Edwin H. Brown, for complainant. James H. Lange and Livingston Gifford, for defendant. LACOMBE, Circuit Judge (after stating the facts). Machines of this general character comprise work-moving mechanism, stitching mechanism, and cutting mechanism. With the cutting mechanism only is this suit concerned. The threads which surround and reenforce the sides of a buttonhole extend from the edge of the buttonhole backward into the cloth, being inserted in the cloth by a succession of alternate stitches, known as "edge stitch" and "depth stitch." The machines that make these stitches operate in one of two ways: either the cloth feeds forward lengthwise of the buttonhole, without any sidewise to and fro motion, and the needle is itself jogged sidewise to or fro after each stitch, or else the needle reciprocates vertically without any lateral motion, and the clamp which holds the work is given the jogging motion, so that the needle will stitch alternately "edge" and "depth." The patent in suit is concerned with this latter class of machines, and it provides for cutting mechanism whereby the buttonhole may be cut while it is being stitched. The work clamp which holds the cloth has two motions; a forward motion, or forward feed, which pushes it along in the direction of the length of the buttonhole without retrogression; and a to and fro or jogging motion at right angles to the length of the buttonhole. The succession of movements in forming the stitches are these, a starting point being taken when the work-clamp is jogged out so that the edge-stitch line is under the needle: (1) The needle descends, and then (2) it ascends, making an edge stitch. (3) The work-clamp jogs in, bringing the depthstitch line under the needle. (4) The needle descends, and then (5) it ascends, making a depth-stitch. (6) The work-clamp jogs out, bringing the edge-stitch line under the needle, and (7) either simultaneously with 6, or afterwards, and before 8, the work-clamp moves forward so far as may be necessary to secure the predetermined distance between the pair of stitches already formed and the next pair. (8) The needle descends, and then (9) it ascends, forming another edge-stitch. And so on in the order set forth. The cutter is fixed to a cutter-carrier, which reciprocates vertically as the needle does, when thrown into engagement with the needle-carrier. When not thus operated upon by the depressor of the needle-carrier, it is inoperative. The cutter may be of width equal to the length of the buttonhole, in which case it will be necessary only to provide means for making it descend once; or it may be narrow, in which case successive plunges must be provided for. Of course, it does not descend in the same plane as that which contains either line of edge stitches, and therefore not in the same plane as the needle. The plane of its operations lies between the two lines of edge-stitches. And it is manifest that whether it be a broad knife or a narrow one, and on whichever side of the needle it plays, it must be so arranged that it will descend only in its own proper plane. If, for instance, it is in such proper plane when the needle is in edge-stitch position, it will be out of its proper plane when the needle is in depth-stitch position; and if it descends there it will cut the cloth in such wise as to ruin the buttonhole. And the patentee states in his specification that he so arranges and adjusts "the cutter and its carrier that they will be depressed to cut the middle line or slit of the buttonhole when the needle descends in or nearly in that line as in making the edge-stitches, or when the needle penetrates the work at a distance from that line, as in making the depth-stitches." The combination of parts by which this is accomplished is, briefly stated, thus: A cutter-bar, sliding in guides at one side of the needle-bar, and normally detached from other parts, is adapted to be thrown into engagement with a depressor on the needle-carrier, which, when the needle descends, will carry down the cutter-carrier with it. When the needle-carrier ascends, the cutter-carrier is, by means of a spring or similar device, elevated with it, and thrown out of engagement with the depressor. Engagement is effected by means of connections between the cutter-bar and a so-called "cutter-controller," located on the work-clamp mechanism. The following excerpt from the opinion below correctly describes this part of the apparatus: "P of the patent drawings represents the cutter-controller, a laterally-projecting finger attached by means of screws to the feed-wheel disk, F, arranged to be operated by means of teeth in said wheel engaging a ratchet or pawl, motion to which is imparted by the motion of the main shaft of the machine. [This disk revolves, without retrogression, in the direction of the hands of a watch, and it moves synchromously with the forward feed of the work-clamp. When that forward feed ceases temporarily to allow the needle to make an edge and a depth stitch, the disk for a like period suspends its revolution.] As this disk revolves, it brings the projecting point of the cutter-controller into engagement with a vertical finger on the arm, L. of a lever, which so moves the arm, L1, of said lever, acting by means of hinges upon the vertical cuttercarrier, I, as to cause the cutter-bar to slightly rotate, and to bring the clutch, J, on the cutter-carrier, and the clutch, J1, on the needle carrier, A, into engagement. Thereupon the downward movement of the needle-arm depresses the cutter-carrier, and the cutter passes through the fabric. Upon the upward movement of the needle-carrier, a spring causes the clutches to be disengaged, and another spring, K, upon the cutter-carrier, elevates the cutter." Moreover, as this rotary disk, with its projecting finger, P, is mounted on the work-clamp mechanism, it has, besides its rotary motion, the same to and fro or jogging motion which the workclamp has. The patent is long and complicated. It covers 14 pages, contains 30 claims, and is accompanied with 59 drawings. The evidence is voluminous, and the judge who heard the cause in the circuit court has elaborately discussed the patent, the defendant's machine, and the prior state of the art. It will not be necessary here to go over all the ground so carefully covered. In most of his conclusions as to the prior art, the invention of Osterhout, and the relative dates of other inventions, we concur. The case has been much simplified here by concessions made upon the argument. The defendant concedes that invention was exercised on the part of Osterhout in his solution of the problem how to connect a cutter mechanism with the feed-wheel so that it would be automatically * operated during a portion only of the stitching period, and so operated as to cut when making the edge-stitch, and not to cut when making the depth-stitch, in a buttonhole sewing machine of the type in which the cloth clamp has a jogging movement to make the edge and depth stitch, and a cycle of feed movement to lay the stitches about the buttonhole. The complainant has also upon the argument made concessions as to his utilization of the jogging movement to effect this result, which will be referred to in more detail after stating the conclusion arrived at in the circuit court, in the following quotations: "The device of defendant is so constructed that it is not dependent upon the jogging motion of the feedwheel mechanism for the determination of the number of strokes of the cutter." "The complainant's device is thus dependent.” Therefore it is "necessary to limit certain claims of the patent [1, 2, 4, 5, 7, 15, and 28] to a cutter-controller which determines the duration of the cutting period." "Claims 21 and 22, however, cover the finger device used as a starter, and nothing more." "The original application covered a construction whereby the cutter might be put in engagement independent of the jogging motion." "The original application described an operative device actuated by a cam working in harmony with the progressing movement [i. e. the feeddisk rotary movement] of the work-carrier, and not necessarily limited to a construction dependent upon the combined rotary and jogging motion for causing a depression." "Claims 21 and 22 are not limited to a construction moving upon the clamp-feed mechanism, or located on the rotary feed-wheel, * but cover broadly a construction actuated by a cam or device rotating in unison with the clamp-operating cam or disk for throwing the cutter or depressor into action." "Inasmuch as the specification describes, and claims 21 and 23 broadly cover, such combination used as a starter, and nothing more, I think these claims are infringed by defendant," which "uses the cutter-controller as a starter." It is manifest that the circuit court was of the opinion that claims 21 and 22 covered a subcombination of the general combinations covered by the other claims, and that complainant's specifications disclosed an embodiment of such subcombination which would be operative as a starter without the co-operation of any jogging movement. The specifications and drawings describe not only a primary type of machine, but also modified forms of the same. Two of these are shown in Fig. 7,-one in solid, the other in dotted, lines,—the latter being referred to in the record as illustrative machine C. Of this complainant's expert testified: "The lever, L, may have the whole of its rocking motion imparted to it by the rotary movement of the cutter-controller." Of still another form, shown in Fig. 23, the same witness said: "[It shows] a cutter-controller performing its controlling function solely by its rotary motion." No doubt this evidence was in the mind of the court when the abovequoted conclusion was expressed. A large part of the expert testimony is concerned with this question of the extent to which the jogging motion imparted by the work-clamp enters into the various devices of the patent, and the briefs are filled with quotations from the patent itself, and from the file wrapper and contents, which are believed to support one or other contention. All this may be eliminated from this opinion in view of complainant's concessions upon the argument. In the primary form of machine, if the workclamp is jogged out, the rotary feed disk may be revolved indefinitely, and the finger or controller, P, will not come into engage ment with the lever which starts connection between cutter and depressor. The jogging movement is essential to bring it into such engagement. Engagement and consequent starting is impossible until the work-clamp jogs in carrying the feed disk and finger, P, with it. This the complainant now concedes. In the form shown in Fig. 7, dotted line, the controller jogs, and this jog of the controller is necessary to bring it into position for operating upon the adjacent lever, by which the cutter-bar is shifted into engagement with the depressor. After the cutting has been done, the jogging movement of the controller moves it away from the lever, so that it may pass by the lever. This, too, the complainant now concedes. In the form shown in Fig. 23 the controller itself has no jogging motion, but the mechanism which effects the connection with the cutter-carrier is more complex than in the other forms. The fact is that the projecting finger, P, shifts the part g2 into position to be operated upon by a projection, g3, on the lever, H, which has a jogging movement, and that the jogging movement of this lever completes the movement of the cutter-carrier necessary for engaging the latter with the depressor. The jogging of this lever in the other direction permits the cutter-carrier to be released by the depressor. This also is now conceded by the complainant. Here the controller is really a compound one, to whose efficient action jogging motion is essential. As to the general form of Osterhout's machine as shown in Fig. 2, complainant also concedes that the jogging movement would be necessary for disengaging the parts if a multiple cutter was used; but insists that this would not be so when a single-stroke cutter is employed. It is unnecessary, so far as claims 21 and 22 are concerned, to review the facts or the arguments by which defendant controverts this last proposition. The above concessions, which cover the starting of the cutter in each form of machine, are sufficient. Certainly it is essential to an automatic cutting device embodied in a sewing machine that it shall at least begin to cut. That function is quite as important as it is that it should cease cutting at some appropriate time. In view of these concessions, it is a sound contention of defendant that Osterhout, so far as this record shows, "never invented any cutter mechanism except one having a controller, the fulfillment of whose function necessarily depended upon the jogging movement of some part of the work-moving mechanism; that he never illustrated or described any other cutter mechanism; and that he therefore failed to show how any cutter mechanism could be operated otherwise than through the jogging of some part in the work-moving mechanism." The next question is whether the jogging motion is to be considered a part of these several claims. In some of them, where the |