40 FEDERAL REPORTER.
inal and the reissued patent here in question were before Mr. Justice
Bnnronronn when he decided Shirley v. Sanderson; but the opinion
in Shirley v. Sanderson makes no allusion to any question as to the
validity of the reissue, and it is evident that no decision of that ques-
tion was intended to be made in that case.
But, further, the second point of difference above alluded to as ex-
, isting between the original and the reissue appears to me to be fatal
to the validity of the reissue. It is manifest from an inspection of
the two patents that the claim of the reissue is for a combination
which was not claimed in the original, and contains a substantial ex-
pansion of the patent.
The defendant has put in evidence a patent issued to Joseph H.
Connelly, July 3, 1866, many years prior to the Crosby patent. This
patent the expert called for the plaintiff, while contending that it
does not anticipate the reissue, concedes would anticipate the orig-
inal. This concession appears to be fatal to the reissue; for, if the
reissue covers an invention not covered by the original, the scope of
the patent has been enlarged by the reissue. ‘
But aside from this concession made by the defendant, I am of the
opinion that the reissue must be held void. It was issued nearly nine
years subsequent to the issue of the original patent, and then not to
the inventor, but to an assignee of the inventor. The claim of the
original was clear and explicit. Its scope was plain, and it did not
include the combination covered by the claim of the reissue. No er-
ror or misstatement in the claim of the original appears to have been
suggested until the application for a reissue, and then the only amend-
ment applied for was to describe the enlargement as "on, or nearly
on, a level with the flame," instead of by the words "at about the base
of the burner cone," used in the original. The application for that
amendment was rejected on reference to the Connelly patent of July
3, 1866, and then only was the claim allowed so as to cover a com-
bination.
- The emission from the claim of the original of any reference to a
combination being manifest on inspection of the claim, and it being
_ also manifest that such omission was not the result of inadvertence,
accident, or mistake, as otherwise it would have been corrected with-
. out delay, the case is one of intentional omission from the original
claim of what the reissued patent now purports to secure, and it comes
within the principle of the decision of the supreme court in Mahn v.
Harwood, 112 U. S. 362, S. C. 5 Sup. Ct. Rep. 174, where the court
says:
“If a patentee has not claimed as much as he is entitled to claim, he is
bound,to discover the defect in a reasonable time, or he loses all right to a re-
issue.
Here more than nine years were allowed to pass, and, because of
that delay, the reissue must be held void.
The motion for an injunction is denied.