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nection we are satisfied, even if the argument is sound, that these actuators do “temporarily control" the carry in the sense that they prevent the driving pinion from going backward by the operation of driving it forward.

The case is thus brought squarely within the rule of the Hillman Case that when an inventor has described and claimed his real invention he cannot add to it by adding a broader claim. Felt's fundamental idea was the delayed carry temporarily governed by the next higher actuator descending and putting in operation the delaying latch 73. This he described most clearly, and fully covered in claims 22 to 28 and 30. He could not by another claim cover a distinct inventive idea, not described or even intimated in his specifications as his conception, namely, the concept used by defendant, of the nondelayed, simultaneous càrry, even though both operations are individualized to the next higher actuator. The inventive notion of a nondelayed simultaneous carry is contained in the prior art patents of Cook, No. 503,946 and Webster, 484,887, but as individualized to the next higher actuator it is not actually used by either one. Felt was the first to bring into actual use this individualized control, with a highly beneficial result in securing the duplex key-action and fluidity of key movement above referred to. But this individualization of the control was expressly confined by him to control through delaying mechanism, as an improvement on his own older machine, in which simultaneous striking of the keys, either in unison or overlapping, was impossible without loss of carry. That was his invention: there is nothing even to suggest that the actual invention was broader than the invention as described by him in his patent, unless it be the language of claim 29. And this claim, fairly construed, both independently and as compared with the language of the other claims, does not support the broader construction. While the inventor must have all due credit, if, as we hold, his real invention is not used by the defendant, there can be no infringement.

Stop Device Claims, 1-10 and 16-21, No. 702,520. At the reargument it was thought that aside from claim 29 of the first patent in suit there was no infringement, on the theory that both parties were equally entitled to improve upon the old Felt machine, and that each had done so in its own way. As these stop mechanisms are quite complicated it will be enough to compare the most limited of the respective claims of the Felt and Horton patents.

Felt claim 3: **The combination with the keys anů the column-actuator operated by the keys and provided with coarse spaced teeth, projections or shoulders, of two hinged levers arranged alongside of the actuator, one adapted to be depressed by the odd keys and the other by the even keys, and two pivoted stop devices adapted to be swung each by one of the levers, and thereby to be forced into engagement with said shoulders, the acting portions of said devices being located in different planes so that one may engage later than the other."

Horton claim 10: "In a machine of the character described the combination of an adding wheel; an actuaisr lever therefor having two confronting series of shoulders, those of one series staggered with relation to those of the other; a swinging

stop adapted to engage said shoulders; a bar connected to said stop and having two series of cams, those of one series alternating with those of the other and oppositely inclined relative thereto; a series of depressible keys to act upon the lever different distances from its pivot and having studs to act upon the cams of said bar, the odd keys acting upon one series of said cams to swing the stop one way, and the even keys acting upon the other series of cams to swing the stop the other way; and a spring applied to the stop to centralize it."

Comparing the two devices one has five stop shoulders and two stops, and the other nine stop shoulders and one stop. One has two hinged levers or catches and the other a hinged bar. Defendant's device is the more simple and easy to understand. The only invention shown in either device is in decreasing the number of shoulders and increasing their size, and in this respect defendant employs different means and operation. Each party is entitled to its own form. The devices differ in principle, operation, mechanical construction and arrangement of parts, and there is no infringement.

Other Stop Devices, Claims 11-15, 38, 39, 53, No. 762,520. The devices referred to are the two pivoted stop devices referred to under the preceding division for stopping the downward movement of the actuator, a rod across the machine for stopping its upward movement, and a spring latch timed to prevent overrun of the numeral-wheels after the rod had arrested the upstrokes. The arrangement of stops is simply a matter of mechanical skill, and there could be no invention except in the precise form employed. The prior art abounds in all kinds of stop devices, and there is a mere change of form from the first Felt patent, now expired. Defendant does not use just the same combination, and does not infringe. Claims relating to other stops are 40, 41, 63, 70, 71 and 73, but they all stand on similar grounds, being simply specific arrangements requiring mechanical skill only. The claims are narrowly valid but not infringed.

Canceling or Zero Claims, Patents No. 707,107, and 960,528. These claims relate to the process of "clearing the machine" by swinging a lever forward and back, known as canceling or zeroizing, by which all the numeral-wheels are lined up with the cipher of each uppermost. The two devices are shown in the first diagram on an earlier page, being Comparative Drawing No. 22. All the column-actuators move in plaintiff's machine, but only the units actuator in defendant's, and the mechanism is different, as well as mode of operation in other respects. Canceling mechanism is old, and is found in Felt's prior art machines. No infringement of these patents is shown.

Claims 7, 8, and 16, No. 702,521. These claims cover the carrying springs described in the discussion on claim 29, in combination with their numeral-wheels, which are being constantly revolved against the tension of the spring, and restrained by it. This patent was not mentioned on the oral reargument. It is simply an ingenious triplex coiled spring, required by the necessity of storing carrying power. Defendant does not use it or anything like it.

Claim 19, No 762,521. This claim relates to plaintiff's numeralwheel with a celluloid face. Defendant's wheel is quite different. The celluloid face element is not insisted on by plaintiff.

The decree appealed from is reversed, with direction to enter a decree sustaining all claims in suit but finding them not infringed, with costs.

Reversed.

ROBERT et al. v. KREMENTZ.

(Circuit Court of Appeals, Third Circuit.

July 6, 1917.)

No. 2243.

1. PATENTS 328 REISSUE_VALIDITY-MATCH Box.

The Dodge reissue patent, No. 12,290 (original No. 749,539), for a match box designed to hold a book or comb.of matches, having an open face with a hinged cover and a holding piece at one end for folding the package, with an opening therein through which the matches may be ignited on the friction material of the package, while applied for and granted for broadening the claims of the original patent, is valid, as within the invention described in the specification, the essence of which is in the means

for engaging and holding the exposed match comb; also held infringed. 2. PATENTS 136_REISSUES—INADVERTENCE OR MISTAKE.

The failure of a patentee to apply for claims sufficiently broad to cover his invention, in the absence of any fraudulent intention, is an inadvert

ence or mistake, which will authorize a reissue. 3. PATENTS Cw142REISSUE-ACQUIESCENCE IN REJECTION OF ORIGINAL

CLAIMS.

The acquiescence by a patentee in the rejection of claims, which are for but a part of his invention, does not estop him from obtaining by a reissue claims for another and different part. Appeal from the District Court of the United States for the District of New Jersey; John Rellstab, Judge.

Suit in equity by Samuel Robert, trading as the A. R. T. Manufacturing Company, and Harold A. Dodge, against George Krementz trading as Krementz & Co. Decree for defendant, and complainants appeal. Reversed.

For opinion below, see 232 Fed. 876. .
James H. Griffin, of New York City, for appellants.
Seward Davis, of New York City, for appellee.

Before BUFFINGTON, McPHERSON, and WOOLLEY, Circuit Judges.

WOOLLEY, Circuit Judge. The bill charged infringement of claims 5 and 10 of Reissued Letters Patent No. 12,290 to H. A. Dodge for a match box. The District Court, while of opinion that infringement must be found if the claims are valid, dismissed the bill on the ground that claims 5 and 10 of the reissue are substantially the same as rejected claims 1 and 2 of the application for the original patent (Serial No. 162,236—Letters Patent No. 749,539); and that in acquiescing in their rejection from the original, the patentee is precluded from asserting them in the reissue. As viewed by the District Court, the case does not present the For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

broad question of "power to enlarge inadequate claims by a reissue, but the more limited one of overcoming by a reissue the error of acquiescing in the decision of the Commissioner of Patents that the patentee was entitled only to a narrower claim.” We are inclined to the cpinion that the case presents both questions. The reissue was sought admittedly for the purpose of obtaining enlarged claims and was granted with claims enlarged concededly for the purpose of awarding a patent commensurate with the invention, as stated by the Examinersin-Chief when reversing on appeal the decision of the Examiner disallowing the claims. In order, therefore, to determine the validity of the broad claims of the Reissued Letters Patent sued upon, we must first determine whether they are for the invention of the original patent. Powder Co. v. Powder Works, 98 U. S. 126; Topliff v. Topliff, infra. If they are, we may then determine the questions upon which the case turned in the District Court, whether the rejected claims were similarly for the invention of the patent and were the same in scope as the reissue claims, and whether in acquiescing in their rejection the patentee lost his right to a patent for his invention. We must therefore inquire into the character of the invention and into the scope of the claims rejected, accepted and reissued, with reference to the invention.

[1] The invention of the patent is a match box, designed especially to hold "book matches” or the familiar comb of paper safety matches, and, because of its simplicity and cheapness, well adapted to advertising purposes. Within its limited field the invention is a pioneer, as it appears to be the first box designed and used to hold book matches, notwithstanding matches of that type had been extensively made and used for many years before the date of the patent. Its novelty cannot be questioned; its extensive use and popularity (being made by the million) argue its patentability. Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ćt. 825, 36 L. Ed. 858; Neill v. Kinney, 239 Fed. 309,

C. C. A. The specification of the original discloses a structure designed to hold matches of the comb type, and no other. It is preferably tapered so as to conform to the wedge shape of a match comb, and is constructed to engage the clip or base of the comb in a way to hold the comb in the box and leave exposed its strands of matches and frictional surface. The engaging means or "holding piece," as diagrammatically shown in the original, is a continuation of the metal back of the box turned over the front a short distance. Upon this specification the patentee applied for the following claims :

"1. A match box comprising a back, having turned-up lips to afford side and end portions for the body of the box, and having, integral with the end portion, a turned-over holding piece adapted to partly overlie a package of matches, and which holding-piece is provided with an opening through which the matches may be ignited on the friction material of the package, said box being provided with a suitable lid.

2. A match box provided with a hinged lid at one end and being formed deeper at the end where the lid is hinged than at its opposite end, so as to be adapted to hold a package of paper matches, and the said box having at its end opposite the hinge of the lid, a holding-piece, as d, adapted to partly overlie a package of matches contained by the box.”

These claims were cancelled on references (principally Mortimer, No. 185,123—1876) showing match boxes designed not to carry match combs but to carry loose individual matches. These boxes had a holding-piece in the sense of a front high enough to hold the matches from toppling out, and not in the sense of fastening or engaging the matches in the box, To meet these references the Patent Office canceled the original claims of the application and substituted for them claims of the patent, as follows:

"1. A match box comprising a back having turned-up lips to afford side and end portions for the body of the box, and having, integral with the end portion, a turned-over holding piece adapted to partly overlie a package of matches, said holding-piece having its central portion open to provide an aperture through which the matches may be ignited on the friction material of the package, and said box being provided with a suitable hinged lid.

*2. A match box provided with a hinged lid at one end and being formed deeper at the end where the lid is hinged than at its opposite end, so as to be adapted to hold a package of paper matches, and the said box having, at its end opposite the hinge of the lid, a holding-piece, as d, adapted to partly overlie a package of matches contained by the box, said holding-piece having its central portion cut away to provide an opening through which the matches may be ignited on the friction material of the package."

In this cancellation and substitution the patentee acquiesced.

The only difference we discern between the two sets of claims is in the location of the opening in the holding-piece through which matches may be ignited on the friction material of the comb; the original claims make no reference to its location, while the substituted claims prescribe a central location.

The patentee soon realized that his claims did not cover his invention, so within less than two months from the grant of the patent he filed an application for reissue based upon the specification of the original patent, with amendments that did little more than emphasize the fact that the essence of the patent lay in the means for engaging and retaining the exposed match comb. Claims 1 and 2 of the application for reissue were the same as allowed claims 1 and 2 of the original, showing a holding-piece with a central opening. Claimis 3 to 10 were new and broad. Claims 5 and 10 (the claims here in issue) did not deal with and therefore were not limited to a holdingpiece with an opening, but concerned a match-retaining and engaging flange at one end of the box, permissibly extending from the sides, leaving the matches and frictional material exposed as before. They were:

“5. A match box having a solid back, a turned-up end member rigid there. with, two side members also rigid with said back, substantially the entire front of said box being open, a match retaining and engaging flange arranged near one end of the box to hold a package of matches exposed to view through the open front, and a cover pivoted to the box and arranged to cover the open front."

"10. A match box provided with a back, and end member and two side members rigid and integral with said back, substantially the entire front of said box being open, a cover hinged near one end of the box, and means near the end of the box opposite the cover-hinge for engaging and retaining a comb of matches, whereby the entire comb of matches is exposed when the cover is opened and individual matches may be detached without disturbing the comb."

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