[75]

SUPREME COURT OF THE UNITED STATES.

conjunction with, a combination lock, to pre- and its spindle, are free to rotate without exOCT. TERM, vent the action of the combination lock un-erting any unlocking action or strain on the til a time previously appointed by the setting mechanism composing the combination lock, or of the time movement shall have arrived, in the delicate mechanismu composing the time the ordinary rurning of the time movement, movement. at which time, and not before, the combination lock will come into action, when operated in the usual way, as if there were no time movement. In other words, by the setting of the time movement, the connection between the combination lock and its lock bolt or bearing is interrupted, so as to destroy the capacity of the combination lock to unlock the bolt work, until the time fixed by the setting of the time movement shall, by the ordinary running of the time movement, have arrived, when the connection between the combination lock and its lock bolt or bearing is automatically restored, through the action of the time mechanism. The combination lock is to remain with its organization unchanged, but the time mechanism is to alternately interrupt and restore its connection with its lock bolt or bearing, and the action of the bolt work.

states that the lock bolt or bearing of the comIt is also to be noted, that the specification bination lock may be of a circular, segmental or other desired form, "provided said lock bolt is arranged and adjusted so as to turn upon a suitable axis or bearing," and is so constructed as, in one position, to prevent the retraction of the bolt work, and, in another position, to permit it. The kind of combination lock referred to is indicated by the one illustrated in the drawings, and which the specification states to be the one of Sargent's patent No. 57574, granted August 28, 1866, and reissued as No. 4696, January 2, 1872. No. 4696 states that such combination lock has no sliding lock bolt, but has combined with its working parts a bolt turning on a pivot or bearing, and so isolated or removed from contact with the combination wheels, as There are two parts to the invention, repre- work of the door, and cut off the communica to receive any pressure applied through the bolt sented by the two claims. Both of them are tion between such bolt work and the wheels of claims to combinations of mechanism. The first fence lever of the combination lock; and that claim is a claim to a combination, substantially such bolt turning on a pivot or bearing, instead as set forth in the descriptive part of the speci- of the sliding bolt theretofore in use, is an imfication, of three elements: (1) a time mechan-portant feature. The first claim of No. 4696 is ism; (2) a combination lock; (3) the bolt work in these words: "In a combination lock for of a safe or vault door. But, as the claim says safe or vault doors, a bolt I, which turns on a that the time mechanism is to be constructed to pivot or bearing, when said bolt I is used in a act in conjunction with, and render inopera-lock having no ordinary sliding lock bolt, and tive, the combination lock, when locked, it fol- in connection with the separate bolt work of lows that the expression "time mechanism" in- the door, and so arranged as to receive the cludes the means of connection between the pressure of the said bolt work, without transtime movement and the parts on which the com- mitting it to the wheels or other equivalent bination lock operates. Otherwise, there could works of the lock." be no operative co-action of the three elements named in the claim. The expressions "time No. 186369, so far as it is important to the presmechanism" and "time movement The history of the application of Sargent for fully used in the specification and claims, as reissued patent No. 4696, for his combination are care-ent case, is this: On June 11, 1873, having his having different meanings, the former includ- lock, in the form shown in the drawings of No. ing the latter and its means of acting in con- 186369, he made application for a patent for comjunction with the combination lock. There is bining a time movement with the lock works of a limitation in the first claim, to the effect that a combination lock. The drawing showed the the combination lock is to have its bolt or bear- combination lock of No. 4696; and the specifiing constructed to receive the pressure of the cation set forth the invention to be so combinbolt work, when the lock is locked, and pre- ing a time movement with the lock works as to vent the unlocking of the bolt work till the pre-prevent the lock from being unlocked by the redetermined time shall have arrived. The second claim is a claim to a combina- be unlocked by being set on the combination, lease of the time movement, and to require it to tion, substantially as set forth in the descrip- after such release. There was a time movetive part of the specification, of four elements: ment, consisting of two clocks, and a lever to (1) a combination lock; (2) the bolt work of a hold up the dog or angle bar of the lock, until safe or vault door; (3) a time movement; (4) a released by the arrival of the predetermined yoke or lever connection, constructed and locat- hour. No bolt work was shown or described. ed to render the bolt or bearing of the combi- There was no idea of patenting any combinanation lock inoperative when the lock is locked. tion of which the bolt work formed a part. The In the second claim, the time mechanism of the specification had two claims: 1. "In a combifirst claim is broken up into a time movement nation lock, I claim the combination with the and a yoke or lever connection. There is a lim-lock works and with a time movement that conitation in the second claim, to the effect that trols the same, of a connection, H, or equivathe tumblers of the combination lock and its lent, so arranged that when the time movement spindle are free to rotate during the time the releases the lock works, the latter still remain bolt work is held in its locked position by the locked, substantially as specified. 2. I claim, bolt or bearing of the combination lock. This in combination with a time movement, and a freedom of rotation is referred to in the specifi- lock, the lever H, or equivalent, connected dication as being peculiar and novel, and consist-rectly with the dog C, to hold it elevated from ing in the fact that, while the combination lock the wheels, substantially as specified." The and the bolt work are locked, the tumblers or specification stated that Sargent did not "claim combination wheels of the combination lock, broadly the combination of a time movernent

72

"

21" that is, a time movement or clock prevent the unlocking of a lock heaval of a predetermined time in the to the clock. het of the application was reject173, by a reference to patent No. Axmed to S. W. Hollen, December 12, in was said as to the second claim. disclaimed Hollen's arrangement, the combination of "a clock movein trdinary key lock, by means of a when the clock work releases the ach remains locked;" and altered - as to read thus: 1. In a combinaat it deserts of wheels of which are set wn and operated by a spindle, I claim t with the lock works, and with rement that controls the same, -G, HI, whereby, when the time -ases the lock works, the latter **ti, ried, substantially as and for the ded. 2. I claim, in combination > movement and a lock, the lever H, with ranged so as to be connected

stantially as described."

The first claim was again rejected, July 5, 1873, on the ground that the change in it did not take the case out of the references; and, on the 28th of July, 1873, Sargent appealed to the board of three exammers in chief. The decision of the board sustaining the decision of the examiner was rendered October 7, 1873. It refers to the English patent of Rutherford, of 1831, and says: "The patent of Rutherford describes an ordinary key lock, to which the time movement is so connected that it may be set for a given hour, before which it cannot be unlocked, but may be at any time thereafter. Ruther ford also foresaw that one time movement might stop, and suggested two. Rutherford, as the references show, is not the only one who has thought of thus connecting a time movement to a lock. It happens, however, that the locks shown in the references are all key locks, while applicant's is a combination lock, and it is upon this that the claim is founded. While it is undoubtedly true that the combination lock is the better, there does not appear to be, in any true sense, any new combination in what applicant claims. It may be said that he has substituted, am was again rejected, June 23, in the Rutherford combination (for example), Inference to Newton's Journal of one well known element for another, and that - patent of 1831), as describ- the result, namely: the security against unlockof a double time movement ing before a given hour, is exactly the same in vil da jocă, bar or other fastening," both cases. And it must be remembered that Azerican patent of Holbrook, of this is the whole end and scope of the combinaza double time movement. The tion claimed, not to prevent breakage, or pickreferring to the Hollen pa-ing, or bursting with gunpowder, but simply Holen applies the movement unlocking before the hour appointed. It is true tack which has to be operated by that the lock connected to the time movement **tin e movement releases it. To in the manner shown is rendered secure against movement in one lock is con- unlocking by unauthorized persons who pick up enze and the same thing with doub- the combination, when the dog rests on the percarotter. To grant Hollen a patentiphery of the cams; but it appears clear that time movement to a tumbler this results from the peculiar mode of applicaanto casue other patents for using tion, and is covered by the second claim. Whatet peas, is simply to nullify Hol-ever the advantage, then, arising from the subSzent is entitled to a limited stitution for the key lock, so far as has been *w.vor adaptation, but nothing pointed out to us, it results from the superiority rvation meant that the of the former over the latter, and not from the dbe allowed, but not the first. combination. Nor, so far as we see, has any the ruling was, that it was not a invention been exercised. The time movement La or combination to unite a was originally invented to prevent locks from with a combination lock in- being prematurely unlocked, and, when once va a tumbler lock, each of which re- the combination had been invented, it is obviked after its release, or to ous that it was as applicable to one form of A te zestion with one lock after locks as to another; and, to grant a patent for ed in connection with another; the union of the time movement with every old arrangement of a lever con- form of lock, or with every new form which time movement and the dog might appear, would manifestly place unjust restrictions on the original invention and defeat the very purpose of the law. We understand only the first claim to be rejected."

were then substituted by Sar**1. I claim, in combination bek having a spindle and -a, and with two or more sep*s, a single lever, or equivH, cornecting the lock and to the whole so arranged that ad either by a simultaneous Levements, or by one of them and the lock still remains reased, as specified. 2. I

with a time movement H. or equivalent, connectthe it from falling into combination wheels, red from the clock work, as

These observations are true, as the record in this case shows, and it also shows many patents in which, prior to 1873, one clock or two clocks were employed to relieve, at a predetermined time, the boits of a door from a dog obstructing their retraction, so that the door could be opened when that time had arrived, but not before.

Nothing more was done with this application till March 18, 1875, when Sargent presented a new specification and claims, making prominent the feature of the free rotation of the tumblers of the combination lock, through the medium of the lock spindle, during the suspension, by the time movement, of the unlocking action

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a lever connection, said lever being construc and located to render the bolt or bearing of combination lock inoperative when locked, tumblers of the combination lock and its sp dle being free to rotate while the bolt work the door rests upon the bolt or bearing of combination lock. 3. In combination with time movement and a lock, a lever, or its equ alent, adapted to be connected with the dog said lock, to hold it from falling into the sl or notches of the combination wheels, exce when released by the time movement, substa tially as described."

of the combination lock, and changing the
claims to read thus: "1. The combination of a
time movement with a combination lock and a
lever constructed and located to render inope-
rative such combination lock until a predeter-
minate hour, the tumblers of the combination
lock being free to rotate through the medium
of the lock spindle, while the unlocking action
of the combination lock is suspended by the
time movement. 2. I claim, in combination
with a time movement and a lock, the lever H,
or equivalent, connected with the dog C, to
hold it from falling into the slots or notches of
the combination wheels, except when released On the 31st of July, 1875, claims 1 and 2 w
by the clock work, substantially as described." rejected by references to the patent of Holle
On the 24th of March, 1875, the first claim was of December, 1871, and that of Rutherford
again rejected by references to the Hollen pa- 1831; and a time lock arranged in connecti
tent of December, 1871, and the Rutherford with the bolt work of a door, in the time lo
patent of 1831. The letter of rejection said: of Little, patented in January, 1874, was
"Hollen shows the combination of a time move- ferred to. Those claims were again rejecte
ment and a lock, with a lever constructed and September 6, 1875, in a letter which said: "T
located to render inoperative such lock until a employment of locks of various kinds for sec
predeterminate hour, the tumblers of the lock ing the bolt work of a door is too common a
being free to rotate through the medium of a well known to require further references.
key, while the unlocking action of the lock is ther Hollen's or Rutherford's lock can be a
suspended by the lever. Rutherford shows (fig-plied to the bolt work of a door without t
ures 1, 2, 3, 4 and 5, sheet 2) the combination
of a time movement and a lock, with a lever ar-
ranged to engage with the bolt of a lock and
render inoperative such lock until a predeter-
minate hour. To merely substitute the ordi-
nary combination lock, such as shown, for ex- On December 3, 1875, an interference w
ample, in the patent permutation lock of James declared between claims 1 and 2 and four oth
Sargent, August 28, 1866, for the lock shown applications; and between claim 3 and four oth
in either of the above references, is not regard- applications. On February 12, 1876, the int
ed as a patentable difference. ***The sec-ference as to claims 1 and 2 was dissolved, a
ond claim is not objected to. The first claim is
again refused."

This application was not further prosecuted.
On the 12th of July, 1875, Sargent addressed a
letter to the Patent Office, entitled in the case,
in which he said: "So many amendments and
actions having been made in the above entitled
case, I desire to withdraw and abandon it, for
the purpose of filing a new application. I,
James Sargent, have this day filed said applica-
tion for the invention, and request that the
model of the case above named be applied as a
model in the application filed to day. I intend
and request that this application be a substitute
application for the one so withdrawn."

Up to this time no bolt work had been shown or described. The object of the new application was to introduce bolt work as an element in the device. The drawings were the same as those in No. 186369, showing bolt work, with the time movements and the combination lock. Bolt work was added to the former model. The specification contained three claims, as follows: 1. The combination, substantially as hereinbefore set forth, of a time mechanism and a combination lock with the bolt work of a safe or vault door, the time mechanism being constructed to act in conjunction with and render [81] inoperative the combination lock when locked, said lock having its bolt or bearing arranged to rest upon and receive the pressure of the bolt work of the door when locked, and prevent the unlocking of said bolt work until the arrival of a certain predeterminate time. 2. The combination, substantially as herein before set forth, of a combination lock and the bolt work of a safe or vault door, with a time movement and

least change being made to adapt it thereto. T mere substitution of one well known kind locks for another kind equally well known b been decided again and again as not a pate able difference.'

they were again rejected. A further amer ment of the specification was made Februa 15, 1876, and claims 1 and 2 were altered so to read as follows: "1. The combination, su stantially as hereinbefore set forth, of a tir mechanism and a combination lock with t bolt work of a safe or vault door, the ti mechanism being constructed to act in conju tion with and render inoperative the combin tion lock when locked, said lock having its b or bearing constructed to receive the pressu of the series of bolts constituting the bolt wo of the door when locked, and preventing t unlocking of said bolt work until the arrival a certain predeterminate time. 2. The com nation, substantially as herein before set fort of a combination lock and the series of bo constituting the bolt work of a safe or va door, with a time movement and a lever co nection, said lever being constructed and loc ed to render the bolt or bearing of the combi tion lock inoperative when locked, the tumble of the combination lock and its spindle bei free to rotate while the bolt work is held in locked position by the bolt or bearing of the co bination lock." The claims were not allowe but a new interference as to them was declare March 8, 1876, with the same four application the subject matter being: "The combination a time mechanism and a combination lock wi the bolt work of a door."

On the 11th of January, 1877, the applic tion was amended by withdrawing claims 1 a 2. Two days before this, and on January 1877, Sargent had filed the application on whi No. 186369 was granted. The special constru tion and arrangement of parts, a claim for whic

# 3 specification of that patent states, was separate application, was covered by patent No. 198157, granted to SarDecember 11, 1877, in pursuance of the of July 12, 1875, that claim being as "In combination with a time moveand a lock, a yoke lever or equivalent, be connected with the dog, fence or ace bar of said lock, to hold it from falling esota or notches of the combination *ama moge when released by the time moveartially as described." The present nvolve any infringement of No.

The defendants' lock, which it is alleged infringes the two claims of No. 186369, is of the construction shown by the following drawing, made by the plaintiff's witness Millward:

In that drawing A is the case of the lock; B, the bolt; C, the dog, pivoted in the bolt at c, and engaging, when held up by the time mechanism, behind a fixed stump, D; E, the arbor of the lock, the hook, e, of which engages with the hook, f, of the dog, and throws the bolt B back, when the dog is released by the time mechanism. The same hook, e, by running on the surface, g, throws the bolt B out, to lock the door. F is the time attachment, which has as before remarked, the specification of No. a lever, G, the arm of which, extending through the patent here sued on, contains the the case of the lock, has the hook H at its lower 2:ement: The lock bolt or bear-end, which holds up the pivoted arm I, and ombination lock may be of a circu- through it the dog C. tal or other desired form, provided a is arranged and adjusted so as to a suitable axis or bearing, and is so that, in one position, it will prevent

st of the bolt work so as to retain jer rault door locked, while, in another All admit of the bolt work being reare for the purpose of allowing the safe or ms to be opened." This clause had not y of the specifications from and atory that fled June 11, 1873, until it was w the one filed January 9, 1877, on

the patent No. 186369 was granted. It man without which it must be as

w of the numerous prior rejecas allowed would not have been The same clause was inserted, May the specification of the application of 1975, as it remained after claims 1 and were withdrawn, January 11, 1877, se appears in the specification of , issued December 11, 1877.

Another form of the bolt work of the defendants' lock is shown by the following drawing:

It is contended for the defendants, that each of the combinations covered by the two claims of No. 186369 must be limited to the particular devices described in the specification and shown in the drawings, and to their mode of operation, both claims being limited by the words "substantially as herein before set forth;" and that, under this construction, the defendants do not infringe.

The second claim imposes on the combination claimed in it the limitation, that the tumblers of the combination lock and its spindle shall be free to rotate, while the bolt work is held in its locked position by the bolt or bearing of the combination lock. This is enforced by the language of the specification, which, in stating in what the invention consists, states that "the peculiarity and novelty of the union or combination, consisting of a combination lock, a time movement, and a yoke or lever connection, is that "when the said combination lock, with its time mechanism, is arranged upon a safe or vault door, to operate in conjunction with the bolt work thereon, and all locked, the tumblers or combination wheels of said lock, and the spindle of the same, together with its usual indicator, are all left free to be moved or rotated without exerting any unlocking action or strain whatever upon the mechanism composing the

[84]

[85]

[86]

that the decree of the Circuit Court was correct
and must be affirmed.
True copy. Test:

James H. McKenney, Clerk, Sup. Court, U. 8.
Cited 116 U. S., 249.

combination lock, or the delicate mechanism
composing the time movement." Again, the
specification says: 'Another feature of the ut-
most importance present in the combination of
parts brought together is, that the connection
between the time movement and the combina-
tion lock is such that, when the time move-
ment is set, the parts adjusted, and the safe
doors closed, the combination lock will be ren- EDWARD G. THOMPSON ET AL., Appts.,
dered inoperative until a predeterminate hour,
during which interval of time the unlocking
action of the combination lock will be suspend-
ed by the time movement, while the tumblers
or combination wheels of the aforesaid combi-
nation lock are left free to rotate, if power is
exerted upon the dial spindle for the purpose of
twisting said spindle out of place, or impairing
the lock mechanism, and, by such, the working

v.

ELIZABETH E. BOISSELIER ET AL.

SAME, Appts.,

v.

SAME.

parts of the combination lock cannot be injured MCNAB & HARLAN MANUFACTURING

or rendered useless for future action." This
feature, thus declared to be peculiar and novel,
of the free rotation of the tumblers, is not shown
to exist in the defendants' lock. The plaintiff's
expert, Mr. E. S. Renwick, testifies that this
peculiarity is not found in the defendants' lock,
and that, for that reason, that lock does not em-
body the combination of claim 2 of No. 186369.

COMPANY ET AL., Appts.,

v.

EDWARD G. THOMPSON ET AL

JOHN EATON ET AL., Appts.,

V.
SAME.

(See S. C., Reporter's ed., 1-14.)

Patent law-patentability-letters patent No. 21734, and reissued letters patent No. 978, for improvements in water closets"-state of the

art.

*1. The third claim of reissued letters patent No. 978, granted to William S. Carr, June 12, 1860, for "improvements in water closets" (the original paas reissued, extended, July 23, 1870, for 7 years from tent having been granted to him August 5, 1856, and, August 5, 1870), namely: "In a valve for water closets, a cup leather for controlling the motion of said valve in closing gradually, substantially as specified, said cup leather moving freely in one direction, and closing against the containing cylinder in the other direction, and the leakage of water in said cylinder allowing the movement of said cup leather, as set forth," construed, and the operation of the device 2. The state of the art, as to prior devices, and the construction and operation of the defendants' device, set forth.

explained.

As to claim 1, it is limited, by the language of the specification, to a combination lock having a bolt or bearing which turns on an axis or revolves. The defendants' lock has a sliding bolt. It was not new, at the time of Sargent's invention, to apply a time movement to dog the sliding bolt of a lock; and it is plain that he limited himself to a rotating bolt. The specification makes it as necessary that the combination lock should have a turning or revolving bolt or bearing as that such bolt or bearing should have the quality of receiving the pressure of the bolt work, when locked. This turning or revolving feature of the bolt or bearing is made, by the specification, as necessary to the combination lock of claim 2 as to that of claim 1. In patents for combinations of mechanism, limitations and provisos, imposed by the inventor, especially such as were introduced to an application after it had been persistently rejected, must be strictly construed against the inventor, and in favor of the public, and looked 3. In view of the state of the art: Held, that, for upon as in the nature of disclaimers. As was the purpose of securing the free passage of water said in Fay v. Cordesman, 109 U. S., 408, 420 in one direction, and preventing its escape in the [bk. 27, L. ed., 979, 984]: "The claims of the fendants had used nothing which they did not have other direction otherwise than gradually, the depatents sued on in this case are claims for com- a right to use, and had not appropriated any patentbinations. In such a claim, if the patentee speci- able invention which Carr had a right to cover, as fies any element as entering into the combina- against the defendants' structure, by the third claim tion, either directly by the language of the 4. All that Carr did, if anything, was to add his the claim, or by such a reference to the descrip-form of orifice to the valve and cup leather of an tive part of the specification as carries such ele- existing pump plunger. 5. The third claim of the Carr reissue involves, as ment into the claim, he makes such element an element in it, the means of leakage set forth. material to the combination, and the court can- 6. The only point of invention, if it could be dignot declare it to be immaterial. It is his prov-age shown by Carr, but which the defendants did nified by that name, was the special means of leakince to make his own claim, and his privilege not use. to restrict it. If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an omitted device is supplied by an equivalent device or instrumentality. Water-Meter Co. v. Desper, 101 U. S.,332 [bk. 25, L. ed., 1024]; Gage v. Herring, 107 U. S., 640 [bk. 27.,L. ed., 601]."

These considerations lead to the conclusion

of his reissue.

7. To be patentable, a thing must not only be new *Head notes by Mr. Justice BLATCHFORD.

See a review of the authorities per Clifford, J., in NOTE. What constitutes a patentable invention Dunbar v. Meyers, 94 U. S. 187, bk. 24, L. ed., 34, 38 also Rubber Tip Pencil Co. v. Howard, 87 U. S.,498 bk. 22, L. ed., 410; Reckendorfer v.Faber,92 U.S., 347 bk. 23, L. ed., 719. See briefs of counsel in two las named cases as reported in this edition..