The scope of letters patent must be limited to the invention
covered by the claim; the claim may be illustrated, but it cannot
be enlarged by language used in other parts of the
specification.
Page 117 U. S. 555
The change made by George Rosner in the devices used in previous
combinations for the purposes described in his application for a
patent in September, 1860, were such as would occur to an unskilled
mechanic, and were not inventions within the meaning of the patent
laws.
The first claim in the patent 30,002, September is, 1860,
Reissue 4,488, July 25, 1871, granted to George Rosner, was
anticipated by the application and specification of D. R. Rickards
filed March 13, 1852, and by locks manufactured by Evans &
Watson in 1853.
This was a bill in equity brought by the appellee, Halbert S.
Greenleaf, to restrain the infringement by the appellant, the Yale
Lock Manufacturing Company, of the first and fourth claims of the
reissued letters patent granted to George Rosner, July 25, 1871,
for an "improvement in permutation locks." The original patent bore
date September 18, 1860.
The defense was that the alleged invention and substantial and
material parts thereof claimed as new were, prior to any invention
thereof by said George Rosner, known and publicly used by divers
persons in this country, and that among such persons were D. H.
Rickards of Boston and the firm of Evans & Watson of
Philadelphia.
The Circuit Court decided that the patent was valid, and that
the defendant had infringed, and, upon the report of a master of
the damages sustained by the plaintiff, rendered a decree in his
favor for $2,968.50. The present appeal brings that decree under
review.
MR. JUSTICE WOODS delivered the opinion of the Court.
It is conceded that the damages for which the court rendered its
decree were allowed for the infringement of the first claim only of
the Rosner patent, which therefore is alone to be considered upon
this appeal. The invention covered by this claim was described as
follows in the specification:
"This invention consists in combining with a set of
permutation
Page 117 U. S. 556
wheels or tumblers, constructed each of a rim and center, an
arrangement of bolts or equivalent devices, which fasten and
unfasten said rims and centers by the use of a key inserted through
holes in the cams in the wheels, by which said bolts or equivalent
devices are operated, the effect being to enable the relative
position of the rims and centers to be changed so as to make a new
combination by moving the driving pins to different positions
relatively to the slots in the wheels. It further consists in the
arrangement of parts as hereinafter described."
"
* * * *"
"Prior to my invention, in order to change the combination where
a single set of wheels only was used, made up each of a center hub
and rim, the wheels had to be removed from the lock and adjusted by
hand and then replaced. I obviate this difficulty by the following
arrangement: opposite the center or hub
q of each wheel
and located in the outer rim, I place a locking device or bolt
r, which, when forced in against the said center or hub,
holds the same firmly in place with the outer rim, but, when thrown
out, disengages said parts and allows the centers to turn free
while the rims remain stationary. Against the locking device or
bolt
r rests a cam or eccentric
s. Through each
or all of these cams and also through the back plate of the lock is
inserted a key
P, Fig. 6, by turning which it will be seen
that said locking or fastening device may be forced in or drawn out
at pleasure. When the key is inserted, and the fastening device
thrown back, it will be seen that the rims of the wheels are held
stationary by the key, while the centers may be turned to any
different position by the spindle, thus setting the lock to a new
combination."
"
* * * *"
"The novelty in the first part of my invention consists in the
combination of the fastening devices
r with the wheels,
constructed of three parts each, an outer rim and a center or hub
composed of two parts, secured together so that by inserting the
key, the parts composing the wheels may be loosened and the outer
rims held stationary, while the centers or hubs are turned to a
different position by the action of the spindle to rearrange the
combination, and then the parts locked in place
Page 117 U. S. 557
again, and all accomplished without removing the wheels
themselves from the lock. In all prior locks with a single set of
wheels (each wheel made up of a rim and center hub), so far as I am
aware, the wheels had to be removed from the lock and the
combination changed by hand."
"
* * * *"
"What I claim and desire to secure by letters patent is"
"1. In a permutation lock, in combination with a set of wheels
consisting each of an outer ring or rim and a central disk or hub,
a set of fastening devices or bolts
r r which is made to
fasten or unfasten said parts composing the wheels, by the
insertion of a key through each or all of the wheels, whereby the
combination of the lock may be changed, substantially as herein
specified."
The testimony showed that on the 13th of March, 1852, the D. H.
Rickards named in the answer of the defendant filed in the Patent
Office an application for a patent for an improvement in locks,
which was either rejected or withdrawn, and that locks made
substantially in accordance with the description contained in
Rickard's specification were manufactured and sold by Evans &
Watson, safemakers, of Philadelphia, as early as the year 1853. A
copy of the application of Rickards is found in the record, and one
of the locks made by Evans & Watson in 1853 was produced as an
exhibit upon the trial in this Court. A comparison of the
specification and model of the plaintiff's patent with the
application of Rickards and the lock made by Evans & Watson
shows that the device of Rickards and the lock of Evans &
Watson were an anticipation of the invention covered by the first
claim of the plaintiff's patent. It is clear from the statement in
the specification of Rosner's patent that he believed that prior to
his invention, it was necessary, in order to change the combination
in a permutation lock, to remove the wheels from the lock case and
adjust them by hand, and then replace them. But Rosner was in error
in making this statement. The evidence shows that what Rosner
thought had never been done before had been done by means of the
device of Rickards, embodied
Page 117 U. S. 558
in the lock of Evans & Watson, which is substantially the
same contrivance as that covered by the first claim of Rosner's
patent.
The Rickards device embraces a set of wheels consisting of an
outer rim or hub and a set of fastening devices or bolts, so
constructed as to engage and disengage with a set of cogs on the
central hub. When the bolts are in place, the outer rim and the
central hub are firmly fastened together; when withdrawn, the hub
may be made to revolve without moving the rim. The bolts are
withdrawn by means of a key. Each of the wheels has an opening in
it for the passage of the key by which the bolts are moved; these
openings in the wheels are placed opposite each other, and also
opposite a keyhole in the lock case, so that the key may be passed
from the exterior of the lock case through all the wheels, and thus
withdraw the bolts which fasten the rims to the hubs or the wheels,
thereby permitting the hubs to be moved and a change to be made in
the combination of the lock. When the change is made, the key is
withdrawn and the bolts are forced back into their places by
springs. By this means the combination of the lock is changed
without removing the wheels from the lock case or even opening the
case.
The only difference between the Rosner device and that of
Rickards which the plaintiff's counsel have been able to point out
is thus stated: in the Rosner contrivance, the key, in addition to
locking and unlocking the fastening devices, performs, when in the
lock, the function of holding the outer rims in place while the
combination of the lock is changed by moving the hubs. It is
insisted that this key is adapted to perform this office by the
fact that it fits snugly the series of holes in the rims of the
wheels through which it passes, and thereby prevents any motion of
the rims. The Rickards device has a keyhole in the lock case which
the key neatly fits. But the holes in the rims of the wheels
through which the key passes are irregular apertures, not fitted to
the shape or size of the key, so that they allow some motion to the
rims of the wheels.
We think this difference between the two locks does not give
Page 117 U. S. 559
validity to the Rosner patent, for two reasons:
First. Because the shape and size of the keyhole is not
mentioned in the claim of the Rosner patent as one of the elements
of the combination. The scope of letters patent must be limited to
the invention covered by the claim, and while the claim may be
illustrated, it cannot be enlarged by language used in other parts
of the specification.
Keystone Bridge Co. v. Phoenix Iron
Co., 95 U. S. 274;
Railroad Co. v. Mellon, 104 U. S. 112.
Secondly. If it were found to be necessary to hold the rims of
the wheels rigidly immovable while the combination of the lock was
being changed, the idea of changing the irregular aperture in the
wheels through which the key in the Rickards' device was thrust to
one of the shape and size of the key would occur to the rudest and
most unskilled mechanic. The suggestion of such a change could not
be called invention, and ought not to be dignified by letters
patent.
Atlantic Works v. Brady, 107 U.
S. 192;
Slawson v. Grand Street Railroad Co.,
107 U. S. 649;
Phillips v. Detroit, 111 U. S. 604.
We are of opinion, therefore, that the first claim of the
plaintiff's patent was anticipated by the application and
specification of Rickards and by the locks manufactured by Evans
& Watson, and that it is therefore void. It follows that
The decree of the circuit court must be reversed, and the
cause remanded, with directions to dismiss the bill.