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rotatably mounted within said casing on a vertical axis and having external horizontal rows of value-indicating figures computed at different rates, said casing having a sight opening through which portions of said value-indicating rows may be seen, and corresponding rate-indicating figures on the outer face of said frame adjacent to the value-indicating rows on the chart drum, on the chart drum, and mechanism for translating the vertical movement of the runner into the rotary movements of the chart drum."

It is true that many valuable inventions seem simple when accomplished, and yet are entitled to protection. The books abound in cases showing inventions involving only small departure from former means, yet making the difference between a defective mechanism and a practical method of accomplishing results. In such cases a decision in favor of invention as distinguished from mere mechanical improvement has not infrequently resulted, in view of the fact that the device has made the difference between an impracticable machine and a useful improvement displacing others theretofore occupying the field. Krementz v. S. Cottle Co. 148 U. S. 556, 37 L. ed. 558, 13 Sup. Ct.

Hayden did not assume to be a pioneer in this field of invention, but he claims to have made an improvement in computing scales of the spring-balance type, and states his object to be specially to increase the comput-Rep. 719; Consolidated Brake-Shoe Co. v. ing capacity of scales of that type.

An examination of the record discloses that computing scales have been the subject of prior inventions and were well known at the time of Hayden's application. It is true that the scales disclosed in the prior art were generally those having a horizontal axis, case, and cylinder, although it was not new to arrange a scale vertically.

Detroit Steel & Spring Co. 47 Fed. 894; Star
Brass Works v. General Electric Co. 49 C.
C. A. 409, 111 Fed. 398.

In the present case it nowhere appears in the testimony, nor is it claimed in the specifications of Hayden's patent, that the prior mechanisms of horizontal construction were impracticable or inefficient. There is no suggestion that Hayden's invention has been the last step between an inoperative machine and one practically operative and useful. There is no showing that it has been generally accepted in the trade and displaced the former machines used for the same purpose. Without resort to the record in the Patent Office, we think it is plain that the invention is but a small advance

If we are to read the claims as broadly as is contended for, and omit, for the present, vertical construction shown by Hayden, we shall find in the patent of Phinney, No. 106,869, of August 30, 1870, a computing scale having the general elements of a nonrotatable casing, provided with a price index and rotatable cylinder journaled in the case, and having computations thereon, a suspend-upon others already in use. ed, spring-supported, load-bearing, and cylinder-revolving rod, and connecting means between the rod and computing cylinder, to impart rotary motion to the inner cylinder. This is perhaps more emphatically true in the invention of Smith, patent No. 545,619, of September 3, 1895.

In the patent of Babcock, No. 421,805, February 18, 1890, a vertical construction is shown. It is true that Babcock's invention was not automatic in its operation, and required the intervention of the operator to complete the required process, but it serves to show that the idea of vertical construction was not new when Hayden entered the field. Taking the state of the art at that time, it is evident that there is little room to claim a broad construction of Hayden's improvement. It is well settled by numerous decisions of this court that, while a combination of old elements producing a new and useful result will be patentable, yet, where the combination is merely the assembling of old elements producing no new and useful result, invention is not is not shown. Office Specialty Mfg. Co. v. Fenton Metallic Mfg. Co. 174 U. S. 492-498, 43 L. ed. 1058-1060, 19 Sup. Ct. Rep. 641, and previous decisions of this court there cited.

Broadly considered, the elements of Hayden's invention were in the horizontal machines, and the idea of vertical construction was old. Considering this invention in the light of what occurred in the Patent Office in connection with the other considerations already referred to, and the state of the art at the time, we think Hayden's invention can only be sustained to a limited extent.

Before taking up the record as disclosed in the file wrapper and contents we may premise that it is perfectly well settled in this court by frequent decisions that where an inventor, seeking a broad claim which is rejected, in which rejection he acquiesces, substitutes therefor a narrower claim, he cannot be heard to insist that the construction of the claim allowed shall cover that which has been previously rejected. Corbin Cabinet Lock Co. v. Eagle Lock Co. 150 U. S. 38-40, 37 L. ed. 989, 990, 14 Sup. St. Rep. 28, and cases there cited.

A late statement of the rule, and one as favorable to the inventor as the previous cases would admit, is found in Hubbell v. United States, 179 U. S. 77, 80, 45 L. ed. 95, 98, 21 Sup. Ct. Rep. 24, 25, as follows:

"An examination of the history of the appellant's claim, as disclosed in the file

ent from applicant's construction, and it is not seen that the references are pertinent to the issue. Certainly, the references, neither singly nor taken together, anticipate the structure set forth in the claims, and there can hardly be any question that the construction which applicant shows is a substantial improvement in the art. It is hoped that all the claims may be allowed."

wrapper and contents, shows that, in order | rotate the latter. This is entirely differto get his patent, he was compelled to accept one with a narrower claim than that contained in his original application; and it is well settled that the claim as allowed must be read and interpreted with reference to the rejected claim, and to the prior state of the art, and cannot be so construed as to cover either what was rejected by the Patent Office or disclosed by prior devises. Leggett v. Avery, 101 U. S. 256, 25 L. ed. 865; Shepard v. Carrigan, 116 U. S. 593, 29 L. ed. 723, 6 Sup. Ct. Rep. 493; Knapp v. Morss, 150 U. S. 221, 227, 37 L. ed. 1059, 1061, 14 Sup. Ct. Rep. 81.

"It is quite true that where the differences between the claim as made and as allowed consist of mere changes of expression, having substantially the same meaning, such changes, made to meet the views of the examiners, ought not to be permitted to defeat a meritorious claimant. While not allowed to revive a rejected claim by a broad construction of the claim allowed, yet the patentee is entitled to a fair construction of the terms of his claim as actually granted."

Looking to the record in the Patent Office, we find that claim 1, as originally presented, read as follows:

"1. In a spring-balance computing scale, the combination of a suitably supported vertical nonrotatable casing provided with a price index, a vertical rotatable computing cylinder journaled in said casing provided with cost computations, a spring-supported load pan supported from said casing, and means connected with said pan and cylinder for rotating the cylinder as the pan is lowered under pressure, substantially as and for the purpose set forth."

The examiner rejected this claim upon the patent of Smith, No. 545,616, price scales, and in view of the patent of Turnbull, No. 378,382, spring scales, saying: "It would not involve invention to arrange upon Turnbull's scales a vertical stationary casing having within it a revolvable computing chart, the axis being connected with the indexcarrying shaft P shown in the Turnbull patent."

But the examiner again rejected claims 1, 8, and 9 upon the references of record, and held that it would not involve invention to arrange upon the vertical shaft of Turnbull's scale a computing chart and inclosing case having the characteristics of Smith's scale. To this the attorneys for applicant answered:

"These claims are canceled, not because considered unallowable, but because it is not desired to prosecute an appeal, in view of the fact that the allowed claims appear to cover the invention as it would be constructed in practice. The cancelation is made, therefore, without prejudice to the claims which remain."

The sixth claim was allowed upon the suggestion of the examiner, as follows:

"In a spring balance, the combination of a nonrotating frame providing an external casing and having means for supporting it from above, weighing springs secured at their upper ends to rigid parts of said frame, a vertically movable runner which is suspended from the lower ends of said springs and is provided with means to support the load, a chart drum rotatably mounted within said casing on a vertical axis and having external horizontal rows of value-indicating figures computed at different rates, said casing having a sight opening through which portions of said value-indicating rows may be seen, and corresponding rate-indicating figures on the outer face of said frame adjacent to the value-indicating rows on the chart drum, and mechanism for translating the vertical movement of the runner into the rotary movements of the chart drum." It was afterwards stated by the examiner:

"Upon consideration of claim 6 preparaTo this the applicant, through his attor- tory to the declaration of interference it is neys, replied:

"The first portion of the examiner's letter is not understood, as there are no modifications referred to in lines 6 to 26 of page 3. A reconsideration of the claims is requested, for the reason that it is believed that the references cited do not anticipate any of the claims. In both of the references cited a rack bar extending transversely of the center of rotation of the computing chart serves, by means of engagement with a pinion at the axis of the computing chart, to

found that the claim does not clearly and patentably distinguish from the scale shown in the patent to Herr, No. 651,801, June 12, 1900, Price Scales, and it is therefore necessary to reject the claim. It is believed, however, that the claim may be rendered allowable by inserting depending before 'means' in line 6,"

and, accordingly, the word "depending" was inserted in the claim, so as to make it in its present form. How this added anything to the patentability of the mechanism described

it is difficult to perceive, in view of the presence of "depending means to support the load" in all scales of this class.

The general rule, as stated, as to the effect of a patentee striking out a broad claim and accepting a narrow one, is conceded by the learned counsel for appellant, but it is contended that if an inventor presents a broad claim and strikes it out and then presents and obtains an equally broad claim, he loses no right by such action, and may justly claim his allowed claim to be a broad one and have relief accordingly. But we think the action of the department in this case cannot be thus eliminated. Claim 1, as presented, had contained the words "a spring-supported load pan supported from said casing, and means connected with said pan and cylinder for rotating the cylinder as the pan is lowered under pressure," and, as allowed, there was inserted "a springsupported, load-bearing, and cylinder-revolving rod suspended from said casing, and connecting means between rod and computing cylinder, whereby, by longitudinal movement of the rod, rotary movement is imparted to said cylinder, substantially as and for the purpose set forth." This limitation to specific means is certainly a narrowing of the claim.

It was accepted, as the patentee said, "in view of the fact that the allowed claims appear to cover the invention as it would be constructed in practice."

We cannot think it was the intention of the department, after requiring the insertion of "a spring-supported, load-bearing, and cylinder-revolving rod" and "connecting means between rod and computing cylinder" to secure the rotary movement of the inner cylinder as a means of saving claim 1, to then permit the claim to be granted broadly in allowing other claims. And we believe it would be a more reasonable construction of the letter of the applicant to say that he recognized that his invention, "as constructed in practice," must have read into it to sustain the claim, the specific means shown for translating the vertical movement of the runner into the rotary movement of the chart drum, rather than as saving a right to construe a claim broadly as including in one claim what had just been refused in another.

In view of the action of the Patent Office in this case and the acquiescence of the applicant, considered also in view of the state of the art, in our opinion it is necessary to have this novel element of the invention read into them in order to save the claims of Hayden's patent.

Conceding that this spiral rod and its connections with the cylinder in the manner and for the purposes stated is a novel feature in the combination, and entitled to protection, it is of that narrow character of invention which does not entitle the patentee to any considerable range of equivalents, but must be practically limited to the means shown by the inventor. The distinction between pioneer inventions permitting a wide range of equivalents and those inventions tions of a narrower character, which are are limited to the construction shown, has been frequently emphasized in the decision of this court. Cimiotti Unhairing Co. v. American Fur Ref. Co. 198 U. S. 399, 406, 49 L. ed. 1100, 1103, 25 Sup. Ct. Rep. 697, and cases therein cited.

Thus limiting the invention, we do not think the construction of the defendant amounts to an infringement. Its mechanism, by means of which the downward movement of the load accomplishes the rotary movement of the cylinder, consists of a bar which has a rod extended upward and carrying a rack which meshes with a pinion on a shaft journaled in bearings on a crossbar of the frame of the machine. On this shaft is a gear meshing with the pinion, secured to an upright shaft journaled in bearings in the frame, and projecting above it so as to receive a light frame composed of cross arms and a circular rim to which the chart drum is secured. The downward movement of the load-supporting hook causes the rack to move in the same direction, rotating the horizontal shaft by means of the pinion, and this movement is communicated by means of the gearing to the upright shaft carrying the chart drum. The cylinder-revolving rod with its connections, which, as we have seen, was made an essential element to accomplish invention in Hayden's device, is not found. The complainant's expert is of opinion that it is shown in the hook at the bottom of defendant's scale for holding the load pan. We cannot agree to

It is to be noted that Hayden, in his spec- this conclusion; the hook is not the cylinifications, says:

"The spiral rod passing through the lower ends of the casing, and serving, by means of its connection with the two cylinders, to rotate the computing cylinder, is regarded as the essence of this feature of the invention, however, regardless of the precise details of connection between cylinders and rod."

der-revolving spiral rod and does not accomplish its function.

The court of appeals held the sixth claim void. We are of opinion that it cannot be allowed for the broad claim "mechanism for translating the vertical movement of the runner into the rotary movement of the chart drum," but must be limited to Hayden's suspended rod with its spiral, enga

ging with the rollers, or similar devices on the cylinder, practically in the manner and for the purposes shown by him. If the claim be thus limited, for the reasons we have already stated, the mechanism of the defendant does not infringe.

We find no error in the decree rendered by the Court of Appeals, and it is affirmed.

the London Guarantee & Accident Company, Limited, the plaintiff below, the court made the following order:

"And now, June 25th, 1904, the court orders the defendants to produce, within twenty days, in the office of the clerk of said court, their pay sheets, time books, cash books, and all other books of original entry which contain information as to the amount of compensation paid to employees of themselves or of their subcontractors or of any

WILLIAM J. DOYLE, and James G. Doak, other persons contemplated in the contracts

Trading as Doyle & Doak,

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The circuit court of appeals cannot, in advance of the final decree in the suit, review an order of a Federal circuit court which adjudges the defendants in such suit guilty of contempt in disobeying an order for the production of certain books and papers for inspection for the benefit of the plaintiff, and imposes a fine or imprisonment in the event of failure to produce such books or papers by a specified date, since this is not a final order rendered in a proceeding criminal in its nature, and, as such, within the appellate jurisdiction of the circuit court of appeals, under the act of March 3, 1891 (26 Stat. at L. 828, chap. 517, U. S. Comp. Stat. 1901, p. 550), § 6, but was intended to secure the rights of the party to the suit for whose benefit the original order was made.

[No. 155.]

upon which suit is brought in this case during the period of said contracts, as set forth in the petition filed."

After that order was made the certificate recites:

court a petition alleging disobedience by the defendants of the above order and praying that an attachment issue against them for contempt of court. Thereupon the court granted a rule upon the defendants to show cause why an attachment should not issue against them for contempt of court by reason of their violation and disobedience of said order. To this rule the defendants filed an answer under oath, denying intentional noncompliance with said order, and stating that they were not able to produce all the books and papers called for, because, upon a thorough search, the absent ones could not be found, and averring their belief that they were accidentally lost or by mistake were destroyed at a time when alterations were

"Thereafter the plaintiff presented to the

made in their office and a removal of its contents to another place occurred. Subsequently, to wit, on January 3d, 1905, upon the hearing of the rule, the court gave and

Argued January 11, 1907. Decided Febru- entered judgment that the 'defendants are

ary 25, 1907.

guilty of contempt in disobeying the order referred to,' and further adjudged as fol

ON A CERTIFICATE from the United lows:

States Circuit Court of Appeals for the Third Circuit presenting a question as to the appellate jurisdiction of that court to review an order in contempt proceedings. Answered in the negative.

"If the defendants produce in the office of the clerk of the circuit court on or before January 15th, 1905, the ledger of 1902-1904, the pay rolls or time sheets from March to May 28, 1903, and the cash book from May The facts are stated in the opinion. 28 to December 1, 1902, or, if they produce Messrs. E. Clinton Rhoads and John C. the cash book alone, they are ordered to pay Bell for Doyle et al.

no more than the costs accruing upon this Mr. Thomas Raeburn White for the Lon- motion, including the stenographer's chardon Guarantee & Accident Company.

ges, on or before January 20, or, in default of such payment, to suffer imprisonment in the

Mr. Justice Day delivered the opinion of jail of this county for the period of sixty the court:

This case is here upon certificate from the circuit court of appeals for the third circuit. From the facts stated it appears that William J. Doyle and James G. Doak were adjudged guilty of contempt of court in the circuit court of the United States for the eastern district of Pennsylvania. After the bringing of the action, upon the petition of

days. If the foregoing books and papers are not produced on or before January 15, the defendants are ordered to pay a fine of $250, and also the cost accruing upon this motion, including the stenographer's charges, on or before January 20, or, in default of such payment, to suffer imprisonment in the jail of this county for the period of sixty days."

A writ of error was allowed to the cir

cuit court of appeals. Upon the facts stat- | ceding section gives to this court jurisdiced the following question was certified to this court:

"Has the circuit court of appeals jurisdiction upon the writ of error sued out by the defendants to review the above-recited judgment of January 5th, 1905, adjudging that the defendants are guilty of contempt of court in disobeying the above-recited order of court of June 25th, 1904, and imposing upon the defendants a fine of $250.00 on the specified conditions and terms?"

Cases involving the right to review orders of the Federal courts in matters of contempt have been so recently before this court that an extended discussion of the principles involved is unnecessary. Bessette v. W. B. Conkey Co. 194 U. S. 324, 48 L. ed. 997, 24 Sup. Ct. Rep. 665; Re Christensen Engineering Co. 194 U. S. 458, 48 L. ed. 1072, 24 Sup. Ct. Rep. 729; Alexander v. United States, 201 U. S. 117, 50 L. ed. 686, 26 Sup. Ct. Rep. 356.

In Bessette v. W. B. Conkey Co. supra, a question was certified here from the circuit court of appeals of the seventh circuit, involving the jurisdiction of that court to review an order in a contempt proceeding finding the petitioner guilty of contempt for violation of an order of the circuit court, and imposing a fine. In that case the subject underwent a full examination and the previous cases in this court were cited and reviewed. As a result of those decisions we deem it settled that an order punishing for contempt, made in the progress of the case, when not in the nature of an order in a criminal proceeding, is regarded as interlocutory, and to be reviewed only upon appeal from a final decree in the case.

Re Christensen Engineering Co. supra. In Bessette v. W. B. Conkey Co. supra, it was pointed out that this court had no jurisdiction to review judgments in contempt proceedings criminal in their nature, under the power to punish for contempt defined by Congress (1 Stat. at L. 83, chap. 20) and limited by the act of March 2, 1831. 4 Stat. at L. 487, chap. 99, Rev. Stat. § 725, U. S. Comp Stat. 1901, p. 583.

The right to review a judgment in a contempt proceeding in the circuit court of appeals was derived from the circuit court of appeals act, § 6 [26 Stat. at L. 828, chap. 517, U. S. Comp. Stat. 1901, p. 550], of which Mr. Justice Brewer, speaking for the court in the Bessette Case said:

"So when, by § 6 of the courts of appeals act, the circuit courts of appeals are given jurisdiction to review the 'final decision in the district court and the existing circuit courts in all cases other than those provided for in the preceding section of this act, unless otherwise provided by law,' and the pre

tion to review convictions in only capital or otherwise infamous crimes, and no other provision is found in the statutes for a review of the final order in contempt cases, upon what satisfactory ground can it be held that the final decisions in contempt cases in the circuit or district courts are not subject to review by the circuit courts of appeals? Considering only such cases of contempt as the present, that is, cases in which the proceedings are against one not a party to the suit, and cannot be regarded as interlocutory, we are of opinion that there is a right of review in the circuit court of appeals."

And again, in the same case, it is said: "As, therefore, the ground upon which a review by this court of a final decision in contempt cases was denied no longer exists, the decisions themselves cease to have controlling authority, and whether the circuit courts of appeals have authority to review proceedings in contempt in the district and circuit courts depends upon the question whether such proceedings are criminal cases."

It therefore appears that the only right of review given to the circuit court of appeals in contempt proceedings is derived from the act giving that court such right in criminal cases. In the course of the discussion in the Bessette Case it is said that proceedings for contempt may be divided into those which have for their purpose the vindication of the authority and dignity of the court, and those seeking to punish parties guilty of a disregard of such orders as are remedial in their character, and intended to enforce the rights of private parties, to compel obedience to orders and decrees made to enforce their rights, and to give them a remedy to which the court deems them entitled. And it is said that the one class is criminal and punitive in its nature, in which the government and the public are interested, and the other civil, remedial, and coercive in its character, in which those chiefly concerned are individuals whose private rights and remedies are undertaken to be protected and enforced. From the discussion in that case it clearly appears that proceedings which are criminal in their nature and intended for the vindication of public justice, rather than the coercion of the opposite party to do some act for the benefit of another party to the action, are the only ones reviewable in the circuit court of appeals under its power to take jurisdiction of and determine criminal cases.

In that case, and in cases generally where the right of review has been recognized, the party prosecuted has been other

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