pliable metal, one leg being secured to the lens and the other extending upwardly and rearwardly. The upper portion of the free end is enlarged to constitute a pear-shaped bearing pad, having an opening which conforms to the shape of the pad. The appellants do not use two pads or three pads, but one pad only. In order to establish infringement the ingenious theory is advanced that, though made of one integral piece of metal, this pad is in fact two pads, though the line of demarcation between the two no one has ventured to point out with accuracy. In fact the appellants' device operates upon the principle of the former Fox patent rather than that of the patent in suit.

Again it is argued that if the Wells pads were connected together by metal, the guard thus formed would be the appellants' structure. Assuming this to be so, infringement cannot be established by reconstructing the patent to fit the infringing device. The change suggested would convert the Wells structure from one having a plurality of pads to one having a single pad. This cannot be permitted.

The converse of the foregoing proposition is also argued. It is asserted that only certain portions of the "Lasso" guard bear on the side of the nose and that they are at points substantially similar to the bearing points of the Wells pads. The proof does not bear out this contention, on the contrary, the simple experiment of use will demonstrate that all parts of the appellants' pad proper bear upon the nose. Assuming, however, the facts to be as stated, we are of the opinion that the conclusion that infringement is established does not follow. The "Lasso" guard is a unitary structure and cannot be considered as an equivalent of the two distinct and separately mounted pads of the patent in suit. As well might it be said that a patent for a shoe having a sole provided with rubber bosses to prevent slipping is infringed by a shoe having an integral rubber sole, because in both rubber comes in contact with the ground at the same points, and that identity in this respect can be demonstrated by cutting out all the rubber from the sole of the latter shoe except at the points where the rubber bosses appear on the sole of the former.

We are convinced that the appellee is not entitled to equivalents; that if construed broadly to cover the "Lasso" guard the claims are anticipated by the devices of the prior art, and that when limited, as they must be, to the precise construction shown, they are not infringed.

It follows that the decree of the Circuit Court must be reversed, with costs.

BOYER v. KELLER TOOL CO.

(Circuit Court of Appeals, Third Circuit. December 21, 1903.)

No. 1.

1. PATENTS-CONSTRUCTION OF CLAIMS-LIMITATION BY PROCEEDINGS IN PATENT OFFICE.

The claims of a patent are not narrowed by statements made on an argument by counsel before the Patent Office to obtain a reconsideration after the application has been rejected, where no changes are made in the claims.

2. SAME-SPECIFICATIONS-"SUBSTANTIALLY AS DESCRIBED"-LIMITATION TO

PARTICULAR FORMS-INFRINGEMENT.

Where, in the specifications, a certain part of a mechanical combination is said to consist preferably of the shape approximating that shown in the drawings, but the inventor expressly declares, with regard to his invention generally, that by describing in detail any particular arrangement he does not intend to limit himself beyond the terms of his several claims or the requirements of the prior art, a claim is realized and infringed by any construction of the general character called for which fulfills its terms, notwithstanding the words "substantially as described" at the end.

3. SAME DUPLICATION OF CLAIMS.

Where a special form of mechanical construction, the same as that described in the specifications and shown in the drawings, is embodied in a certain set of claims, it is not, in order to avoid duplication, if for no other purpose, to be written into other claims, where a device of the general character called for is sufficient to satisfy their terms.

4. SAME-INFRINGEMENT-PNEUMATIC TOOL.

The Boyer patent, No. 537,629, for a pneumatic tool, was not anticipated, and, while the mechanical elements combined were old, the combination shows patentable invention, especially in view of the utility of the tool and its superiority over those of the prior art. Claims 42, 45, 46, 47, and 48, the essential elements of which are a supply duct through the handle of the tool and a throttle valve in the handle for controlling the duct and operated by a spring pressed lever, are infringed by the machine of the Keller patent, No. 647,415, in which all of such elements are substantially reproduced.

Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

For opinion below, see 110 Fed. 217.

Edward Rector and John R. Bennett, for appellant.

E. Hayward Fairbanks, for appellee.

Before ACHESON and GRAY, Circuit Judges, and ARCHBALD, District Judge.

ARCHBALD, District Judge. The bill was dismissed on the ground of noninfringement, and the case may therefore be appropriately approached from that side. The patent in suit was issued to Joseph Boyer, April 16, 1895, for a pneumatic tool, and its various features are expressed in a large number of claims, only two groups of which, however, were the subject of consideration in the court below. The appellant accepts the conclusion reached with regard to those, of which claim 5 is typical, and which relate to the automatic valve mechanism at the rear of the piston chamber. The only complaint, therefore, with which we have to deal is the treatment of those which cover the means for controlling the supply pressure, being claims 42 to 48, inclusive. Taking claim 47 as expressive of this group, it was held by the court below that a pressure supply duct was there called for which extended through the grasping portion of the handle, combined with a throttle valve to control the supply, of the exact construction and method of operation shown in the patent, and that, as neither of these appeared in the tool manufactured by the defendant company, it could not be held to infringe. The relative construction of this

part of the defendants' tool and that of the plaintiff as portrayed in the patent will appear by the following diagrams:

It will be there seen that the defendants carry the supply duct through the lower end of the handle direct to the head block of the piston chamber, while in the plaintiff's tool it extends through the entire length of the handle, the recurved neck as well as the grasping portion of it. If the plaintiff is confined to this construction, the conclusion reached by the court below was justified.

The combination of which this feature of the plaintiff's tool is a part is expressed in its broadest terms in claim 42, as follows: "(42) In a pneumatic tool the combination with the tool proper of a grasping handle secured thereto, and having the pressure supply duct extending through it, and a throttle valve in the grasping portion of said handle for controlling said duct, substantially as described." In the description given in the preceding specifications the handle proper is said to preferably consist of a portion, of the shape approximately that shown in the drawings, and adapted to be grasped in one hand of the operator in the manner of the ordinary handsaw, and a reduced reversely curved neck portion connecting the other with the head block of the piston chamber. But the inventor expressly declares with regard to his invention generally that by describing in detail a particular construction or arrangement he does not intend to limit himself beyond the terms of his several claims or the requirements of the prior art. With this reservation, the claim just quoted would, therefore, seem to be realized, so far as the supply duct is concerned, by any construction by which such duct is made to extend through any part of the grasping portion of the handle, and is not confined to one in which it traverses the whole handle, or the grasping portion of it longitudinally, as shown in the drawings. This cannot be said, it is true, of claims 43 and 44, each of which calls by specific mention for a handle composed of a grasping portion and a reduced neck portion, with the pressure supply duct extending through both. But it is true of the other claims of this group, including claim 47, taken by the court below as typical. In each of these, as in claim 42, the duct is simply spoken of as extending through the grasping handle, which, in claim 45, is still further narrowed, without qualification, to the handle. We are of opinion that, according to the proper construction to be given to these claims (excepting 43 and 44), the defendant's tool does not escape infringement by having the grasping portion of the handle connected with the head block by a lower neck or arm, and leading the supply duct through it. To accomplish this, the duct has first to pass through that portion of the handle which is to be grasped by the operator, and this it effectively does, even though it only traverses the end of it sectionally. It is by the introduction of the pressure supply duct through the medium of the handle in this way that the further device, which is common to both tools, is made possible, of a throttle valve set in the grasping portion, by which the pressure is put under easy and complete control of the directing hand of the operator, and it is of this situation that the defendants in the tool which they have designed have sought to obtain the benefit. To allow it to stand is to permit them to appropriate, without regard to the doctrine of equivalents, the whole principle of the invention, making the patent by which it is supposed to be protected practically of no value.

It is to be noted that the interpretation of the claims in question which we so adopt does away with any controversy over the effect of the proceedings in the Patent Office as disclosed by the file wrapper, of which much is made. We accept for the purposes of this case all that can in any event be legitimately claimed for the argument of counsel addressed to the examiner, which is there found; that is to say, that the pressure supply duct shall extend, not simply through the handle, but through the grasping portion of it, holding, as we do, that even with that construction put upon the patent the defendant's tool offends. At the same time it is to be observed that the meaning of counsel in this connection is not entirely clear, and whatever be the concession contained in it, not having been carried into the patent by any change in the claims as made, we by no means agree that it limits the terms of such claims as finally allowed. Acme Flexible Clasp Co. v. Carey Mfg. Co. (C. C.) 96 Fed. 344; Society Anonyme Usine v. Rehfuss (C. C.) 75 Fed. 657; Daylight Prism Company v. Marcus Prism Company (C. C.) 110 Fed. 980; Diamond Drill Company v. Kelly (C. C.) 120 Fed. 282. We further recognize that claim 45, which speaks merely of the pressure supply duct extending through the handle, saying nothing about the grasping portion of it, may possibly be entitled to a broader significance than we have thought necessary to give it or the other associated claims. Accepting the narrower construction, which is all that we need to do, the defendants are nevertheless found within it, and to that extent infringe.

So do they with regard to the throttle valve, which is the other element of the combination in question. This they have located the same as the plaintiff, in the grasping portion of the handle, and it operates equivalently to control the admission of fluid pressure into and through the duct. So far as claims 42 to 45 are concerned, no particular form of construction or mode of operation is specified in them, and none is therefore to be imposed; the combination is simply of a throttle valve in the handle in conjunction with a supply duct running through it, and that is all that is required to fulfill their terms. It is true that the inventor in his specifications describes a particular kind of valve, the same as shown in his drawings and in the diagram above; and, while a device of that general character may be called for, he expressly declares, as we have already seen, that he does not intend to limit himself with regard to the different parts of his invention-a reservation sufficient, as it would seem, to overcome the customary formula "substantially as described" at the end of the claim. Moreover, he has embodied in a special set of claims-49 to 51, inclusive, not involved in this suit-forms of valves corresponding with the specifications, to which, so far as concerns the mechanical combinations there described, the inventor is of course confined. But these are not to be written into other claims, which, in order to avoid the duplication that would otherwise result, if for no other reason, are to be taken and interpreted as they stand. National Cash Register v. American Cash Register, 53 Fed. 367, 3 C. C. A. 559. So far, therefore, as regards claims 42 to 45, the defendants infringe the combination, whatever the character of their throttle valve, provided only it is located in the grasping por