There can be no doubt that these claims, taken in their plain ordinary meaning, cover broadly the forms shown in both Daugherty patents; they embody the broad combination disclosed in both these patents and in defendants' machine, and could properly be drawn in either.

With these concessions before us, we think the decree of the circuit court should be affirmed. The combinations of the claims in suit were disclosed in the proceedings for patent 470,990, issued to the same inventor nearly three months before the claims in suit were filed. We think it was too late then to amend the specification in the application for patent 481,477 in such manner as to open the way for adding claims 37 and 38. The application for 481,477 was not a divisional application of 470,990. It was for improvements in the construction of certain parts of 470,990. Up to July 9, 1892, reference was made in the application for 481,477 for the construction and method of operation of the type-bar-shifting frame to patents 457,258 and 470,990, where, it was said, they were "fully described and shown," and the type-bars and key-levers were declared to "form no part of the present invention." The interjection into the application for 481,477, on July 9, 1892, of claims 37 and 38 for combinations to effect certain methods of type action, was recognized by Daugherty as an amendment not within the scope of his application as filed on March 8, 1892, for otherwise he would not have accompanied it with his supplemental oath. These claims, properly interpreted, are not for

improvements in the construction of the parts shown and described in Patents No. 457,258, dated August 4, 1891, and No. 470,990, dated March 15, 1892. but are, as both Daugherty and the counsel for the complainant admit, for combinations disclosed in patent 470,990. Indeed, we think the circuit court has correctly concluded

that the claims of the patent in controversy, upon any such reading of them as is contended for, are inclusive of claims 1 and 2 of No. 470,990.

See opinion of that court, (173 Fed. Rep., 288.) If the claims of 470,990 were narrower than Daugherty's real invention, or if claims 37 and 38 were omitted from that patent by mistake, the error or mistake should have been corrected in a reissue. It cannot be corrected, as we understand the patent law, by inserting the broader claims to which he might have been entitled on a reissue of 470,990 in a patent for improvements in the construction of certain parts of 470,990.

We think the decree of the circuit court should be affirmed, with costs; and it is so ordered.

[U. S. Circuit Court of Appeals-Eighth Circuit.]

Boss MFG. Co. v. THOMAS.

Decided October 11, 1910.

162 O. G., 1183.

1. CONSTRUCTION OF PATENT-PROCEEDINGS IN PATENT OFFICE.

"It is settled by the repeated decisions of the Supreme Court and of this court that, when an inventor seeking a patent for a broad claim acquiesces in a rejection of the same by the Patent Office and substitutes therefor a narrower one, he will not be heard to insist that the construction of the claim allowed shall include that which has been rejected; also, that a claim as allowed under such circumstances must be construed with reference to the rejected claims and the prior state of the art, and will not be so interpreted as to cover either what was rejected by the Patent Office or disclosed by prior devices."

2. PATENTABILITY-INVENTION-SUBSTITUTION OF EQUIVALENTS.

The use in a patented device of a screw to fasten together two parts instead of a rivet used in prior devices for the purpose of making them more readily detachable, is but the substitution of a well-known mechanical equivalent and does not amount to invention.

3. SAME EVIDENCE OF INVENTION-UTILITY AND EXTENT OF USE.

The fact that a patented article has gone into extensive or general use is evidence of its utility and in doubtful cases may be considered as evidence of invention, but is not conclusive, and where there is no invention the extent of the use is immaterial.

Mr. L. S. Bacon and Mr. C. C. Linthicum, for the appellant. Mr. William Nevarre Cromwell, Mr. C. E. Doyle, and Mr. D. W. Higbee (Messrs. C. A. Snow & Co. of counsel) for the appellee. Before Hook and ADAMS, Circuit Judges, and REED, District Judge.

REED, Dis. J.:

This suit was brought by appellant to restrain the alleged infringement by defendant of claims 1, 2, and 3 of Patent No. 634,923, issued to Theo. P. Walter, October 17, 1899, and claim 9 of Patent No. 810.098, issued to the same Theo P. Walter, January 16, 1906, the application for which was filed March 28, 1905, both for improvements in corn-huskers. The defendant denied the infringement, alleged that both of the patents were anticipated by prior patents and devices set forth in the answer, and were lacking in patentable novelty and void. The circuit court dismissed the bill, and complainant appeals.

In the specification of the first patent, or Patent No. 634,923, the patentee says:

The object of the present invention is to improve the construction of cornhuskers, and to provide a simple, inexpensive, and efficient device adapted to fit

*

the hand of the operator, and prevent the same from being crippled; and a further object * * is to provide a corn-husker having an adjustable hook adapted to be arranged in different positions to suit the hand of the operator, and capable of being readily replaced when worn. The invention consists in the construction and novel combination and arrangement of parts hereinafter fully described, illustrated, and pointed out in the claims hereto appended.

Claim 1 of this patent is as follows:

1. A corn-husker provided in its body portion with a series of openings, in combination with a husking-hook adapted to be fitted into any one of said openings, and retaining means for said hook.

2. A corn-husker comprising a body portion provided with a transverse series of slots and an adjustable hook adapted to be arranged in any of the slots and provided at its shank with an arm, extending in the opposite direction from the engaging portion of the hook and secured to the inner face of the said body portion, substantially as described.

3. A corn-husker comprising a body portion provided at intervals with slots, and a hook capable of adjustment on the body portion and provided at its shank with an arm extending through one of the slots and detachably secured to the inner face of the body portion, substantially as described.

The patentee at first claimed as his invention the adjustability of the hook upon the plate or body of the husker. This claim was rejected by the Patent Office upon reference to a number of prior patents. The patentee acquiesced in this rejection, canceled the original claim 1, slightly amended claims 3 and 4, and presented two new claims, one of which is claim 1 of the patent as above quoted. The other is as follows:

2. A hand corn-husking implement having in combination therewith a huskinghook and means whereby the position of said hook may be shifted from one point of the body of the implement to another.

The Patent Office rejected this claim upon reference to the patent to Schmeltzer, No. 146,842, January 27, 1874, and said that claim 1 "may possibly be allowed upon its specific construction." The patcntee then amended his new claim 2, by inserting the word "separable" before the words "husking-hook." The claim as so amended was again rejected upon reference to the Brown patent, No. 57,283, August 21, 1866; Schmeltzer, No. 146,842, January 27, 1874; Hagen, No. 259,683, June 20, 1882; Burton, No. 626,854, June 13, 1899. The patentee again acquiesced and presented claims 2 and 3 of the patent as finally allowed and as above set forth. It thus appears that the patentee acquiesced in the repeated rejection by the Patent Office of his original and amended claims for an adjustable hook upon the plate or body of the husker, and accepted the narrower claims of the patent which are for the specific construction or method of attaching the hook to the body of the plate as described. It is settled by the repeated decisions of the Supreme Court and of this court that, when an inventor seeking a patent for a broad claim acquiesces in a

rejection of the same by the Patent Office and substitutes therefor a narrower one, he will not be heard to insist that the construction of the claim allowed shall include that which has been rejected; also, that a claim as allowed under such circumstances must be construed with reference to the rejected claims and the prior state of the art, and will not be so interpreted as to cover either what was rejected by the Patent Office or disclosed by prior devices. (Corbin Cabinet Lock Co. v. Eagle Lock Co., C. D., 1893, 612; 65 O. G., 1066; 150 U. S., 38; 14 Sup. Ct., 28; 37 L. Ed., 989; Computing Scale Co. v. Automatic Scale Co., C. D., 1907, 687; 127 O. G., 849; 204 U. S., 609; 27 Sup. Ct., 307; 51 L. Ed., 645; National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. Rep., 693; 45 C. C. A., 544; St. Louis Street Flushing Mach. Co. v. American Street Flushing Mach. Co., 156 Fed. Rep., 574; 84 C. C. A., 340.)

The patentee and the complainant as his assignee are, therefore, each estopped from insisting that the patent as allowed covers the broad claim for a hook adjustable upon the body of the plate as was originally claimed. Each of the claims 1, 2, and 3, therefore, must be limited to the specific method of attaching the hook to the body of the husker by means of an arm or shank fitted into an opening or slot in the plate. Is it a patentable novelty to so attach the hook, or is it shown by the prior devices? The standard husker, a device not patented, but which was put in evidence by the defendant, is conclusively shown to have been in public use since 1883, fifteen years before the application for this patent was filed. That device is the same as that of this patent, unless the method or means of attaching its hook to the plate distinguishes it from the device of the patent. In referring to these two devices, the standard husker, and the husker of the patent, the complainant's expert said:

So far as the underlying spirit or idea involved in these two devices is concerned, I believe it may be properly said that the difference between the two resides in the facts that the standard husker is a fixed and permanent structure while the Walter husker is a detachable and adjustable structure. Thus broadly considered it may fairly be said that this is the only difference.

In the standard husker the hook is attached to the plate by means of a rivet, thus making it what the complainant's expert calls "a permanent structure," while in the husker of the patent an arm or shank is fitted into an opening or slot in the body of the plate and held in position by means of a screw or its equivalent, whereby it may be more readily detached and replaced, or readjusted when it is necessary for any reason to do so. But we have seen that the claim for an adjustable hook was surrendered by the patentee, and for it he substituted and finally accepted in lieu thereof the narrower claim for the specific construction or method of attaching the hook to the plate as described. But admitting that the claims as finally

to

allowed are for an adjustable hook upon the body of the plate meet the whim of the user," as urged in behalf of complainant, the use of the screw or its equivalent as a means of attaching the hook to the plate instead of the rivet, whereby the hook may be the more readily detached and replaced when it may be necessary or desirable to do so, would readily suggest itself to any one skilled in the art of using or constructing such devices; and the extension of the lug of the standard husker through the plate, turning it in an opposite direction, and attaching it by means of the screw or its equivalent instead of the rivet, does not in our opinion arise to the dignity of invention. (Richards v. Chase Elevator Co., C. D., 1895, 392; 71 O. G., 1456; 158 U. S., 299; 15 Sup. Ct., 831; 39 L. Ed., 991; Mast, Foos & Co. v. Stover Mfg. Co., C. D., 1900, 285; 91 O. G., 1239; 177 U. S., 485; 20 Sup. Ct., 708; 44 L. Ed., 856; Ross v. Dowden Mfg. Co., 157 Fed. Rep., 681; 85 C. C. A., 449.)

It is matter of common knowledge that the use of the screw, the nut and bolt, and the rivet as a means of uniting, or attaching together two or more pieces or parts of material, were well known, and the mechanical equivalents of each other, and so used long before the first Walter patent. (Peters v. Hanson, C. D., 1889, 444; 47 O. G., 945; 129 U. S., 541, 551; 9 Sup. Ct., 393; 32 L. Ed., 742.)

The complainant urges upon us the extensive use of the husker of the patent as claimed by him, as evidence of the patentability of that husker. In doubtful cases the fact that a patented article has gone into extensive or general use is evidence of its utility; but that is by no means conclusive of its patentability. When there is no invention, the extent of the use is a matter of no importance. (McClain v. Ortmayer, C. D., 1891, 532; 57 O. G., 1129; 141 U. S., 419; 12 Sup. Ct., 76; 35 L. Ed., 800; Adams v. Bellaire Stamping Co., C. D., 1891, 546; 57 O. G., 1280; 141 U. S., 539; 12 Sup. Ct., 66; 35 L. Ed., 849; Duer v. Corbin Cabinet Lock Co., C. D., 1893, 334; 63 O. G., 1060; 149 U. S., 216, 224; 13 Sup. Ct., 850; 37 L. Ed., 707.) The conclusion therefore is that the first Walter patent, or Patent No. 634,923, is lacking in patentable novelty and void.

Claim 9 of the second patent in suit, or Patent No. 810,098, the application for which was filed March 28, 1905, is as follows:

In a corn-husker, the combination with a base member having an opening, of a husk-engaging member comprising a body portion that rests against the base member, said husk-engaging member having a longitudinally-disposed offset retaining-lug that projects beyond one end of the body portion and is movable through the opening into and out of engagement with the opposite side of the base member to that against which the body portion rests, and having at its other end an outstanding hook that extends toward the end having the lug, and a holding device connecting the base member and the body portion between the retaining-lug and the hook.

2097-12-31