Supreme Court of United States.
*41 Mr. Charles L. Mitchell and Mr. D.H.J. Holmes for the appellant.
Mr. William Hubbell Fisher for the appellee.
MR. JUSTICE BLATCHFORD delivered the opinion of the court.
As a material question in this case arises on the difference between the specifications and claims of the original and the *42 reissued patents granted to the appellant, they are subjoined in parallel columns, the portions in each which are not found in the other being in italics.
ORIGINAL. REISSUE.
"This invention relates to a "My invention consists of a
cheap and simple device for preventing cheap and simple device for preventing
the accumulation of mud the accumulation of mud
and dust on the steps of carriages, and dust on the steps of carriages,
&c., and, also, for guarding &c., and, also, for guarding
the clothes of the rider from the clothes of the rider from
coming in contact with the coming in contact with the
wheels on entering or leaving wheels on entering or leaving
the vehicle. the vehicle.
In the accompanying drawings In the accompanying drawings
Fig. 1 shows the position of my Fig. 1 shows the position of my
fender when the carriage door is fender when the carriage door is
open, and Fig. 2 represents it open; Fig. 2 represents it when
when the door is closed. A the door is closed. A represents
represents the body of a carriage, the body of the carriage, B the
B the rear wheel, C the rear wheel, C the door, and D
door, and D the step; E is a the step; E is a plate, which
yielding plate, which may be may be made of sheet metal or
made of sheet steel or other suitable other suitable material, and the
material, and the upper end upper end of said plate is hinged
of said plate is hinged or otherwise or otherwise secured to the door
secured to the door C, whilst C. The lower end of the combined
its lower end is connected to a cover and fender E may
bar H, having an eye h, which be connected to the bar H, having
engages with a suitable aperture an eye h, which engages with
in the flange d of the step. This a suitable aperture in the flange
provision of the perforated flange d of the step. This provision of
d and eye h enables the plate E the perforated flange d and eye
to turn in either direction as the h, by reason of its loose character,
door C is opened or closed. The permits the cover and fender
flexibility of the plate E enables E to turn freely in either
it to bend up in the act of opening direction as the door C is opened
or closing the door (see or closed. The cover and fender
dotted lines in Fig. 1), and its E I prefer to make of flexible
elasticity enables it to hold the material, so that it may bend in
door firmly in either closed or the act of opening and closing
*43
wide-open position. When the the door (see dotted lines in
door is shut, the plate E closes Fig. 1), and its elasticity enables
up over the step D, and this it to hold the door firmly in
prevents the wheel from throwing either the closed or wide-open
dirt upon said step, as clearly position, when the cover and fender
shown in Fig. 2, but, as soon as are connected, as shown, to
the door is opened, the plate E the step D. When the door C
turns on the pivot device, d h, at is shut the plate E closes up
its lower end, thus uncovering over the step D and prevents
the step and serving as a fender the wheel from throwing dirt
to prevent the occupant's clothes over the step, as clearly shown
from coming in contact with the in Fig. 2, but, as soon as the
hind wheel of the carriage, as door is opened, the cover and
represented in Fig. 1. The yielding fender E, being attached to the
plate E acts as a spring to door C, is, of course, carried with
hold the door either open or shut, the door, and thus the step is uncovered,
and also prevents said door from and the plate E then
striking against the wheel, when occupies such a position as to
opened. The said plate E may be enable it to serve as a fender to
covered with leather or painted, prevent the rider's clothes, on
or may consist wholly of leather. entering or leaving the carriage,
from coming in contact with the
hind wheel of the carriage, as
represented in Fig. 1. The said
plate E may be covered with
leather or painted, or may consist
wholly of leather.
"I have selected for illustration "I have selected for illustration
the preferred form of my the preferred form of my
invention, but reserve the right invention, but reserve the right
to vary the same, it being susceptible to vary the same, it being susceptible
of various modifications. of being made to assume
For example, instead of being various forms and modifications.
pivoted to the step D, the lower For example, instead of being
end of the plate E may be hinged pivoted to the step D, the lower
or otherwise coupled to a frame end of the plate E may be hinged
projecting from the carriage body or otherwise coupled to a frame
and passing under the step. In projecting from the carriage body
some cases, for example, when and passing under the step. In
the distance from the wheel to some cases, when the distance
the body is short, I provide slots from the wheel to the body is
on both step and fender, or one short, I provide slots on both
*44
of them, to partially or wholly step and fender, or one of them,
relieve the plate of the flexion to partially or wholly relieve the
incident to opening or closing plate of the flexion incident to
the door. opening or closing the door.
"The important feature of my
invention is the plate E attached
to the door of the carriage, and
operating, by reason of such attachment,
as a step-cover when
the door is closed, and as a
wheel-fender when the door is
open.
"I claim: 1. In combination
with the step D and the door C,
the plate E attached to the door,
to operate as a step-cover when
the door is closed, and a wheel-fender
when the door is open,
substantially as and for the purpose
specified.
"I claim herein as new and of "2. A combined step-cover and
my invention a combined step-cover wheel-fender for carriages, consisting
and wheel-fender for carriages, of the flexible plate E,
consisting of the flexible the upper end of which is attached
plate E, whose upper end is attached to the carriage door, and
to the carriage door, and the lower end to the step, all
whose lower end is connected, being combined to operate as a
d h, to the step or other fixed object, step-cover, wheel-fender, and a
the whole being arranged to spring connection to retain the
operate substantially as herein door in the opened and closed
described and for the purpose positions, all substantially as set
set forth." forth."
Attention is at once arrested by certain marked differences between the two specifications. The drawings are alike. In the original specification the plate E is described as a yielding plate, while in the reissue it is merely a plate. In the original it is said that the lower end of the plate E is connected to the step through a bar with an eye in it which engages with an aperture in a flange on the step. In the reissue it is said that the lower end of the plate E may be so connected. In the original *45 the plate E is described as being flexible. In the reissue the inventor says that he prefers to make it of flexible material. In the original it is said that the elasticity of the plate E enables it to hold the door firmly either closed or open. In the reissue it is said that such elasticity will produce that effect when the plate E is connected to the step as shown in the drawings. In the original the description is that, as the door is opened, the plate E turns on the pivot device at its lower end, which connects it to the step. This is omitted in the reissue. In the original the plate is said to act as a spring to hold the door either open or shut. This is omitted in the reissue. The object of these changes is apparent. Unless the plate E is connected at the bottom with the step, the door cannot be kept open or closed by the operation of elasticity in the plate, for no elasticity can be developed unless the plate is held at its bottom. In the original the holding of the plate at its bottom to the step is made the rule; in the reissue it is made the exception. In the original the plate is said to be flexible, and is not said to be ever other than flexible. In the reissue only a preference for flexibility is asserted. The object of these changes is to arrive at a claim for a plate not held at its bottom to the step. Accordingly, the reissue makes the statement, not found in the original, that the important feature of the invention is to have the plate attached to the door, and thus operate as a step-cover and a wheel-fender. The first claim of the reissue is not found in the original, and grows out of the changes above mentioned. It is a broad claim to a combination with the step and the door of the plate E attached to the door, to operate as a step-cover and a wheel-fender, substantially as and for the purpose specified. The second claim in the reissue is substantially the same as the single claim of the original. It combines the features of the attachment of the plate, at its bottom, to the step, and, at its top, to the door, and of elasticity in the plate to hold the door open or closed.
The defendant's apparatus is a piece of material rigidly attached at its top to the door, and not attached at its bottom to the step, and operating as a combined step-cover and wheel-fender. It is plain that this construction did not infringe the claim of the original patent. It is alleged that it infringes the *46 first claim of the reissue. The defendant obtained a patent, No. 90,584, May 25, 1869, for an "improvement in step-covers and wheel-fenders for carriages." It was granted more than four years before the plaintiff applied for his reissue. The defendant's apparatus is constructed substantially in accordance with the description in that patent. That apparatus has on the rear part of the door elastic guards, which come against the wheel when the door is open. The claim of the patent is to the combined arrangement.
It is shown by the evidence that prior to the plaintiff's invention a combined wheel-fender and step-cover was in use in several forms, the step-cover being attached by a vertical arm or vertical arms to the bottom of the door by a rigid connection, and swinging back by the opening of the door, the vertical arm or arms then serving as a wheel-fender. In those structures the step-cover was a horizontal plate, projecting from the lower end of the vertical arm, and overlapping and covering, when the door was shut, the horizontal step, and being parallel with it. The defendant's structure differs from these old forms solely in having the vertical arm, which is rigidly attached to the lower part of the door, so extended in width as to itself cover the step and permit the horizontal part of the step-cover to be dispensed with. There is no difference in principle or mode of operation between the old structures and the defendant's structure. The difference is merely in form and shape. The plaintiff departed, in his original patent, from the principle of the old structures by joining his step-cover to the step and having the vertical plate yielding and flexible, so that its elasticity may keep the door open or closed. This, so far as appears, was a new invention, and he was entitled to claim it. He did claim it, and the original patent was adequate to secure it to him. The first claim of the reissue, if construed so as to cover the defendant's structure, must equally cover the old structures referred to. They had combined a step and a door, and a plate attached to the door, the plate operating as a step-cover when the door was closed, and as a wheel-fender when the door was open. Extending the vertical arm in width, so as to dispense with the horizontal projection from it, and make the vertical arm wide enough to cover the *47 step, or contracting the vertical arm in width and putting on the lower end of it a horizontal piece parallel with the step and overlying it, involved no new principle of structure or operation.
There is no suggestion in the specification of the original patent that the plate E is to be used disconnected at its lower end from the step, or to be any other than a yielding plate, so arranged as to keep the door open and shut, in addition to acting as a step-cover and wheel-fender. The first claim of the reissue, if construed so as to cover the defendant's structure, is void for want of novelty, being anticipated by the old structures referred to. Moreover, if so construed, it is invalid as being for a different invention from any found in the original patent. And, if it is so limited as to be no broader than the claim of the original patent, there has been no infringement of it. Under any view, the decree of the court below was correct; and it is
Affirmed.