fendant's construction, even if its manufacture of the parts supplied by it to the government is direct and not contributory infringement, does not come within the limitations of those claims. In claim 23 the combination of elements is as follows: (a) A railroad; (b) a railroad car, mounting heavy ordnance; (c) a foundation or an emplacement, installed on the roadbed, associated with the railroad and located beneath the car, when the car is in position for ordnance firing; (d) the foundation or emplacement, co-operating with the lower part of the car while the car remains in transportable position on a railroad, incapable of withstanding the shock incident to firing the ordnance. Claim 42 is for a combination of (a) a railway; (b) a railway car; (c) heavy ordnance mounted on a car; (d) an installed emplacement at the sides of the rail, to support the gun during firing, while the car is maintained in traveling position on the railway. Claims 28, 29, and 30 each set out as an element of the combination "an ordinary railroad, incapable of resisting the firing strains of heavy ordnance adapted to be transported thereover," and in each of those claims the foundation or emplacement is described in varying terms, as adapted to receive and support the ordnance, and to receive and retain the ordnance carrying car in transportable (in claim 42, "traveling") position, and to resist recoil under firing conditions. Claim 35 and claim 37 each state, as one of the elements of the combination, "an ordinary railroad incapable of resisting the firing strains of heavy ordnance adapted to be transported thereover." Claim 35 specifies "anchoring means for the car and ordnance intact, constituting a part of the emplacement and serving to retain the car and ordnance in operative position against recoil." And claim 37 includes "means for anchoring the transporting car with its ordnance in firing position on the car, said means comprising a fixed emplacement, operating to relieve said car of strains under firing conditions of the ordnance." It is contended by the defendant that these claims must be narrowly, and not broadly, construed; that in the defendant's structure the car, when upon the emplacement, is not in transportable or traveling position; that it has not been shown that it has been used in combination with a railroad, such as is described in the claims; that therefore it has not infringed. and 37, containing, as an element of the combination, an ordinary railroad, incapable of resisting the firing strains of heavy ordnance adapted to be transported thereover, are limited to the particular kind of railroad thus described, and that, as to these claims, there is no evidence of infringement, for it has not been shown that the railroad, upon which the gun car was mounted at the proving grounds before acceptance by the government, was a railroad of that description, and that the history of the action of the Patent Office, as shown by the file wrapper, is evidence that in these claims the defendant limited its invention to those terms, and that the same rule must be applied to the claims, with the limitation of transportable position of the car, when the gun and its mount are in firing position over the emplacement. The application, as filed, presented 8 claims, none of which limited the ordnance to be carried as "heavy ordnance," and the first claim alone contained the limitation that the gun was to be transported and brought into co-operation with the fixed base, "without being removed from the mobile gun-carrying support." These claims were extremely broad in scope, embracing inventions covered by prior patents and by the prior art as described in publications. They were rejected upon the Paul and Sock patent, No. 675,405, of June 4, 1901, and the French patent, No. 181,653, of February 9, 1887, to Chevalier. Thereupon the applicants amended their claims, and added new claims, so that the application contained 12 claims, all of which were rejected, except the seventh, which is not in controversy in this suit. Rejection of these claims was based upon the Paul and Sock patent, and the French patent to Chevalier, above cited, the British patent, No. 6,488 of 1890, to Thomas English, and a publication in the Scientific American of December 20, 1913. It is unnecessary to go into a minute discussion and consideration of other amendments and rejections, which were made prior to July 25, 1917. By an amendment added on that date, claims 28, 29, 30, 35, and 37 of the patent in suit were amended, by including a limitation of an ordinary railroad incapable of resisting the firing strains of heavy ordnance adapted to be transported thereover, and these claims were then allowed with that amendment. Claims 23 and 42, which do not include that limitation, do include the limitations of the car remaining in transportable position on the railroad when it is in position for It is contended that claims 28, 29, 30, 35, ordnance firing over the emplacement, in 11 F.(2d) 390 claim 23, and while the car is maintained in traveling position on the railway, in claim 42. It is clear that these limitations were included in the claims to avoid the objection of the patent examiner, based upon the prior art. In the Chevalier patent it is stated: "The object of this invention is a new slide carriage (chassis-affut) designed to be used both for the transportation of field guns of all calibers on railway tracks of any gauge and for running them in and out while on the track." The chassis consists of a truck frame, designed to be used at the same time as a gun carriage chassis. It consists of a platform constructed of two steel side beams, reinforced by cross-beams and resting by means of pivots on two trucks. The chassis, on which the gun is mounted, is transported on the railroad, and, when in position for firing, as shown by the drawings and specification, the rear truck is removed. The description and drawings show a supporting emplacement or platform constructed to the right and left of the track to receive the weight of the chassis, when swung around on its swivel mounting on the front truck, and to hold it firmly in firing position and relieve the axles of the truck of the stress of firing. The chassis carries at its front a pivot, which secures it to a socket in the front firing platform. The rear truck is removed and the rear of the chassis is supported by rollers resting upon the traversing circles of the rear platform, but the rollers may be replaced by any other means of support on the ground. Pivoted jacks under the frame of the front truck support the whole weight, without fatigue on the axles. The Chevalier invention embodies the first of the two essential elements which the plaintiff claims for its patent, namely, supporting means or foundations adapted to be embodied in the earth under or at the sides of the track at the firing point, and also the second essential element, namely, a car carrying heavy ordnance (for the Chevalier patent is for guns of all caliber) and adapted to co-operate with the supporting means while still in transportation position over the track, in such a way that the car is anchored in fixed position and the shocks incident to firing are transmitted to the earth through the supporting means, and not through the car running gear, minus the limitation as to the car "while still in transportation position over the track," and that the necessity and intention of so limiting the claims in suit was in the mind of the applicants is made clear by the statement accompanying the amendment of August 17, 1917, as follows: "The amendment above submitted is directed to that general broad feature of the invention disclosed in this application. While the French patent cited illustrated possibly the general thought or conception of a railroad, a portable gun mount, and implacements, there is that lacking feature of prompt transportation. A disassembling of the parts is required in the French suggestion, and the general arrangement is one wherein the entire car body is swung out of position for transportation. By incorporating the term 'fixed emplacements,' or 'installed emplacements,' and by bringing into certain claims the idea of maintaining the car parts in transporting position, the claims clearly differentiate from any suggested prior publication or practice." The Paul and Sock patent, No. 675,405, of June 4, 1901, is for an apparatus for unlimbering heavy ordnance. The invention is for apparatus for enabling ordnance, which is transported in parts or entire on a field railway vehicle, and is mounted on a wooden or iron base plate, and is rigidly connected thereto, to be easily brought into firing position, and to be again mounted on a field railway vehicle. The apparatus comprises a number of screw spindles, each of which has a nut arranged in the base plate and can be inserted into a foot bearing sunk into the ground at the place desired, so as to enable the base plate to be removed from the field railway vehicle, and, when the latter has been drawn out, enable the base plate to be lowered to the ground. The claims are: "1. The combination with a gun mount and jackscrews for raising and lowering the same working in suitable nuts in said mount; of foot bearings for said jackscrews to be sunk in the emplacement for the gun, said foot bearings fitting recesses in the gun mount when lowered into position for firing, for the purpose set forth. "2. The combination of a gun mount, jackscrews working in suitable nuts in said mount for raising and lowering the same, and footbearings for said screws, sunk in the emplacement for the mount and fitting recesses therein when the mount is lowered into firing position; of means for positioning a gun carriage with the gun trunnions above the trunnion bearings of the mount, substantially as and for the purposes set forth." The drawings show the gun, supported upon its platform or base plate, carried by front and rear trucks upon a railway, with fixed emplacements embodied in the earth at either side of the railway tracks. Foot bear ings are sunk into the ground at the piace where the gun is to be brought into firing position, and in the base plate, in corresponding number and position to the footbearings, are nuts for receiving screw spindles, which, when screwed in, bear first upon the foot bearings, and, when further rotated, raise the gun on the base plate and gun mounting from the vehicle, so that the latter can be run out from below, and, when subsequently rotated in the opposite direction, allow the base plate to descend to the ground. It will be seen that in this invention the gun support or base plate is lifted, so that the trucks can be removed, and the gun with its support is therefore no longer in transportable position on the railway. The publication in the Scientific American of December 20, 1913, cited by the examiner, showing "a fort that travels on wheels," describes the Schneider system for a mobile battery running on rails, in which a gun with a caliber of eight inches (admittedly a large caliber gun) is carried upon a cradle-shaped platform supported at either end upon trucks for transportation on an ordinary railway. The gun car is provided with two bogie trucks and a sheet steel platform, lower in the middle than at the ends, in which lower part the eight-inch piece is carried on a central swivel mount. The side members of the platform carry two articulated swinging supports, the outer ends of which carry screwadjusted base plates, which are employed when the gun is swung around with its longitudinal axis at right angles to the length of the car. These screw-adjusted base plates are fixed upon the ground in the illustrations, in order to take the strain of firing and prevent the overturning of the car. The illustrations show the supporting members with their screw-adjusted base plates resting upon the ground, with the gun at various angles. This publication, representing the Schneider coast defense train, sets out the merits of the Schneider system, covering similar points of merit to those set out in the specification of the patent at suit, and the system is apparently for use upon an ordinary railway. There are stressed in the article the merits of mobility of batteries upon railways, as opposed to batteries upon ramparts of permanent forts, the strategic advantages of secrecy of the plan of defense, better utilization and economy of material, and the advantages of employing the railway for other purposes of transportation in times of war and in times of peace. [2] In view of the rejection by the Patent Office of the claims which did not contain the limitation of the transportable position of the car, nor that of a railroad incapable of withstanding the strain of gun fire, and the fact that the inventors did not insist upon the broad claims presented, but acquiesced in their rejection by the Patent Office, and accepted claims 23, 28, 29, 30, 35, 37, and 42, as proposed by them and allowed by the Patent Office, they come within the rule of strict construction of such limitations. Judge Buffington thus stated the rule in Yates v. Smith et al. (C. C. A.) 271 F. 33, at page 35: "The claims he originally made contained no location limitation. They were rejected by reference, inter alia, to the patent of Patterson, No. 128,651. Its subject-matter was a mirror swinging in a stationary frame, and the adjusting mechanism was located on the mirror. Under stress of this reference, and to avoid rejection, Bogenberger canceled, and substituted for his canceled claims, the present ones, which located the adjusting mechanism on the frame. We are not concerned with the question whether this action of the department was right (Vanmanen v. Leonard, 248 F. 939, 161 C. C. A. 57), or whether Bogenberger, by contesting, could justly have obtained a broader claim. The decisive thing is that, whatever contention to the contrary Bogenberger might have made, he did not make it, but himself became the actor, and tendered and accepted claims which restricted him to location limits, namely, on the frame of the window. Such being the condition of claim limitation and the consideration for which his patent issued, it follows that this location limit must be enforced, when he attempts on patent enforcement to expand his claims by emasculating such enforced limitation. For this court to adjudge otherwise the guise of mechanical equivalents, undo the would be for us to now in effect, and under action of the Patent Office and close to the public a field of manufacture which Bogenberger disclaimed, and which the Patent Office forced him to make as a condition of securing his claim." See, also, Roemer v. Peddie, 10 S. Ct. 98, 99, 132 U. S. 313, 317 (33 L. Ed. 382), where Mr. Justice Blatchford said: "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." 11 F.(2d) 390 [3] A further reason for restricting the claims to the specified elements is that it is a patent for a combination of elements. In such a claim, if the patentee specifies any element as entering into the combination, either directly by the language of the claim, or by such a reference to the descriptive part of the specification as carried such element into the claim, he makes such element material to the combination, and the court cannot declare it to be immaterial. It is his province to make his own claim, and his privilege to restrict it. If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an admitted part is supplied by an equivalent device or instrumentality. Fay v. Cordesman, 3 S. Ct. 236, 109 U. S. 408, 27 L. Ed. 979. In White v. Dunbar, 7 S. Ct. 72, 119 U. S. 47, 30 L. Ed. 303, the Supreme Court said: "The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. This has been so often expressed in the opinions of this court that it is unnecessary to pursue the subject further. See Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 278 [24 L. Ed. 344]; James v. Campbell, 104 U. S. 356, 370 [26 L. Ed. 786]." There cannot be any serious doubt that, in the gun mount and foundations of the defendant's structure, the car does not remain in transportable position on the railroad when the gun mount is in position for firing. When in that position, the track extending over the pit must, of necessity, have been previously removed. The car, consisting of the girder mounted upon its trucks and running gear, is no longer intact. To the contrary, the gun mount, when assembled with the emplacement, is lifted from the trucks, and the trucks are removed out of the way. It cannot be said that a car is in transportable position when it is not mounted upon its trucks, even though the trucks are near by upon the rails. A complete answer is found to the plaintiff's contention that the car is still in transportable position, because the girder or body of the car is still maintained in position directly over the railroad, by the fact that, when the mount is in firing position, the railroad is without rails across the pit, and, if the trucks were attached and an attempt made to move the car, either forward or backward, it would fall into the pit. This is not a case in which the doctrine of equivalents is applicable, for the question is upon the elements of the claims of patent, and not upon the question of infringement of the plaintiff's structure by the use of mere mechanical equivalents. Passing to claim 35, it contains a limitation of "anchoring means for the car and ordnance intact, constituting a part of the emplacement and serving to retain the car and ordnance in operative position against recoil." In the defendant's structure, there is no anchoring means for the car, and therefore none for the car and ordinance intact. A car, in accordance with both the ordinary and the mechanical meaning, is a vehicle on wheels, and intact means left complete or entire. Therefore, when we use the language, "car and ordnance intact," we mean the transporting car left complete or entire upon its wheels. In the plaintiff's construction, as shown in the drawings and described in the specifications, the trucks and the carrying girder are inseparably united by means of pillars mounted upon the truck frames on opposite ends of the car, and extending through the structure of the girder mount, so as to hold it rigidly in position upon the trucks, but allowing sufficient play for curves and to avoid friction of the parts when moving upon the railway. Moreover, the girder mount is also inseparably connected with the trucks by means of the knuckle joints, by which it is lowered, so that the depressed portion may rest upon the side foundations and be raised again for transportation. Turning now to claim 37, it contains the limitation, "means for anchoring the transporting car with its ordnance in firing position on the car, said means comprising a fixed emplacement operating to relieve said car of strains under firing conditions of the ordnance." Construing this in connection with the part of the specifications previously quoted in this opinion, which stress the high degree of mobility at all times of the plaintiff's invention, and with the plain meaning of the words, it is evident here, too, that in the transporting car of the defendant's construction, when the girder and gun are anchored to the emplacement in firing position, they no longer have any connection with the trucks, and therefore the transporting car, being disassembled, is not anchored with the ordnance when the latter is anchored and in firing position. Taking the term "transporting car" as meaning a vehicle on wheels, it is apparent that claim 37 is limited to means for anchoring the car, including the trucks and the gird er with the gun mounted thereon, in firing position on the car; that is, on the vehicle on wheels. All of the claims in suit, except claims 23 and 42, have the limitation of an ordinary railroad, incapable of resisting the strains of heavy ordnance adapted to be transported thereover. As the prior art was cited by the examiner in disallowing the original claims, which did not include this limitation, the same rule of strict construction must be applied as in relation to transportable position. It is nowhere shown in the defendant's proofs that the defendant's structure was used upon a railroad incapable of resisting the firing strains of heavy ordnance adapted to be transported thereover. While it appears in the defendant's testimony that the ordinary railways in France were of somewhat lighter construction than that at Sandy Hook, it is also shown that at Sandy Hook the gun was fired on the railway tracks without the use of the pit and emplacement, without damage to the tracks, and that in France the guns were nearly invariably used with the pit emplacements, in order to obtain the necessary long range. It is contended for the plaintiff that the limitation should mean "an ordinary railroad," and that it should be assumed that an ordinary railroad is incapable of resisting the firing strains. There is no testimony to that effect, except that of a witness who testified that he could fasten the track to the car, so it would go if the car went, and under such circumstances necessarily the track would be displaced. One of the defendant's witnesses testified that, if means were devised for clamping the car to the track, the track would probably stand the firing, but with distortion to the track. There is nothing in the defendant's construction, nor in the method of use of the gun mount, to show that the gun was to be clamped to the track; but it was shown that it could be used upon the track where it was usable at all—that is, at an angle of 15 degrees or less, without impairing the track. In the defendant's construction, the track is not to be used when the gun is raised to an angle of more than 15 degrees, not because of risk to the track, but because the track must be removed from beneath the firing platform in order that the breech of the gun may reach into the pit. The conclusion is that, the claims being restricted to the elements set out, the defendant's structure does not come within the claims relied on in the patents in suit. It is vigorously contended on behalf of the plaintiff that the claims should be broadly construed, in order to sustain a meritorious invention representing a forward step in the art, and that it must not be limited to the structure described in the specifications, or shown in the drawings. The cases cited for the plaintiff, however, are entirely outside of the rule applied here, in which the claims are strictly construed because of limitations purposely introduced by the applicant to overcome broader claims rejected by the Patent Office. Counsel have argued very earnestly that the evidence shows that the invention was a startling revelation in the art, and that the utility of its combination is thoroughly demonstrated. This line of argument is based upon what developed from the use of the mounted mobile armament constructed by the defendant, which is not relevant, unless the defendant's structure is in accordance with the claims of the patent in suit. If that were assumed, the plaintiff's invention would be entitled to whatever merit such proof carries with it, and to the application of the rule of liberal construction which rightfully follows. But it is found that the defendant's structure was not based upon the combination shown in the claims of the patent in suit, and therefore the major premise is hypothetical and the conclusion is not established. Luellen and Dawson, in their combination, used no new elements. The cradle-shaped gun carriage, mounted upon its two trucks, for carrying heavy ordnance on railroads, and the fixed emplacements for firing from points on a railroad, were old in the art at the time of filing the application for the patent on November 23, 1915, and no evidence was introduced to carry the invention back of that date, and it is doubtful whether the combination was not anticipated, in view of the publication in the Illustrated London News of November 21, 1914, showing in diagram a 42centimeter Krupp howitzer used by the Germans in the war. The gun, mounted upon a steel framework supported on trucks upon a railroad, is substantially reproduced in form in the drawings of the plaintiff's patent. The description accompanying the diagram in the publication shows that at the firing point a solidly built platform of concrete is prepared beforehand, in order to support and keep steady the enormous mass of the gun, and hydraulic jacks resting on the foundation hold it in position. If the defendant's structure is such as to read upon the patent in suit, the publication is quite persuasive of the conclusion that the patent is anticipated by the diagram and description in this publication. |
