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nection with one lock after it had been doubled in connection with another; but that the special arrangement of a lever connection between the timemovement and the dog might be patented.
Two new claims were then substituted by Sargent, as follows:*"(1) I claim, in combination with a combination-lock having a spindle and combinationwheels, and with two or more separate time-movements, a single lever, or equivalent connection, H, connecting the lock and the time-movements; the whole so arranged that said lock is released either by a simultaneous action of the time-movements, or by one of them if the other fails, and the lock still remains locked, when so released, as specified. (2) I claim, in combination with a time-movement and a lock, the lever, H, or equivalent, connected with the dog, C, to hold it from falling into the slots or notches of the combinationwheels, except when released from the clockwork, as specified.”
The first claim was again rejected, July 5, 1873, on the ground that the change in it did not take the case out of the references; and, on the twentyeighth of July, 1873, Sargent appealed to the board of three examiners in chief. The decision of the board sustaining the decision of the examiner was rendered October 7, 1873. It refers to the English patent of Rutherford, of 1831, and says: "The patent of Rutherford describes an ordinary key-lock, to which the time-movement is so connected that it may be set for a given hour, before which it cannot be unlocked, but may be at any time thereafter. Rutherford also foresaw that one time-movement might stop, and suggested two. Rutherford, as the references show, is not the only one who has thought of thus connecting a time-movement to a lock. It happens, however, that the locks shown in the references are all key-locks, while applicant's is a combination-lock; and it is upon this that the claim is founded. While it is undoubtedly true that the combination-lock is the better, there does not appear to be, in any true sense, any new combination in what applicant claims. It may be said that he has substituted in the Rutherford combination, (for example,) one well-known element for another, and that the result, namely, the security against unlocking before a given hour, is exactly the same in both cases. And it must be remembered that this is the whole end and scope of the combination claimed, not to prevent breakage, or picking, or bursting with gunpowder, but simply unlocking before the hour appointed. It is true that the lock connected to the time-movement in the manner shown is rendered secure against unlocking by unauthorized persons who pick up the combination, when the dog rests on the periphery of the cams; but it appears clear that this results from the peculiar mode of application, and is covered by the second claim. Whatever the advantage, then, arising from the substitution for the key-lock, so far as has been pointed out to us, it results from the superiority of the former over the latter, and not from the combination. Nor, so far as we see, has any invention been exercised. The time-movement was originally invented to prevent locks from being prematurely unlocked, and, when once the combination had been invented, it is obvious that it was as applicable to one form of locks as to another; and, to grant a patent for the union of the time-movement with every old form of lock, or with every new form which might appear, would manifestly place unjust restrictions on the original invention and defeat the very purpose of the law. We understand only the first claim to be rejected." These observations are true, as the record in this case shows, and it also shows many patents in which, prior to 1873, one clock or two clocks were employed to relieve, at a predetermined time, the bolts of a door from a dog obstructing their retraction, so that the door could be opened when that time had arrived, but not before.
Nothing more was done with this application till March 18, 1875, when Sargent presented a new specification and claims, making prominent the feature of the free rotation of the tumblers of the combination-lock, through the medium of the lock-spindle, during the suspension, by the time-movement, of
the unlocking action of the combination-lock, and changing the claims to read thus: "(1) The combination of a time-movement with a combination-lock and a lever constructed and located to render inoperative such combinationlock until a predeterminate hour, the tumblers of the combination-lock being free to rotate through the medium of the lock-spindle, while the unlocking action of the combination-lock is suspended by the time-movement. (2) I claim, in combination with a time-movement and a lock, the lever, H, or equivalent, connected with the dog, C, to hold it from falling into the slots or notches of the combination- wheels, except when released by the clock-work, substantially as described." On the twenty-fourth of March, 1875, the first claim was again rejected by references to the Hollen patent, of December, 1871, and the Rutherford patent, of 1831. The letter of rejection said: "Hollen shows the combination of a time-movement and a lock, with a lever constructed and located to render inoperative such lock until a predeterminate hour, the tumblers of the lock being free to rotate through the medium of a key, while the unlocking action of the lock is suspended by the lever. Rutherford shows (Figs. 1, 2, 3, 4, and 5, sheet 2) the combination of a time-movement and a lock, with a lever arranged to engage with the bolt of a lock and render inoperative such lock until a predeterminate hour. To merely substitute the ordinary combination-lock, such as shown, for example, in the patent permutation-lock of James Sargent, August 28, 1866, for the lock shown in either of the above references, is not regarded as a patentable difference. * * * The second claim is not objected to. The first claim is again refused." This application was not further prosecuted.
On the twelfth of July, 1875, Sargent addressed a letter to the patentoffice, entitled in the case, in which he said: "So many amendments and actions having been made in the above-entitled case, I desire to withdraw and abandon it, for the purpose of filing a new application. I, James Sargent, have this day filed said application for the invention, and request that the model of the case above named be applied as a model in the application filed to-day. I intend and request that this application be a substitute application for the one so withdrawn." Up to this time no bolt-work had been shown or described. The object of the new application was to introduce bolt-work as an element in the device. The drawings were the same as those in No. 186,369, showing bolt-work, with the time-movements and the combination-lock. Bolt-work was added to the former model. The specification contained three claims, as follows: "(1) The combination, substantially as herein before set forth, of a time-mechanism and a combination-lock with the bolt-work of a safe or vault door, the time-mechanism being constructed to act in conjunction with and render inoperative the combination-lock when locked, said lock having its bolt or bearing arranged to rest upon and receive the pressure of the bolt-work of the door when locked, and prevent the unlocking of said bolt-work until the arrival of a certain predeterminate time. (2) The combination, substantially as herein before set forth, of a combination-lock and the bolt-work of a safe or vault door, with a time-movement and a lever connection, said lever being constructed and located to render the bolt or bearing of the combination-lock inoperative when locked, the tumblers of the combination-lock and its spindle being free to rotate while the bolt-work of the door rests upon the bolt or bearing of the combination-lock. (3) In combination with a time-movement and a lock, a lever, or its equivalent, adapted to be connected with the dog of said lock, to hold it from falling into the slots or notches of the combination-wheels, except when released by the time-movement, substantially as described."
On the thirty-first of July, 1875, claims 1 and 2 were rejected by references to the patent of Hollen, of December, 1871, and that of Rutherford, of 1831; and a time-lock arranged in connection with the bolt-work of a door, in the time-lock of Little, patented in January, 1874, was referred to. Those claims
were again rejected, September 6, 1875, in a letter which said: "The employment of locks of various kinds for securing the bolt-work of a door is too common and well-known to require further references. Either Hollen's or Rutherford's lock can be applied to the bolt-work of a door without the least change being made to adapt it thereto. The mere substitution of one wellknown kind of locks for another kind equally well-known has been decided again and again as not a patentable difference."
On December 3, 1875, an interference was declared between claims 1 and 2 and four other applications; and between claim 3 and four other applications. On February 12, 1876, the interference as to claims 1 and 2 was dissolved, and they were again rejected. A further amendment of the specification was made February 15, 1876, and claims 1 and 2 were altered, so as to read as follows: “(1) The combination, substantially as herein before set forth, of a time-mechanism and a Combination-lock with the bolt-work of a safe or vault door, the time-mechanism being constructed to act in conjunction with and render inoperative the combination-lock when locked, said lock having its bolt or bearing constructed to receive the pressure of the series of bolts constituting the bolt-work of the door when locked, and preventing the unlocking of said bolt-work until the arrival of a certain predeterminate time. (2) The combination, substantially as herein before set forth, of a combination-lock and the series of bolts constituting the bolt-work of a safe or vault door, with a time-movement and a lever connection, said lever being constructed and located to render the bolt or bearing of the combination-lock inoperative when locked, the tumblers of the combination-lock and its spindle being free to rotate while the bolt-work is held in its locked position by the bolt or bearing of the combination-lock." The claims were not allowed, but a new interference as to them was declared, March 8, 1876, with the same four applications, the subject-matter being, "the combination of a time-mechanism, and a combination-lock, with the bolt-work of a door."
On the eleventh of January, 1877, the application was amended by withdrawing claims 1 and 2. Two days before this, and on January 9, 1877, Sargent had filed the application on which No. 186,369 was granted. The special construction and arrangement of parts, a claim for which, as the specification of that patent states, was made in a separate application, was covered by the claim of patent No. 198,157, granted to Sargent, December 11, 1877, in pursuance of the application of July 12, 1875, that claim being as follows: "In combination with a time-movement and a lock, a yoke lever or equivalent, adapted to be connected with the dog, fence, or angle-bar of said lock, to hold it from falling into the slots or notches of the combination-wheels, except when released by the time-movement, substantially as described." The present suit does not involve any infringement of No. 198,137.
As before remarked, the specification of No. 186,369, the patent here sued on, contains the following statement: "The lock-bolt or bearing of the combination-lock may be of a circular, segmental, or other desired form, provided said lock-bolt is arranged and adjusted so as to turn upon a suitable axis or bearing, and is so constructed that, in one position, it will prevent the retraction of the bolt-work, so as to retain the safe or vault door locked, while, in another position, it will admit of the bolt-work being retracted, for the purpose of allowing the safe or vault door to be opened." This clause had not appeared in any of the specifications from and including that filed June 11, 1873, until it was inserted in the one filed January 9, 1877, on which the patent No. 186,369 was granted. It is a limitation without which, it must be assumed, in view of the numerous prior rejections, the claims allowed would not have been granted. The same clause was inserted May 7, 1877, in the specification of the application of July 12, 1875, as it remained after claims 1 and 2 therein were withdrawn, January 11, 1877, and that clause appears in the specification of No. 198,157, as issued December 11, 1877.
The defendants' lock, which it is alleged infringes the two claims of No. 186,369, is of the construction shown by the following drawing, made by the plaintiff's witness Millward:
In that drawing, A is the case of the lock; B, the bolt; C, the dog, pivoted in the bolt at c, and engaging, when held up by the time-mechanism, behind a fixed stump, D; E, the arbor of the lock, the hook, e, of which engages with the hook, f, of the dog, and throws the bolt, B, back, when the dog is released by the time-mechanism. The same hook, e, by running on the surface, g, throws the bolt, B, out to lock the door. F is the time-attachment, which has a lever, G, the arm of which, extending through the case of the lock, has the hook, H, at its lower end, which holds up the pivoted arm, I, and through it the dog, C.
Another form of the bolt-work of the defendants' lock is shown by the following drawing:
Time Attach't. F.
It is contended for the defendants, that each of the combinations covered by the two claims of No. 186,369 must be limited to the particular devices described in the specification and shown in the drawings, and to their mode of operation, both claims being limited by the words "substantially as hereinbefore set forth;" and that, under this construction, the defendants do not infringe. The second claim imposes on the combination claimed in it the limitation, that the tumblers of the combination-lock and its spindle shall be free to rotate, while the bolt-work is held in its locked position by the bolt or bearing of the combination-lock. This is enforced by the language of the specification, which, in stating in what the invention consists, states that "the peculiarity and novelty" of the union or combination, consisting of a combination-lock, a time-movement, and a yoke or lever connection, is, that "when the said combination-lock, with its time-mechanism, is arranged upon a safe or vault door, to operate in conjunction with the bolt-work thereon, and all locked, the tumblers or combination-wheels of said lock, and the spindle of the same, together with its usual indicator, are all left free to be moved or rotated without exerting any unlocking action or strain whatever upon the mechanism composing the combination-lock, or the delicate mechanism composing the time-movement." Again, the specification says: “Another feature of the utmost importance present in the combination of parts brought together is, that the connection between the time-movement and the combination-lock is such that, when the time-movement is set, the parts adjusted, and the safe doors closed, the combination-lock will be rendered inoperative until a predeterminate hour, during which interval of time the unlocking action of the combination-lock will be suspended by the time-movement, while the tumblers or combination-wheels of the aforesaid combination-lock are left free to rotate, if power is exerted upon the dial-spindle for the purpose of twisting said spindle out of place, or impairing the lock-mechanism, and, by such, the working parts of the combination-lock cannot be injured or rendered useless for future action." This feature, thus declared to be peculiar and novel, of the free rotation of the tumblers, is not shown to exist in the defendants' lock. The plaintiff's expert, Mr. E. S. Renwick, testifies that this peculiarity is not found in the defendants' lock, and that, for that reason, that lock does not einbody the combination of claim 2 of No. 186,369.
As to claim 1, it is limited, by the language of the specification, to a combination-lock having a bolt or bearing which turns on an axis, or revolves. The defendants' lock has a sliding-bolt. It was not new, at the time of Sargent's invention, to apply a time-movement to dog the sliding-bolt of a lock; and it is plain that he limited himself to a rotating bolt. The specification makes it as necessary that the combination-lock should have a turning or revolving bolt, or bearing, as that such bolt or bearing should have the quality of receiving the pressure of the bolt-work, when locked. This turning or revolving feature of the bolt or bearing is made, by the specification, as necessary to the combination-lock of claim 2, as to that of claim 1.
In patents for combinations of mechanism, limitations and provisos, imposed by the inventor, especially such as were introduced into an application after it had been persistently rejected, must be strictly construed against the inventor and in favor of the public, and looked upon as in the nature of disclaimers. As was said in Fay v. Cordesman, 109 U. S. 408, 420; S. C. 3 SUP. CT. REP. 236, 244, "the claims of the patents sued on in this case are claims for combinations. 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 carries 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,