US SUPREME COURT DECISIONS

1. Reissued letters patent No. 4870, bearing date April 16, 1872, granted to Asa Johnson and Thomas S. Sandford, the latter being the assignee of an interest therein for an alleged new and useful improvement in fastening sheet metals to roofs, are void inasmuch as several of the devices essential to the combination described in the original letters are omitted, and the remaining parts, for which a separate claim is made, operate in a different way and for a different purpose.

2. Contrivances substantially the same as that set forth in the second claim of the reissued letters (infra, p. 105 U. S. 544), for fastening metals together, wherein, by the use of slotted side plates and an adjusting bolt, allowance is made for their contraction and expansion caused by changes in temperature, were in use before the issue of the original letters.

On May 19, 1857, letters patent were granted to Asa Johnson, the inventor, and William Higbie and Henry Link, his assignees, "for an improved mode of fastening sheet metal on roofs," &c.

The specification declares the invention to be

"a new and useful mode of self-adjusting fastenings for fastening metallic coverings to buildings, and in any and all other places where metals require fastening and their contraction and expansion demand accommodation,"

and there are appended to it five figures.

Fig. 1 is a side elevation of a building.

Fig. 2 is an end elevation or section cut through the roof in the line X X, Fig. 1.

Fig. 3 is an end elevation of the self adjusting fastener.

Fig. 4 is a side elevation of the same.

Fig. 5 is a plan view of the bottom plate.

The specification then proceeds as follows:

"In the operation of my invention, after sheeting the roof, if the boards do not exceed an inch in thickness, I bore a hole at the point where I wish to insert the stud, about the size as seen in vertical dotted lines in Fig. 2. The holes may be made larger or smaller to allow for contraction and expansion, so that the studs can move freely in any direction required. "

Page 105 U. S. 540

"The bottom plate is then screwed firmly to the boards by the screws (s)(s) seen in Figs. 2 and 4, and the screw 1 passes through the metallic covering into the stud 2, thus firmly fastening the covering K to the stud, as seen in Fig. 2."

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"It will be further seen that the cord 7 passes through the stud 2, Fig. 4, and then through the bottom plate, and is fastened together as at g in said Fig., thus always keeping the stud in an erect position until attached to the metal."

"If the covering contract on a line parallel with the connecting pin S, the adjustable connecting rod 2 will move on it towards one of the flanges 4, when it expands it will move towards the opposite flange, thus moving towards the point of contraction, and from the point of expansion with this metallic covering."

"The adjustable stud, in addition to its parallel and longitudinal movement, is capable of a diagonal movement, thus accommodating

Page 105 U. S. 541

itself to any direction required by the metal contracting or expanding."

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"I contemplate using them as general fasteners when it is necessary to allow for the contraction and expansion of the material used, not confining myself to buildings only. I may find, in using my adjustable fasteners, it necessary to make some of them, those that are in parallel lines with the flanges, to fit up close to the sides of the studs, as seen at 1, 1, in Fig. 2, allowing them to move in but one direction on the pin 3, which slides in the slots in the flanges 4, 4."

The claim is thus set forth: chanrobles.com-redchanrobles.com-red

Page 105 U. S. 542

"In the self-adjusting fastener as described, for the purpose of attaching metallic coverings to buildings and accommodating itself to the contraction and expansion of the metal, and for fastening metals in all other places when the contraction and expansion demand accommodation, substantially as set forth, or any mechanical device equivalent thereto."

At the expiration of the original term of the patent, fourteen years, an extension of seven years was granted to Johnson, who subsequently assigned a two-third interest in his extended letters to Thomas S. Sandford. The original letters were surrendered April 16, 1872, and a reissue of that date was granted.

The specification of the reissue describes the invention generally as

"a new and useful mode of self-adjusting fastenings for fastening metallic coverings to buildings, and for use in any and all other places where metals require fastening, and their contraction and expansion require accommodation."

Then follows a reference to and description of the same five illustrative figures which form part of the specification of the original patent.

The specification then proceeds as follows:

"The principle of my invention consists in connecting the metal to be fastened with a bolt or pin arranged to slide in slotted bearings in the direction of expansion or contraction, said adjustable bolt and its bearings being combined with the materials to be fastened."

"I have found my adjustable fastener peculiarly useful in fastening metallic roofs to buildings, and I proceed to describe its construction and use."

"In using my self-adjusting fastener for fastening metallic roofs to buildings, I connect the sliding bolt or pin with the roof by means of a stud fastened to the same, and I form the side plates, which contain the bearings for the sliding bolt, in connection with and as flanges of a bottom plate, which is secured fast to the under side of the wooden sheathing of the building."

"In the drawing, 1 indicates the screws for attaching the metallic roof to the stud, 2 is the stud, 3 is the adjusting bolt or pin, to which the metallic roof is connected by the stud and screw, said bolt passing through the stud 2 and through the slots of the side

Page 105 U. S. 543

plates or flanges. 4 4 are the side plates or flanges, provided with slots, which form the bearings of the adjusting bolts. 5 is a bottom plate, used as a convenient means of attaching the side plates to the wooden sheathing of the building. 6 6 are the slots in the side plates in which the adjusting bolt slides. 7 is an india rubber cord which may be used in applying the adjustable fastener to buildings. It is connected with the stud by being passed through an opening in it. It then passes down on each side of the stud and through an opening in the bottom plate, where it is fastened, as indicated at g in the drawing, and is used for keeping the stud in an erect position until after the stud had been inserted through the sheathing from below, and until it is attached to the metal roof. Without some contrivance of this kind, it would be difficult in the position indicated to keep the stud in position while the connection was being made."

"S S are screws for attaching the bottom plate, and with it the side plates, to the sheathing. G is the sheathing of the roof greatly enlarged in thickness in proportion, to illustrate the details of the connection of the adjustable fastener to buildings. H is the metallic roofing."

"The method of using the invention in attaching metallic roofing to buildings is as follows: after sheathing the roof, a hole is bored in the sheathing, at the point where the adjustable fastener is to be used, of sufficient size to allow the connecting stud to move in the same with the expansion or contraction of the metallic roof. These holes receive the slotted flanges or side plates 4 4, and they are indicated in the drawing by the letter a. (See Fig. 2.) They should be of the shape and size required by the extent and direction of the contraction and expansion to be allowed for. The flanges or side plates are inserted in the holes, and the bottom plate is then firmly secured to the boards or sheathing G by the screws S S, as seen in Fig. 2. Where the sheathing is sufficiently thick, a hole may be bored into it to receive the fastener from above. The side plates 4 and adjusting bolt 3 are thus connected with the building. The connection with the metallic roof is then effected by holding the stud in an erect position by means of the rubber cord, and attaching the stud to the roofing by means of the screw 1. Both the wooden sheathing and the metallic roof are thus connected to the self-adjusting mechanism, consisting of the slotted side plates and the bolt which slides in them."

"It is obvious that if the metal of the roofing contracts or expands in a line with the slots in the side plates that the bolt will

Page 105 U. S. 544

adjust itself to such contraction or expansion by sliding in the slots in the proper direction."

"On the other hand, in cases where the line of contraction or expansion may be diagonal or at right angles to the line of the slots in the side plates, the connecting stud is arranged to slide upon the adjusting bolt, as it is shown it may do in Figs. 2 and 3. Where, however, the movement is only sensible in the direction of the slots, the side plates are made to fit up close, as seen at Fig. 2 in the illustrations marked *, where the side plates or flanges are seen in cross-section, so that the only practical adjustability shall be in the direction of the slots."

"I contemplate using my invention as a general fastener where it is necessary to allow for the contraction and expansion of the material used, not confining myself to buildings only."

The first claim of the reissue is substantially identical with the one claim of the original patent. The second claim of the reissue is as follows:

"I claim, in combination with the adjusting bolt and slotted side plates, suitably connected to and combined with the materials to be fastened together for the purpose of accommodating the expansion and contraction of such materials with reference to each other, substantially as specified."

The bill in this case was filed by said Johnson and Sandford to restrain the Flushing and North Side Railroad Company from infringing the second claim of the reissued letters patent by using what is commonly known as the fishplate joint for uniting the ends of railroad rails. It consists of two iron plates of proper shape and size to fit the "web," which is the upright portion of the rail between it head and base. The plates are fastened one on each side of and near the ends of two abutting rails by means of bolts and nuts, the bolts passing through corresponding holes formed in both the plates and rails. In order to permit the rails to expand and contract with the changes in temperature, their ends are not allowed to form a close joint, and the holes, either in the fishplates or in the rails, are made larger than the bolts, and are elongated in the direction of the length of the rails. By these means, the expansion and contraction of the rails is "compensated" without injury to the joint. chanrobles.com-redchanrobles.com-red

Page 105 U. S. 545

The answer denies the alleged infringement, and sets up as defenses the invalidity of the reissued letters because, as was alleged, the original were not lawfully surrendered and the want of novelty in the invention covered by the second claim of the reissue.

The circuit court dismissed the bill, holding that the reissued letters were void because they were not for the same invention as that described in the original, and the complainants appealed.

The facts are stated in the opinion of the Court.