and supporting the grate. But neither in the construction of the ring and legs nor in the combination of them is there a mechanical conception which is not found or suggested in stoves, grates, and furnaces, and, indeed, in tables, stands, chairs, stools, and other devices of long and familiar use. The reciprocating grate, itself old, is not embraced in the claims, and it required only common skill to provide notches in the legs to receive and support it. So, too, the coal basket, which is the subject of the third claim, and is described as cast integral, and having a flaring flange with a series of pintles projecting downward, has no feature of essential novelty either in construction or use. It has been urged as important that when in place in the stove the parts of the ring are held together by the pintles of the flange of the basket projecting through the holes of the ring. There is, however, no claim which covers the basket and ring so made and combined, and there would be no invention in it if there were. Considering the manner in which the ring is fitted into the fire pot, the necessity for providing special means for holding the parts together is not apparent, and, if there were such necessity, it was a matter of small intelligence and skill to meet it, either as it was done, by using pintles and holes, or other form of dovetailng between the flange and ring, or by some form of fastening between the pieces of the ring when in place, for which purpose the pintle and hole, links, clasps, hinges, or other devices might have been used.

It follows that the decree below should be set aside, and the bill dismissed for want of equity; and it is so ordered.

WESTERN ELECTRIC CO. v. SPERRY ELECTRIC CO. et al.

(Circuit Court of Appeals, Seventh Circuit. October 2, 1893.)

No. 104.

1. PATENTS FOR INVENTIONS-ABANDONMENT OF APPLICATION-PLEADING. Where, in granting a patent several years after the filing of the application, the patent office decided that there had been no such delay in the prosecution of claim as to forfeit the application, the question of abandonment of the application will not be considered by the court in an action for infringement, where the answer does not specifically aver that the application was abandoned, but merely denies having any information or belief whether the patent was duly issued.

2. SAME ABANDONMENT OF INVENTION EVIDENCE.

The fact that an inventor, after making a successful experimental machine, puts it away, and pays no further attention to it for more than two years, and then applies for a patent, does not show an abandonment of the invention, where the machine is not in the mean time manufactured for sale, and the application for patent is duly prosecuted.

3. SAME-APPLICATION FOR PATENT-CHANGE OF SPECIFICATION.

An inventor has a right to change his specification, so long as he does not change the structure of his device or invention, even though he makes the change with reference to another patent which has been applied for and issued while his application was pending.

4. SAME-INFRINGEMENT-ELECTRIC ARC LAMPS.

Letters patent No. 420,109, issued January 28, 1890, to Charles E. Scribner, for an improvement in electric are lamps consisting of the com. bination, with an electro-magnet in the shunt of the arc and its armature, of an electro-magnet in the main circuit and its armature, the latter carried upon a movable support which is controlled by the armature of the other electro-magnet, is infringed by lamps constructed under letters patent No. 405,440, issued June 18, 1889, to Elmer A. Sperry, such lamps being the same as those described in the Scribner patent except as to the relative positions of the two magnets, the horizontal parts being changed to vertical and the vertical parts to horizontal.

Appeal from the Circuit Court of the United States for the Northern District of Illinois.

Bill by the Western Electric Company against the Sperry Electric Company and others to enjoin infringement of a patent. Defendants obtained a decree. Complainant appeals. Reversed.

Statement by WOODS, Circuit Judge:

The appellant, as assignee of the inventor, Charles E. Scribner, to whom had been granted letters patent No. 420,109, brought this suit to enjoin infringement and to obtain an accounting. The respondents, not admitting that the patent was issued in due form of law, nor that the complainant was the sole and exclusive owner thereof, answered that the invention described was not new nor useful when the application for the patent was made; and that the inventor, Scribner, and the complainant "actually abandoned the said alleged invention." In respect to infringement the respondents allege "that they have not since January 28, 1890," (as charged in the bill,) "or at any other time, made, used, or sold any electric lamps embodying the invention described and claimed; * * * that since the 28th of January, 1890, they have made certain electric arc lamps in accordance with and under and by virtue of the patent to Elmer A. Sperry, dated the 18th day of June, 1889, No. 405,440, and the invention therein described and claimed." The court below found and held that the application for the patent had been abandoned, before the letters were granted, by reason of the failure of the applicant to prosecute the same within two years after action thereon, as required by section 4894 of the Revised Statutes, and dismissed the bill for want of equity. Counsel for the appellee insists that the record shows abandonment of the invention as well as of the application.

The facts pertinent to the question of abandonment are as follows: Scribner's application for the patent in suit was filed January 2, 1883. On the 25th of the same month the patent examiner wrote him, to the effect that the claims were rejected on references cited; and nothing further was done until the 26th of December, 1884, when Scribner's attorney wrote to the commissicaer of patents, "Please reconsider last official action," etc., to which, on January 9, 1885, an examiner replied: "Further action will be taken in this case when the requirements of office rule 67 have been complied with. No invention has been pointed out in this case over the references of record, and none is believed to exist. The last official action is repeated." The next movement was made July 25, 1885, when the applicant proposed amended claims, and from that time there were communications, dated, respectively, August 13, 1885, July 6, 9, and 16, October 13, 1886, August 10, 1887, and September 15, 1887; the last being to the effect that claims 2 and 3 as they then stood, were indefinite in form, and did not clearly distinguish the construction sought to be covered. To this the applicant made no response nor took other step in the matter until August 30, 1889, when he wrote to the commissioner in support of his claims, and in conclusion said: "Applicant's attorney, being in doubt whether the action of September 15th, 1887, would be considered a final or second rejection, files this request for reconsideration, and asks that action be had thereon immediately, in order that the appeal

may be perfected. If the office holds, however, that the action of September 15th, 1887, was a second action, this paper may be returned to applicant's attorney, and the appeal filed." The necessary papers and money for the taking of an appeal accompanied the letter. On September 9, 1889, the examiner responded to the effect that the action of September 15, 1887, was of a purely formal character. the repetition of which would not warrant an appeal to the examiners in chief, and concluded by saying: "As the action of September 15th, 1887, appears, on reconsideration, to have been well taken, it is now repeated, but the appeal filed cannot be entertained for the reasons above explained. Applicant's remedy is by a petition to the commissioner, as indicated." On October 1, 1889, the same examiner declared the application abandoned, because there had not been proper action by the applicant within two years after September 15, 1887. The action of the office on that date having been upon the form of the case, by the last paragraph of rule 171, the applicant was required, as the examiner held, to treat the formal matter within two years; but instead of doing that he had requested a re consideration, and at the same time filed an appeal to the examiners in chief, the rule of practice being that action upon the merits cannot be had until all formal objections have been disposed of. On October 29th ensuing this decision was overruled by a new examiner, meanwhile come into office, who, "in view of the fact that a reconsideration of claims 2 and 3 was requested within the two-year limit after the action of Sept. 15, '87, (by which objection to their form was made,) and in view of the fact that such reconsideration was accorded, (as shown by the letter of Sept. 9th, '89, in which the examiner refuses to act upon the merits of the case and file the appeal, and repeats the formal objection,)" held that the ruling that the application had been abandoned was not justified, was made through oversight, and was therefore withdrawn. On December 12, 1889, the applicant presented an amended specification, and on January 28, 1890, the patent was issued to the appellant as the assignee of Scribner.

The drawing which accompanied the original application has not been changed, and the specification remains substantially the same as at first, except that by the amendment of December 12, 1889, the part in brackets was added. The specifications, claims and drawings of the patent are as follows:

"My invention herein set forth relates to electric arc lamps, in which a regulating magnet is attached rigidly to the frame of the lamp, and a suspending lifting magnet is employed, as hereinafter described and claimed. In lamps now in common use, including those in which the lifting magnet is wound differentially, one winding being a portion of the main circuit and the other a portion of a shunt around the arc, and also including those lamps like the Von Hefner Alteneck, (United States patent No. 243,341, June 21, 1881,) in which the lifting solenoid in the main circuit and the solenoid in the shunt of the arc act upon the same carbon rod, the current of the main circuit acts in opposition to the current of the shunt of the arc. In all these lamps the armature of the lifting magnet, in order to compensate or feed, moves away from the poles of said lifting magnet. This movement of the lifting armature away from the poles of its magnet, which produces the feed, is caused chiefly by the variations in the strength of the current of the shunt of the arc. As the strength of the current in the shunt of the arc increases, the armature of the lifting magnet moves away and causes the feed. The compensation for the inequalities of the current is caused chiefly by the vari ations of the strength of the current of the magnet in the main circuit. In my lamp, however, as herein described, the electro-magnet in the shunt of the arc does not act in opposition to the electro-magnet in the main circuit. The strength of the lifting magnet is not changed, nor is the position of the armature of the lifting magnet changed relatively to the poles of said lifting magnet, by variation in the strength of the electro-magnet in the shunt of the

arc.

"The accompanying drawing, which is illustrative of my invention, shows a front elevation of an electric arc lamp.

"The circuit may be traced from hook, a, by wire, h, through the suspended lifting magnet, c, and thence to the carbon rod, d, and thence through the arc, c, and by wire, f, to hook, g. The regulating magnet, h, is included in the shunt of the arc, and attached rigidly to the frame, i, of the lamp, and controls the regulating mechanism of the lamp. The three pieces k, l, and m, pivoted as shown, form a kind of pivoted armature lever supporting the lifting magnet, c, the poles of which extend toward the lifting armature, n, that carries the usual friction clutch, o. The lifting armature, n, with its suitable

movable supporting parts, is carried up and down with the lifting magnet. It should therefore not extend either above or below the poles of the lifting magnet. The two ends of the lifting armature come, preferably, opposite the centers, respectively, of the two poles, as shown. The armature, p, of the regulating magnet is mounted upon the pivoted armature lever. The frame is held suspended by means of the adjustable retractile spring, q. Armature, n, of the main-circuit magnet is mounted upon armature levers, n', pivoted to the frame of the lamp. The clutch, o, is suspended directly upon the lower one of these two pivoted levers upon which the armature, n, is mounted.

"The operation of my lamp. as thus described, is as follows: As soon as the circuit is closed, the armature, n, is raised by the lifting magnet, and the clinch, o, lifts the rod, thus separating the carbons, and establishing the arc, as shown. The action of the magnet, h, will at the same time draw upon its armature against the tension of spring, q. The spring, q, must therefore be adjusted to sustain its armature lever and the parts it supports after the lifting magnet has raised the rod. The armature, n, will move as the magnet, c, moves. It has also a compensating motion up and down, as the strength of the magnet, c, increases and diminishes. As the resistance of the arc increases, the regulating magnet becomes more strongly magnetized, and the armature, p, is drawn downward, and also piece, i. which carried the lifting magnet, c. The lifting armature, n, it is evident, will descend at the same time, thus compensating and feeding as the current varies or the carbons burn away. It will thus be seen that the current in the shunt of the arc acts to change the position of the lifting magnet and its armature. This action is in no way opposed to the action of the current which is passing through the coils of the lifting magnet. Increase of the current in the shunt lowers the armature, p, and the lifting magnet, c, just the same, without reference to the magnetic force of the lifting magnet; [that is to say, armature, n, is attracted by the main-circuit magnet, and assumes a definite position with relation thereto, which position it holds, no matter what changes may take place in the strength of the shunt magnet. Armature, n, through the attraction of the main-circuit magnet, is connected through magnetic action with armature lever, k, l, m, and the movements of this armature lever in responding to the changes taking place in the electromagnet in the shunt of the arc are communicated to armature, n, its lever, and to clutch, o. Thus it will be seen that clutch, o, is carried and controlled by the pivoted armature lever, k, l, m, and the pivoted armature lever upon which said clutch is supported.] The compensation and feeding of my lamp is thus more delicate than in lamps heretofore known or used. "I claim as my invention: (1) In an electric arc lamp, the combination, with an electro-magnet in the shunt of the arc and its armature of an electro-magnet in the main circuit and its armature, said electro-magnet in the main circuit being carried upon a movable support, said support being controlled by the armature of the electro-magnet in the shunt of the arc, whereby the position of the main-circuit electro-magnet and its armature is caused to vary in response to the variations in the strength of the current passing through the electro-magnet in the shunt of the arc. (2) In an electric arc lamp, the combination, with a clutch suspended upon suitable movable supporting parts, an armature forming part of said movable supporting parts, an electro-magnet in the main circuit with its poles presented to said armature, a regulating mechanism pivoted to the lamp frame, and carrying the main magnet, and an electro-magnet in the shunt of the arc with its poles presented to an armature carried by said regulating mechanism, whereby the position of the carbon-feeding mechanism is varied as the strength of the magnet in the shunt varies independently of the action or electrical condition of the magnet in the main circuit. (3) In an electric arc lamp, an electro-magnet in the shunt of the arc, a pivoted armature lever responding to the changes in the strength of said shunt magnet, in combination with a magnet in the main circuit, and a pivoted armature lever responding to the changes in strength of said main-circuit magnet, a carbon rod, and clutch for the same, said clutch being carried and controlled by the said armature levers, whereby the movements of either armature lever may be communicated to the clutch to feed and regulate the lamp."