
106 U.S. 39 (____)
GOSLING
v.
ROBERTS.
Supreme Court of United States.

*41 Mr. Charles L. Mitchell and Mr. D.H.J. Holmes for the appellant.
Mr. William Hubbell Fisher for the appellee.
MR. JUSTICE BLATCHFORD delivered the opinion of the court.
As a material question in this case arises on the difference between the specifications and claims of the original and the *42 reissued patents granted to the appellant, they are subjoined in parallel columns, the portions in each which are not found in the other being in italics.


            ORIGINAL.                                 REISSUE.
    "This invention relates to a            "My invention consists of a
  cheap and simple device for preventing  cheap and simple device for preventing
  the accumulation of mud                 the accumulation of mud
  and dust on the steps of carriages,     and dust on the steps of carriages,
  &c., and, also, for guarding            &c., and, also, for guarding
  the clothes of the rider from           the clothes of the rider from
  coming in contact with the              coming in contact with the
  wheels on entering or leaving           wheels on entering or leaving
  the vehicle.                            the vehicle.
    In the accompanying drawings            In the accompanying drawings
  Fig. 1 shows the position of my         Fig. 1 shows the position of my
  fender when the carriage door is        fender when the carriage door is
  open, and Fig. 2 represents it          open; Fig. 2 represents it when
  when the door is closed. A              the door is closed. A represents
  represents the body of a carriage,      the body of the carriage, B the
  B the rear wheel, C the                 rear wheel, C the door, and D
  door, and D the step; E is a            the step; E is a plate, which
  yielding plate, which may be            may be made of sheet metal or
  made of sheet steel or other suitable   other suitable material, and the
  material, and the upper end             upper end of said plate is hinged
  of said plate is hinged or otherwise    or otherwise secured to the door
  secured to the door C, whilst           C. The lower end of the combined
  its lower end is connected to a         cover and fender E may
  bar H, having an eye h, which           be connected to the bar H, having
  engages with a suitable aperture        an eye h, which engages with
  in the flange d of the step. This       a suitable aperture in the flange
  provision of the perforated flange      d of the step. This provision of
  d and eye h enables the plate E         the perforated flange d and eye
  to turn in either direction as the      h, by reason of its loose character,
  door C is opened or closed. The         permits the cover and fender
  flexibility of the plate E enables      E to turn freely in either
  it to bend up in the act of opening     direction as the door C is opened
  or closing the door (see                or closed. The cover and fender
  dotted lines in Fig. 1), and its        E I prefer to make of flexible
  elasticity enables it to hold the       material, so that it may bend in
  door firmly in either closed or         the act of opening and closing



*43
  wide-open position. When the            the door (see dotted lines in
  door is shut, the plate E closes        Fig. 1), and its elasticity enables
  up over the step D, and this            it to hold the door firmly in
  prevents the wheel from throwing        either the closed or wide-open
  dirt upon said step, as clearly         position, when the cover and fender
  shown in Fig. 2, but, as soon as        are connected, as shown, to
  the door is opened, the plate E         the step D. When the door C
  turns on the pivot device, d h, at      is shut the plate E closes up
  its lower end, thus uncovering          over the step D and prevents
  the step and serving as a fender        the wheel from throwing dirt
  to prevent the occupant's clothes       over the step, as clearly shown
  from coming in contact with the         in Fig. 2, but, as soon as the
  hind wheel of the carriage, as          door is opened, the cover and
  represented in Fig. 1. The yielding     fender E, being attached to the
  plate E acts as a spring to             door C, is, of course, carried with
  hold the door either open or shut,      the door, and thus the step is uncovered,
  and also prevents said door from        and the plate E then
  striking against the wheel, when        occupies such a position as to
  opened. The said plate E may be         enable it to serve as a fender to
  covered with leather or painted,        prevent the rider's clothes, on
  or may consist wholly of leather.       entering or leaving the carriage,
                                          from coming in contact with the
                                          hind wheel of the carriage, as
                                          represented in Fig. 1. The said
                                          plate E may be covered with
                                          leather or painted, or may consist
                                          wholly of leather.
         "I have selected for illustration       "I have selected for illustration
  the preferred form of my                the preferred form of my
  invention, but reserve the right        invention, but reserve the right
  to vary the same, it being susceptible  to vary the same, it being susceptible
  of various modifications.               of being made to assume
  For example, instead of being           various forms and modifications.
  pivoted to the step D, the lower        For example, instead of being
  end of the plate E may be hinged        pivoted to the step D, the lower
  or otherwise coupled to a frame         end of the plate E may be hinged
  projecting from the carriage body       or otherwise coupled to a frame
  and passing under the step. In          projecting from the carriage body
  some cases, for example, when           and passing under the step. In
  the distance from the wheel to          some cases, when the distance
  the body is short, I provide slots      from the wheel to the body is
  on both step and fender, or one         short, I provide slots on both



*44
  of them, to partially or wholly         step and fender, or one of them,
  relieve the plate of the flexion        to partially or wholly relieve the
  incident to opening or closing          plate of the flexion incident to
  the door.                               opening or closing the door.
                                            "The important feature of my
                                          invention is the plate E attached
                                          to the door of the carriage, and
                                          operating, by reason of such attachment,
                                          as a step-cover when
                                          the door is closed, and as a
                                          wheel-fender when the door is
                                          open.
                                            "I claim: 1. In combination
                                          with the step D and the door C,
                                          the plate E attached to the door,
                                          to operate as a step-cover when
                                          the door is closed, and a wheel-fender
                                          when the door is open,
                                          substantially as and for the purpose
                                          specified.
    "I claim herein as new and of           "2. A combined step-cover and
  my invention a combined step-cover      wheel-fender for carriages, consisting
  and wheel-fender for carriages,         of the flexible plate E,
  consisting of the flexible              the upper end of which is attached
  plate E, whose upper end is attached    to the carriage door, and
  to the carriage door, and               the lower end to the step, all
  whose lower end is connected,           being combined to operate as a
  d h, to the step or other fixed object, step-cover, wheel-fender, and a
  the whole being arranged to             spring connection to retain the
  operate substantially as herein         door in the opened and closed
  described and for the purpose           positions, all substantially as set
  set forth."                             forth."

Attention is at once arrested by certain marked differences between the two specifications. The drawings are alike. In the original specification the plate E is described as a yielding plate, while in the reissue it is merely a plate. In the original it is said that the lower end of the plate E is connected to the step through a bar with an eye in it which engages with an aperture in a flange on the step. In the reissue it is said that the lower end of the plate E may be so connected. In the original *45 the plate E is described as being flexible. In the reissue the inventor says that he prefers to make it of flexible material. In the original it is said that the elasticity of the plate E enables it to hold the door firmly either closed or open. In the reissue it is said that such elasticity will produce that effect when the plate E is connected to the step as shown in the drawings. In the original the description is that, as the door is opened, the plate E turns on the pivot device at its lower end, which connects it to the step. This is omitted in the reissue. In the original the plate is said to act as a spring to hold the door either open or shut. This is omitted in the reissue. The object of these changes is apparent. Unless the plate E is connected at the bottom with the step, the door cannot be kept open or closed by the operation of elasticity in the plate, for no elasticity can be developed unless the plate is held at its bottom. In the original the holding of the plate at its bottom to the step is made the rule; in the reissue it is made the exception. In the original the plate is said to be flexible, and is not said to be ever other than flexible. In the reissue only a preference for flexibility is asserted. The object of these changes is to arrive at a claim for a plate not held at its bottom to the step. Accordingly, the reissue makes the statement, not found in the original, that the important feature of the invention is to have the plate attached to the door, and thus operate as a step-cover and a wheel-fender. The first claim of the reissue is not found in the original, and grows out of the changes above mentioned. It is a broad claim to a combination with the step and the door of the plate E attached to the door, to operate as a step-cover and a wheel-fender, substantially as and for the purpose specified. The second claim in the reissue is substantially the same as the single claim of the original. It combines the features of the attachment of the plate, at its bottom, to the step, and, at its top, to the door, and of elasticity in the plate to hold the door open or closed.
The defendant's apparatus is a piece of material rigidly attached at its top to the door, and not attached at its bottom to the step, and operating as a combined step-cover and wheel-fender. It is plain that this construction did not infringe the claim of the original patent. It is alleged that it infringes the *46 first claim of the reissue. The defendant obtained a patent, No. 90,584, May 25, 1869, for an "improvement in step-covers and wheel-fenders for carriages." It was granted more than four years before the plaintiff applied for his reissue. The defendant's apparatus is constructed substantially in accordance with the description in that patent. That apparatus has on the rear part of the door elastic guards, which come against the wheel when the door is open. The claim of the patent is to the combined arrangement.
It is shown by the evidence that prior to the plaintiff's invention a combined wheel-fender and step-cover was in use in several forms, the step-cover being attached by a vertical arm or vertical arms to the bottom of the door by a rigid connection, and swinging back by the opening of the door, the vertical arm or arms then serving as a wheel-fender. In those structures the step-cover was a horizontal plate, projecting from the lower end of the vertical arm, and overlapping and covering, when the door was shut, the horizontal step, and being parallel with it. The defendant's structure differs from these old forms solely in having the vertical arm, which is rigidly attached to the lower part of the door, so extended in width as to itself cover the step and permit the horizontal part of the step-cover to be dispensed with. There is no difference in principle or mode of operation between the old structures and the defendant's structure. The difference is merely in form and shape. The plaintiff departed, in his original patent, from the principle of the old structures by joining his step-cover to the step and having the vertical plate yielding and flexible, so that its elasticity may keep the door open or closed. This, so far as appears, was a new invention, and he was entitled to claim it. He did claim it, and the original patent was adequate to secure it to him. The first claim of the reissue, if construed so as to cover the defendant's structure, must equally cover the old structures referred to. They had combined a step and a door, and a plate attached to the door, the plate operating as a step-cover when the door was closed, and as a wheel-fender when the door was open. Extending the vertical arm in width, so as to dispense with the horizontal projection from it, and make the vertical arm wide enough to cover the *47 step, or contracting the vertical arm in width and putting on the lower end of it a horizontal piece parallel with the step and overlying it, involved no new principle of structure or operation.
There is no suggestion in the specification of the original patent that the plate E is to be used disconnected at its lower end from the step, or to be any other than a yielding plate, so arranged as to keep the door open and shut, in addition to acting as a step-cover and wheel-fender. The first claim of the reissue, if construed so as to cover the defendant's structure, is void for want of novelty, being anticipated by the old structures referred to. Moreover, if so construed, it is invalid as being for a different invention from any found in the original patent. And, if it is so limited as to be no broader than the claim of the original patent, there has been no infringement of it. Under any view, the decree of the court below was correct; and it is
Affirmed.
