Opinion · Supreme Court of the United States
Crawford v. Heysinger
8 S. Ct. 399
- Type
- Opinion
- Court
- Supreme Court of the United States
- Jurisdiction
- Federal
- Date
- 1887-12-12
- Topic
- general
finding prosecution history estoppel to arise from amendments made in response to operability rejections | finding prosecution history estoppel to arise from amendments made in response to operability rejections
Citator
- Cited by
- 30 opinions
CRAWFORD v. HEYSINGER,123 U.S. 589(1887)
8 S.Ct. 399
CRAWFORDv. HEYSINGER.
APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE EASTERN
DISTRICT OF PENNSYLVANIA.
Argued November 29, 1887.
Decided December 12, 1887.
In order to consider any question involved as to the reissue, it is necessary to compare the specifications of the original and reissued patents. They are here placed in parallel columns, the parts of each which are not found in the other being in italics, the drawings in the two being substantially alike, with only immaterial differences in the lettering:
Original.Reissue.
"To all whom it may concern: "To all whom it may concern: Be it known that I, Be it known that I, Henry R. Heyl, of the city Henry R. Heyl, of the city and county of Philadelphia and county of Philadelphia and State of Pennsylvania, and State of Pennsylvania. have invented a new and useful have invented a new and useful improvement in paper-fastenders, improvement in paper-fasteners, which improvement is which improvement is fully set forth in the following fully set forth in the following specification and accompanying specification and accompanying drawings, in which Figures drawings, in which Figures 1 and 5 are side elevations of 1 and 5 are side elevations of the fastener embodying my the fastener embodying my invention. Fig. 2 is a vertical invention. Fig. 2 is a vertical section in linex x, Fig. 1. Fig. section in linex x, Fig. 1. Fig. 3 is a side elevation, partly sectional. 3 is a side elevation, partly sectional. Fig. 4 is a horizontal Fig. 4 is a horizontal section in liney y, Fig. 1. section in liney y, Fig. 1. Similar letters of reference Similar letters of reference indicate corresponding parts indicate corresponding parts in the several figures. in the several figures.
"My invention consists of "My invention consists of an implement of the form of an implement of the form of
Page 592
"To all whom it may concern: "To all whom it may concern: Be it known that I, Be it known that I, Henry R. Heyl, of the city Henry R. Heyl, of the city and county of Philadelphia and county of Philadelphia and State of Pennsylvania, and State of Pennsylvania. have invented a new and useful have invented a new and useful improvement in paper-fastenders, improvement in paper-fasteners, which improvement is which improvement is fully set forth in the following fully set forth in the following specification and accompanying specification and accompanying drawings, in which Figures drawings, in which Figures 1 and 5 are side elevations of 1 and 5 are side elevations of the fastener embodying my the fastener embodying my invention. Fig. 2 is a vertical invention. Fig. 2 is a vertical section in linex x, Fig. 1. Fig. section in linex x, Fig. 1. Fig. 3 is a side elevation, partly sectional. 3 is a side elevation, partly sectional. Fig. 4 is a horizontal Fig. 4 is a horizontal section in liney y, Fig. 1. section in liney y, Fig. 1. Similar letters of reference Similar letters of reference indicate corresponding parts indicate corresponding parts in the several figures. in the several figures.
"My invention consists of "My invention consists of an implement of the form of an implement of the form of
[EDITORS' NOTE: FIGURES 1-8 IS ELECTRONICALLY NON-TRANSFERRABLE.]Page 593
a hand-stamp, by which metallic a hand-stamp, by which metallic staples may be forced staples may be forced through sheets of paper documents, through sheets of paperorand secured by clinching documents, and secured by the legs on the reverse clinching the legs on the reverse side. side.
"Referring to the drawings, "Referring to the drawings, A represents a stationary anvil, A' represents a stationary anvil, which is secured to or which is secured to or formed with an arm rising formed with an arm rising from a suitable stand of convenient from a suitable stand of convenient form for use upon a form for use upon a writing-desk; and B represents writing-desk; and B represents a sliding guide-block a sliding guide-block fitted to the anvil A by a fitted to the anvil A' by a sliding joint, and having sliding joint, and having grooves C C, which match grooves C C, which match with the tongue of the anvil, with the tongue of the anvil, the upper face of the block the upper face of the block being flat. The normal position being flat. The normal position of the guide B is elevated, of the guide B is elevated, and, in order to keep it in this and, in order to keep it in this position, or from dropping position, or from dropping prematurely, I employ a prematurely, I employ a spring, D, which may press spring, D, which may press up under the guide, or a up under the guide, or a spring, D', which may press spring, D', which may press against it, and thus produce against it, and thus produce the necessary friction. E represents the necessary friction. E represents a reciprocating driver, a reciprocating driver, whose under face is flat, and whose under face is flat, and in the same is a concave recess, in the same is a concave recess, F, said driver having a F, said driver having a knob, G, for receiving the knob, G, for receiving the blows of the hand, and provided blows of the hand, and provided with a spring, H, for with a spring, H, for causing the return or elevation causing the return or elevation of the driver. of the driver.
Page 594
"Referring to the drawings, "Referring to the drawings, A represents a stationary anvil, A' represents a stationary anvil, which is secured to or which is secured to or formed with an arm rising formed with an arm rising from a suitable stand of convenient from a suitable stand of convenient form for use upon a form for use upon a writing-desk; and B represents writing-desk; and B represents a sliding guide-block a sliding guide-block fitted to the anvil A by a fitted to the anvil A' by a sliding joint, and having sliding joint, and having grooves C C, which match grooves C C, which match with the tongue of the anvil, with the tongue of the anvil, the upper face of the block the upper face of the block being flat. The normal position being flat. The normal position of the guide B is elevated, of the guide B is elevated, and, in order to keep it in this and, in order to keep it in this position, or from dropping position, or from dropping prematurely, I employ a prematurely, I employ a spring, D, which may press spring, D, which may press up under the guide, or a up under the guide, or a spring, D', which may press spring, D', which may press against it, and thus produce against it, and thus produce the necessary friction. E represents the necessary friction. E represents a reciprocating driver, a reciprocating driver, whose under face is flat, and whose under face is flat, and in the same is a concave recess, in the same is a concave recess, F, said driver having a F, said driver having a knob, G, for receiving the knob, G, for receiving the blows of the hand, and provided blows of the hand, and provided with a spring, H, for with a spring, H, for causing the return or elevation causing the return or elevation of the driver. of the driver.
"The operation is as follows: "The operation is as follows: A staple is placed within the A staple is placed within the grooves C C, with its crown grooves C C, with its crown resting on the anvil A, the resting on the anvil A', the points thus beingupward. points thus beingturned towardThe papers to be united arethe bending recess F. now placedupon the face ofThe papers to be united arethe guide B over the staple-points, now placedbeneath the driver, and, by a sharp blow and, by a sharp blow of the of the hand upon the knob G, hand upon the knob G, the the driver is forced downward driver is forced downward upon the papers.The guideupon the papers. The staple-legsB gives way, andthe staple-legs come through the papers comeupthrough the papers into the recess F, where they into the recess F, where are bent overby the slantingthey are bent overpreparatoryends thereof.to the final clinching. Thehand is now released from theknob of the driver, the latterthen rising, and the papersare drawn somewhat forward,until the staple-crown restsupon the face of the guide B,when another blow is impartedto the driver, and the flat portionof its face descends forciblyon the staple-legs, so as tobend the latter close to the paper,thus completing the operation.
"It will be seen that the "It will be seen that the grooves C C serve to support grooves C C serve to support and guide the staple-legs during and guide the staple-legs during their penetration through their penetration through the papers, and the recess F is the papers, and the recess F is so shaped that, as the staple-legs so shaped that, as the staple-legs enter thereinto, they will enter thereinto, they will strike the concave or slanting strike the concave or slanting
Page 595
"It will be seen that the "It will be seen that the grooves C C serve to support grooves C C serve to support and guide the staple-legs during and guide the staple-legs during their penetration through their penetration through the papers, and the recess F is the papers, and the recess F is so shaped that, as the staple-legs so shaped that, as the staple-legs enter thereinto, they will enter thereinto, they will strike the concave or slanting strike the concave or slanting
walls of said recess, and thus walls of said recess, and thus be bent inward toward each be bent inward toward each othersufficiently to insureother,as shown in Figs. 2 andtheir being bent down properly3. A plate,a, may be advantageouslywhen again struck between theemployed to overlapfaces of the guide B and driverthe staple-crown, for preventingE. A plate,a, may be advantageously the latter frombendingemployed to overlap while the legs are being forced the staple-crown, for preventing through the papers. the latter frombindingwhile the legs are being forced through the papers.
"It will be seen that thestaple-support or anvilA',withthe slotted or recessed hammer,operates to insert a staplethrough layers of stock to beunited, and simultaneouslybends over its projecting ends.
"In my original specificationI described the furtherseparate operation of completelyflattening down the ends ofthe staple thus bent over, by asecond blow between the upperand lower jaw of the implement,believing that the samewas new; but I have sincelearned that the same resultwas obtained by devices describedin previous letters-patentof the United States.Should the legs of the staple,when bent over by the sameblow which drives the same, asis hereinabove described, befound not to lie sufficientlyclose to the surface of the
Page 596
"It will be seen that thestaple-support or anvilA',withthe slotted or recessed hammer,operates to insert a staplethrough layers of stock to beunited, and simultaneouslybends over its projecting ends.
"In my original specificationI described the furtherseparate operation of completelyflattening down the ends ofthe staple thus bent over, by asecond blow between the upperand lower jaw of the implement,believing that the samewas new; but I have sincelearned that the same resultwas obtained by devices describedin previous letters-patentof the United States.Should the legs of the staple,when bent over by the sameblow which drives the same, asis hereinabove described, befound not to lie sufficientlyclose to the surface of the
paper, the same may be furtherflattened down by a second blowbetween flat surfaces in frontof the staple-channel and bendingrecess, respectively providedtherefor."Figs. 1, 2, and 3 show ahand-stamp embodying my invention,in which the driverreciprocates in a fixed head inthe manner of a plunger, whileFig. 5 shows the same inventionembodied in a hand-stamp, inwhich the driver is mountedat the end of a vibrating armpivoted at its rear extremityto the base, which rests uponthe table. It will be seen thatthe devices which constitute myinvention are to be found inboth these modifications, andthat both operate in preciselythe same manner, to insert bya blow upon the knob G of thehand-stamp, the staple throughlayers of stock to be united, andsimultaneously bend over theprojecting ends in the oppositebending recess provided therefor.
"Having thus described my "Having thus described my invention, what I claim as new, invention, what I claim as new, and desire to secure by letters-patent, and desire to secure by letters-patent, is — is —
"1. The reciprocating driver"1. The combination of theE, constructed with a flat facestationary staple-support orrecessed, substantially as described,anvil A', and the sliding staple-guidewhereby the projectingB, with the reciprocating
Page 597
"Having thus described my "Having thus described my invention, what I claim as new, invention, what I claim as new, and desire to secure by letters-patent, and desire to secure by letters-patent, is — is —
"1. The reciprocating driver"1. The combination of theE, constructed with a flat facestationary staple-support orrecessed, substantially as described,anvil A', and the sliding staple-guidewhereby the projectingB, with the reciprocating
ends of staples may be firstslotted or recessed hammer,bent over by entering the recessoperating to insert a stapleand then flattened down bythrough layers of stock to bepressure from the flat face.united, and simultaneouslybend over its projecting ends,substantially as and for thepurpose set forth.
"2. The self-adjusting guide-block"2. In a device for insertingB, having staple-guidingmetallic staples, the combinationgrooves C C and a flat face,of the staple-guide B,upon which to complete theanvil A', spring D, and reciprocatingclinching of the staple, substantiallydriver, provided withas and for the purposethe knob G, the whole arrangedset forth.to operate substantially as andfor the purpose set forth.
"3. The combination of the"3. A staple-inserting implementstationary staple-support orhaving two oppositeanvil A with the sliding guidejaws arranged with relation toB, grooved to partially embraceeach other, substantially asand guide the staple-legs, substantiallyshown, one of which is providedas and for the purposewith a recess, the otherset forth.with a vertically channelledstaple-guide, an anvil, and aspring, so that, when the jawsare separated, after driving astaple, the guide will be openfor the reception of the succeedingstaple, substantially asdescribed.
"4. The combination of the"4. An implement for insertingstationary staple-support ormetallic staples, consistinganvil A with the reciprocatingof two opposite jaws, one ofslotted or recessed hammer,which is provided with a staple-bendingoperating to insert a staplerecess, and the otherthrough layers of stock to bewith staple-guiding grooves andunited, and simultaneouslyan anvil fitted thereto, in combinationbend over its projecting ends,with a knob to receivesubstantially as and for thethe blow of the hand and insert
Page 598
"2. The self-adjusting guide-block"2. In a device for insertingB, having staple-guidingmetallic staples, the combinationgrooves C C and a flat face,of the staple-guide B,upon which to complete theanvil A', spring D, and reciprocatingclinching of the staple, substantiallydriver, provided withas and for the purposethe knob G, the whole arrangedset forth.to operate substantially as andfor the purpose set forth.
"3. The combination of the"3. A staple-inserting implementstationary staple-support orhaving two oppositeanvil A with the sliding guidejaws arranged with relation toB, grooved to partially embraceeach other, substantially asand guide the staple-legs, substantiallyshown, one of which is providedas and for the purposewith a recess, the otherset forth.with a vertically channelledstaple-guide, an anvil, and aspring, so that, when the jawsare separated, after driving astaple, the guide will be openfor the reception of the succeedingstaple, substantially asdescribed.
"4. The combination of the"4. An implement for insertingstationary staple-support ormetallic staples, consistinganvil A with the reciprocatingof two opposite jaws, one ofslotted or recessed hammer,which is provided with a staple-bendingoperating to insert a staplerecess, and the otherthrough layers of stock to bewith staple-guiding grooves andunited, and simultaneouslyan anvil fitted thereto, in combinationbend over its projecting ends,with a knob to receivesubstantially as and for thethe blow of the hand and insert
purpose set forth."a staple by a sudden percussion,substantially as described.
"5. In a staple-insertingmachine constructed to operatesubstantially as described, thestaple-guiding block B, havingstaple-holding grooves CC,forming side extensions of thevertical slot S, substantially asshown and described.
"6. An implement for insertingmetallic staples, consistingof two opposite jaws, one ofwhich is provided with a staple-bendingrecess, and the otherwith staple-guiding grooves andan anvil fitted therein, the saidjaws being arranged to be separatedand stand apart, toadmit the requisite manipulationfor conveniently placinga staple in the open end of thestaple-guiding grooves, substantiallyas set forth.
"7. The combination of thestationary staple-support oranvil A' with the sliding-guideB, grooved to partially embraceand guide the staple-legs, substantiallyas and for the purposeset forth.
"8. In an implement forinserting metallic staples, areciprocating driver providedwith a knob to receive the blowof the hand, in combinationwith a grooved staple-guidingblock and an anvil attached to
Page 599
"5. In a staple-insertingmachine constructed to operatesubstantially as described, thestaple-guiding block B, havingstaple-holding grooves CC,forming side extensions of thevertical slot S, substantially asshown and described.
"6. An implement for insertingmetallic staples, consistingof two opposite jaws, one ofwhich is provided with a staple-bendingrecess, and the otherwith staple-guiding grooves andan anvil fitted therein, the saidjaws being arranged to be separatedand stand apart, toadmit the requisite manipulationfor conveniently placinga staple in the open end of thestaple-guiding grooves, substantiallyas set forth.
"7. The combination of thestationary staple-support oranvil A' with the sliding-guideB, grooved to partially embraceand guide the staple-legs, substantiallyas and for the purposeset forth.
"8. In an implement forinserting metallic staples, areciprocating driver providedwith a knob to receive the blowof the hand, in combinationwith a grooved staple-guidingblock and an anvil attached to
a stand of convenient form foruse upon a writing-desk, thesaid stand having an armarising therefrom, and overand above it a guide for thepurpose of guiding the saiddriver to the said anvil, substantiallyas and for the purposeset forth."
The differences which thus appear in the descriptive parts of the specification are these:
In the original, in stating the operation of the machine, it is said that the points of the staple point "upward" when the staple is within the grooves. In the reissue, it is stated that those points are "turned toward the bending recess F."
In the original, it is said that the papers to be united are "placed upon the face of the guide B over the staple-points." In the reissue, it is said that the papers to be united are placed "beneath the driver."
In the original, it is said that "the guide B gives way, and the staple-legs come up through the papers into the recess F, where they are bent over preparatory to the final clinching." In the reissue, it is said that "the staple-legs come through the papers into the recess F, where they are bent over by the slanting ends thereof."
The original then contains the following statement, which is wholly omitted in the reissue: "The hand is now released from the knob of the driver, the latter then rising, and the papers are drawn somewhat forward, until the staple-crown rests upon the face of the guide B, when another blow is imparted to the driver, and the flat portion of its face descends forcibly on the staple-legs, so as to bend the latter close to the paper, thus completing the operation."
The reissue omits the statement of the original, that, as the staple-legs strike the slanting walls of the recess, they will be bent inward toward each other sufficiently to insure their being bent down properly when again struck between the faces ofPage 600the guide B and driver E, and substitutes the statement, that, when the staple-legs strike the slanting walls of the recess they will be bent inward toward each other, as shown in Figures 2 and 3.
The following sentence, not in the original, is found in the reissue: "It will be seen that the staple-support or anvil A', with the slotted or recessed hammer, operates to insert a staple through layers of stock to be united, and simultaneously bends over its projecting ends."
The specification of the reissue then states that the separate operation described in the original, of flattening down by a second blow the ends of the staple when bent over, was not new, but that the legs of the staple, if not laid sufficiently close to the surface of the paper, when bent over by the driving blow, may be further flattened down by a second blow between flat surfaces.
Figure 5 of the drawings, though contained in the drawings of the original patent, was not described or referred to in the original specification, but the reissued specification speaks of Figures 1, 2, and 3 as showing a hand-stamp in which the driver reciprocates in a fixed head in the manner of a plunger, while Figure 5 shows a hand-stamp in which the driver is mounted at the end of a vibrating arm, pivoted at its rear extremity to the base which rests upon the table; that the devices which constitute the invention are found in both of these modifications; and that both operate to insert, by a blow upon the knob G of the hand-stamp, a staple through layers of stock to be united, and to simultaneously bend over the projecting ends in the opposite bending recess provided therefor.
On the question of novelty, the alleged prior invention principally relied upon is a patent of the United States, No. 187,189, granted to George L. Ward and Orianna S. Smyth, assignees of James C. Smyth, February 6, 1877, for an "improvement in machines for stitching books with staples."
The Circuit Court, in its opinion, accompanying the record, held that the patented invention was not anticipated by that of Smyth; that claims 1 and 2 of the reissue were substantially the same as claim 4 of the original patent, when thePage 601latter claim was read in the light of the specification; and that the defendant's device infringed claims 1 and 2 of the reissue.
Claim 1 of the reissue is for a combination of (1) the stationary staple-support or anvil; (2) the sliding staple-guide; and (3) the reciprocating slotted or recessed hammer or driver; the conjoined operation of the three being to insert a staple through layers of stock to be united, and to simultaneously bend over its projecting ends. Claim 2 of the reissue is for a combination with the same three elements, of (4) the spring D, and (5) the knob G. Claim 4 of the original patent was for a combination of only two of these elements, namely, (1) the stationary staple-support or anvil and (2) the reciprocating slotted or recessed hammer or driver. It left out the sliding staple-guide, and yet the claim stated that the combination of the two elements, without the staple-guide, would operate to insert the staple and simultaneously bend over its projecting ends. It would, however, wholly fail to so operate without the use of the sliding staple-guide. The use and operation of the sliding staple-guide, its arrangement so as to slide, the use of the spring D to keep it in its normal elevated position, so that it will not drop prematurely, and the use of the knob G, with which to impel the driver, are fully set forth in the original specification, and described as necessary, in combination with the stationary staple-support and the reciprocating slotted or recessed hammer, to insert a staple through layers of stock and simultaneously bend over its projecting ends; and the invention is stated, in the original specification, to consist in a hand-stamp by which metallic staples may be forced through sheets of "paper documents" and secured by clinching the legs on the reverse side. We do not find it necessary, however, to decide whether the reissue is to be considered a proper one, so far as claims 1 and 2, rightly construed, are concerned, on the view that it was an inadvertence, accident, or mistake to have left out of claim 4 of the original the elements which, by the description in the original specification, were made necessary to the performance of the operation specified in that claim. We dispose of the case on the assumption that the reissued patent is valid as respects claims 1 and 2.Page 602
What is the proper construction of those claims? In claim 1, the staple-support or anvil is described as being "stationary," and the slotted or recessed hammer or driver as being "reciprocating." In claim 2, the anvil must be regarded as a "stationary" anvil, and the hammer or driver is expressly stated to be "reciprocating." In claim 4 of the original, the staple-support or anvil is said to be "stationary," and the slotted or recessed hammer to be "reciprocating." So in claim 1 of the original, the driver is said to be "reciprocating," and in claim 3 of the original the staple-support or anvil is said to be "stationary." In the description in the original specification, the anvil is described as being "a stationary anvil," and the hammer or driver as being "a reciprocating driver." In the specification of the reissue, the staple-support is described as being "a stationary anvil," and the driver or hammer as being "a reciprocating driver."
The file-wrapper and contents in the matter of the reissue are part of the evidence in the case, and throw light upon what should be the proper construction of claims 1 and 2. The application for the reissue was filed May 10, 1881. In the application as then presented eleven claims were proposed, the first and ninth of which were as follows:
"1. The staple-guide B, driving head A', operating therein, recessed bending block E, spring D, and knob G, combined and operating substantially as and for the purpose set forth."
"9. The combination of the anvil or driving head A' with the reciprocating slotted or recessed hammer, operating to insert a staple through layers of stock to be united, and simultaneously bend over the projecting ends, substantially as and for the purpose set forth."
On the 12th of May, 1881, the applicant cancelled claims 1 and 9, and converted claim 9 into a new claim 1, and claim 1 into a new claim 2, as follows:
"1. The combination of the stationary staple-support or anvil A' with the reciprocating slotted or recessed hammer, operating to insert a staple through layers of stock to be united, and simultaneously bend over its projecting ends, substantially as and for the purpose set forth.Page 603
"2. In a device for inserting metallic staples, the combination of the staple-guide B, anvil A, operating therein, spring D, recess F, and knob G, the whole arranged to operate substantially as and for the purpose described."
On the 14th of May, 1881, the examiner notified the applicant as follows: "Upon further consideration of this matter, in connection with amended specification, applicant is advised that the 1st clause of claim does not present an operative combination of mechanical devices for the purpose stated. It is obvious that without a staple-holding device the parts enumerated would be inoperative, in view of which a staple-holding device should be included. In reference to the 2d and 3d clauses of claim, the statement that the anvil operates in the guide-block is unwarranted, inasmuch as the anvil is stationary and the guide-block slides up and down upon the anvil. With proper correction as to this point, the 2d and 3d clauses of claim may be allowed."
On the 31st of May, 1881, the applicant adopted the suggestions of the examiner and amended claim 1 by inserting after the words "stationary staple-support or anvil A'," the words "and the sliding staple-guide B," and amended claim 2 by cancelling the words "operating therein," so that claims 1 and 2 then read as follows:
"1. The combination of the stationary staple-support or anvil A' and the sliding staple-guide B with the reciprocating slotted or recessed hammer, operating to insert a staple through layers of stock to be united, and simultaneously bend over its projecting ends, substantially as and for the purpose set forth.
"2. In a device for inserting metallic staples, the combination of the staple-guide B, anvil A', spring D, recess F, and knob G, the whole arranged to operate substantially as and for the purpose described."
On the 4th of June, 1881, the examiner notified the applicant as follows: "Upon further consideration of this matter, in connection with the last amendment, it is obvious that the `recess F' should not form an element of the mechanical combination, as such recess is a provision of the `hammer' referred to in the first clause of claim, and such recess is not an operative element independent of such hammer."Page 604
On the 14th of June, 1881, the applicant made further amendments, leaving claim 1 as last recited, and as it is found in the reissued patent, and amending claim 2, as last recited, by striking out the words "recess F," so that it read as follows:
"2. In a device for inserting metallic staples, the combination of the staple-guide B, anvil A', spring D, and knob G, the whole arranged to operate substantially as and for the purpose described."
On the 15th of June, 1881, the examiner notified the applicant as follows: "Upon further consideration of this matter, with a view to final action, the 2d clause of claim is found defective, in the absence of any mechanical combination between the `knob G' and the other elements included in the combination. To obviate this objection a `reciprocating driver' should be added to the combination."
On the 18th of June, 1881, the applicant amended claim 2 by substituting for the words "and knob G" the words "and reciprocating driver provided with the knob G," so that the claim, as thus amended, read as follows, the same as claim 2 in the reissued patent:
"2. In a device for inserting metallic staples, the combination of the staple-guide B, anvil A', spring D, and reciprocating driver provided with the knob G, the whole arranged to operate substantially as and for the purpose set forth."
From these proceedings in the Patent Office, in regard to the allowance of claims 1 and 2 of the reissued patent, it is apparent that the applicant carefully limited himself, in those claims, to a stationary staple-support or anvil and a reciprocating slotted or recessed hammer or driver. This result must also follow in view of the devices existing in the various prior patents introduced in evidence, showing the state of the art. The various elements entering into the combinations of claims 1 and 2 of the reissue were old, considered singly. The recessed clinching base was old; the driver in the staple case was old; the combination of those two devices in a power machine was old. The J.C. Smyth machine was a hand-lever machine, and contained in combination all the elements of the Heyl device,Page 605though differently arranged. In both the Smyth and the Heyl devices there are means of forcing out a staple from a case by a contained plunger, and bending the legs against a concave recess. In view of this Smyth machine, the plaintiffs' expert stated that the novelty of the Heyl devices consisted particularly "in the automatic adjustment to various thicknesses of paper, by means of which, without any added parts, the jaws are adapted to grip and hold all thicknesses of paper while being stapled and clinched; in their capacity for being opened to allow the eye to see the staple while being inserted by hand at the open end of the staple case, whereby a length of staple may be adapted or selected to suit the material; in the retracting spring to keep the staple case constantly open for a new staple; in a hand knob for driving down the plunger; and in the general construction and adaptation of all the parts to be used as a light, portable desk tool, low in price, simple in construction and operation, and of universal use."
In prior devices, the clinching part was the base and the inserting device was above it. This arrangement did not permit of the proper support of the staple in the tube. Heyl reversed the position of the parts, and placed the inserting device on the base, so that the staple could be inserted by hand into the open mouth of the tube, and be supported, until it should be driven, by the tube and its contained driver, this reversal of the parts necessitating the use of a spring underneath, to support the tube and keep it above the end of the driving blade, or of a spring at the side to press against the guide and keep it in place by friction. Claims 1 and 2 of the reissued patent must, therefore, be limited to the specific combinations and arrangements of parts described and shown in the specification and drawings, and enumerated in those claims. The staple-support or anvil must be stationary, and the slotted or recessed hammer or driver must be reciprocating.
In the defendant's device, called the "Victor tool," the anvil or staple blade is movable, and the recessed clinching base is fixed or stationary. It is a device constructed under and in accordance with letters-patent No. 218,227, granted to William J. Brown, Jr., August 5, 1879, and a second patent,Page 606No. 260,365, granted to the same person July 4, 1882. The drawings of No 260,365 are as follows:
[EDITORS' NOTE: FIGURES 1-4 IS ELECTRONICALLY NON-TRANSFERRABLE.]
An expert for the plaintiffs testifies, that he regards the lower part of the defendant's device, which is fixed or stationary and contains the clinching cavity, and resists the driving and clinching blow of the hand from the opposite part of the tool, as the equivalent for the "reciprocating driver provided with the knob G," mentioned in claim 2 of the reissue. As the defendant's tool is constructed with the stationary recessed clinching base made to rest upon a table, and to receive the impact from above of the detached driving tool, it is a misnomer to say that such stationary base is the mechanical equivalent of the reciprocating driver E of the Heyl patent. The patentee having imposed words of limitation upon himself in his claims, especially when so required by the Patent Office in taking out his reissue, is bound by such limitations, in subsequent suits on the reissued patent. Such have been the uniform decisions of this court, in like cases.Leggettv.Avery,101 U.S. 256;Goodyear Dental Vulcanite Co. v.Page 607Davis,102 U.S. 222,228;Fayv.Cordesman,109 U.S. 408;Mahnv.Harwood,112 U.S. 354,359;Cartridge Co. v.Cartridge Co.,112 U.S. 624,644;Sargentv.Hall SafeLock Co.,114 U.S. 63;Shepardv.Carrigan,116 U.S. 593;Whitev.Dunbar,119 U.S. 47;Sutterv.Robinson,119 U.S. 530;Braggv.Fitch,121 U.S. 478;Snowv.Lake ShoreRailway Co.,121 U.S. 617.
Assuming, therefore, that claims 1 and 2 of the reissued patent are valid, they are to be construed as covering only the precise combinations enumerated in them and described in the specification and shown in the drawings; and they do not cover the defendant's device, which has a stationary recessed clincher and a movable detached staple-inserting tool, because claims 1 and 2 of the reissued patent expressly call for a reciprocating clincher and a stationary staple-supporting anvil. Those elements, in those forms, in claims 1 and 2, were made necessary by the requirements of the Patent Office, before it would grant the reissue, and the applicant, having voluntarily made the limitations, is bound by them.
Although, in the proofs, the plaintiffs undertook to show that three other claims of the reissued patent, in addition to claims 1 and 2, were infringed by the "Victor tool," the Circuit Court, in its interlocutory decree, states that it considered only claims 1 and 2; and, as the decree holds those claims alone to be valid and to have been infringed, and the master's report and the final decree apply only to those claims, and the counsel for the plaintiffs does not contend, in his brief, that any other claim is infringed, we necessarily have confined our consideration of the case to those two claims, leaving all questions as to every other claim of the reissued patent entirely open for consideration in a case which may involve them.The decree of the Circuit Court is reversed, and the case isremanded to that court with a direction to dismiss the bill ofcomplaint.Page 608