Blackman v. Hibbler.

the specifications and drawings could not fail to disclose to any intelligent examination." Here, the possibility of an examination of the specification disclosing a chimney base as a distinct article or combination is forbidden by the specific statement, that, in use, the base is to remain united with the mica top. The case of Gill v. Wells, (22 Wall., 1,) is directly in point, upon the fifth claim, which is for a combination whose elements are a chimney base, as described, and any form of chimney top. In the original, if there be any combination described, it is the chimney base combined with the mica chimney top described. The re-issue has, therefore, to say the least, dropped one element from the combination, and put in its place another, not its equivalent, thereby greatly enlarging the scope of the invention.

As sustaining the construction I have placed upon the original patent, reference may be made to the difference between the original specification and the specification of the re-issue. In the original the patentee states, that he has invented" certain improvements in lamp chimneys." In the re-issue the statement is, that he has invented "certain new and useful improvements in bases or supports for lamp chimneys." In the original the invention is said to consist in "a novel construction of a mica lamp chimney and its combination with a glass base." In the re-issue the statement is, that the invention consists of "a glass base for coal oil burners, constructed with a tubular body to fit around the cone or burner, and having a laterally projecting flange, substantially as and for the purpose set forth." The original, describing advantages of the invention, says: "As the air passes the contracted throat, I, and enters the upper portion, it spreads out laterally, and, in connection with the burning oil, produces a very broad, brilliant, and steady flame," thus showing that the two parts were intended to operate as a whole, not otherwise. No such advantage could be secured by the base alone, and, naturally enough, such an advantage is not alluded to in the specification of the re-issue. The re-issue also wholly omits the statement, that, "in use, the chimney and base are

Blackman ". Hibbler.

intended to remain united, the whole being put on or taken off together," and inserts this statement, not to be found in the original: "While I have shown a peculiarly constructed chimney as adapted for use in connection with my base, it is obvious other kinds or styles may be used, if preferred." These alterations are suggestive, and go to confirm me in the conclusion that the subject-matter of the re-issue is different from the subject-matter in the original.

It may, also, properly be noticed, that, in a communication to the Patent Office by the attorneys of the patentee, in regard to this original patent, it is stated, that "the first claim is for his improved mode of securing the mica sheets which constitute the body of the chimney, and the second for his specially constructed glass base, to be used in combination therewith."

It has been contended, in behalf of the plaintiffs, that a chimney top of any description is the equivalent of the mica top piece described in the original patent, and that the subject-matter of the original and of the fifth claim of the reissue are, therefore, the same. But, evidently, such a mica top piece as the original patent describes has qualities and characteristic features not possessed by all chimney top pieces. It may be that the results accomplished by the use of the top piece of a lamp chimney are, in most respects, the same, whatever be the form of the top piece or the material of which it is constructed. But, the result is not in all respects the same, nor would the statement, that a mica top piece would be of use when firmly attached to the chimney base, necessarily or naturally suggest the use of any form of top piece not so attached, to accomplish the same result; and it has not been shown that any form of top piece was known, at the date of the original patent, as a proper substitute for the mica top piece described in that patent.

These reasons appear to me to require the determination, that the re-issue sued on covers inventions not described in the original patent, and is, therefore, void. But, if not, then the re-issue, so far as the first, second, fourth and fifth claims

Blackman v. Hibbler.

are concerned, must fail for want of novelty in the invention. The re-issue, in the claims under consideration, covers a transparent chimney base, whose characteristic features are these: (1) a tubular body, for surrounding the cone of a lamp burner and directing the current of air to the flame; (2) a contraction, groove, or indentation in the upper part of such tubular body, for directing the current of air inwards upon the flame; (3) a flange extending laterally from said groove; and (4) a surrounding rim. This invention is plainly anticipated by the invention described in a patent issued to Arnold and Blackman, February 11th, 1868, as well as by the invention described in the patent of Russell and Clifford, of December 24th, 1867. In each of these prior patents is described a lamp chimney base, made of glass, having a tubular body to place over the burner of a lamp, with a contraction or groove at the upper part, and a laterally projecting flange supporting the chimney top, and these features accomplish the same result that the same features accomplish in the plaintiffs' patent, and in the same way. The only distinction between the prior inventions referred to, and the plaintiffs' invention, is, that, in these prior inventions, the chimney base and chimney top were formed in one piece, while in the plaintiffs' invention the chimney base is by itself. But, no invention was required to conceive the idea that a lamp chimney could be cut in two; nor was the idea of constructing a lamp chimney in two parts new. In Millar's patent of July 21st, 1863, the lamp chimney was constructed in two parts. So, also, it must be said, that no invention was required to conceive the idea of a surrounding rim upon the upper part of the base, for the purpose of maintaining in position the separate top piece. The use of such a rim to accomplish the same result is common.

Not only are the characteristic features of the plaintiffs' chimney base old, but the combination of the tubular body groove and laterally projecting portion above is old. No change in the mode of operation or the result was effected by cutting off the top piece. In use, there must still be a toppiece performing the same functions, in connection with the

Bennett v. Hoefner.

plaintiffs' base, as the top piece does in the prior invention referred to. The mode of operation and the result are, in both cases, the same. Neither do the plaintiffs gain anything from the surrounding rim, which has formed the sole ground for claiming a difference between the invention in the patent sued on and the invention of Arnold and Blackman. No true combination results from the addition of the surrounding rim, for, there is no co-action between the rim and the tubular body. The only function of the rim is to prevent the top piece from slipping. The application of the surrounding rim for the purpose of preventing the top piece from slipping required no invention, and makes a case of juxtaposition, not a new combination.

It thus appears, that, whether the invention claimed in the re-issue be the same as that described in the original or not, it must fail for want of novelty.

The result is, that the bill must be dismissed, with costs.

Erastus New, for the plaintiffs.

C. H. Watson, for the defendants.

JACOB B. BENNETT AND OTHERS

vs.

ANSELM HOEFNER. IN EQUITY.

Where the defendant in a suit in equity has appeared by a solicitor, notice of application for a decree, after an order pro confesso, must be given to such solicitor.

(Before WALLACE, J., Northern District of New York, December 9th, 1879.)

Wehl v. Wald.

WALLACE, J. The motion of the defendant to set aside the decree entered at the June term of this Court must be granted, because no notice of an application for such decre was given to the defendant. The order pro confesso was properly entered, but, notwithstanding that, the defendant was entitled to notice of application for the decree. Equity Rule 18 provides, that, after the order pro confesso, the cause shall proceed ex parte; but this does not mean without notice to a party who has appeared in the cause. Such party is entitled to notice, and has the right to be heard as to the form of the decree, and upon such other questions as can be presented upon the complainant's pleadings and proofs. This is the uniform construction given to the Rule throughout this Circuit. If this notice had been given in this cause, under Rule 19 the defendant could not now be permitted to answer. As it is, the decree must be set aside.

Under the circumstances, the defendant's default is excusable. An order will be entered allowing the answer filed June 14th, 1879, to stand as the answer in the cause.

James S. Gibbs, for the plaintiffs.

Osgoodby, Titus & Moot, for the defendant.

JULIUS WEHL, AS ASSIGNEE OF THE ESTATE OF Gabriel NetTER AND ALBERT NETTER

V8.

GUSTAVUS H. WALD, AS ASSIGnee in BankruPTCY OF GABRIEL NETTER AND ALBERT NETTER AND NETTER & Co.

W., a citizen of New York, brought a suit in a State Court of New York against S., a citizen of New York, to recover money alleged to have been due by S. to N., a voluntary assignor to W. By an order of the State Court, G., a citizen of Ohio, who claimed the money as assignee in bankruptcy of N., was