each other, yet that when in revolution they [378] vary in eccentricity in reference to the cam which operates them, so that in action their eccentricity varies, and the same result is produced. Because the description in the patent and the claim require that the variation of eccentricity should be between the rollers themselves, and not a variation in action in reference

[554]

occur to an unskilled mechanic is not patentable.
3. The first claim of reissued letters patent grant-
ed to George Rosner, July 25, 1871, for an improve
ment in permutation locks was anticipated and is
therefore void.
[No. 166.]

Argued March 16, 1886. Decided March 29, 1886.

APPEAL from the Circuit Court of the Uni'-
York.

ed States for the Southern District of New

Statement by Mr. Justice Woods:

to the cam, and unless the same result is pro-
duced by the same means, there is no infringe-
ment of the invention. Besides, the fact is not
as claimed. It is impossible mechanically for
the rollers, being identical in eccentricity and
shape with each other, to have the same relation
This was a bill in equity brought by the ap- [555]
at all times to the cam as though they varied in pellee, Halbert S. Greenleaf, to restrain the in-
eccentricity. For, as is pointed out in the evi-fringement by the appellant, the Yale Lock
dence on the part of the defendant, when the Manufacturing Company, of the first and fourth
rollers are the same in eccentricity and shape claims of the reissued letters patent granted to
with each other, there must be intervals of time George Rosner, July 25, 1871, for an improve-
at which "the two rollers having been rotated ment in permutation locks. The original pa
to a point at which their peripheries exactly co- tent bore date September 18, 1860.
incided, both would revolve together for a short
period, until some slight impediment or change
in the periphery of the cam would cause one to
bear more directly than the other upon the per-
iphery of the cam, when this one would revolve
with the cam, the other remaining stationary;
and so on." And this feature in the action of
two rollers, identical in eccentricity, it is said,
introduces an additional irregularity into the
operation of the mechanism, which increases its
disconcerting power and adds to the difficulty
of calculating the movement which enables the
expert to pick the lock. So that the mode of
operation is different, accordingly as the rollers
are of the same or varying eccentricities.

Were it otherwise, however, it would still be necessary to regard the feature of a variation of eccentricity as essential to the invention, because made so by the description and claim of the patent, although an equally good or even the same result might be obtained without it. The defendant does not use the same combination, and employs no device as an equivalent and substitute for the omitted element. It is not, therefore, liable as an infringer, 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].

The decree of the Circuit Court is accordingly reversed and the cause is remanded, with directions to dismiss the bill.

Test:

True copymes McKenney, Clerk, Sup. Ct. U. 8.

YALE LOCK MANUFACTURING
PANY, Appt.,

v.

HALBERT S. GREENLEAF.

(See S. C. Reporter's ed. 554-559.)

The defense was that the alleged invention and substantial and material parts thereof claimed as new were, prior to any invention thereof by said George Rosner, known and publicly used by divers persons in this country, and that among such persons were D. H. Rickards, of Boston, and the firm of Evans & Watson, of Philadelphia.

The circuit court decided that the patent was
valid, and that the defendant had infringed,
and, upon the report of a master of the dam-
ages sustained by the plaintiff, rendered a de-
cree in his favor for $2,968.50. The present
appeal brings that decree under review.

Mr. Frederick H. Betts, for appellant.
Messrs. Edward Wetmore and George
Ticknor Curtis, for appellee.

Mr. Justice Woods delivered the opinion of
the court:

It is conceded that the damages for which the court rendered its decree were allowed for the infringement of the first claim only of the Rosner patent, which, therefore, is alone to be considered upon this appeal.

The invention covered by this claim was described as follows in the specification:

"This invention consists in combining with a set of permutation wheels or tumblers, con- (556] structed each of a rim and center, an arrangeen and unfasten said rims and centers by the ment of bolts or equivalent devices, which fastuse of a key inserted through holes in the cams in the wheels, by which said bolts or equivalent devices are operated, the effect being to enable the relative position of the rims and cenCOM-ters to be changed so as to make a new combination, by moving the driving pins to different positions relatively to the slots in the wheels. It further consists in the arrangement of parts as hereinafter described.

*

*

"Prior to my invention, in order to change the combination, where a single set of wheels only was used, made up each of a center hub

Construction of letters patent-what patentable and rim, the wheels had to be removed from

-claim anticipated.

1. The scope of letters patent must be limited to

the invention covered by the claim, which may be
illustrated but cannot be enlarged by language used

in other parts of the specification.

2. A change in a mechanical device which would

the lock and adjusted by hand and then re-
placed.

"I obviate this difficulty by the following ar-
rangement: opposite the center or hub g of each
wheel, and located in the outer rim, I place a
locking device or bolt, r, which, when forced

* * * 64

in against the said center or hub, holds the thought had never been done before had been same firmly in place with the outer rim; but, done by means of the device of Rickards, emwhen thrown out, disengages said parts and al-bodied in the lock of Evans & Watson, which lows the centers to turn free while the rims re- is substantially the same contrivance as that main stationary. Against the locking device or covered by the first claim of Rosner's patent. bolt r rests a cam or eccentric, 8. Through The Rickards device embraces a set of wheels each or all of these cams, and also through the consisting of an outer rim or hub and a set of back plate of the lock, is inserted a key, P, fig, fastening devices or bolts, so constructed as to 6, by turning which it will be seen that said engage and disengage with a set of cogs on the locking or fastening device may be forced in or central hub. When the bolts are in place the drawn out at pleasure. When the key is in- outer rim and the central hub are firmly fastserted and the fastening device thrown back, it ened together; when withdrawn the hub may will be seen that the rims of the wheels are held be made to revolve without moving the rim. stationary by the key, while the centers may be The bolts are withdrawn by means of a key. turned to any different position by the spindle, Each of the wheels has an opening in it for the thus setting the lock to a new combination. passage of the key by which the bolts are The novelty in the first part of my moved; these openings in the wheels are placed invention consists in the combination of the opposite each other and also opposite a key hole fastening devices r with the wheels, construct- in the lock case, so that the key may be passed ed of three parts each, an outer rim and a cen- from the exterior of the lock case through all ter or hub composed of two parts, secured to- the wheels, and thus withdraw the bolts which gether so that by inserting the key the parts fasten the rims to the hubs of the wheels; therecomposing the wheels may be loosened and the by permitting the hubs to be moved and a outer rims held stationary, while the centers or change to be made in the combination of the hubs are turned to a different position by the lock. When the change is made the key is action of the spindle, to rearrange the combi- withdrawn and the bolts are forced back into nation, and then the parts locked in place again, their places by springs. By this means the [557] and all accomplished without removing the combination of the lock is changed without rewheels themselves from the lock. In all pricr moving the wheels from the lock case, or even locks with a single set of wheels (each wheel opening the case. made up of a rim and center hub), so far as I am aware, the wheels had to be removed from the lock and the combination changed by hand. What I claim, and desire to secure

* * * 64

by letters patent, is:

"1. In a permutation lock, in combination with a set of wheels consisting each of an outer ring or rim and a central disc or hub, a set of fastening devices or bolts, rr, which is made to fasten or unfasten said parts composing the wheels, by the insertion of a key through each or all of the wheels, whereby the combination of the lock may be changed, substantially as herein specified."

The testimony showed that on the 13th of March, 1852, the D. H. Rickards named in the answer of the defendant, filed in the patent of fice an application for a patent for an improvement in locks, which was either rejected or withdrawn; and that locks made substantially in accordance with the description contained in Rickards' specification were manufactured and sold by Evans & Watson, safe makers, of Philadelphia, as early as the year 1853. A copy of the application of Rickards is found in the record, and one of the locks made by Evans & Watson in 1853 was produced as an exhibit upon the trial in this court.

A comparison of the specification and model of the plaintiff's patent with the application of Rickards and the lock made by Evans & Watson shows that the device of Rickards and the lock of Evans & Watson were an anticipation of the invention covered by the first claim of the plaintiff's patent.

It is clear from the statement in the specification of Rosner's patent that he believed that prior to his invention it was necessary, in order to change the combination in a permutation lock, to remove the wheels from the lock case and adjust them by hand and then replace them. But Rosner was in error in making this statement. The evidence shows that what Rosner

The only difference between the Rosner device and that of Rickards which the plaintiff's counsel have been able to point out is thus stated: in the Rosner contrivance the key, in addition to locking and unlocking the fastening devices, performs, when in the lock, the function of holding the outer rims in place while the combination of the lock is changed by moving the hubs. It is insisted that this key is adapted to perform this office by the fact that it fits snugly the series of holes in the rims of the wheels through which it passes, and thereby prevents any motion of the rims.

The Rickards device has a key hole in the lock case which the key neatly fits. But the holes in the rims of the wheels through which the key passes are irregular apertures, not fitted to the shape or size of the key, so that they allow some motion to the rims of the wheels.

We think this difference between the two locks does not give validity to the Rosner patent, for two reasons: first, because the shape and size of the key hole is not mentioned in the claim of the Rosner patent as one of the elements of the combination. The scope of letters patent must be limited to the invention covered by the claim, and while the claim may be illustrated it cannot be enlarged by language used in other parts of the specification. Keystone Bridge Co. v. Phenix Iron Co. 95 U. Š. 274 [Bk. 24, L. ed. 344]; Railroad Co. v. Mellon, 104 U. S. 112 [Bk. 26, L. ed. 639]. Secondly, if it were found to be necessary to hold the rims of the wheels rigidly immovable while the combination of the lock was being changed, the idea of changing the irregular aperture in the wheels through which the key in the Rickards device was thrust to one of the shape and size of the key would occur to the rudest and most unskilled mechanic. The suggestion of such a change could not be called invention, and ought not to be dignified by letters patent. Atlantic Works v. Brady and Slawson v. Grand Street R.

[558]

[559]

R. Co. 107 U. S. 192, 649 [Bk. 27, L. ed. 438,
576]; Phillips v. Detroit, 111 U. S. 604 [Bk. 28,
L. ed. 532].

We are of opinion, therefore, that the first
claim of the plaintiff's patent was anticipated
by the application and specification of Rick-
ards and by the locks manufactured by Evans
& Watson and that it is, therefore, void.

It follows that the decree of the Circuit Court must be reversed and the cause remanded, with directions to dismiss the bill; and it is so ordered. True copy. Test:

James H. McKenney, Clerk, Sup. Court, U. S.

""

| issued letters patent No. 4696, granted to Sar. [538]
gent, January 2, 1872, for an improvement
in locks," on an application therefor filed Sep-
tember 25, 1871 (the original patent, No. 57574
having been granted to him August 28, 1866).
The specification and drawings of the reissue
are as follows:

"My invention consists in combining with
the ordinary combination wheels and the other
working parts of a combination lock which bas
no sliding lock bolt, a bolt turning on a pivot
or bearing, which is so isolated or removed
from contact with the said wheels as to receive
any pressure or strain which may be applied
through the separate bolt work of the safe or
vault door, and cut off the communication be-
tween the bolt work of the door and the wheels
or fence lever of the lock, whereby the position
of the slots in the wheels can be determined
and the lock picked,' as can be done in most
cases where the ordinary sliding bolt is used
without some mechanical device to prevent.
In the drawings, figure 1 is an elevation of
Patent law-reissue-novelty-infringement― my improved lock, with the back plate re-
measure of damages—parties — disclaimer-moved; figures 2 and 3, an elevation and top
costs.

[536] YALE LOCK MANUFACTURING COM-
PANY, Appt.,

D.

JAMES SARGENT.

'(See 8. C. Reporter's ed. 536-554.)

4 In an action for an infringement of a patent
for a turning bolt device, an improvement in locks,
where the complainant had granted no licenses but
was himself the manufacturer of his locks, and
where the patented device was an essential feature,
both of complainant's and of the infringing lock,
and where the patented device could not be sold ex-
cept as embodied in a lock, and where the com-
plainant had been compelled to reduce the price of
his locks by defendant's competition, the defend-
ant's infringement must be held to have caused the
entire loss of complainant by reason of such re
duction of price, allowance being made for other
causes which give the defendant an advantage in
selling his locks.

5. The owner of the patent is the proper party to
sue to recover damages for infringement, although
he may have a partner engaged with him in the
manufacture of the patented article.
6. Where a bill alleged infringement of a reissued
patent generally, and one claim of the reissue was
invalid, but recovery was had for infringement of
a valid claim of the reissue, and there had been no
unreasonable delay in filing a disclaimer of the in-
valid claim, this court reverses the decree of the
circuit court so far as it awarded costs to the com-
plainant, and orders each party to bear his own
costs in this court and one half the expense of
[No. 164.]

printing the record.

Argued March 12, 15, 1886. Decided April

6, 1886.

APPEAL from the Circuit Court of the United

York.

view, respectively, of the pivoted bolt, the
combination wheels, the cam and the lever
work that connects them; figure 4, a perspec-
tive view of the pivoted bolt; figure 5, a simi-
lar view of the magnet and armatures; figure
6, a view showing the manner of applying the
spindle and cam to a safe or vault door.

A, represents the plate of a safe door, and
B, the case of the lock which is applied thereto.
C, C, C, are the combination wheels, and D,
the operating spindle. The spindle passes
through a hollow stud, a, of the case, and has
screwed upon its inner end the cam E, as shown
most clearly in figure 6. The wheels themselves
rest on the stud a. I, is the bolt, turning on a
pivot or bearing, q. Its location is such as to
rest closely in the rear of the stem, t, of the
heavy bolt work of the door, and to hold it out
when in one position, but to allow it to retract,
to free the bolt work, when in the other po-
sition, said bolt I, turning on its pivot or bear-
ing to allow this to be done. H is a sliding bar,
which gives motion to the bolt as it is thrown
forward or backward, being connected together
by cog teeth p r. The bar slides on studs, nn,
by which it keeps its horizontal position. G is
a lever pivoted at f, to bar H, and serving to
throw the latter back. It has a hook, b, figure
2, which engages with the bit, d, of the cam,

15 [539]

to draw the bar back. The forward motion is
. L is a magnet of the form shown in figure
given by the cam striking the end o, of the bar
5, which is suspended on a pivot, i. Its open

end rests between armatures hk, which are sep

for the Southern District of New arated by a brass pendant l. The armature

The case is stated by the court.
Mr. F. H. Betts, for appellant.

is attached to the end of lever G. When the
magnet is in contact with the lower armature
h, the dog g will be held away from the

Messrs. George Ticknor Curtis and Edmund wheels; but when raised and brought in con-
Wetmore, for appellee.

tact with the upper armature k, the lever is re-
leased and the dog is then allowed to fall into

Mr. Justice Blatchford delivered the the notches of the wheels, to release the bolt.

[537] opinion of the court:

The magnet is raised by a roller, c, of the cam,
which strikes a bearing, m, of the magnet.

This is a suit in equity, brought in the Cir-
cuit Court of the United States for the Southern In general principle the magnet is the same
District of New York, by James Sargent as that covered by the patent of Sargent and
against the Yale Lock Manufacturing Com- Covert, May 2, 1865; but the construction and
pany, to recover for the infringement of re-arrangement of the magnet and armatures are

so arranged as to receive the pressure of the
said bolt work without transmitting it to the
wheels or other equivalent works of the lock.
2. In a combination lock for safe and vault
doors, I claim the combination of the bolt I,
bar H, and cog connection p r, when said bolt,
I, turns on a pivot or bearing. and receives the
pressure of the bolt work situated outside the
lock works, and intervenes between the bolt
work and the wheels.

3. I claim, in combination with the bolt I,
the bar H and lever G, arranged and operating
as herein set forth.

4. I claim, in combination with the vibrating magnet L, the armatures hk and pendant l, arranged as herein described.

5. I claim the combination and arrangement of the wheels CC, cam E, lever G, bar H, and bolt I, as herein described."

The defenses set up were want of novelty, noninfringement, and invalidity of the reissue. After a hearing on pleadings and proofs, an interlocutory decree was entered finding the reissued patent to be valid and to have been infringed, and awarding a perpetual injunction and an account of profits and damages. The master reported $7,771 damages in favor of the plaintiff. The defendant excepted to the report, but the exceptions were overruled by the court and a final decree was entered for the plaintiff, for $7,771 damages and $650.17 costs. The defendant has appealed to this court.

It is contended that the first claim of the reissue is void for unlawful expansion, after unreasonable delay in applying for the reissue. The original patent had three claims, as follows:

nection with the bearing on which it rests and
the stem of the bolt work which rests against
it, when said tumbler is isolated or disconnected
from the combination wheels, so that any in-
ward motion of the bolt against this tumbler
will expend its force against the bearing on
which the tumbler turns and rests, and will not
reach or affect the permutation wheels." The
attorneys also said: "In Mr. Sargent's device it
will be observed that the combination or per-
mutation wheels are on a different bearing, and
located at a distance from the revolving tum-
bler I, and never in contact therewith, so that
the two are practically isolated from each other,
and there is no connection between them except
through the lever H, which is not within the
reach or influence of the pick lock." And the
specification of the original patent contained [543]
this language: "The principal advantage of
this tumbler consists in its isolation, so to speak,
from the combination wheels and the main
working parts. It rests alone on its bearing,
the only part connected being the cog bar H.
In ordinary locks the sliding bolt extends back
in direct connection with the main working
mechanism, and by its constant action and the
strain that comes upon it frequently disarranges
those parts. This is especially true when the
stem or projection t of the heavy bolt of the
safe door rests against the sliding bolt. In this
case, when force is applied to the bolt, the
wrenching strain upon the bolt and mechanism
is very great. In my lock it will be seen that
this difficulty is obviated, for any strain that
comes upon the circular tumbler, either from
the stem t or any other source, is simply ex-
pended upon the strong bearing q, and does not
reach back to the combination wheels or any
part of the working mechanism. This is of the
utmost importance."

"1. The rotating tumbler I, when separated
and isolated in action from the permutation
wheels, and so arranged that any inward pres-
[542] sure upon the bolt will be exerted on the bear- It is urged that emphasis was thus laid on
ing of said tumbler, and have no action or ef- the fact that the turning bolt or tumbler was
fect upon the said permutation wheels, sub-mounted on a different bearing from the per-
stantially as and for the purpose herein spec-
ified.

2. In combination with the turning tumbler I, the cog bar H and lever G, arranged and operating as herein set forth.

3. The combination and arrangement of the combination wheels C,cam disk E, pivoted lever G. cog bar H, and turning tumbler I, the whole operating as herein specified."

Claim 3 of the reissue is substantially the same as claim 2 of the original, and claim 5 of the reissue is substantially the same as claim 3 of the original, while claims 2 and 4 of the reissue are new claims.

The defendant directs attention to these facts. When Sargent applied originally for his patent, on February 6, 1866, he asked for claim 1 in this form: "The turning bolt I, resting on its bearing 9, in combination with the mechanism of a combination lock, in such manner as to practically isolate or disconnect it from the main operating parts, substantially as set forth." Claim 1 having been rejected on the 24th of March, 1866, Sargent on the 29th of June, 1866, changed the claim to the form it has in the original patent as issued, and his attorneys at the same time, in a letter to the patent office, explained the new form of claim thus: "The substance of the first substituted claim consists essentially in providing a rotating tumbler in con

mutation wheels, and that it was that arrange-
ment which prevented pressure on it from
reaching back to the permutation wheels; that
the original claim, in speaking of the rotating
tumbler as "separated and isolated in action
from the permutation wheels," meant that it
was mounted on its own separate bearing, and
did not allow of its being mounted in any other
way; that the specification of the reissue docs
not say that the tumbler I "rests alone on its
bearing q;" that the limitation thus contained
in claim 1 of the original patent is not found
in claim 1 of the reissue; and that thereby an
unlawful expansion was made, the application
for the reissue having been filed more than five
years after the original patent was granted.
But we think the reissue is not fairly open to
this objection. The tumbler in the one claim
and the bolt in the other are the same instru-
ment. The words "rotating tumbler I," in the
original claim, refer to the tumbler described
as resting on a bearing" around which it turns."
The claim of the reissue, in saying that the
bolt I turns on a pivot or bearing," expresses
the same idea. The words in the claim of the [544]
reissue, "when said bolt I is used in a lock
having no ordinary sliding lock bolt, and in
connection with the separate bolt work of the
door, and so arranged as to receive the pressure
of the said bolt work without transmitting it to