BRILL v. ST. LOUIS CAR CO. et al., 90 F. 666

THAYER, Circuit Judge, after stating the case as above, delivered the opinion of the court. The trial court found, and its finding in that respect is not controverted by the complainant, that the infringing device of which complaint is made in the bill differs from the device described in complainant’s patent, No. 432,115, in that the housings or pedestals of the car axle-boxes in the infringing device do not extend to or below the bottom of said axle-boxes.

The trial court further decided that, upon a true construction of the patent in suit, claims 1, 3, 4, and 6, set forth in the statement, must be limited to a combination of parts, one element of which, -to wit, the housings of the axle-boxes, is so constructed as to extend to or below the bottom of said axle-boxes. In consequence of this construction of the patent, it followed, of course, that the defendants were not guilty of an infringement. We are of opinion that the patent was properly construed by the trial court in the respect last stated, and that the charge of infringement whs not sustained.

In every instance where the housings of the axle-boxes are specifically described in the specification of letters patent No. 432,115, they are described as extending down “to or below the bottom of the axle-boxes”; and the same language is repeated substantially in the claims now under consideration, except the third and sixth.

It also appears from the testimony that in order to obtain the patent in suit the pat-entee was compelled to modify his original claims for which claims 1 and 4 are a substitute, by inserting the limitation with respect to the housings, that they extended to or below the bottom of the axle-boxes. The original claims, for which claims 1 and 4 appear to have been substituted, contained no such limitation.

The patent office rejected the original claims, pointing out that as drawn they covered a combination which was anticipated by prior patents, to wit, patents Nos. 389,468 and 402,890, which were issued respectively to W. S. G. Baker on March 12, 1889, and to S. A. Bemis and L. Pfingst on May 7, 1889, whereupon the complainant amended his specification and original claims so as to make it appear that the housings therein claimed extended to or below the bottom of the axle-boxes. When thus differentiated from the prior art, the patent was allowed containing claims 1 and 4 in their present form.

In view of this amendment of the specification and claims to meet the objections of the patent office, it is clear, upon the authorities, that the patentee cannot now be heard to assert that the amendment was immaterial, and that his claims cover housings or pedestals which do not extend to or below the bottom of the axle-boxes. He is not at liberty to insist upon a construction of his claims which will cover a method of constructing the housings which he was required to abandon or disclaim for the purpose of obtaining favorable action on his application.

It is immaterial, we think, whether the patent office was right or wrong in rejecting the complainant’s original claims on the ground that the invention therein described was anticipated by the prior art. By amending his specification and claims the complainant admitted, in effect, that some limi-taüons were necessary; and it is now too late to assert that he was entitled to Ms original claims, or that the claims as finally allowed are as broad as the original claims. Sutter v. Robinson, 119 U. S. 530, 7 Sup. Ct. 376; Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. 493; Erie Rubber Co. v.

American Dunlop Tire Co., 28 U. S. App. 470, 515-517, 16 C. C. A. 632, aud 70 Fed. 58, and cases there cited.

In the sixth claim oí (he patent the housings or pedes ¡ais are not specifically described as extending to or below the bottom of the axle-boxes, but in view of the prior art, and the ad ion of the patent office to which we have already alluded, we think that this limitation must necessarily be read into the sixth claim, and that the housings and pedestals therein referred to are no other than those described in claims 1 and 4. and in the specification; that is to say, we are of the opinion that the “yoke-shaped axle-box pedestals, C,” referred to in the sixth claim, are the pedestals which are in every instance described in the specification as extending to or below the bottom of the axle-boxes.

The words “substantially as set forth,” with which this claim concludes, refer to the specification, and malee the description of the housings therein contained an essential part of the claim. “General language in a claim which points to an element or device more fully described in (he specification is limited to such an clement or device as is there described.” Adams Electric Ry. Co. v. Lindell Ry. Co., 40 U. S. App. 482, 512, 23 C. C. A. 223, and 77 Fed. 432, 449; Mitchell v. Tilghman, 19 Wall. 287; Stirrat v. Manufacturing Co., 27 U. S. App. 13, 47, 10 C. C. A. 216, and 61 Fed. 980.

Claim 3 of I he complainant’s patent, which covers the frame, I), having axle-box pedestals with lower open ends, in combination with the axle-boxes, is, in our judgment, anticipated by the method of constructing the trucks of a street steam car which is shown by United States letters patent No. 48,008, which was issued to Joseph P. Wood-bury on May 30, 1865. This patent was offered in evidence by the defendants, together with several other patents, in support of the plea of anticipation; and, in our judgment, it discloses the exact combination covered by the complainant’s third claim.

As no other error has been assigned, except the failure of the lower court to enter a decree for the complainant sustaining the validity of claims 1, 3, 4, and 6, it follows from what has been said that the decree must be affirmed, and it is so ordered.