MOREY

v.

LOCKWOOD

Mr. Justice NELSON delivered the opinion of the court:

Several objections are taken to this reissued patent; among others, and which is the most material, that the claim is broader than the invention.

The 13th section of the act of 1836 authorizes a surrender, and an amended specification, when the patent issued is inoperative, or invalid, by reason of a defective or insufficient description or specification; or, “if the error has, or shall have arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention.” We do not doubt that the commissioner had full authority to grant the amendment; and, under the special, circumstances of the case, it would seem to have been a duty, as the inventors were led into the error by himself, as maybe seen from his letter when the patent was originally granted.

' The amendment was very material, as the language of the -original claim tied the patentees down to a syringe, consisting of the parts mentioned, to an instrument in .which they were arranged in an axial, or straight line; tying them down to the mere form of the construction, regardless of the substance.and legal import of the invention. While the original specification and claim remained, it was competent for any one to evade the patent, and enjoy the substance of the improvement by a change in the mere form of the construction; that is, by an arrangement of the-several parts in ariy form, if not in an axial or straight line. And this is what the defendants are endeavoring to accomplish, and would have accomplished, if the amendment of the claim had not been allowed.

They have constructed a syringe with the same parts and materials as used by the patentees; but, instead of arranging them in aii axial line, the bulb or sac is placed above the poiut of delivery and discharge of the enema, extending its hollow neck so that the tubes may connect with each side of it. The only difference even in form between this aiid the patentees’ is, that the latter, in the axial line, tubes connect with the ends of the bulb; in'the former they connect, not with the ends of the bulb but with the sides of its hollow neck. The enema passes from the eduction pipe through the neck or throat into the bulb, and is forced through the discharge pipe by the same means as used by the patentees. The mode of operation is precisely the same in both instruments. The change is one of form and not of substance, and upon well-established principles of patent law, constitutes no defence to a bill for an infringement.*

As bearing upon this point it may be stated that the patentees themselves first constructed and used this form' of syringe; but, becoming satisfied that the other form was the best, recommended it in their specification accordingly. They are protected, however, against the use of any form, as will be seen by the authorities referred to, that embodies substantially their ideas and mode of operation.

On the question .of novelty there are two specimens of syringe produced by the defendants that are chiefly relied on as disproving it: one called the Maw syringe, and the other the Thiers. The first differs from the patentees’ in this, that the cylindrical bulb, or chamber, is made so rigid both in the material and from its metallic ends, or heads, that it is not sufficiently elastic to be adapted to practical use; and for this reason it failed and went out of the market. ' •

The Thiers syringe differed from the patentees5 in this, that part of the bulb or chamber is metal, and part rubber; and the elastic portion is aided by a spring inside of the chamber. There is, also, an air-chamber attached to the delivery pipe. The whole construction and arrangement is' different from the patentees’, as they have dispensed with the metal portion of the bulb, the spring, and the air-chamber, and substituted a simple India-rubber bulb.

The rest of th,e, proof on this point'is conflicting, and we agree with the court belo#, that the weight of it is decidedly with the complainant.

Decree affirmed.

*

Curtis on Patents, 260, 261, and note 2, page 264.