Page:Federal Reporter, 1st Series, Volume 8.djvu/623

 ATWATBB MANUF'G CO. V. BBECHEB MANUB"'a 00 609 �The original application was filed July 31, 1869, and was for the forming and bending dies, but not as a series. On October 9th, 1869, an interference was declared between Miller's claim for the dies B and C, (the bending dies,) and the first claim in F. B. Morse's application. On February 6, 1870, Miller's application was amended by inserting in the statement of the invention "series of " before "dies," and by inserting before the claim the sentence which bas been quoted, "I wish it to be understood," etc., and by insert- ing in the claim the words "series of" before "dies." The inter- ference was dissolved February 2, 1870, and on February 5th the application passed for issue. A patent was also issued on February 22, 1870, to F. B. Morse, but it bas not been placed in evidence. �The evidence in the record is too scanty to bring this case within the doubts expressed by the supreme court in Leggett v. Avery, 101 U. S. 256; and Goodyear Vulcanite Co. v. Davis, 102 D. S. 222. There is no suŒcient evidence upon which to base a finding that the disclaimer was made in order to obtain the issue of the patent; for it was far broader than was necessary to adjust by compromise the "interference" controversy, which related solely to the bending dies* The" question at issue here is whether, in this case, the insertion of a claim in the re-issue for the forming dies was the insertion of new matter, in view of the fact that the original patent declared the invention to consist in a series of dies, and formally disclaimed the invention of dies separately, although it is apparent from the testi- mony in regard to novelty that the forming dies were the invention of the patentee. The section upon the subject of re-issues prohibits the introduction of "new matter" into the specification, even though the new matter was the invention of the patentee, and wa.s inadvert- ently omitted from the original application. If the mattei is "new," the patentee cannot obtain by a re-issue the benefit of that part of bis invention, and must make a new application, in which case he will be subject to the rights of other inventors and of the public. Mr. Justice Bradley, speaking for the court, in Powder Co. v. Powd"r Works, 98 U. S. 126, says, in language evidently used with care : �" The legislature was willing to concede to the patentee the right to amend his specifleation se as fully to describe and claim the very invention attempted to be secnred by his original patent, and which was not fully secured thereby in consequence of inadvertenee, accident, or mistake; but was not willing to give him the right to patch up his patent by the addition of other inventions, which, although they might be Ma, had not been applied for by him, or, if ap plied for, had been abandoned or waived." v.8,no.8— 39 ��� �