The claim of the patent is as follows:

The lock-case made with the notched sides a a near its ends to receive and hold the handle-rings B, substantially as herein shown and described.

In the application for the patent as filed, the parts above put in brackets were not contained in the specification, and the proposed claim was as follows:

The combination of the lock-case A, having the hooks b at its ends, with the rings B B, which are held in place by said hooks, substantially as herein shown and described.

The application as thus made was rejected, by a reference to Patent No. 177,020, granted May 2, 1876, to William Simon, for improvements in a traveling-bag. The proposed claim was then stricken out, and the following claim was substituted:

The lock-case A, having the notches a a at its under side, and combined with the rings B B, which are held in said notches, substantially as and for the purpose specified.

The application was again rejected, by a reference to the patent to Simon, the Patent Office saying:

The difference between the two devices appears to be, that in applicant's device the notches are cut in the vertical sides of the lock-case, and in the reference they are struck up from the bottom plate.

The application was then amended by inserting in the specification the words above put in brackets, and by altering the claim so as to read as it does in the patent as issued.

After an answer and a replication in the suit against Peddie and Jenkinson, proofs were taken on both sides, and the Court, held by Judge Wheeler, made a decree dismissing the bill, with costs. In the opinion of the Court (27 Fed. Rep., 702) it was said:

The improvement patented consists essentially in extending the sides of the lockcase to hold the handle-rings of traveling-bags. The bottom plate of the lock had before been extended for that purpose. By the improvement the bottom plate could be dispensed with, and the side-walls of the lock-case made both to inclose the lock and hold the handle rings. The defendants use the same thing to hold the handlerings, but place the lock above it, and do not use it for the side walls of the lockcase. It becomes, by the use which they make of it, an extended bottom plate to the lock, of an improved form. If this piece was patented and the patent is valid to cover it, the defendants do infringe. The file-wrapper and contents are made a part of the case. From them it appears that the orator, in his application for this patent, at first applied for a patent covering the combination of the lock-case with the handle-rings. His claim was rejected on a reference to Patent No. 177,020, granted to William Simon, which covered an extended bottom plate to the lock, to hold the handles. The claim was amended, and again rejected on the same reference, and was not granted until the specifiation was amended to dispense with an extended bottom plate to the lock, and the claim was confined to a lock-case with notched sides near its ends, to receive and hold the handle-rings. This piece, which the defendants use, was the same before as after these amendments. The Patent Office would not grant a patent for it generally in combination with the handle-rings, but only specifically when used for the sides of the lock-case and for the handle-rings,

The orator accepted the patent narrowed in that manner, and cannot now be heard to claim that it is any more broad than that in its scope. He invented this particular form of lock-case, and his patent is for that only, and it cannot be construed to cover anything else. (Railway Co. v. Sayles, 97 U. S., 554.) The defendants do not use his lock-case, but use an extended bottom plate like his lock-case. It has been argued ingeniously and with plausibility that the same thing is used under a merely different name; but this argument is not in reality well founded. The patent was for a lock-case not only in name, but in substance. The defendants do not use this lock-case. They evade the patent not by a mere colorable, but by a substantial evasion.

As the patentee, after the rejection of his application, inserted in his specification a statement that his invention related to a new construction of lock-case, whereby it was made "to dispense with an extended bottom plate," he cannot now contend that his specification and claims are to be interpreted so as to cover a construction which has an extended bottom plate. By his patent, as issued, he dispenses with the extended bottom plate, and confines his claim to a lock-case with sides notched near its ends to receive and hold the handle-rings-an arrangement not found in the defendants' structure. In that, the lock and the handle. fastenings are combined with the extended bottom plate, as in the Simon patent of May 2, 1876. The lock-case of the defendants does not have notches in its sides, but the notches are in the sides of an extended, struck-up bottom plate, such extended bottom plate being expressly excluded from the construction by the specification of the plaintiff's patent.

This Court has often held that when a patentee, on the rejection of his application, inserts in his specification, in consequence, limitations and restrictions for the purpose of obtaining his patent, he cannot, after he has obtained it, claim that it shall be construed as it would have been construed if such limitations and restrictions were not contained in it. (Leggett v. Avery, 101 U. S., 256; Goodyear Dental Vulcanite Co. v. Davis, 102 U. S., 222, 228; Fay v. Cordesman, 109 U. S., 408; Mahn v. Harwood, 112 U. S., 354, 359; Cartridge Co. v. Cartridge Co., 112 U. S., 624, 644; Sargent v. Hall Safe & Lock Co., 114 U. S., 63; Shepard v. Carrigan, 116 U. S., 593, 597; White v. Dunbar, 119 U. S., 47; Sutter v. Robinson, 119 U. S., 530; Bragg v. Fitch, 121 U. S., 478; Snow v. Lake Shore Railway Co., 121 U. S., 617; Crawford v. Heysinger, C. D., 1888, 185, 123 U. S., 589, 606, 607.)

It is contended by the defendants that, in view of the prior state of the art, the patent is invalid. We do not consider it necessary to examine that question, because, for the reasons before assigned, we are of opinion that the decree must be affirmed; and as, in each of the other three cases there is a stipulation that the suit may be argued here, on appeal, on the record in the Peddie suit, and abide the result of that suit, and as the decree in each of those other three cases was a decree dismissing the bill with costs, each of such decrees is affirmed.

2016 PAT-—14

[United States Circuit Court-Southern District of New York.]

1. INFRINGEMENT.

WINNE v. BEDELL.

Decided November 9, 1889.

49 O. G., 2152.

Where the patentee had described a device of a certain shape and a use to which it might be put, but did not claim it in that shape, either singly or in combination, Held he could not maintain infringement against one who sold the device in that particular form only and who had not adopted the combination of the claim.

2. SAME.

To justify a decree for infringement actual proof must be presented of the defendant's illegal acts. It will not do to substitute therefor suspicion and conjecture.

Mr. William H. King for the complainant.

Mr. Arthur v. Briesen for the defendant.

OOXE, J.:

This is an action of infringement based upon Letters Patent No. 221,203, dated November 4, 1879, for an improvement in basket-cover fastenings.

The specification says:

This invention relates to devices for fastening the covers of baskets; and it consists in the combination, with a box and its cover, of a metallic bar bent to form at one end a close hook, bent again rectangularly near the middle, bent again near the other end at an acute angle, and provided with a sharp point for entering the top of the cover.

This device may also be used for the purpose of securing the covers of paper bandboxes and other similar articles. When used for that purpose the hook B is inserted in the top of the cover, the body of the device extending down the side of the box, into which the point C is inserted, and is retained in place by the hole produced by its angle.

I do not broadly claim a metallic bar or rod bent into shape for holding a basketcover on a basket, being aware that such is not broadly new; but

What I do claim is

In combination with a box and its cover E, a metallic bar, A, bent at b to form at one end the close hook B, bent again rectangularly near the middle at a, and having near the other end a bend, c, forming an acute angle, and having a sharp point, C, forced through the cover to complete a firm fastening.

The claim is therefore for a combination consisting of the following elements: First, a box or basket; second, a cover on the basket; third, a metallic fastener, at one end of which there is a hook attached to the hoop of the basket, at the opposite end a bend at an acute angle pro

vided with a sharp point which is driven into the basket-cover, and in the middle a rectangular bend.

The following diagram will serve to illustrate the combination of the claim:

Originally the applicant sought to cover this device, but was reected upon various references. It was not until he had abandoned the claim for the fastener and had explicitly stated that "the claim is now no longer for the fastening-bar per se, either before or after application," that the patent was issued in its present restricted form.

The defendant sells "the fastening-bar per se," as shown in Figure 1. There is no evidence that he has at any time used the patented combination or sold the fastener with the rectangular bend in the middle.

In this connection it should be remembered that the specification describes the use of the straight fastener for securing the covers of paper boxes.

The question then is this: Can the complainant, who has described a straight fastener and a use to which it may be put, but has not claimed the straight fastener, either singly or in combination, maintain infringement against one who sells the fastener in this form only? Manifestly not. The defendant has not adopted the combination of the claim. He sells but one element of it. It is urged that he should be held liable because his device "is capable of being bent" so as to infringe. But this argument would apply with equal force to an umbrella-slide holder, a bale-tie, or a hair-pin.

The complainant can not invoke the doctrine of Wallace v. Holmes (9 Blatch., 65), and analogous authorities, for the obvious reason that the defendant's fastener is susceptible of a perfectly legitimate use, which the complainant himself has taken pains to point out. (Snyder v. Bunnell, 29 Fed. Rep. 47.)

To justify a decree for infringement actual proof must be presented of the defendant's illegal acts. It will not do to substitute therefor suspicion and conjecture. As the complainant must fail upon this branch of the case, it is unnecessary to examine the other defenses presented. The bill is dismissed.