The claim of letters patent No. 195,233, granted to William
Roemer, September 18, 1877, for an improvement in a combined lock
and handle for traveling bags, namely, "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,"
having been inserted by amendment,
"after his application for a broader claim was rejected, and
after he had amended his specification by stating that he dispensed
with an extended bottom plate, cannot be so construed as to cover a
construction which has an extended bottom plate."
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.
In equity for the infringement of letters patent. The case is
stated in the opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
These are two suits in equity brought by William Roemer in the
Circuit Court of the United States for the Southern District of New
York, one against Thomas B. Peddie and
Page 132 U. S. 314
George B. Jenkinson and the other against Albert O. Headley, and
two suits in equity, brought by the same plaintiff, in the Circuit
Court of the United States for the District of New Jersey, one
against Charles Kupper and the other against Richard C. Jenkinson.
All four of the suits are brought for the infringement of letters
patent No. 195,233, granted to the plaintiff September 18, 1877,
for an improvement in a combined lock and handle for traveling
bags.
The specification says:
"Be it known that I, William Roemer, of Newark, in the County of
Essex and State of New Jersey, have invented a combined lock and
handle holder for traveling bags, etc., of which the following is a
specification: Figure 1 is a top view of my improved combined lock
and handle holder. Fig. 2 is a vertical, longitudinal section of
the same. Fig. 3 is a cross-section on the line,
c c, Fig.
2. Similar letters of reference indicate corresponding parts in all
the figures. This invention relates to a new construction of lock
case for traveling bags, satchels, and the like, whereby the same
is made to retain the rings which connect with the handle [to
dispense with an extended bottom plate], and yet to leave said
rings movable in their bearings. The invention consists in forming
notches in the sides, near the ends of the lock case, which notches
engage over the lower parts of the handle rings, all as hereinafter
more fully described. In the accompanying drawing, the letter, A,
represents the lock case, the same being of suitable construction,
shape, and size and adapted to be fastened to the frame of the
satchel or bag by rivets or other suitable means. The ends of the
lock case are, by notches,
a, which are cut into or formed
in its sides, made hook shaped, as clearly shown in Fig. 2, and
these hooks,
b, thus produced, serve to retain the handle
rings, B B, in place. These handle rings are, as indicated in Fig.
3, preferably flattened at their lower parts, and are, with these
flattened portions, placed under the hooks,
b, of the lock
case, and thereby secured to the satchel frame, to which the lock
case is riveted, as already described. In these hooks, however, the
rings are free to vibrate, and free therefore to move with the
handles, and the rings constitute, in consequence, a flexible
connection
Page 132 U. S. 315
between the handle and the bag or satchel. [By making the
notches in the sides, the top of the lock case remains smooth, and
offers no obstruction to the free movement of handle and
rings.]"
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 F. 702) it was said:
"The improvement patented consists essentially in extending the
sides of the lock case 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 enclose the
lock and hold the handle rings.
Page 132 U. S. 316
The defendants use the same thing to hold the handle rings, but
place the lock above it, and do not use it for the side walls of
the lock case. 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 specification 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
Page 132 U. S. 317
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,
102 U. S. 228;
Fay v. Cordesman, 109 U. S. 408;
Mahn v. Harwood, 112 U. S. 354,
112 U. S. 359;
Cartridge Co. v. Cartridge Co., 112 U.
S. 624,
112 U. S. 644;
Sargent v. Hall Safe & Lock Co., 114 U. S.
63;
Shepard v. Carrigan, 116 U.
S. 593,
116 U. S. 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, 123 U.
S. 589,
123 U. S.
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.