THOMAS v. ROCKER SPRING CO., 77 F. 420

TAFT, Circuit Judge (after stating the facts as above). If the specifications and claims of the patent were to be given effect without regard to the history of the art or the proceedings in the patent office, it might be conceded that the defendant’s device would come within the, scope of complainant’s monopoly. We must, however, use both aids in construing the patent.

It is claimed that the essence of complainant’s patent is the iise of a strong spiral spring rigidly attached to the rockers and base, to assist and resist the rocking motion of a rocking chair, and to keep the rockers in proper alignment with the base on which they rock without the aid of stops or other devices.

It is conceded that before this invention spiral springs had been used to connect the rockers with the base of a rocking chair, but it is said that the springs had never been made strong enough, and had never been rigidly enough secured to the rockers and base, to keep the rocker in proper alignment without the use of stops or other devices. It must be admitted from this statement of complainant’s invention that it covers quite a narrow field.

The strengthening of the spring, and the increase of rigidity with which it was attached to the rockers and base, may have involved invention, bnt it so nearly resembles a more increase in the physical strength of an already suggested means of performing a known function that it is certainly not a pioneer or primary invention, or one the scope of which the. courts would be inclined to enlarge beyond what is exactly shown in tin; patent. It is not a patent in the construction of which anv liberal doctrine of equivalents will be applied.

The history of the proceedings in the patent office, and the direct evidence of one of the inventors himself, convince ns that when The patent was applied for the inventors had no idea of applying the spiral spring to a platform rocker. They were engaged in perfecting an office tilting and revolving chair. They had first invented a chair in which a spiral spring formed the sole support of the spider and seat, and then, to prevent lateral motion in this chair, they inclosed the spring in a small rocker box, the spring still remaining the main support of the spider seat and occupant.

For four years they pressed for a patent, for such a device. Their main invention embraced a single spring placed beneath the <*,enter of the chair, and forming part of the pivotal bearing on which the seat moved. The suggestion of two springs was merely incidental as a substitute for one spring, and they were manifestly intended to be used in the same way at the chair center.

It is very certain that the Connollys never put spiral springs on a platform rocker, and never claimed to have invented such a use, although it appears by Bunker’s affidavit that even before they filed their specification, in 1880, more than 1,400 were in use, and many thousands were manufactured and sold during the four years they were pressing for a patent.

In 1884, when the inventors sold the invention, those who bought seemed to have more ambitious views of the extent of the invention, and at once attempted to enlarge its scope by securing a patent on the use of two springs like those shown in the patent, but without a rocker box, and at a considerable distance apart on platform rockers.

It may be conceded for the purpose of the argument that it was within the right of the inventors, pending the consideration of their specification, to enlarge their original claims to cover every improvement lurking in their invention, even though, when ihey first filed their specifications and claims, they may not have realized the wider application of their discovery.

Bnt it is manifest from the lilt* wrapper that the patent-office examiners charged with the duty of limiting claims to what was really invented either did not think that this might be done, or else considered that the actual invention was limited to the exact form of device shown in the original drawings. In any event, the examiner was of opinion that the invention could not cover the application of spiral springs to the platform rocking chair. Thus he expressly ruled, and fortified the ruling by a very full discussion of his reasons therefor.

Xot only did he express this opinion, but he expressly adjudicated the point; for, when the inventors applied for claims which in terms covered platform rocking chairs, he, rejected those claims on the ground that the inventors had made no invention for such chairs, and required the applicants not only to strike out the claims, but also to strike out new drawings designed to show the application of spiral springs to platform rocking chairs, and to restore the original drawings of a tilting and revolving chair, and to reinsert in the specifications words of description winch could relate only to such a chair.

This decision was never reconsidered, and we find the examiner insisting on these insertions until the last. Instead of retaining platform rocking cnairs in their claims, the applicants then returned to the phrase used in the original application of “tilting or rocking chair,” and the claim made by complainant was that “rocking chair” included all rocking chairs, — platform rockers as well as revolving or tilting rockers.

In view of the original drawings and the ruling of the patent office, however, we are of opinion that the term “tilting and rocking chair” was and is to be construed as meaning “tilting and rocking chair,” and as not including ordinary platform rockers, which are never known as tilting chairs.

It is clear that what the applicants did was to interpose between the spider of a revolving chair seat and the spindle small rockers to guide the movement of the seat unon the tilting spring, and ihev therefore called their chair “a tilting or rocking chair.” When it was objected by the patent office that patents for platform rocker chairs were anticipations, the Connolly brothers sought to avoid the references by changing the name to that of “a tilting chair,” and then to that of “a tilting and oscillating chair,” to show that they had never intended to cover a platform rocking chair, and had not used the term “tilting or rocking chair” with such an intent.

Subsequently, the assignees of Connolly brothers manifested a desire to give the words “tilting or rocking chair” a wider meaning. It is true that in the specifications, as allowed, the patentees were permitted to introduce the description of the tilting and revolving chair shown in the d cawiugs as only one illustration of the invention, and to say, at the close of the specifications, that they were not limited to special forms of construction, and to state the essence of the invention in a broad way; and it is also true that the claims allowed were not specifically limited to a particular kind of a chair.

But the evident purpose of the patent office in requiring the specifications and drawings to be made like the original specifications, and in rejecting claims for platform rocking chairs, was that everything in the claims should be limited by the only form of chair and only application of the spiral spring shown by the drawings and specification. The range of equivalents permissible under general language of the specifications is, therefore, to be limited to the use of a spiral spring in a chair with a tilting and revolving seat and a stationary base.

It is well settled that where the patent office rejects a claim covering a certain device on its merits, and such rejection is acquiesced in, and the patent issues, the applicant cannot afterwards be allowed a construction of the claims allowed wide enough to embrace the claim which was rejected. In Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U. S. 425, 429, 14 Sup. Ct. 627, 629, Mr.

Justice Brown, speaking for the supreme court, in considering the contention that a claim should have a certain construction, said; “15m Pm patentee having once presented his claim in that form, and the patent cilice having rejected it, and he having acquiesced in such rejection, he is, under the repeated decisions of this court, now estopped to claim the benefit o£ his rejected claim, or such a construction of his present claim as would be equivalent ihereto. Leggett v. Avery, 101 U. S. 256; Shepard v. Corrigan, 116 U. S. 593. 6 Sup. Ct. 493; Crawford v. Heysinger, 123 U. S. 589, 606, 8 Sup.

Ct. 399: Union Metallic Cartridge Co. v. United States Cartridge Co., 112 U. S. 624, 5 Sup. Ct. 475. It is true, there were eases where the original claim was broader ilmn the one allowed, hut the principle is the same if the rejected claim be narrower.” It will be seen from this passage that complainant cannot avoid the effect of the rejection of a claim for the use of its device on platform rockers by the contention that the claim which was subsequently allowed was even broader than a claim specifically em bracing that kind of a chair.

Moreover, as we have already said, the rejection and the reasons for it never having been withdrawn, the course of the patent office in allowing the claims as if did is the strongest evidence that, with the changed specifications, it re garded fhe claims allowed as limited to the chair shown in the specif! cations. We come now to the novel question presented in this case.

It is argued, and the circuit court held, that because the applicants, after the rejection of the claims, and after inserting the required limitations in fhe specifications, protested that the examiner was wrong in rejecting the claims, and advised him that they proposed to insist on a construction of claims as amended to cover the same ground as the rejected claims, the ruling of the patent officii is not to be given the same effect as it would otherwise have.

It seems to be contended that an apjdicant can qualify or minimize the effect of his acquiescence in the rejection of a claim by stating to the uiHcnt office that ii is not an acquiescence, and that lie expects to insist upon his right to cover the same ground as the rejected claim covered, under other and amended claims. We are clearly of opinion that lie cannot thus destroy the effect of a patent-office ruling. If he dissents from it, he should appeal from the ruling.

In this case, if, as the applicants continued to assert in their letters to the patent office, they proposed to claim that their invention covered spiral springs used in the platform rocking chairs, they should have carried the question of their right to do so on the occasion of the rejection of the specific claim therefor to the successive appellate tribunals in the patent office, and thence, if necessary, by appeal into court. Not having done so, they must be taken as having acquiesced in the rejection; there is no middle ground.

Because of this acquiescence the patent of complainant cannot be construed to embrace any combination of spiral springs with, the rockers of platform rocking chairs. The decree of the court below is therefore reversed, with directions to dismiss the bill.