duced into the first case, have led to a different decision. See Bailey Wringing-machine Co. v. Adams, 3 Ban. & A. 96. Upon this motion I must accept the uncontradicted affidavit of the defendant as true. He swears to the existence of two facts, either of which is sufficient to defeat this application. (1) That he has been in the open, notorious use of the flexible and elastic foundation strips, in the construction; (2) that the owners of the patent have, since 1878, known of his use of the mechanism now complained of, and have taken no steps, except making idle threats, to restrain him. This laches is accounted for, and attempted to be excused, by the statement that the owners of the patent were quarreling among themselves, from the date of the patent until 1882, and that since that latter date they have been constantly engaged in establishing their rights against other infringers. This is not satisfactory for such a long delay. If the complainant and those whom he represents could, for any cause, refrain from proceeding against open infringers for more than seven years, it will be no hardship for them to wait for a few months longer for an injunction, if it shall appear, on final hearing, that one should be issued.

SHIRLEY V. MAYER.

(Circuit Court, E. D. New York. June 11, 1885.)

1. PATENTS FOR INVENTIONS IMPROVEMENT IN LAMP CHIMNEYS - DEFECTIVE CLAIM.

Where a patentee has not claimed as much as he is entitled to claim, he is bound to discover the defect in a reasonable time or lose his right to a reissue. 2. SAME-REISSUE-EXPANSION.

Where there is a substantial expansion in a reissue of letters patent, so as to include a combination not included in the original, such reissue is void. 3. SAME-LAMP CHIMNEY-REISSUE VOID.

Reissued patent granted to Frederick S. Shirley, assignee of Robert R. Crosby, May 8, 1877, the original patent having been granted to Crosby, July 14, 1868, held void.

In Equity. On motion for temporary injunction.

J. Edgar Bull and T..Frank Brownell, for complainant.
Miles B. Andrus and Wm. B. Lynes, for defendant.

BENEDICT, J. This is a motion for a preliminary injunction to restrain the defendant from making lamp chimneys which, as the plaintiff asserts, infringe a patent reissued to him as assignee of Robert R. Crosby, the inventor, on May 8, 1877, the original patent having been granted to Crosby, July 14, 1868. The validity of the reissue is disputed by the defendant, upon the ground that the claim of the original patent has been expanded in the reissue, and the reissue having been obtained nearly nine years subsequent to the issue of the original, must be held void upon the authority of Miller v. Bridgeport

Brass Co., 104 U. S. 350; Mahn v. Harwood, 112 U. S. 362; S. C. 5 Sup. Ct. Rep. 174. The original patent contained but a single claim, as follows:

"The abrupt or nearly right-angled enlargement of the chimney, as represented by figure 3, arranged in relation to the lamp burner substantially as and for the purpose herein specified."

It is manifest, from an inspection of this claim in connection with the specifications, that the feature of the chimney claimed as a new and useful invention was an abrupt enlargement of the chimney located so as to bring the enlargement "at about the base of the burner cone." The reissue has but a single claim, as follows:

"A lamp chimney having an abrupt or nearly right-angled enlargement on, or nearly on, a level with the flame, in combination with the conical sides, and contracted, opening at the top, substantially as set forth."

The points of difference between the two claims are these: In the original claim the abrupt enlargement is located so as to come "at about the base of the burner cone." In the claim of the reissue the abrupt enlargement is located so as to be "on, or nearly on, a level with the flame." The original claim makes no allusion to the combination of the abrupt enlargement with the conical sides and contracted opening, which is the whole subject-matter of the claim of the reissue.

In regard to the first of these points of difference, the ground taken by the plaintiff here is that the words "at about the base of the burner cone" in the original claim are equivalent in meaning to the words. "on, or nearly on, a level with the flame" in the claim of the reissue. But it seems to me that a chimney having its enlargement at or about the base of the burner cone, which is as low as it would ordinarily be practicable to locate the enlargement, comes within the description of chimney considered by Mr. Justice BLATCHFORD in Shirley v. Sanderson, 8 Fed. Rep. 905, where he holds "a chimney with a rightangled enlargement too low down" to be no infringement of the reissue in question. The "chimneys with short necks," considered by Mr. Justice BLATCHFORD in Shirley v. Sanderson not to infringe the Shirley reissue, certainly are more nearly the equivalent of chimneys with the enlargement "at about the base of the burner cone" than of chimneys with the enlargement "on, or nearly on, a level with the flame." The decision in Shirley v. Sanderson is authority, therefore, for holding that by substituting in the claim of the reissue the words "on, or nearly on, a level with the flame," in place of the words "at about the base of the burner cone," used in the original specification, a substantial expansion of the patent was effected. If "at the base of the burner cone" were the equivalent of "on a level with the flame," it would not have been held in Shirley v. Sanderson that chimneys with short necks and chimneys with the enlargement too low down were not covered by the claim of the reissue.

It has been shown on this motion by affidavit that both the orig

inal and the reissued patent here in question were before Mr. Justice BLATCHFORD When he decided Shirley v. Sanderson; but the opinion in Shirley v. Sanderson makes no allusion to any question as to the validity of the reissue, and it is evident that no decision of that question was intended to be made in that case..

But, further, the second point of difference above alluded to as existing between the original and the reissue appears to me to be fatal to the validity of the reissue. It is manifest from an inspection of the two patents that the claim of the reissue is for a combination which was not claimed in the original, and contains a substantial expansion of the patent.

The defendant has put in evidence a patent issued to Joseph H. Connelly, July 3, 1866, many years prior to the Crosby patent. This patent the expert called for the plaintiff, while contending that it does not anticipate the reissue, concedes would anticipate the original. This concession appears to be fatal to the reissue; for, if the reissue covers an invention not covered by the original, the scope of the patent has been enlarged by the reissue.

But aside from this concession made by the defendant, I am of the opinion that the reissue must be held void. It was issued nearly nine years subsequent to the issue of the original patent, and then not to the inventor, but to an assignee of the inventor. The claim of the original was clear and explicit. Its scope was plain, and it did not include the combination covered by the claim of the reissue. No error or misstatement in the claim of the original appears to have been suggested until the application for a reissue, and then the only amendment applied for was to describe the enlargement as "on, or nearly on, a level with the flame," instead of by the words "at about the base of the burner cone," used in the original. The application for that amendment was rejected on reference to the Connelly patent of July 3, 1866, and then only was the claim allowed so as to cover a combination.

The mission from the claim of the original of any reference to a combination being manifest on inspection of the claim, and it being also manifest that such omission was not the result of inadvertence, accident, or mistake, as otherwise it would have been corrected without delay, the case is one of intentional omission from the original claim of what the reissued patent now purports to secure, and it comes within the principle of the decision of the supreme court in Mahn v. Harwood, 112 U. S. 362, S. C. 5 Sup. Ct. Rep. 174, where the court says:

"If a patentee has not claimed as much as he is entitled to claim, he is bound to discover the defect in a reasonable time, or he loses all right to a reissue."

Here more than nine years were allowed to pass, and, because of that delay, the reissue must be held void.

The motion for an injunction is denied.

FRENCH V. CARTER and others.

(Circuit Court, S. D. New York. September 15, 1885.)

PATENTS FOR INVENTIONS-INVENTION-ROOF FOR BURIAL VAULTS.

Patent No. 244,224, issued to Hamline Q. French, July 12, 1881, for an inproved roof for vaults for burial purposes, held void for want of invention.

In Equity.

L. B. Bunnell and George H. Fletcher, for plaintiff.

Rastus S. Ransom and Philip J. O'Reilly, for defendant.

SHIPMAN, J. This is a bill in equity, founded upon the infringement of letters patent No. 244,224, issued to Hamline Q. French, July 12, 1881, for an improved roof for vaults for burial purposes. The patentee, in his specification, described this roof as follows:

"The object of my invention is to obtain a building without vertical joints, and held together and locked at the roof, so that by the locking, and the weight of the roof, the structure shall be made as enduring as the material of which it is built. My improved roof consists of the front and rear gablestones, the roof-stones, which are continuous from one gable-stone to the other at each side, and held to the gable-stones by mortise and tenon or equivalent connections, and the cap-stone, which is formed with a rabbet to lap upon the roof-stones, and rests upon the gables, by which construction the stones forming the complete roof are securely locked, and without possibility of dislocation without being raised bodily upward.'

The gables are each a single stone of a length sufficient to connect the roof-stones, and with tenons upon each of their upper surfaces. The claims are:

"(1) A roof for vaults and similar structures, consisting of the continuous roof-stones, B, B, gable-stones, A, connecting and locked to the roof-stones, and the cap-stone, C, lapping upon the roof-stones, substantially as shown and described.

"(2) In roofs for vaults and similar structures, the combination of continuous roof-stones, B, B, and gable-stones, A, A, connected and locked by mortise and tenons, or equivalent devices, substantially as shown and described."

The difficulty in vault stone roofs which was to be remedied was the exposed or open seams between the stones into which water can enter and become frozen, and thus, by the action of frost, the stones are separated. Freedom from vertical joints, and the locking of roofstones and cap-stone to the gable-stones are the features of the improvement.

Without the aid of testimony in regard to the state of the art, I should be strongly inclined to say, upon the face of the patent, that it did not contain a patentable invention. By the invention described in the second claim, the difficulty is remedied by connecting, in the ordinary way, to gable-stones, made of one piece, roof-stones which are long enough to extend from one gable-stone to the other, and protecting the seams by rebates, if more than one roof-stone upon one

side of a roof is used, and then filling the space or ridge near the top of the roof in such manner as ingenuity or taste may dictate. By the invention described in the first claim, the space between the roofstones is filled by a single massive cap-stone, the edges of which lapped over the roof-stones, and which rested upon the gables. The device seems to be a simple one, and easily conceived, if the vaultowner possesses the pecuniary ability to provide granite of the requisite length. But the description of the tomb of the family of Billand, which is contained in volume 13 of the French work entitled "Revue Generale de l'Architecture et des Travaux Publics," shows that, in view of the existing knowledge in regard to structures of this kind, there was no invention in the patented device. The article says:

"Above this ordonnance extends an entablature, on, which is supported the two sloping sides of the roof, which finish the edifice. The entablature is composed of three stones, hollowed out so as to form a species of vault, which marks the size; and these stones, jointed together by rebates, are bound, and, as it were, tied together by the two thick (hard) slabs of stone, which cover their sloping sides, by means of the hollow made on the lower sides of the former, (the slabs,) in order to clamp the projections retained on the stones of the vault. These stones are, in their turn, tied together by the ridge which surmounts the building."

The plates which are attached to the description show that the Billand roof consists of two sloping roof-stones, each being a single piece, fastened by projections and cavities to gable-stones, each being in one piece, and a single ridge-stone, covering the joint where the upper edges of the roof-stones meet, and not resting on the gablestones. The difference between the Billand roof and the roof of the patent is that the roof-stones of the former are so wide that only a ridge-stone is needed to cover the joint, while roof-stones of the latter are narrower, and a wider ridge-stone or cap-stone is needed, which must, of course, be interposed between the roof-stones, and must rest upon the gable. The ridge-stone of the Billand tomb is a small capstone, which bound the roof-stones together, and which covered the joint made by their edges. The cap-stone of the patent is a larger and wider ridge-stone than that of Billand, and, by its great weight, is more efficient in holding the structure together. In order to produce the patented device, the customary skill of the worker in stone neither needed nor received any aid from the inventive faculty. The bill should be dismissed.