(after stating the facts as above). Henry B. Hale filed an application February 6, 1880, for letters patent for a,n improvement in folding bedsteads. The specification contained two claims, the first of which was allowed, and the second was rejected, on a reference to Kauffman’s patent, No. 159,082, dated February 9, 1875, for a hinge. An interference was declared between Hale and A. B. Stevens. The application of the latter had been filed December 21, 1878. This interference resulted in Hale’s favor, and calls for no attention. On September 8,1884, the original specification, with its allowed claim, was canceled, and. a new' specification, with six claims, was filed; and on October 15, 1884, these six claims were renewed, in an amended form, accompanied by a new oath of invention. On December 5. 1884, the first; claim, which was the original first claim, was again rejected; and reference w'as made again to the Kauffman patent, and to patent No. 151,020 (May 19, 1871), granted to Harrison & Hevman. The remaining five claims were also rejected, and reference was made to patents to Harrison & Hevman and to patent No. 158,384 (January 5, 1875), to M. S. McSwain. Several amendments were made to meet the objections,
The first matter pressed upon our attention by the learned counsel for the appellants is based on the numerous changes in his claims made by Hale during the progress of his application through the patent office. It is argued that the submission of the applicant to such repeated rejection upon references, and the consequent cancellation of his claims, render the patent absolutely invalid, as no distinction can be taken between the rejected and canceled claims and those finally allowed. To sustain this contention the following decisions of the supreme court are cited: Royer v. Coupe, 146 U. S. 524, 13 Sup. Ct. 166; Knapp v. Morss, 150 U. S. 224, 14 Sup. Ct. 81; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 40, 14 Sup. Ct. 28; Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U. S. 425, 14 Sup. Ct. 627. Undoubtedly, these cases do establish the proposition that when an applicant acquiesces in the rejection of some claims, and accepts a patent for others, the claims allowed must be read and interpreted with reference to those rejected, and cannot be construed so as to cover either what was rejected by the patent office, or disclosed by prior devices; that where 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. But we are unable to see that these principles are applicable to the case before us. It may well be that a patentee cannot be permitted to hold under his patent anything that he has clearly renounced and excluded from his inventions during the prosecution of his application. But surely it has never been held that mere changes of phraseology to suit the views of the examiner, and to distinguish the claims made from those contained in prior applications, to which, reference has been made, can be held to defeat the patent, when granted. What is forbidden is the attempt, after a patent has been procured, surrendering or disavowing substantial claims or devices, to recover such renounced and abandoned claims by demanding a broad construction of those allowed. Our examination of the various changes and cancellations made in the present case has not sho wn us any such radical or important changes as to bring 'tins patent under the condemnation of the cited cases. From the first to the last, as we read the history of the case, the claims (excepting the original second claim, which was wholly abandoned), while changed in number and in formal terms, were substantially the same, and at no time inconsistent with those finally granted. Many of the objections from time to time taken seem to us to have been trivial and unimportant. At any rate, we are not able to say that
It is next contended that the court erred in holding that each and all of the claims of complainant’s patent were good and valid claims. We incline to think that some of the claims cannot be sustained, if they are to be understood as claiming more than is contained in the 1st, 1th, 6th, 8th, and 9th claims. We do not, however, so understand them. They are simply redundant, and may be dismissed from consideration.
The next contention is the alleged want of novelty in the Hale invention. ' This part of the controversy will turn mainly on the effect that should be given to the Dutton patent (April 7, 1868), No. 76,128; to the Kauffman patent (February 9,1875), No. 159,682; and to the first Hale patent (December 10, 1,878), No. 210,777. Several other patents were referred to and discussed in the briefs, but, if the patent in question can stand the test suggesled by the patents just specified, it will scarcely be necessary to consider each and all of the others. Hale concedes that his invention is merely an improvement in folding bedsteads, and relates to that “class of bedsteads which have a stationary supporting frame and a folding or swinging frame connected thereto, by means of interposed fulcra, in such manner that the folding member or frame can be placed in a substantially horizontal position, .and can also be folded up into a substantially vertical position”; and he admits, in his disclaimer, that he is aware that “a number of prior patents show folding beds in which the folding or swinging sections and the stationary supporting sections are com nocted with each other by movable pivots, one on either side of the bed, the construction and arrangement of the parts being such that as the swinging part is being folded from a horizontal to a vertical position the pivots move towards the headboard, and also move upward; and hence I do not herein claim such construction.” Accordingly, we find in the Dutton patent a fixed frame, a folding frame, and connecting devices, consisting of curved bars and straps* which operate so that the bedstead is raised and lowered from or on a variable or shifting fulcrum, and the headboard is made quite heavy, or lias a weight attached, to serve as a counterpoise. In the Hale patent of 1878 we find a folding bedstead, with a permanent and a movable frame, pivoted to each, other by means of a .shaft, or pins adaxdod to a slot or slots in one or other of the frames, in combination with rollers carried by the movable frame, and adapted to rails on the permanent frame. This construction has'no combination or device which moves the movable frame backward or rearwardlv as it ascends when the bed is being closed. The operation of the Dutton bed is the opposite to the operation of the patent in suit; that is, the movable part of the bed, in being folded, descends and moves forward, or away from the rear of the stationary part. It is true that there are two racks, one of which is secured to the stationary part, and the other to the movable part; but they do not themselves constitute the fulcra and fulcra seats by which the weight of the movable part is sustained by the stationary part, nor do they perform the functions claimed in the patent in suit, namely, the rising
It is further contended that Hale did not change or modify, in the patent in suit, any of the devices or parts contained in his prior patent of 1878, but only substituted for the pivots described in the 1878 patent the rack and pinion hinges of the Kauffman patent. By such substitution, it is argued, no invention was manifested, but only the exercise of ordinary mechanical skill; that the differences between the Hale and the Kauffman patent, in respect to the machinery connecting the two frames, arise merely from change of position. Considered, simply as pieces of mechanism, separated from the structure with which they are intended to be combined, the Kauffman and Hale hinges have a superficial resemblance; but, when carefully compared, material differences are found, as well in the special devices employed, and in their mode of operation, as in the purpose or end sought to be 'accomplished. Thus, while it - is true that the patent in suit has the same number of cogs in the pinion that the Kauffman has, and the same number of teeth in the corresponding plate, yet in the Hale structure the arm by which the pinion is secured to the movable part is directed away from the teeth of the pinion, while in the Kauffman the teeth of the pinion are directed towards the arm. Another and more important difference is that the extension from the pinion which supports the movable part in the Hale dévice must be capable of turning, so that when the pinion is at each end of the
We are now brought to the question of infringement, and here we meet the argument that the patent iu suit must, in order to be sustained, receive a strict or narrow construction, and that such a construction will not bring the defendants’ folding bed within its reach. Undoubtedly, the patent in suit, having been preceded by numerous other patents for folding beds, calls for a narrower construction than
A further argument is based on the cases of Railway Co. v. Sayles, 97 U. S. 563; Clements v. Apparatus Co., 109 U. S. 649, 3 Sup. Ct. 525; and Electric Gaslighting Co. v. Boston Electric Co., 139 U. S. 502, 11 Sup. Ct. 586,—where it was ruled that in cases of reissue an enlargement of the claims could not avail against patents granted, or articles made and sold, between the time of the original application and the time of the final granting of the reissued patent. We think this contention is sufficiently disposed of by saying that the present is not a case of reissue containing new and different claims, and that, at any rate, we fail to perceive that Hale departed in any substantial particular from his application as first'made.
It is claimed that as the death of Amos Hillborn, one of the defendants, was suggested on the'Sth day of February, 1892,—two days after the record was closed,—and no action was taken upon such suggestion, and the bill was not dismissed, as to him or his estate, until the coming in of the interlocutory decree, May 27, 1892, so much of the costs as would have been due and payable by Amos Hillborn should not have been included in the decree. As the defendants were partners, and as the defense and its expenses were not affected or increased by the death of one, we are unable to see why the costs are not properly chargeable against the surviving partners. At all events, the question does not appear to have been raised in the court below, and we do not feel compelled to now consider it. The decree of the circuit court is affirmed.