GAGE v. HERRING.

1. Where, within four months before their expiration, letters-patent, covering a single claim for a combination of several elements, are reissued and extended, with the same description as before, but containing in addition to the original claim one for a combination of some of the elements only, the reissue is invalid as to the new claim.

2. Letters-patent for a combination of several elements are not infringed by using less than all the elements.

3. In letters-patent for an improvement in cooling and drying meal during its passage from the millstones to the bolts, the claim was for the arrangement and combination of a fan, producing a suction blast; the meal chest; a spout forming a communication between the fan and the meal chest; a dust room above, to catch the lighter part of the meal thrown upwards by the current of air; a rotating spirally-flanched shaft in the meal chest, conveying the meal to the elevator; a similar shaft in the dust room, conveying the meal dust to the elevator; and the elevator, taking the meal to the bolts. Within four months before the expiration of the letters, they were reissued and extended, with two claims, the one a repetition of the original claim, and the other for the combination of the fan, the communicating spout, the meal chest with the conveying shaft in it, and the elevator, but omitting the dust room with its conveying shaft. Held, that the reissue is valid for the old claim only; and is not infringed by the use of the fan, spout, meal chest with its conveying shaft, elevator, and dust room, without any conveying shaft in the dust room, or other mechanism performing the same function.

APPEAL from the Circuit Court of the United States for the Northern District of New York.

The case is stated in the opinion of the court.

Mr. George Harding for the appellants.

Mr. Edwin S. Jenney and Mr. Benjamin F. Thurston for the appellees.

MR. JUSTICE GRAY delivered the opinion of the court. This is a bill in equity for the infringement of letters-patent for an improvement in means for cooling and drying meal, reissued to John Denchfield, and duly assigned to the plaintiffs. The original letters patent to Denchfield were dated 20th April, 1858. The reissued letters-patent were dated 16th January, 1872, and extended for a period of seven years from 20th April, 1872. The Circuit Court held that the first claim of

the reissued patent was valid and had been infringed, and entered a decree for the plaintiffs. See 14 Blatchf. 293. The defendants appealed to this court.

The original patent begins by stating that Denchfield has invented "a new and improved arrangement of means for cooling and drying meal, during its passage from the grinding stones to the bolts." The reissued patent omits, in this connection, the words "during its passage from the grinding stones to the bolts." But both the original and the reissue, after referring to the same accompanying drawings, proceed as follows, the words in brackets being inserted in the reissue only:

"This invention consists in the peculiar arrangement of a suction fan, [conveyor or] conveyors, and elevators, as hereinafter described, whereby the meal, during its passage from the grinding stones to the bolts, is thoroughly dried and cooled within a limited space, the whole forming a simple and economical device."

Then follows a description, which is the same in the original patent and in the reissue, and is in substance as follows:

The millstones, A, and curbs, are arranged in the ordinary way on the bed, B. Spouts, C, carry the meal from the stones down into a chest, D, which is placed horizontally on the flooring of the mill. This chest is equal in length to the bed, so that all the spouts of the several stones may communicate with it; and it is divided horizontally lengthwise by a zigzag partition having openings in it. Within and at the bottom of this chest is placed a longitudinal shaft, F, having a spiral flanch on it. With one end of this shaft an elevator, F', communicates, which discharges its contents at e. A fan, G, is placed in a suitable box, H. This box communicates with a spout, I, the lower end of which communicates with the chest D, and the upper end with one end of a chest, J, in the uppermost part of the mill. Within that chest a series of vertical partitions, i, is so placed as to form a winding passage from its communication with the spout I to an opening at the opposite end of the chest. That chest also contains a longitudinal shaft, K, having a spiral flanch on it. Both shafts, F, K, are rotated by any proper means.

The rest of the specification, and the claim, both in the original patent and in the reissue, differing only by inserting in the reissue the parts printed below in brackets, are as fol

"The operation is as follows: The meal passes from the stones A down the spouts C and into the lower part of the chest D, and is conveyed by the spirally-flanched shaft F into the elevators F', the shaft F, which is a conveyor, moving the meal in the direction indicated by the arrows 3. The meal is carried up by the elevators and discharged at e directly into the bolts or into troughs, and may be conveyed by hopper-boys or any suitable conveying device into the bolts. While the meal is thus passed through the stones A, spouts C, and the chest D, a suction blast is produced by the fan G, said blast absorbing the moisture or vapor which the meal contains, and which is heated or warmed by the friction of the stones A. The meal, therefore, is dried and cooled, and, in consequence of the time consumed during its passage through the spouts C and chest D, will be perfectly acted upon by the blast, so that all free moisture will be absorbed. A portion of the finer and lighter particles of flour will follow the blast, and will be ejected up through the spout I and through the serpentine or winding passage formed by the parts i, and will settle in the outer end of the chest J, and be conveyed by the conveyor or flanched shaft K to a spout, j, through which it falls into the elevators F and unites with the meal which is received by the elevators direct from the chest D. [This compound arrangement for operating on the meal while passing through the chest D, and on the escaped flour in the chest J, returning the latter to the elevators, while it is extremely well adapted for large flouring mills running at high speeds and with a strong suction blast, may not be either necessary or even practicable in all cases. When the grinding friction evolves only a moderate degree of heat, the chest J and its apparatus may be dispensed with, for, the blast being moderated to correspond, so small a quantity of the fine flour will be drawn through the spout I, that such flour may be ejected on the mill floor, and be disposed of in any convenient way so as to enter the bolts.]

"I do not claim forcing a current of air between a pair of millstones, while the same is in operation, for the purpose of keeping the stones in a cool state and preventing the heating of the grain; for such means, although not very efficient, have been previously used. But I am not aware that parts arranged as herein shown, so as to allow the meal to be subjected to the blast during its entire or nearly entire passage from the stones to the bolts, and insure the perfect drying and cooling of the meal, have been previously used.

“I claim, therefore, as new, and desire to secure by letters patent

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[1. The arrangement and combination of the suction fan G and spout I with the meal chest D, receiving the meal from the grinding stones, and provided with a conveyor shaft F and elevator F, substantially as and for the purpose set forth.]

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"[2.] The arrangement and combination of the chest [s] D J, shafts F K, elevators F', fan G, and spout I, substantially as and for the purpose herein shown and described."

No new device was invented by Denchfield, but his improvement consisted in a new combination of old means and devices. That combination, as described in the specification of his original patent, includes seven elements, namely: 1. The meal chest D at the bottom of the mill, into which the meal falls through the spouts C from the millstones. 2. The conveying shaft F, which takes the meal from this chest into the elevator F. 3. The elevator F', which carries up the meal and discharges it into the bolts or hopper-boys. 4. The fan G, creating a suction blast, which cools and dries the meal during its passage through the millstones, the spouts C and the chest D. 5. The spout I, communicating with the fan, and through which the meal dust, following the blast of air, is thrown upwards into the chest J at the top of the mill. 6. The chest J, in which the meal dust settles. 7. The conveying shaft K, by which the meal dust is carried from this chest into the elevator.

The only devices, indeed, which take part in cooling and drying the meal, are the meal chest at the bottom of the mill with the rotating shaft in it, the spout by which that chest

communicates with the fan, and the fan itself. The other chest or dust room at the top of the mill collects and saves the lighter part of the meal thrown upwards by the fan. The rotating shafts in each chest convey all the meal, after it has been cooled, dried and collected, to the elevator, and the elevator takes it to the bolts.

But the fan, with its communicating spout and meal chest, the dust room, the two conveyors, and the elevator, tend to one result, the cooling and drying of the meal, without waste or loss, "on its passage from the grinding stones to the bolts," "the whole," as stated at the beginning of the specification, forming a simple and economical device;" and the single claim in the original patent is for the arrangement and combination of the seven elements, designating them all with equal distinctness by appropriate letters.

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The reissue was granted more than thirteen years and eight months after the date of the original patent, and less than four months before that patent would have expired; and contains two claims, the second of which is a repetition of the claim in the original patent.

The first claim in the reissue is for a combination of the "fan G and spout I with the meal chest D, receiving the meal from the grinding stones, and provided with a conveyor shaft F and elevator F;" and omits all mention of the dust room J and its conveyor shaft K. This claim then is for a combination of five of the seven elements of the combination for which the patent was originally granted. The effect is to enlarge the claim; for, while the original claim was only for these five elements in combination with the other two elements, and would not have been infringed by the use of a combination of the five without the other two, the new claim covers a combination of the five elements, whether used with or without the two others. Prouty v. Ruggles, 16 Pet. 336; Vance v. Campbell, 1 Black, 427; Gould v. Rees, 15 Wall. 187.

The statute in force at the time of the issue of the original patent authorized a surrender and reissue whenever any patent was inoperative or invalid, by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification as his own invention more than he