appeals, in passing on these cases, considered that there was no essential difference between the meaning of the words "repair and replacement." That they both meant restoration of worn-out parts. This distinction was recognized in Wilson v. Simpson, supra, where it is said that the language of the court in Wilson's and Roussan's Case (4 How., 709) did not permit the assignee of a patent to make other machines or reconstruct them in gross upon the frame of machines which the assignee had in use but it does comprehend and permit the resupply of the effective ultimate tool of the invention, which is liable to be often worn out or to become inoperative for its intended effect, which the inventor contemplated would have to be frequently replaced anew, during the time that the machine as a whole might last. But there is no pretense in the case at bar of mending broken or worn-out records, or of repairing or replacing "the operative ultimate tool of the invention" which has deteriorated by use. The sales of petitioner, as found by the courts below, and as established by the evidence, were not to furnish new records identical with those originally offered by the Victor Company, but, to use the language of Judge Lacombe in the circuit court more frequently in order to increase the repertory of tunes than as substituted for worn-out records. The right of substitution or "resupply" of an element depends upon the same test. The license granted to a purchaser of a patented combination is to preserve its fitness for use so far as it may be affected by wear or breakage. Beyond this there is no license. It is further contended by petitioner that the disk records, being unpatented articles of commerce which could be used upon the mechanical feed-device machine or exported to foreign countries, or concededly for repair of machines sold by respondent, petitioner could legally sell the same. A detailed comment on this contention or of the cases cited to support it we need not make. The facts of the case exclude petitioner from the situation which is the foundation of the contention. The injunction did not forbid the use of the records, except in violation of claims 5 and 35 of respondent's patent. The judgment for contempt was based upon the facts which we have detailed and they show a sale of the records for use in the Victor machine," an entirely voluntary and intentional" (to use the language of Judge Lacombe) contributory infringement. We have seen that the circuit court of appeals assumed, for the purposes of this cause, that the feed-device machine was not an infringement of the machine of the patent. We may assume the same, and we are relieved from reviewing the very long and complex affidavits submitted by the petitioner to explain the same, petitioner's relation to it or its position in the art of sound reproduction. Petitioner was found guilty of selling records which constituted an element in the combination of the patent in suit, and for that petitioner was punished. Upon whatever questions or contentions may arise from the use of the feed-device machine we reserve opinion. We have not reviewed or commented upon the other cases cited respectively by petitioner and respondents in support of their contentions, deeming those we have considered and the principles we have announced sufficient for our decision. Judgment affirmed. [Supreme Court of the United States.] JOHNSON v. MUESER. Decided February 23, 1909. 145 O. G., 767. DECISION OF THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA IN INTERFERENCE-NOT FINAL-No APPEAL TO THE SUPREME COURT OF THE UNITED STATES. The ruling in Frasch v. Moore (C. D., 1908, 609; 137 O. G., 230; 211 U. S., 1,) followed to the effect that decisions of the Court of Appeals of the District of Columbia on appeals from the Commissioner of Patents are not appealable to the Supreme Court of the United States. Mr. Melville Church and Mr. James A. Carr for the appellant. Mr. Stephen J. Cox and Mr. W. R. Baird for the appellee. Mr. Chief Justice FULLER delivered the opinion of the Court. This was a proceeding of interference in which the Examiner of Interferences awarded priority to Mueser. This decision was in turn affirmed by the Examiners-in-Chief and by the Commissioner. From the decision of the Commissioner an appeal was taken to the Court of Appeals of the District of Columbia, and that court affirmed the decision of the Commissioner of Patents, and directed that its own decision be certified to the Commissioner of Patents, as required by law. The court held that in such a proceeding it would not review the action of the Patent Office in deciding that the issue was a patentable one, but would confine its consideration to the question of priority alone. (Ante, 437; 145 O. G., 764; 29 App. D. C., 61.) And in the course of its opinion the Court said: It must be borne in mind that the final judgment of this court entitling a claimant to a patent in either an ex parte, or an interference proceeding, is not conclusive of either patentability or priority. The patent, when issued, may be attacked in the courts by parties whose interests may be affected by the monopoly claimed thereunder; and the defeated party has another remedy by proceeding in a court of equity as provided in section 4915, Revised Statutes. We think our ruling in Frasch v. Moore (C. D., 1908, 609; 137 O. G., 230; 211 U. S., 1) is applicable, and that this writ of error must be disposed of accordingly. The application for certiorari must take the same course. Writ of error dismissed. Certiorari denied. [Supreme Court of the United States.] STEWARD et al. v. AMERICAN LAVA COMPANY et al. KIRCHBERGER PATENTABILITY-NEW MATTER-CLAIMS BASED ON THEORY OF OPERATION NOT ORIGINALLY DISCLOSED. Where an application as originally filed did not differentiate from the prior art. either in construction or theory of operation and an amendment thereto was filed, without verification by the inventor, introducing a new theory of operation and containing process claims covering such theory, such claims are invalid as covering new matter. Mr. Louis C. Raegener for the petitioners. Mr. Justice HOLMES delivered the opinion of the Court. These are bills in equity brought by the petitioners to restrain the infringement of Letters Patent No. 589,342, issued to the assignee of Edward J. Dolan, and dated August 31, 1897. The patent was held invalid by the Circuit Court of Appeals for the Sixth Circuit. (155 Fed. Rep., 731 and 740; 84 C. C. A., 157 and 166.) It had been sustained by the Circuit Court of Appeals for the Second Circuit, (Kirchberger v. American Acetylene Burner Co., 128 Fed., 599; 64 C. C. A., 107,) and a writ of certiorari was granted by this Court to the first-mentioned circuit court of appeals. The patent, so far as it comes in question here, is for a tip for acetylene-gas burners and for the process of burning acetylene gas in the mode set forth. The court below held that the tip was not new, that the description was too indefinite, that the amended specifications brought in entirely new matter not sworn to, and that the claims for processes so called were only claims for the functions of the tip described. A few words as to the conditions and knowledge at the time of the alleged invention will help to make the discussion plain. Acetylene gas began to be produced on a large scale for commercial purposes about 1895. It is very rich in carbon, and therefore has great illuminating power, but for the same reason coupled with the relatively low heat at which it dissociates and sets carbon free, it deposited soot or unconsumed carbon and soon clogged the burners then in use. It was possible to secure a complete consumption of carbon by means of the well-known Bunsen burner. This consists of a tube or cylinder pierced on the sides with holes for the admission of the air, into one end of which a fine stream of gas is. projected through a minute aperture and from the other end of which it escapes and then is burned. A high pressure is necessary for the gas in order to prevent its burning back. The ordinary use of the Bunsen burner is to develop heat and to that end a complete combustion of course is desired. But with an immediately complete combustion there is little light. The yellow light of candles and gas-jets is due to free particles of carbon at a red heat, but not yet combined with oxygen, or, as we commonly say, consumed. On the appearance of acetylene gas inventors at once sought to apply the principle of the Bunsen burner with such modifications as would produce this result. In doing so they found it best to use duplex burners, that is, burners the outlets of which were inclined toward each other so that the meeting of the two streams of gas formed a flat flame, and to let in less air. In this state of things Dolan filed his application on February 18, 1897. The object was said to be to provide a burner the use of which will result in perfect combustion of the gas and the production of a flame which will afford the greatest possible degree of light from a given amount of gas consumed. A duplex burner on the Bunsen plan was described, but with no indication of any patentable device. The drawings were merely diagrams, and, with reference to what is to follow, we may mention that two of them show two sets of air-holes, one above the other, and that the specification even now expressly allows "two or more" sets. The claims were rejected on April 6, 1897, and in the same month Dolan changed his attorney. On May 20 a new specification and new claims were filed by the new attorney, but not sworn to by Dolan, and on these, with no material change, the patent was granted. In this specification, as in the former, though in different words, it is said that in order to prevent the deposit of carbon within the burner or at the burnertop and thereby insure a perfect combustion and a smokeless flame at the point where the same is formed, I provide a series of inclined air-passages, a, a, which lead into the enlarged passage, E, above the point at which the contracted opening, C, is provided." The inclined air-passages are the holes in the sides of the Bunsen burner, E is the cylinder, or tube, and the contracted opening, C, is the point at which the gas enters the tube. This device, and nothing else, is pointed out as the means for preventing the clogging of the tips. A preference is stated for a burner in duplex form. 66 In the new specification, however, it was said that the operation seems to be" that the gas draws in on all sides an envelop of air through the openings a, &c., so far stating the Bunsen principle, but adding that the result of this arrangement seems to be to so cool the outside of the flame as to prevent any deposit of carbon at the point of egress. And another paragraph was as follows: The structure of my burner is such that if all of the burner were cut off in a horizontal plane immediately above the outlet C [the point where the gas enters the upper chamber] the general shape and condition of the flame would not be modified, but in this case an immediate combustion would occur at the outlet. Under the conditions of this burner the point where the gas reaches its kindling temperature is carried upward, but the general shape of the escaping gasbody is not materially modified. It was stated earlier that the result here accomplished would not be accomplished in an ordinary airmixing burner in which the air was mingled generally with the body of the gas— The following are copies of Dolan's Fig. 1, and Fig. 2. |