invention uuder consideration, were folded by laying upon the unfinished side of the same a piece of tin having at one edge the required curve, which enabled the manipulator to accomplish the same object by pressing upward over sueh curve a part of the collar so as to mark the line of the curve and crease the paper preparatory to turning the collar over, which enabled the laundress to accomplish the same object as the means described in the specification of the patent.
Support to the answer is also derived from the proofs that linen collars had for years been turned over in a curved line and for the very purpose described, which is to prevent wrinkling and to afford space for the cravat.
Taken as a whole, the proofs in this regard are Conclusive, that the patentee is not the original and first inventor of the patented improvement described in either of the claims of his patent.
Decree affirmed.