After various amendments and much official correspondence, claims 3 to 10 were rejected by the Examiner on the ground that certain of them were anticipated by prior patents, and certain others (interpreted in the light of the specification) were the same in substance as the claims presented in the original application and rejected; and that there was no "inadvertence, accident or mistake" in securing the limited original claims of the patent upon which an application for a reissue of broader claims could be predicated. An appeal was taken, in which the Examiners-in-Chief reversed the entire decision of the Examiner upon reasoning that was exactly the opposite of his, and established the claims now contained in the Reissued Letters Patent. They stated that the Examiner, in finding there was no inadvertence in securing the original claims of the patent, was clearly in error, and held that none of the appealed claims is the same in scope as original claim 2 (and inferentially original claim 1). In so holding the Examiners-in-Chief said:

"They are all broader in some respects or narrower in others.

It

is very apparent from a study of all the references cited that while many of the features of the appellant's device are shown to be old, no one of them nor all of them taken together is sufficient to anticipate the appellant's' device. It is as far as this record shows, the first device in which a package or comb of matches can be conveniently held and used, and this is due to the features of the retaining and engaging means arranged near one end of the box and the front of the box being open substantially its entire length. Each of the claims now appealed contains these features."

It should be kept in mind that an arrangement for holding a comb of matches in a box with its front open substantially its entire length to permit access to the comb, disengagement of matches and ignition on its friction piece is the essence of the invention. The claims of the reissue were allowed by the Examiners-in-Chief on the ground that they were within this conception of the invention as disclosed by the original specification.

The law of reissue when within the invention is well settled. This court has said (Nu Bone Corset Co. v. Spirella Co., 183 Fed. 984, 985, 106 C. C. A. 324, 325):

"If a patentee discloses in his specification an invention not sufficiently cov ered by the claims of his patent, he may, if the limited character of the claim is the result of inadvertence, accident, or mistake, surrender his patent and apply for a reissue, with a claim or claims sufficiently definite and exact to cover the whole of his invention."

This statement of the law is in harmony with the cases generally upon the subject of broadening claims by patent reissues. The leading case probably is Topliff v. Topliff, 145 U. S. 156, 164, 12 Sup. Ct. 825, 831 (36 L. Ed. 658) in which the Supreme Court stated:

"It may be regarded as the settled rule of this court that the power to reissue may be exercised when the patent is inoperative by reason of the act that the specification as originally drawn was defective or insufficient, or the claims were narrower than the actual invention of the patentee, provided the error has arisen from inadvertence or mistake, and the patentee is guilty of no fraud or deception; but that such reissues are subject to the following qualifications:

First. That it shall be for the same invention as the original patent, as such invention appears from the specification and claims of such original.

"Second. That due diligence must be exercised in discovering the mistake in the original patent, and that, if it be sought for the purpose of enlarging the claim, the lapse of two years will ordinarily, though not always, be treated as evidence of an abandonment of the new matter to the public. * * Το

串

hold that a patent can never be reissued for an enlarged claim would be not only to override the obvious intent of the statute, but would operate in many cases with great hardship upon the patentee. The object of the patent law is to secure to inventors a monopoly of what they have actually invented or discovered, and it ought not to be defeated by a too strict and technical adherence to the letter of the statute, or by the application of artificial rules of interpretation."

Testing the validity of reissue claims 5 and 10 by these rules of law, we find ourselves in full accord with the ruling of the Examinersin-Chief. These claims, though broader than the original and rejected claims, are nevertheless for the invention shown in the original specification. They would have been quite as much in place in the original as in the reissue. The patentee thus met the first requisite for a valid reissue. Topliff v. Topliff, supra. Being entitled to a patent for his invention and having failed to obtain it by original, has the patentee done anything which prevented him obtaining it by reissue?

[2] There is no evidence that in making claims of the limited character of the original, the patentee was actuated by fraud or deception. Topliff v. Topliff, supra. There is evidence that on discovering his mistake of asking for claims narrower than his invention, he was abundantly diligent in attempting to rectify it by an application for reissue. Topliff v. Topliff, supra. There is no suggestion that rights of others had intervened between the grant of the patent and the application for reissue. Miller v. Brass Co., 104 U. S. 350, 26 L. Ed. 783. Thus far the patentee conformed to the rules. Was the patentee's failure to apply for claims sufficiently broad to cover his invention an inadvertence or mistake within the meaning of the Reissue Statute? Upon this point it was said in Crown Cork & Seal Co. v. Aluminum Stopper Co., 108 Fed. 845, 853, 48 C. C. A. 72, 79:

"A review of the earlier decisions of the Supreme Court would seem to show that by 'defective or insufficient specifications' was meant any failure either to describe or claim the complete invention upon which the application for the patent was founded, and that 'inadvertence or mistake' was used in antithesis to fraudulent intent, and that the right to reissue depends upon any failure to make specifications and claims legally adequate to their purpose, if due to any cause except an intention to deceive."

In Toledo Computing Scale Co. v. Moneyweight Scale Co. (C. C.) 178 Fed. 557, 559, the court said:

"Mistake or inadvertence making a patent inoperative or invalid may be that of the patentee or his solicitor, either in preparing the specification or claims. If the solicitor fails to understand and properly describe or claim the real invention, by making claims so broad as to be anticipated, or so narrow as to be inoperative, this is such mistake as to authorize a reissue, if authorized on other grounds. Topliff v. Topliff."

It has been generally held that inability of solicitors of a patentee to put claims into a form that covers the real invention constitutes a case of inadvertence authorizing a reissue, and in such case the 243 F.-56

abandonment of such claims on their rejection by the Patent Office is not an abandonment of the invention and does not preclude a reissue and the substitution of claims which properly cover it. Toledo Computing Scale Co. v. Moneyweight Scale Co. (C. C.) 178 Fed. 557.

This kind of mistake or inadvertence the patentee claims was made in his case. In this we agree with him and with the Examiners-inChief. We are therefore of opinion that the patentee was entitled to a reissue, and that claims 5 and 10 of the reissue are valid-unless the patentee is estopped from asserting them because of his acquiescence in the rejection of claims for the same invention and of similar scope when applying for his original patent.

[3] Having determined that claims 5 and 10 of the reissue are for the invention of the patent, we must inquire whether rejected claims 1 and 2 were also for the same invention, in order to decide the question of estoppel.

The rule is well established that an inventor who acquiesces in the rejection by the Patent Office of his claim in one form and accepts a patent for the same thing but with the claim changed so as to correspond with the views of that office, is estopped to claim the benefit of the rejected claim. Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 429, 14 Sup. Ct. 627, 38 L. Ed. 500; Leggett v. Avery, 101 U. S. 256, 25 L. Ed. 865; Crawford v. Heysinger, 123 U. S. 589, 606, 8 Sup. Ct. 399, 31 L. Ed. 269; Union Metallic Cartridge Co. v. United States Cartridge Co., 112 U. S. 624, 5 Sup. Ct. 475, 28 L. Ed. 828; Phoenix Caster Co. v. Spiegel, 133 U. S. 360, 368, 10 Sup. Ct. 409, 33 L. Ed. 663. But he is not estopped by his acquiescence in the rejection of the claim asked for to make a claim by reissue for something he had not asked for and which had not been refused by the Patent Office.

Were rejected claims 1 and 2 for the same thing as reissue claims 5 and 10?

Claims 1 and 2 as applied for in the original, dealt with a holdingpiece of the match box and were rejected upon references because they did not designate the location of an opening in the holding-piece. Substituted claims 1 and 2 differed from rejected claims 1 and 2 by prescribing the location of the opening. None of these claims embraced or emphasized the capital feature of the invention, which is a means to engage and firmly hold the match comb in a fashion which permits disengagement of single matches and ignition upon its friction surface. The specification of the original, however, was sufficiently broad to include this means; yet the claims of the original, either rejected or substituted, were not sufficiently broad to cover it. Therefore what the patentee acquiesced in was the rejection of two claims dealing with a particular construction of a holding-piece and opening. What he got were two claims dealing with the same holding-piece construction, but prescribing the location of the opening. He thus asked for and obtained claims for but a part of his invention. It is now maintained that in accepting claims for only a part, he abandoned the balance. This we question. What the patentee did (keeping always in mind the essence of his invention) was to disclose his real invention and fail to claim it. Having never claimed his

real invention, he never abandoned it. All he abandoned by acquiescing in the rejection of claims 1 and 2 of the original was the indefinite location of the ignition opening in a structure having a holding-piece. In his application for reissue he did not ask for new claims covering this structure, but prayed for new claims covering the engaging means of his invention not covered either by rejected or substituted claims 1 and 2 of the original. These were allowed. We are of opinion that rejected claims 1 and 2 were for but a part of the patentee's invention, and that reissue claims 5 and 10 are for another and different part, and that in consequence the patentee is not estopped from asserting them as valid claims in a reissue.

Having sustained the validity of claims 5 and 10 of the Reissued Letters Patent, we find them infringed. The motion to dismiss is without merit.

The decree below is reversed.

CHICAGO & A. RY. CO. et al. v. PRESSED STEEL CAR CO. (Circuit Court of Appeals, Seventh Circuit. April 10, 1917.

Denied May 24, 1917.)
No. 2339.

1. JUDGMENT 570(5)--JUDGMENT AS BAR-MATTERS CONCLUDED.

Rehearing

A decree of dismissal in a suit to restrain an action at law for want of equity, on the ground that complainant has an adequate remedy at law, aside from cases involving title to or possession of land, is not a bar to any defense in the action at law.

2. APPEAL AND Error 1008(2)--REVIEW-CASES TRIED TO COURT.

In an action at law involving the question of infringement of a patent, where there is no evidence of the prior art, and no extrinsic evidence is necessary to explain the respective structures, which, with their manner of operation, are plainly shown and described in patents covering the same, the question of infringement is one of law, and where the case is tried without a jury a general finding by the court is reviewable by the appellate court on writ of error.

8. PATENTS 129-LICENSES-EFFECT AS ESTOPPEL.

In a suit upon a patent license contract, the prior art is not admissible, either to show the invalidity of the patent or to limit the prima facie scope of the claims, further than to make clear any ambiguities therein. 4. PATENTS 328-INFRINGEMent-Car Door Mechanism.

The Lindstrom & Streib patent, No. 791,348, for car door mechanism for closing and supporting the hinged doors of dump cars, claim 13, which is for car door mechanism having a lifting shaft arranged to support the door "directly" when the door is raised, held infringed by the device of the Christianson patent, No. 828,458, which is the mechanical equivalent of that of Lindstrom & Streib, and operates in the same way, except that, when the door is closed, it does not rest upon the shaft, but is held by a latch supported by the shaft.

5. PATENTS 211(3)-LICENSES-EFFECT AS ESTOPPEL.

A patent conveys nothing but a negative right of exclusion, and the effect of a license thereunder as an estoppel does not depend on user by the licensee of the device licensed.

In Error to the District Court of the United States for the Eastern Division of the Northern District of Illinois.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

Action at law by the Pressed Steel Car Company against the Chicago & Alton Railway Company and the Chicago & Alton Railroad Company. Trial to court, and judgment for plaintiff, and defendants bring error. Affirmed.

The case is thus stated by counsel for the railway companies, with slight changes:

"Plaintiffs in error (defendants in the District Court, and hereinafter called defendants) were sued by defendant in error (hereinafter called plaintiff) for $20,000 in royalties claimed to be due under a contract between defendants and plaintiff covering the construction and use of steel cars of the type known as general service cars with drop bottom doors for dumping, by which defendants had agreed to pay to plaintiff the sum of $10 for each car hereafter built or caused to be built during the period of this contract by the railroad companies (except certain cars not here in controversy) containing any of the designs or devices covered by patents now owned or controlled by said car company.' Judgment was entered below in favor of plaintiff and against defendants for $20,000, with interest amounting to $6,308.31, a total of $26,308.31, and defendants bring the cause here by writ of error.

"The evidence shows that the defendants purchased from the Standard Steel Car Company 2,000 cars of the 'general service' type, the door-fastening appliance of which cars was constructed under the Christianson patent, No. 828,458, owned by the Standard Company. The whole controversy between the plaintiff and the defendants centers upon the question as to whether the means for holding these doors closed is identical with the means provided for in the Lindstrom & Streib patent No. 791,348, owned and controlled by the plaintiff. "There are other questions referred to in the evidence and raised below by counsel, but the gist of the case is the simple proposition stated in the last foregoing paragraph. The Lindstrom & Streib patent shows, describes, and claims as means for closing and supporting the hinged doors of dump cars a rotatable and bodily movable or creeping shaft arranged to roll laterally toward and under the doors and to support the doors directly, when raised, a lifting chain being connected at one end to the shaft and at the other end to the door, so that when the shaft is rotated to wind the chain the pull of the chain first raises the door and then pulls the shaft under the edge of the door whereby to support the door directly when the door is raised,' as recited in claim 13 of said patent.

"The defendants' car door mechanism comprises a rotatable shaft mounted in fixed bearings and having no bodily or lateral movement, to which one end of a lifting chain is connected, the other end of the chain being connected to a sliding bolt or latch mounted in ways on the door, so that when the shaft is rotated to wind the chain the pull of the chain first raises the door and then pulls the latch out over the shaft, whereby the door is supported indirectly upon the shaft through the medium of the latch. If these constructions are alike, and both covered by the Lindstrom & Streib patent, the plaintiff is entitled to its royalties. If they are different, the defendants are entitled to reversal of the judgment below.

"(1) Plaintiff contends that the defendants cannot present a defense to this suit, for the reason that all matters in controversy have been adjudicated by the judgment of this court [without opinion], affirming the order of the District Court in the case of Chicago & Alton Railroad Company v. Pressed Steel Car Company No. 2095 (referred to herein as the equity suit), the record in which is a physical exhibit in this case. (2) Plaintiff contends that the Lindstrom & Streib patent covers the mechanism used by the defendants in the cars in question. (3) Plaintiff contends that defendants cannot use the prior art to show the scope of the Lindstrom & Streib patent, notwithstanding plaintiff insisted on referring to the prior art to show the improvement thereover made by Lindstrom & Streib, and also insisted that it is entitled to invoke the doctrine of mechanical equivalents and to explain the scope of its claims in the light of the prior art. (4) Plaintiff contends that the general finding of fact in the decree leaves nothing for the court to review.

"(1) Defendants insist that the decree dismissing the equity suit for want