The appellee insists that the invention covered by the second claim of the reissued patent, of which infringement is charged, is neither described in the specification nor claimed in the claim of the original patent, and that the reissue is therefore broader than the original patent, and consequently void.
It takes but slight comparison of the patents to show that this contention is well founded. The original patent was for a complicated contrivance, consisting f a number of old devices combined, and specially adapted to the fastening of metallic coverings to buildings, and for use in all other places where metals require fastening and their contraction and expansion require accommodation. To make the invention of any practical value for the purpose suggested in the specification, and for use in the 'other places' referred to, all the parts of the device therein described, except, perhaps, the rubber cord, which is only for temporary use in applying the device, are absolutely essential. Nowhere in the specification is it indicated or suggested that any part of the device described can be dispensed with. It is perfectly clear that the stud and bottom-plate of the contrivance are absolutely necessary to the only specific use mentioned in the specification. If these are left out there is no connection between the two materials to be fastened together; namely, the metal roof and the wooden sheathing under it. As the declared purpose of the invention is the fastening of these two materials together, it is difficult to see how the parts of the device essential to the fastening can be discarded, and the invention still remain perfect and unchanged.
On recurring to the second claim of the reissued patent, we find that the metal roof to be fastened, the stud, the bottom-plate, and the screw which fastens the metal roof to the stud, are all eliminated from the invention, and there is nothing left but the adjusting-bolt (3) and the slotted side-plate (4 4). As thus left, it is impossible to apply in a practical manner the device to the fastening of sheet-iron to a roof, or the fastening of any sheet metal to anything whatever.
If the second claim of the reissued patent, as insisted by appellants, covers the fish-plate joint used by the appellee, it must cover a combination of (1) the two materials to be fastened together; (2) two slotted side-plates on opposite sides of the materials to be fastened, which serve as clamps to hold such materials in position; (3) the adjusting-bolt. The claim is so interpreted by the expert witness of appellants. Under the original patent the materials or things to be fastened together are the metallic covering of the roof and the under surface of the wooden sheathing on which it is laid. The slotted plates or flanges are fastened to the under side of the sheathing by the bottom-plate, which connects the flanges, and they form a support for the adjusting-bolt; but the slotted flanges do not embrace or clamp any part of the wooden sheathing or any part of the metallic covering of the roof, much less do they embrace or clamp at the same time the sheathing and the metallic covering, which are the things to be fastened together. But in the reissued patent the slotted plates not only furnish bearings for the bolt, but perform a new and essential function, of furnishing a strong lateral support to the materials to be fastened together by clamping the same between them.
We find, therefore, that in the reissued patent several of the devices essential to the combination described in the original patent are left out and a separate claim made for the parts which remain, and to these parts a new and essential function is given, which they could not perform under the original patent.
It is, therefore perfectly clear that the second claim of the reissued patent was not covered by the original patent. It describes another device operating in a different way and for a different purpose.
Under the circumstances of this case there can, in our opinion, be but one conclusion, and that is, that the second claim of the reissued patent is void.