GENERAL ELECTRIC CO. v. RICHMOND STREET & INTERURBAN RY. CO., 178 F. 84

BAKER, Circuit Judge. Without the existence of one or the other of two conditions precedent, the Commissioner of Patents is not authorized to grant a reissue. Either the original specification must be defective or insufficient, or the original claims must embrace more than the patentee had a right to claim as new. But neither condition is available unless the error arose from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention. Findings by the Commissioner that a legal condition exists and is available are conclusive in so far as they depend upon credibility and weight oí evidence; but, in so far as they depend upon the legal

interpretation and effect of admittedly genuine documents or other undisputed evidence, they are reviewable in court. In Potter’s application the Commissioner’s jurisdiction to grant a reissue ivas invoked on the grounds that the original specification did uot describe with sufficient definiteness or accuracy the action of the magnetic arc-extinguishing device and that the term “arc deflector” as used in the specification and in claims 10, 11, 1⅞, and 13 was uncertain and ambiguous.

The original stated that the arc was forced into “arc deflector, P, consisting of a small chute or chimney of insulating material” by the. action of what might be termed the “magnetic blast,” and further that: l •‘This deflector, P. is constructed of two strips, pi ]>2, 0f fibre, placed transversely to the line of any arc that would, be formed, the latter (p2) being bolted to the pivoted pole piece, N, and the two strips separated by a series of small partitions, p?, which divide the space between the two strips into a series of cells which form the chutes above referred to.” While the language of this description is subject to the criticism of being awkward in construction and ungrammatical, yet, when it is read in the light of the drawings, the conclusion becomes clear, beyond-cavil, that “arc deflector P” is a chute or chimney consisting of four walls — two that might be called side walls, p1 and p2, a back wall, ps, and a front wall, p3.

The reissue stated that the arc was driven by the magnetic field against “deflector p3,” and that the “heated gases constituting the arc” were thence carried away from the switch cylinder through a small chute or chimney. By reference to the drawing and description of the reissue, it will he apparent that the chimney consisted of four walls— the same, p1, pg p3, and p3 as in the original. That is, in both the original and the reissue there are found the same arc, the same magnet, the same chimney walls, and the same relations of all these elements to each other.

By virtue of those relations, and in obedience to the natural law that the arc is blown in a line perpendicular to the. plane in which the line of the magnetic force and the line of the arc intersect, the arc is inevitably blown against the back wall of the chimney, p3. In the reissue the action of the magnetic arc-extinguishing device is fully stated — the arc is driven against the back wall of the chimney and thence up the flue. In the original, simply — the arc is forced into the chimney.

The original docs not suggest that any other action would be possible than that the arc would first be driven against the hack wall. That such would be the action was a fact known to those skilled in the art prior to-the time of the original application. So we find that the original specification neither contained erroneous statements of fact nor failed to give a description in such full and clear terms as would enable any person skilled in the art to construct and use the device.

But if appellant, as owner of the original patent, had sought a reissue merely to remove any alleged doubt concerning the sufficiency and accuracy of the explanation of the action of the arc-extinguishing mechanism, the particular controversy that is now before us would probably never have arisen. That controversy centers on a comparison of the original and reissued claims.

While the amplified explanation of the magnetic action was being made, there was a change of terms, a transition, a dissolving view in which “arc deflector P” faded away and was replaced by “arc deflector p8.” The term “arc deflector” was not a fixed term of art, describing a definite and well-known instrument, as the terms “saw,” “hammer,” “tongs,” describe definite and well-known instruments. The term “arc deflector” in original claim 10 can therefore be given only the meaning ascribed to it in the lexicography of the original specification.

There the term is defined as meaning the chute or chimney, P, made up of the side walls, p1 and p2, the front wall, p3, and' the back wall, p3.’ In claim 10 of the reissue tire term “arc deflector” must likewise be given the meaning ascribed to it in the terminology of the specification of the reissue. There the term is defined as meaning-the back wall, p3, against which the arc is driven by the influence of the magnet.

That is, claim 10 of the reissue covers the combination of a switch, a magnet having its poles adjacent to the contact-breaking points of the switch, and a wall against which any arc between the contact-breaking points is driven by the influence of the magnet, regardless of how “the heated gases constituting the arc” may subsequently be taken care of (the chimney of the reissue being brought forward as an independent element in claims 11, 18, and 13, but not included at all in claim 10); while original claim 10 is limited to a combination of .the aforesaid switch and magnet with the chimney into which the arc is forced by the magnetic blast.

Inevitably it follows, we conclude, that the application to recast the claims now under consideration was made, not for the purpose of narrowing the original patent because the patentee had claimed too much, but rather for the purpose of holding a wider monopoly than could have been built up under the invention as described and disclosed in the original patent. Under the teachings of Miller v. Brass Co., 104 U. S. 350, 26 L. Ed. 783, and other authorities cited, such an attempt must be held futile. The attempted enlargement of the monopoly clearly applies to claims 10, 11, 18, and 13.

To what extent, if at all, claims 1, 3, and 5 are affected by the changes in the specification, or whether those claims are unavailable to appellant by reason of additional defenses interposed by appellee, are questions which we will not consider. The bill was based upon the reissue. And inasmuch as there existed none of the conditions precedent to the right of the Commissioner to grant a reissue, the grant is utterly void. General Chemical Co. v. Blackmore (C. C.) 156 Fed. 968. The decree is affirmed.