rotatably mounted within said casing on a It is true that many valuable inventions vertical axis and having external horizon- seem simple when accomplished, and yet are tal rows of value-indicating figures com- entitled to protection. The books abound in puted at different rates, said casing having cases showing inventions involving only a sight opening through which portions of small departure from former means, yet said value-indicating rows may be seen, and making the difference between a defective corresponding rate-indicating figures on the mechanism and a practical method of accomouter face of said frame adjacent to the plishing results. In such cases a decision in value-indicating rows on the chart drum,

on the chart drum, favor of invention as distinguished from and mechanism for translating the vertical mere mechanical improvement has not inmovement of the runner into the rotary frequently resulted, in view of the fact that movements of the chart drum."

the device has made the difference between Hayden did not assume to be a pioneer in an impracticable machine and a useful imthis field of invention, but he claims to have provement displacing others theretofore ocmade an improvement in computing scales cupying the field. Krementz v. S. Cottle of the spring-balance type, and states his ob- Co. 148 U. S. 556, 37 L. ed. 558, 13 Sup. Ct. ject to be specially to increase the comput- Rep. 719; Consolidated Brake-Shoe Co. v. ing capacity of scales of that type.

Detroit Steel & Spring Co. 47 Fed. 894; Star An examination of the record discloses Brass Works v. General Electric Co. 49 C. that computing scales have been the subject C. A. 409, 111 Fed. 398. of prior inventions and were well known at In the present case it nowhere appears the time of Hayden's application. It is in the testimony, nor is it claimed in the true that the scales disclosed in the prior specifications of Hayden's patent, that the art were generally those having a horizontal prior mechanisms of horizontal construction axis, case, and cylinder, although it was not were impracticable or inefficient. There is new to arrange a scale vertically.

no suggestion that Hayden's invention has If we are to read the claims as broadly been the last step between an inoperative as is contended for, and omit, for the pres- machine and one practically operative and ent, vertical construction shown by Hayden, useful. . There is no showing that it has we shall find in the patent of Phinney, No. been generally accepted in the trade and 106,869, of August 30, 1870, a computing displaced the former machines used for the scale having the general elements of a non- same purpose. Without resort to the record rotatable casing, provided with a price index in the Patent Office, we think it is plain and rotatable cylinder journaled in the case, that the invention is but a small advance and having computations thereon, a suspend upon others already in use. ed, spring-supported, load-bearing, and cylin- Broadly considered, the elements of Hay. der-revolving rod, and connecting means be- den's invention -were in the horizontal matween the rod and computing cylinder, to im- chines, and the idea of vertical construction part rotary motion to the inner cylinder. was old. Considering this invention in the This is perhaps more emphatically true in light of what occurred in the Patent Office the invention of Smith, patent No. 545,619, in connection with the other considerations of September 3, 1895.

already referred to, and the state of the art In the patent of Babcock, No. 421,805, at the time, we think Hayden's invention

, February 18, 1890, a vertical construction is can only be sustained to a limited extent. shown. It is true that Babcock's invention Before taking up the record as disclosed was not automatic in its operation, and in the file wrapper and contents we may required the intervention of the operator to premise that it is perfectly well settled in complete the required process, but it serves this court by frequent decisions that where to show that the idea of vertical construc- an inventor, seeking a broad claim which is tion was not new when Hayden entered the rejected, in which rejection he acquiesces, field. Taking the state of the art at that substitutes therefor a narrower claim, he time, it is evident that there is little room cannot be heard to insist that the constructo claim a broad construction of Hayden's tion of the claim allowed shall cover that improvement. It is well settled by numer- which has been previously rejected. Corbin ous decisions of this court that, while a Cabinet Lock Co. v. Eagle Lock Co. 150 U. S.

v combination of old elements producing a 38-40, 37 L. ed. 989, 990, 14 Sup. St. Rep. new and useful result will be patentable, 28, and cases there cited. yet, where the combination is merely the A late statement of the rule, and one as assembling of old elements producing no favorable to the inventor as the previous new and useful result, invention is not cases would admit, is found in Hubbell v. shown. Office Specialty Mfg. Co. v. Fenton United States, 179 U. S. 77, 80, 45 L. ed. Metallic Mfg. Co. 174 U. S. 492-498, 43 L. 95, 98, 21 Sup. Ct. Rep. 24, 25, as follows: ed. 1058-1060, 19 Sup. Ct. Rep. 641, and pre- “An examination of the history of the vious decisions of this court there cited. appellant's claim, as disclosed in the file

wrapper and contents, shows that, in order | rotate the latter. This is entirely differto get his patent, he was compelled to ac-ent from applicant's construction, and it is cept one with a narrower claim than that not seen that the references are pertinent .contained in his original application; and it to the issue. Certainly, the references, neiis well settled that the claim as allowed ther singly nor taken together, anticipate must be read and interpreted with reference the structure set forth in the claims, and to the rejected claim, and to the prior state there can hardly be any question that the of the art, and cannot be so construed as to construction which applicant shows is a subcover either what was rejected by the Pat- stantial improvement in the art. It is ent Office or disclosed by prior devises. Leg- hoped that all the claims may be allowed.” gett v. Avery, 101 U. S. 256, 25 L. ed. 865; But the examiner again rejected claims 1, Shepard v. Carrigan, 116 U. S. 593, 29 L. 8, and 9 upon the references of record, and ed. 723, 6 Sup. Ct. Rep. 493; Knapp v. Morss, held that it would not involve invention to 150 U. S. 221, 227, 37 L. ed. 1059, 1061, 14 arrange upon the vertical shaft of Turnbull's Sup. Ct. Rep. 81.

scale a computing chart and inclosing case "It is quite true that where the differ- having the characteristics of Smith's scale. ences between the claim as made and as To this the attorneys for applicant anallowed consist of mere changes of expres- swered: sion, having substantially the same mean- “These claims are canceled, not because ing, such changes, made to meet the views considered unallowable, but because it is not of the examiners, ought not to be permit- desired to prosecute an appeal, in view of ted to defeat a meritorious claimant. While the fact that the allowed claims appear to not allowed to revive a rejected claim by a cover the invention as it would be conbroad construction of the claim allowed, yet structed in practice. The cancelation is the patentee is entitled to a fair construc-made, therefore, without prejudice to the tion of the terms of his claim as actually claims which remain.” granted.”

The sixth claim was allowed upon the Looking to the record in the Patent Office, suggestion of the examiner, as follows: we find that claim 1, as originally presented, "In a spring balance, the combination of a read as follows:

nonrotating frame providing an external “1. In a spring-balance computing scale, casing and having means for supporting it the combination of a suitably supported from above, weighing springs secured at vertical nonrotatable casing provided with their upper ends to rigid parts of said frame, a price index, a vertical rotatable computing a vertically movable runner which is suscylinder journaled in said casing provided pended from the lower ends of said springs with cost computations, a spring-supported and is provided with means to support the load pan supported from said casing, and load, a chart drum rotatably mounted within means connected with said pan and cylinder said casing on a vertical axis and having for rotating the cylinder as the pan is low- external horizontal rows of value-indicating ered under pressure, substantially as and figures computed at different rates, said for the purpose set forth.”

casing having a sight opening through which The examiner rejected this claim upon the portions of said value-indicating rows may patent of Smith, No. 545,616, price scales, be seen, and corresponding rate-indicating and in view of the patent of Turnbull, No. figures on the outer face of said frame adja378,382, spring scales, saying: “It would cent to the value-indicating rows not involve invention to arrange upon Turn-chart drum, and mechanism for translating bull's scales a vertical stationary casing hav- the vertical movement of the runner into ing within it a revolvable computing chart, the rotary movements of the chart drum." the axis being connected with the index- It was afterwards stated by the exam. carrying shaft P shown in the Turnbull pat- iner: ent."

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

found that the claim does not clearly and "The first portion of the examiner's letter patentably distinguish from the scale shown is not understood, as there are no modifica in the patent to Herr, No. 651,801, June 12, tions referred to in lines 6 to 26 of page 3. 1900, Price Scales, and it is therefore necesA reconsideration of the claims is requested, sary to reject the claim. It is believed, for the reason that it is believed that the however, that the claim may be rendered alreferences cited do not anticipate any of the lowable by inserting depending before claims. In both of the references cited a 'means' in line 6," rack bar extending transversely of the cen- and, accordingly, the word “depending” was ter of rotation of the computing chart inserted in the claim, so as to make it in its serves, by means of engagement with a pin- present form. How this added anything to ion at the axis of the computing chart, to Ithe patentability of the mechanism described

a

it is difficult to perceive, in view of the pres

In view of the action of the Patent Office ence of “depending means to support the in this case and the acquiescence of the apload" in all scales of this class.

plicant, considered also in view of the state The general rule, as stated, as to the ef- of the art, in our opinion it is necessary to fect of a patentee striking out a broad claim have this novel element of the invention and accepting a narrow one, is conceded by read into them in order to save the claims the learned counsel for appellant, but it is of Hayden's patent. contended that if an inventor presents a Conceding that this spiral rod and its con. broad claim and strikes it out and then nections with the cylinder in the manner presents and obtains an equally broad claim, and for the purposes stated is a novel feahe loses no right by such action, and may ture in the combination, and entitled to projustly claim his allowed claim to be a broadtection, it is of that narrow character of one and have relief accordingly. But we invention which does not entitle the patthink the action of the department in this entee to any considerable range of equivacase cannot be thus eliminated. Claim 1, lents, but must be practically limited to the as presented, had contained the words “a means shown by the inventor. The distincspring-supported load pan supported from tion between pioneer inventions permitting said casing, and means connected with said a wide range of equivalents and those invenpan and cylinder for rotating the cylinder tions of a narrower character, which as the pan is lowered under pressure," and, are limited to the construction shown, as allowed, there was inserted "a spring has been frequently emphasized in the desupported, load-bearing, and cylinder-revolv- cision of this court. Cimiotti Unhairing ing rod suspended from said casing, and con- Co. v. American Fur Ref. Co. 198 U. S. 399, necting means between rod and computing 406, 49 L. ed. 1100, 1103, 25 Sup. Ct. Rep. cylinder, whereby, by longitudinal movement 697, and cases therein cited. of the rod, rotary movement is imparted to Thus limiting the invention, we do not said cylinder, substantially as and for the think the construction of the defendant purpose set forth.” This limitation to spe- amounts to an infringement. Its mechanism, cific means is certainly a narrowing of the by means of which the downward moveclaim.

ment of the load accomplishes the rotary It was accepted, as the patentee said, "in movement of the cylinder, consists of a bar view of the fact that the allowed claims ap- which has a rod extended upward and carpear to cover the invention as it would be rying a rack which meshes with a pinion on constructed in practice.”

a shaft journaled in bearings on a crossbar We cannot think it was the intention of of the frame of the machine. On this shaft the department, after requiring the inser- is a gear meshing with the pinion, secured tion of “a spring-supported, load-bearing, and to an upright shaft journaled in bearings in cylinder-revolving rod” and “connecting the frame, and projecting above it so as to means between rod and computing cylinder” receive a light frame composed of cross arms to secure the rotary movement of the inner and a circular rim to which the chart drum cylinder as a means of saving claim 1, to is secured. The downward movement of the then permit the claim to be granted broadly load-supporting hook causes the rack to in allowing other claims. And we believe move in the same direction, rotating the it would be a more reasonable construction horizontal shaft by means of the pinion, of the letter of the applicant to say that and this movement is communicated by he recognized that his invention, "as con- means of the gearing to the upright shaft structed in practice," must have read into it carrying the chart drum. The cylinder-reto sustain the claim, the specific means volving rod with its connections, which, as shown for translating the vertical move- we have seen, was made an essential element of the runner into the rotary movement to accomplish invention in Hayden's ment of the chart drum, rather than as sav- device, is not found. The coinplainant's exing a right to construe a claim broadly as pert is of opinion that it is shown in the including in one claim what had just been hook at the bottom of defendant's scale for refused in another.

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:

der-revolving spiral rod and does not ac“The spiral rod passing through the lower complish its function. ends of the casing, and serving, by means The court of appeals held the sixth claim of its connection with the two cylinders, to void. We are of opinion that it cannot be rotate the computing cylinder, is regarded allowed for the broad claim "mechanism for as the essence of this feature of the inven- translating the vertical movement of the tion, however, regardless of the precise de- runner into the rotary movement of the tails of connection between cylinders and chart drum,” but must be limited to Hay.

den's suspended rod with its spiral, enga

rod.”

v.

ging with the rollers, or similar devices on the London Guarantee & Accident Company, the cylinder, practically in the manner and Limited, the plaintiff below, the court made for the purposes shown by him. If the the following order: claim be thus limited, for the reasons we “And now, June 25th, 1904, the court orhave already stated, the mechanism of the ders the defendants to produce, within twen. defendant does not infringe.

ty days, in the office of the clerk of said We find no error in the decree rendered by court, their pay sheets, time books, cash the Court of Appeals, and it is affirmed. books, and all other books of original entry

which contain information as to the amount of compensation paid to employees of them

selves or of their subcontractors or of any WILLIAM J. DOYLE, and James G. Doak, other persons contemplated in the contracts Trading as Doyle & Doak,

upon which suit is brought in this case dur

ing the period of said contracts, as set forth LONDON GUARANTEE & ACCIDENT in the petition filed.” COMPANY, LIMITED.

After that order was made the certificate

recites: Appellate review of contempt proceedingsjurisdiction of circuit court of appeals

“Thereafter the plaintiff presented to the final decree.

court a petition alleging disobedience by the The circuit court of appeals cannot, in defendants of the above order and praying advance of the final decree in the suit, review that an attachment issue against them for an order of a Federal circuit court which contempt of court. Thereupon the court adjudges the defendants in such suit guilty granted a rule upon the defendants to show of contempt in disobeying an order for the cause why an attachment should not issue production of certain books and papers for inspection for the benefit of the plaintiff

, against them for contempt of court by reaand imposes a fine or imprisonment in the son of their violation and disobedience of event of failure to produce such books or said order. To this rule the defendants filed papers by a specified date, since this is not an answer under oath, denying intentional à final order rendered in a proceeding crim- noncompliance with said order, and stating inal in its nature, and, as such, within the that they were not able to produce all the appellate jurisdiction of the circuit court books and papers called for, because, upon a of appeals, under the act of March 3, 1891 thorough search, the absent ones could not (26 Stat. at L. 828, chap. 517, U. S. Comp; be found, and averring their belief that they Stat. 1901, p. 550), § 6, but was intended to secure the rights of the party to the suit were accidentally lost or by mistake were for whose benefit the original order was destroyed at a time when alterations were made.

made in their office and a removal of its

contents to another place occurred. Subse[No. 155.]

quently, to wit, on January 30, 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 folNA CERTIFICATE from the United lows: ON States Circuit Court of Appeals for the

"If the defendants produce in the office of Third Circuit presenting a question as to the clerk of the circuit court on or before the appellate jurisdiction of that court to January 15th, 1905, the ledger of 1902–1904, review an order in contempt proceedings. the pay rolls or time sheets from March to Answered in the negative.

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 1 jail of this county for the period of sixty the court:

days. If the foregoing books and papers are This case is here upon certificate from the not produced on or before January 15, the circuit court of appeals for the third cir- defendants are ordered to pay a fine of $250, cuit. From the facts stated it appears that and also the cost accruing upon this motion, William J. Doyle and James G. Doak were including the stenographer's charges, on or adjudged guilty of contempt of court in the before January 20, or, in default of such circuit court of the United States for the payment, to suffer imprisonment in the jail eastern district of Pennsylvania. After the of this county for the period of sixty days." bringing of the action, upon the petition of A writ of error was allowed to the cir

99

cuit court of appeals. Upon the facts stat. | ceding section gives to this court jurisdiced the following question was certified to tion to review convictions in only capital or this court:

otherwise infamous crimes, and no other "Has the circuit court of appeals juris- provision is found in the statutes for a rediction upon the writ of error sued out by view of the final order in contempt cases, the defendants to review the above-recited upon what satisfaotory ground can it be judgment of January 5th, 1905, adjudging held that the final decisions in contempt that the defendants are guilty of contempt cases in the circuit or district courts are of court in disobeying the above-recited or not subject to review by the circuit courts der of court of June 25th, 1904, and impos- of appeals? Considering only such cases of ing upon the defendants a fine of $250.00 contempt as the present,—that is, cases in on the specified conditions and terms ?” which the proceedings are against one not

Cases involving the right to review orders a party to the suit, and cannot be regarded of the Federal courts in matters of contempt as interlocutory,—we are of opinion that have been so recently before this court that there is a right of review in the circuit an extended discussion of the principles in- court of appeals.” volved is unnecessary. Bessette v. W. B. And again, in the same case, it is said: Conkey Co. 194 U. S. 324, 48 L. ed. 997, 24 “As, therefore, the ground upon which a Sup. Ct. Rep. 665; Re Christensen Engi- review by this court of a final decision in neering Co. 194 U. S. 458, 48 L. ed. 1072, 24 contempt cases was denied no longer exists, Sup. Ct. Rep. 729; Alexander v. United the decisions themselves cease to have conStates, 201 U. S. 117, 50 L. ed. 686, 26 Sup. trolling authority, and whether the circuit Ct. Rep. 356.

courts of appeals have authority to review In Bessette v. W. B. Conkey Co. supra, a proceedings in contempt in the district question was certified here from the circuit and circuit courts depends upon the question court of appeals of the seventh circuit, in- whether such proceedings are criminal volving the jurisdiction of that court to re- cases. view an order in a contempt proceeding find- It therefore appears that the only right ing the petitioner guilty of contempt for vio- of review given to the circuit court of aplation of an order of the circuit court, and peals in contempt proceedings is derived imposing a fine. In that case the subject from the act giving that court such right underwent a full examination and the pre-in criminal cases. In the course of the disvious cases in this court were cited and re-cussion in the Bessette Case it is said that viewed. As a result of those decisions we proceedings for contempt may be divided deem it settled that an order punishing for into those which have for their purpose toe contempt, made in the progress of the case, vindication of the authority and dignity of when not in the nature of an order in a the court, and those seeking to punish parcriminal proceeding, is regarded as inter- ties guilty of a disregard of such orders as locutory, and to be reviewed only upon ap- are remedial in their character, and inpeal from a final decree in the case. tended to enforce the rights of private par

Re Christensen Engineering Co. supra. ties, to compel obedience to orders and deIn Bessette v. W. B. Conkey Co. supra, it crees made to enforce their rights, and to was pointed out that this court had no ju- give them a remedy to which the court risdiction to review judgments in contempt deems them entitled. And it is said that proceedings criminal in their nature, under the one class is criminal and punitive in its the power to punish for contempt defined by nature, in which the government and the Congress (1 Stat. at L. 83, chap. 20) and public are interested, and the other civil, limited by the act of March 2, 1831. 4 Stat. remedial, and coercive in its character, in at L. 487, chap. 99, Rev. Stat. § 725, U. S. which those chiefly concerned are individComp Stat. 1901, p. 583.

uals whose private rights and remedies are The right to review a judgment in a con- undertaken to be protected and enforced. tempt proceeding in the circuit court of ap- From the discussion in that case it clearly peals was derived from the circuit court of appears that proceedings whico are criminal appeals act, $ 6 [26 Stat. at L. 828, chap. in their nature and intended for the vindi517, U. S. Comp. Stat. 1901, p. 550], of cation of public justice, rather than the cowhich Mr. Justice Brewer, speaking for the ercion of the opposite party to do some act court in the Bessette Case said:

for the benefit of another party to the ac“So when, by $ 6 of the courts of appeals tion, are the only ones reviewable in the act, the circuit courts of appeals are given circuit court of appeals under its power to jurisdiction to review the 'final decision in take jurisdiction of and determine criminal the district court and the existing circuit cases. courts in all cases other than those provided In that case, and in cases generally for in the preceding section of this act, un- where the right of review has been recog. less otherwise provided by law,' and the pre-l nized, the party prosecuted has been other