conjunction with, a combination lock, to pre-
vent the action of the combination lock un-
til a time previously appointed by the setting
of the time movement shall have arrived, in
the ordinary running of the time movement,
at which time, and not before, the combina-
tion 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, un-
til the time fixed by the setting of the time
movement shall, by the ordinary running of
the time movement, have arrived, when the con-
nection 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 organi-
zation 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.

and its spindle, are free to rotate without ex-
erting any unlocking action or strain on the
mechanism composing the combination lock, or
the delicate mechanism composing the time
movement.

It is also to be noted, that the specification
states that the lock bolt or bearing of the com-
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 per-
mit it. The kind of combination lock referred
to is indicated by the one illustrated in the draw-
ings, and which the specification states to be
the one of Sargent's patent No. 57574, granted
August 28, 1866, and reissued as No. 4696, Jan-
uary 2, 1872. No. 4696 states that such com-
bination 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
to receive any pressure applied through the bolt
There are two parts to the invention, repre- work of the door, and cut off the communica-
sented by the two claims. Both of them are tion between such bolt work and the wheels or
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 im-
fication, 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- Îock 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 trans-
time 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 The history of the application of Sargent for
named in the claim. The expressions "time No. 186369, so far as it is important to the pres-
mechanism" and "time movement" are care-ent case, is this: On June 11, 1873, having his
fully used in the specification and claims, as reissued patent No. 4696, for his combination
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 com-
junction 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 specifi-
ing constructed to receive the pressure of the cation set forth the invention to be so combin-
bolt 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 re-
determined time shall have arrived.

lease of the time movement, and to require it to
The second claim is a claim to a combina- be unlocked by being set on the combination,
tion, substantially as set forth in the descrip- after such release. There was a time move-
tive 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 combina-
nation 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 combi-
first 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 cou-
itation in the second claim, to the effect that trols the same, of a connection, H, or equiva-
the 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 di-
cation 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
and the bolt work are locked, the tumblers or
combination wheels of the combination lock,

the wheels, substantially as specified." The
specification stated that Sargent did not "claim
broadly the combination of a time movement

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[77]

[78]

with a lock," that is, a time movement or clock
employed to prevent the unlocking of a lock
till the arrival of a predetermined time in the
running of the clock.

The first claim of the application was reject-
ed, June 12, 1873, by a reference to patent No.
121782, granted to S. W. Hollen, December 12,
1871. Nothing was said as to the second claim.
Sargent then disclaimed Hollen's arrangement,
as being the combination of "a clock move-
ment with an ordinary key lock, by means of a
lever, so that, when the clock work releases the
latch, the latch remains locked;" and altered
his claim so as to read thus: "1. In a combina-
tion lock, the series of wheels of which are set
in succession and operated by a spindle, I claim
the combination with the lock works, and with
a double time-movement that controls the same,
of a connection, H, whereby, when the time
movement releases the lock works, the latter
still remains locked, substantially as and for the
purpose specified. 2. I claim, in combination
with a time movement and a lock, the lever H,
or equivalent, arranged so as to be connected
with the dog, substantially 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 examiners in chief. The decision of the board sustaining the decision of the examiner was 1endered 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. Rutherford 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, in the Rutherford combination (for example), one well known element for another, and that the result, namely: the security against unlocking before a given hour, is exactly the same in And it must be remembered that

The first claim was again rejected, June 23, 1873, by a reference to Newton's Journal of 1832 (Rutherford's patent of 1831), as describing the application of a double time movement "to any bolt of a lock, bar or other fastening,' "beth cases. and to the American patent of Holbrook, of this is the whole end and scope of the combina1858, as showing a double time movement. The tion claimed, not to prevent breakage, or pickletter of rejection, referring to the Hollen pa-ing, or bursting with gunpowder, but simply tent, says that Hollen "applies the movement unlocking before the hour appointed. It is true to a tumbler lock, which has to be operated by that the lock connected to the time movement [79] a key after the time movement releases it. To in the manner shown is rendered secure against double the time movement in one lock is con- unlocking by unauthorized persons who pick up sidered to be one and the same thing with doub- the combination, when the dog rests on the perling it in any other. To grant Hollen a patentiphery of the cams; but it appears clear that for applying this time movement to a tumbler this results from the peculiar mode of applicalock, and then to issue other patents for using tion, and is covered by the second claim. Whatit with other locks, is simply to nullify Hol-ever the advantage, then, arising from the sublen's patent. Sargent is entitled to a limited stitution for the key lock, so far as has been claim for his way or adaptation, but nothing pointed out to us, it results from the superiority more." This last observation meant that the of the former over the latter, and not from the second claim would be allowed, but not the first. combination. Nor, so far as we see, has any The point of this ruling was, that it was not a invention been exercised. The time movement patentable invention or combination to unite a was originally invented to prevent locks from time movement with a combination lock in- being prematurely unlocked, and, when once stead of with a tumbler lock, each of which re- the combination had been invented, it is obviquired to be unlocked after its release, or to ous that it was as applicable to one form of double a clock in connection with one lock after locks as to another; and, to grant a patent for it had been doubled in connection with another; the union of the time movement with every old but that the special arrangement of a lever con- form of lock, or with every new form which nection between the time movement and the dog might appear, would manifestly place unjust might be patented. restrictions on the original invention and defeat the very purpose of the law. We understand only the first claim to be rejected."

Two new claims were then substituted by Sargent, as follows: "1. I claim, in combination with a combination lock having a spindle and combination wheels, and with two or more separate time movements, a single lever, or equivalent connection, H, connecting the lock and the time movements; the whole so arranged that said lock is released either by a simultaneous action of the time movements, or by one of them if the other fails, and the lock still remains locked, when so released, as specified. 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 from the clock work, as specified."

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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[81]

of the combination lock, and changing the | a lever connection, said lever being constructed
claims to read thus: "1. The combination of a and located to render the bolt or bearing of the
time movement with a combination lock and a combination lock inoperative when locked, the
lever constructed and located to render inope- tumblers of the combination lock and its spin-
rative such combination lock until a predeter- dle being free to rotate while the bolt work of
minate hour, the tumblers of the combination the door rests upon the bolt or bearing of the
lock being free to rotate through the medium combination lock. 3. In combination with a
of the lock spindle, while the unlocking action time movement and a lock, a lever, or its equiv
of the combination lock is suspended by the alent, adapted to be connected with the dog of
time movement. 2. I claim, in combination said lock, to hold it from falling into the slots
with a time movement and a lock, the lever H, or notches of the combination wheels, except
or equivalent, connected with the dog C, to when released by the time movement, substan-
hold it from falling into the slots or notches of tially as described."
the combination wheels, except when released On the 31st of July, 1875, claims 1 and 2 were
by the clock work, substantially as described." rejected by references to the patent of Hollen,
On the 24th of March, 1875, the first claim was of December, 1871, and that of Rutherford of
again rejected by references to the Hollen pa- 1831; and a time lock arranged in connection
tent of December, 1871, and the Rutherford with the bolt work of a door, in the time lock
patent of 1831. The letter of rejection said: of Little, patented in January, 1874, was re-
Hollen shows the combination of a time move-ferred to. Those claims were again rejected,
ment and a lock, with a lever constructed and September 6, 1875, in a letter which said: "The
located to render inoperative such lock until a employment of locks of various kinds for secur-
predeterminate hour, the tumblers of the lock ing the bolt work of a door is too common and
being free to rotate through the medium of a well known to require further references. Ei-
key, while the unlocking action of the lock is ther Hollen's or Rutherford's lock can be ap-
suspended by the lever. Rutherford shows (fig-plied to the bolt work of a door without the
ures 1, 2, 3, 4 and 5, sheet 2) the combination least change being made to adapt it thereto. The
of a time movement and a lock, with a lever ar- mere substitution of one well known kind of
ranged to engage with the bolt of a lock and locks for another kind equally well known has
render inoperatíve such lock until a predeter- been decided again and again as not a patent-
minate hour. To merely substitute the ordi- able difference.'
nary combination lock, such as shown, for ex- On December 3, 1875, an interference was
ample, in the patent permutation lock of James declared between claims 1 and 2 and four other
Sargent, August 28, 1866, for the lock shown applications; and between claim 3 and four other
in either of the above references, is not regard- applications. On February 12, 1876, the inter-
ed as a patentable difference. * * * The sec-ference as to claims 1 and 2 was dissolved, and
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 application 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."

they were again rejected. A further amend-
ment of the specification was made February
15, 1876, and claims 1 and 2 were altered so as
to read as follows: "1. The combination, sub-
stantially 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 conjunc-
tion with and render inoperative the combina-
tion lock when locked, said lock having its bolt
or bearing constructed to receive the pressure
of the series of bolts constituting the bolt work
of the door when locked, and preventing the
unlocking of said bolt work until the arrival of
a certain predeterminate time. 2. The combi-
Up to this time no bolt work had been shown nation, substantially as hereinbefore set forth,
or described. The object of the new applica- of a combination lock and the series of bolts
tion was to introduce bolt work as an element constituting the bolt work of a safe or vault
in the device. The drawings were the same as door, with a time movement and a lever con-
those in No. 186369, showing bolt work, with nection, said lever being constructed and locat-
the time movements and the combination lock. ed to render the bolt or bearing of the combina-
Bolt work was added to the former model. The tion lock inoperative when locked, the tumblers
specification contained three claims, as follows: of the combination lock and its spindle being
1. The combination, substantially as herein-free to rotate while the bolt work is held in its
before set forth, of a time mechanism and a
combination lock with the bolt work of a safe
or vault door, the time mechanism being con-
structed to act in conjunction with and render
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 combi-
nation, 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

locked position by the bolt or bearing of the com-
bination lock." The claims were not allowed,
but a new interference as to them was declared,
March 8, 1876, with the same four applications,
the subject matter being: "The combination of
a time mechanism and a combination lock with
the bolt work of a door."

On the 11th of January, 1877, the applica-
tion was amended by withdrawing claims 1 and
2. Two days before this, and on January 9,
1877, Sargent had filed the application on which
No. 186369 was granted. The special construc-
tion and arrangement of parts, a claim for which,

[82]

[83]

as the specification of that patent states, was
made in a separate application, was covered by
the claim of patent No. 198157, granted to Sar-
gent, December 11, 1877, in pursuance of the
application of July 12, 1875, that claim being as
follows: "In combination with a time move-
ment and a lock, a yoke lever or equivalent,
adapted to be connected with the dog, fence or
angle bar of said lock, to hold it from falling
into the slots or notches of the combination
wheels, except when released by the time move-
ment, substantially as described." The present
suit does not involve any infringement of No.

198137.

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:

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

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, ƒ, 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 186369, the patent here sued on, contains the the case of the lock, has the hook H at its lower following statement: "The lock bolt or bear-end, which holds up the pivoted arm I, and ing of the combination lock may be of a circu- through it the dog C. lar, 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 that, in one position, it will prevent the retraction of the bolt work so as to retain the safe or vault door locked, while, in another position, it will admit of the bolt work being retracted, for the purpose of allowing the safe or vault door to be opened." This clause had not appeared in any of the specifications from and including that filed June 11, 1873, until it was inserted in the one filed January 9, 1877, on which the patent No. 186369 was granted. It is a limitation without which it must be assumed, in view of the numerous prior rejections, the claims allowed would not have been granted. The same clause was inserted, May 7, 1877, in the specification of the application of July 12, 1875, as it remained after claims 1 and 2 therein were withdrawn, January 11, 1877, and that clause appears in the specification of No. 198157, as issued December 11, 1877.

Millward.

Bolt.

Time Attach't. P

Combination lock.

Bolt.

Millward.

B

bolt

Bolt frame

of door.

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]

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

combination lock, or the delicate mechanism | that the decree of the Circuit Court was correct
composing the time movement." Again, the and must be affirmed.
specification says: "Another feature of the ut-
True copy. Test:
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

v.

ELIZABETH E. BOISSELIER ET AL.

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
parts of the combination lock cannot be injured

SAME, Appts.,

v.

SAME.

or rendered useless for future action." This MCNAB & HARLAN MANUFACTURING

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 tent having been granted to him August 5, 1856, and, "improvements in water closets" (the original paas reissued, extended, July 23, 1870, for 7 years from August 5, 1870), namely: "In a valve for water closets, a cup leather for controlling the motion of said said cup leather moving freely in one direction, and valve in closing gradually, substantially as specified, 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 explained.

2. The state of the art, as to prior devices, and the construction and operation of the defendants' device, set forth.

As to claim 1, it is limited, by the language
of the specification, to a combination lock hav-
ing 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 specifi-
cation makes it as necessary that the combina-
tion 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 in-
ventor, especially such as were introduced into
an application after it had been persistently re-
jected, 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 de-
patents sued on in this case are claims for com- a right to use, and had not appropriated any patent-
binations. 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
the claim, or by such a reference to the descrip-
tive part of the specification as carries such ele-
ment into the claim, he makes such element
material to the combination, and the court can-
not declare it to be immaterial. It is his prov-age shown by Carr, but which the defendants did
ince to make his own claim, and his privilege
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.

4. All that Carr did, if anything, was to add his form of orifice to the valve and cup leather of an existing pump plunger.

5. The third claim of the Carr reissue involves, as an element in it, the means of leakage set forth.

6. The only point of invention, if it could be dig-
nified by that name, was the special means of leak-
not use.

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 last
named cases as reported in this edition..

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[2]