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United States Circuit Court.384aDistrict of Massachusetts, smith et al. vs. merriam el al. --patent presser foot for SHOE SEWING MACHINES. Lowell, J.: 1. Where the thing shown and described in the original patent and in the reissue is the same, but in the original has been claimed with all its features in combination, the patentee can in the reissue modify or divide his claim so as to embrace severally the distinct features of the thing invented. 2. The case of The Giant Powder Company vs. The California Vigorit Powder Company et al. (18 0. G-, 1,339) considered and commented upon. 3. The most natural construction of the law relating to reissues (Rev. Stats., sec. 4,916) would perhaps be that, if a patent should be inoperative by reason of a defective specification or invalid for claiming too much, the defect might be supplied or the excessive claim be reduced by reissue. 4. But the courts have given a very different interpretation, much wider in most respects and narrower in only one. They do not permit a defective specification to be supplied excepting from the drawings or model; but they do permit the claim to be varied, provided the same invention is described in both patents. 5. The law is extremely liberal, perhaps too much so, and has been much abused; hut if we change it suddenly we shall make a destruction of titles which it is impossible to contemplate without dismay. 6. As to the mere question of the necessity for a reissue, supposing the new patent itself to be unobjectionable, the decision of the Commissioner has always been held to be final, and this for an unanswerable reason that no patentee, however honest or careful, can be safe in obtaining a reissue if he is to be informed when he getsintocourtthat the judge is unable to see why he should have surrendered his first patent. The slighter and more obviously unobjectionable the change the stronger will be the argument that there was no occasion to make it, so that honest and careful patentees will be the most likely to suffer. 7. A mistake by the Commissioner as to the necessity of issuing a new patent is not an excess of jurisdiction, but a mistake in a matter clearly within his jurisdiction, and the real question is whether it is one which the courts will correct by destroying a new patent after the old one has been surrendered. 8. Urgent reasons of justice require that, upon the mere question whether the paper called a reissue shall be given, the finding of the Commissioner should be, as it has hitherto always been held to be, conclusive 9. If it be found that the claims the original patent were valid, and that the reissue for the same invention states the claim or claims in a different way, the law is well settled that the change does not of itself vitiate the new patent, but that, on the contrary, the original claims are conclusively presumed to have been made as they were through inadvertence, accident, or mistake. 10. It has been brought out a little more decidedly by the later cases that the invention must be the same; but it has never been held in the Supreme Court or any circuit court that the Commissioner's decision is not final as to the propriety of a reissue as distinguished from its validity upon what may be called its merits, or that the claims may not be varied to express the real invention. 11. The claim is part of the specification, and if defective may be amended. 12. The Reissue No. 7,558, to Daniel A. Sutherland, March 13, 1877, for " improvement in presser-feet for sewing machines," was granted in order to enable the patentee to claim the actual operations of his tool in detail, which is a perfectly legitimate reason for a reissue until the law is changed by Congress or the Supreme Court. Patent sustained.
