Opinion of the Court.

to hold it from falling into the slots or notches of the combination-wheels, except when released by the clock-work, substantially as described." On the 24th of March, 1875, the first claim was again rejected by references to the Hollen patent, of December, 1871, and the Rutherford patent, of 1831. The letter of rejection said: "Hollen shows the combination of a timemovement and a lock, with a lever constructed and located to render inoperative such lock until a predeterminate hour, the tumblers of the lock being free to rotate through the medium of a key, while the unlocking action of the lock is suspended by the lever. Rutherford shows (figures 1, 2, 3, 4, and 5, sheet 2) the combination of a time-movement and a lock, with a lever arranged to engage with the bolt of a lock and render inoperative such lock until a predeterminate hour. To merely substitute the ordinary combination lock, such as shown, for example, in the patent permutation-lock of James Sargent, August 28, 1866, for the lock shown in either of the above references, is not regarded as a patentable difference. The second claim is not objected to. The first claim is again refused."

This application was not further prosecuted. On the 12th of July, 1875, Sargent addressed a letter to the Patent Office, entitled in the case, in which he said: "So many amendments and actions having been made in the above-entitled case, I desire to withdraw and abandon it, for the purpose of filing a new application. I, James Sargent, have this day filed said application for the invention, and request that the model of the case above named be applied as a model in the application filed to-day. I intend and request that this application be a substitute application for the one so withdrawn."

Up to this time no bolt-work had been shown or described. The object of the new application was to introduce bolt-work as an element in the device. The drawings were the same as those in No. 186,369, showing bolt-work, with the time movements and the combination-lock. Bolt-work was added to the former model. The specification contained three claims, as follows: "1. The combination, substantially as hereinbefore set forth, of a time-mechanism and a combination-lock with the bolt-work of a safe or vault door, the time-mechanism being

Opinion of the Court.

constructed to act in conjunction with and render inoperative the combination-lock when locked, said lock having its bolt or bearing arranged to rest upon and receive the pressure of the bolt-work of the door when locked, and prevent the unlocking of said bolt-work until the arrival of a certain predeterminate time. 2. The combination substantially as herein before set forth, of a combination-lock and the bolt-work of a safe or vault door, with a time-movement and a lever connection, said lever being constructed and located to render the bolt or bearing of the combination-lock inoperative when locked, the tumblers of the combination-lock and its spindle being free to rotate while the bolt-work of the door rests upon the bolt or bearing of the combination-lock. 3. In combination with a time-movement and a lock, a lever, or its equivalent, adapted to be connected with the dog of said lock, to hold it from falling into the slots or notches of the combination-wheels, except when released by the time-movement, substantially as described."

On the 31st of July, 1875, claims 1 and 2 were rejected by references to the patent of Hollen, of December, 1871, and that of Rutherford, of 1831; and a time-lock arranged in connection with the bolt-work of a door, in the time-lock of Little, patented in January, 1874, was referred to. Those claims were again rejected, September 6, 1875, in a letter which said: "The employment of locks of various kinds for securing the bolt-work of a door is too common and well-known to require further references. Either Hollen's or Rutherford's lock can be applied to the bolt-work of a door without the least change being made to adapt it thereto. The mere substitution of one well-known kind of locks for another kind equally well-known has been decided again and again as not a patentable difference."

On December 3, 1875, an interference was declared between claims 1 and 2 and four other applications; and between claim 3 and four other applications. On February 12, 1876, the interference as to claims 1 and 2 was dissolved, and they were again rejected. A further amendment of the specification was made February 15, 1876, and claims 1 and 2 were altered, so as to read as follows: "1. The combination, substantially as hereinbefore set forth, of a time-mechanism and a combinationVOL. CXIV-6

Opinion of the Court.

lock with the bolt-work of a safe or vault door, the timemechanism being constructed to act in conjunction with and render inoperative the combination-lock when locked, said lock having its bolt or bearing constructed to receive the pressure of the series of bolts constituting the bolt-work of the door when locked, and preventing the unlocking of said bolt-work until the arrival of a certain predeterminate time. 2. The combination, substantially as herein before set forth, of a combination-lock and the series of bolts constituting the bolt-work of a safe or vault door, with a time-movement and a lever connection, said lever being constructed and located to render the bolt or bearing of the combination-lock inoperative when locked, the tumblers of the combination-lock and its spindle being free to rotate while the bolt-work is held in its locked position by the bolt or bearing of the combination-lock." The claims were not allowed, but a new interference as to them was declared, March 8, 1876, with the same four applications, the subject matter being, "The combination of a time-mechanism, and a combination-lock, with the bolt-work of a door."

On the 11th of January, 1877, the application was amended by withdrawing claims 1 and 2. Two days before this, and on January 9, 1877, Sargent had filed the application on which No. 186,369 was granted. The special construction and arrangement of parts, a claim for which, as the specification of that patent states, was made in a separate application, was covered by the claim of patent No. 198,157, granted to Sargent, December 11, 1877, in pursuance of the application of July 12, 1875, that claim being as follows: "In combination with a time-movement and a lock, a yoke-lever or equivalent, adapted to be connected with the dog, fence or angle-bar of said lock, to hold it from falling into the slots or notches of the combination-wheels, except when released by the time-movement, substantially as described." The present suit does not involve any infringement of No. 198,137.

As before remarked, the specification of No. 186,369, the patent here sued on, contains the following statement: "The lock-bolt or bearing of the combination-lock-may be of a circular, segmental, or other desired form, provided said lock-bolt is

Opinion of the Court.

arranged and adjusted so as to turn upon a suitable axis or bearing, and is so constructed, that, in one position, it will pre; vent the retraction of the bolt-work, so as to retain the safe or vault door locked, while, in another position, it will admit of the bolt-work being retracted, for the purpose of allowing the safe or vault door to be opened." This clause had not appeared in any of the specifications from and including that filed June 11, 1873, until it was inserted in the one filed January 9, 1877, on which the patent No. 186,369 was granted. It is a limitation without which it must be assumed, in view of the numerous prior rejections, the claims allowed would not have been granted. The same clause was inserted, May 7, 1877, in the specification of the application of July 12, 1875, as it remained after claims 1 and 2 therein were withdrawn January 11, 1877, and that clause appears in the specification of No. 198,157, as issued December 11, 1877.

The defendants' lock, which it is alleged infringes the two claims of No. 186,369, is of the construction shown by the following drawing, made by the plaintiff's witness Millward:

In that drawing A is the case of the lock; B, the bolt; C, the dog, pivoted in the bolt at c, and engaging, when held up

Opinion of the Court.

by the time mechanism, behind a fixed stump, D; E, the arbor of the lock, the hook, e, of which engages with the hook, f, of the dog, and throws the bolt B back, when the dog is released by the time-mechanism. The same hook, e, by running on the surface g, throws the bolt B out, to lock the door. Fis the time-attachment, which has a lever, G, the arm of which, extending through the case of the lock, has the hook H at its lower end, which holds up the pivoted arm I, and through it the dog C.

Another form of the bolt-work of the defendant's lock is shown by the following drawing:

It is contended for the defendants, that each of the combinations covered by the two claims of No. 186,369 must be limited to the particular devices described in the specification and shown in the drawings, and to their mode of operation, both claims being limited by the words "substantially as hereinbefore set forth;" and that, under this construction, the defendants do not infringe.

The second claim imposes on the combination claimed in it the limitation, that the tumblers of the combination-lock and