Yale Lock Mfg. Co. v. Berkshire Nat'l Bank, 135 U.S. 342 (1890)

U.S. Supreme Court

Yale Lock Mfg. Co. v. Berkshire Nat'l Bank, 135 U.S. 342 (1890) Yale Lock Manufacturing Company v. Berkshire National Bank

Nos. 261, 262

Argued April 11, 14-15, 1890

Decided May 5, 1890

135 U.S. 342

APPEALS FROM THE CIRCUIT COURT OF THE UNITED

STATES FOR THE DISTRICT OF MASSACHUSETTS

Syllabus

Claim 3 of reissued letters patent No. 7947, granted November 13, 1577 to James Sargent, for an "improvement in combined time lock, combination lock, and bolt work for safes," the original patent, No. 195,539, having been granted to Sargent, September 25, 1877; namely,

"3. The combination, with the bolt work of a safe or vault door, of a combination or key lock controllable mechanically from the exterior of said door, with a time lock having a lock bolt or obstruction for locking and unlocking controllable from the interior of the door, both of said locks being arranged so as to rest against or connect with the bolt work, the time lock being automatically unlocked by the operation of the time movement, both of said locks being independent of each other, and arranged to control the locking and unlocking of the bolt work, so that said safe or vault door cannot be opened when locked until both of said locks have been unlocked or have released their dogging action, to enable the door to be opened, substantially as described,"

is invalid because the specification of the original patent was not defective or insufficient, and the patent was not inoperative, and the sole object of the reissue was to obtain claim 3 as an enlarged claim, and the proceedings in the Patent Office prior to the granting of the original patent show that Sargent abandoned that claim, and because, although the reissue was applied for only thirteen days after the granting of the original patent, there was not a clear mistake, inadvertently committed, in the wording of a claim.

Claims 1 and 7 of reissued letters patent No. 5550, granted to the Yale Lock Manufacturing Company, January 21st, 1879, for an "improvement

Page 135 U. S. 343

in time locks," the original patent, No. 146,832, having been granted to Samuel A. Little, as inventor, January 27th, 1874, and having been reissued as No. 7104, to that company, May 9th, 187G, and again reissued to it, as No. 8035, January 8, 1878, namely,

"1. The combination of independent multiple bolt work with the time mechanism and locking or dogging mechanism of a time lock, automatically both clogging and releasing the bolt work at predetermined times, substantially as described."

"7. In a time lock, the combination, substantially as above set forth, of the time movements and two adjustable devices, one for determining the time of locking and the other of unlocking,"

are invalid because the original patent was not inoperative or invalid by reason of a defective or insufficient specification within the terms of the statute, so as to warrant the reissues, and because the claims are enlarged, and because of the unexcused delay of more than two years in applying for a reissue, and because the claims were formally abandoned during the proceedings in the Patent Office.

In equity. The case is stated in the opinion.

MR. JUSTICE BLATCHFORD delivered the opinion of the Court.

This is a suit in equity brought January 29, 1879, in the Circuit Court of the United States for the District of Massachusetts by the Yale Lock Manufacturing Company, a Connecticut corporation, and James Sargent and Halbert S. Greenleaf, composing the firm of Sargent & Greenleaf, against the Berkshire National Bank, a national banking corporation doing business at North Adams in Massachusetts. The suit was brought for the infringement of two reissued letters patent. One of them is reissue No. 7,947, granted November 13, 1877, to James Sargent, as inventor, for an "improvement in combined time lock, combination lock, and bolt work for safes," on an application filed October 8, 1877; the original patent, No. 195,539, having been granted to Sargent, September 25, 1877. Only claim 3 of reissue No.

Page 135 U. S. 344

7,947 is alleged to have been infringed. The other reissue is No. 8,550, granted to the Yale Lock Manufacturing Company, January 21, 1879, on an application filed October 14, 1878, for an "improvement in time locks;" the original patent, No. 146,832, having been granted to Samuel A. Little, as inventor, January 27, 1874, and having been reissued as No. 7,104, to the Yale Lock Manufacturing Company, May 9, 1876, and again reissued to that company, as No. 8,035, January 8, 1878. Only claims 1 and 7 of reissue No. 8,550 are alleged to have been infringed.

After the filing of the bill, and by agreement of the parties, Joseph L. Hall, of Cincinnati, Ohio, was admitted as a defendant. An amended bill was filed, and the bank and Hall answered it. As to both reissues, the answer denied that before they were granted, the patents were inoperative by reason of a defective or insufficient specification; that any errors arose by inadvertency, accident, and mistake; that any reissues were necessary or are valid, and that the reissues were for the same inventions as were shown and described in the original patents. It also set up want of novelty and noninfringement.

After replication, proofs were taken on both sides and the case was heard in the circuit court by Judge Lowell. His opinion is reported in 17 F. 531. He held that claim 3 of the Sargent reissue, No. 7,947, was invalid, and ordered a decree for the plaintiffs as to claims 1 and 7 of the Little reissue, No. 8,550. On the 14th of August, 1883, an interlocutory decree was entered, adjudging reissue No. 8,550 to be valid, as to claims 1 and 7; that the defendants had infringed those claims, and ordering a reference to a master to take an account of profits, and to report damages. In July, 1884, the defendants were allowed to amend their answer by setting up an additional anticipation of the Little patent, proofs were taken thereon, and the case was reheard before Judge Colt on the new evidence. He affirmed the former decree in an opinion reported in 26 F. 104.

The master reported $60 damages in favor of the plaintiffs, and both parties excepted to the report. A final decree was

Page 135 U. S. 345

entered on the 12th of February, 1886, confirming the report, overruling the exceptions of both parties, and adjudging a recovery in favor of the plaintiffs for $60 damages and certain costs, dismissing the bill as to the Sargent reissue, No. 7,947, and awarding a perpetual injunction as to claims 1 and 7 of the Little reissue, No. 8,550. From this decree both parties have appealed. Joseph L. Hall having died, his executors and trustees have been made parties in his place.

The respective specifications and claims of the original Sargent patent, No. 195,539, and of its reissue, No. 7,947, are set forth below, the parts in each which are not found in the other being in italic. The drawings are the same in both.

[Page numbering for pages 346 through 370 omitted because of columnar formatting.]

"Original patent, No. 195,539"

"Be it known that I, James Sargent, of the City of Rochester, in the County of Monroe and State of New York, have invented a certain new and useful improvement in locks, and I do hereby declare that the following is a full, clear, and exact description of the construction and operation of the same, reference being had to the accompanying drawings, in which figure 1 is an elevation of my improvement applied to a safe door. Fig. 2 is a section of the bolt of the time lock. Fig. 3 is an inside view of the same. Fig. 4 represents detached views of the dial and escape wheel. Fig. 5 is a bolt constructed as integral with the holding latch."

"My improvement relates to that class in which two independent locks are employed

Page 135 U. S. 346

upon a safe, vault, or other door for the purpose of preventing the unlocking of the door bolts until both locks have been unlocked. Combination or key locks have only heretofore been used for this purpose, so far as I am aware. As such locks are set on combinations or operated by means of keys, burglars can force the holders of the combination or key to unlock the door, and hence such locks are not a perfect safeguard against robbery. Clock locks have also been used upon doors for the purpose of opening the door only at a determined hour, thus placing it beyond the power of any person to open the door until that hour arrives, but, so far as I am aware, such locks have either been used singly on a door -- in which case, when the lock releases the bolt or other fastening, the door is unlocked, and may be opened by anyone -- or else a time movement has been combined directly with a lock in such a manner that the two really constitute but a single lock, in which case, if violence is applied to the lock, it at once destroys the efficiency of the time movement."

"My invention consists primarily in the combination with the door bolt of a clock lock and a combination or key lock applied separately upon the door, having each an independent action, whereby the clock lock will not release its bolt until a certain determined hour, and when it does release its bolt, the combination or key lock still remains locked and secures the door."

"My invention further consists in combining a clock lock with a combination or key lock, both constructed to be applied on a safe, vault, or other door, to operate in connection with the bolt work of such door, said clock lock being provided with a lock bolt constructed with an opening or offset, which is automatically brought in and out of coincidence with the tongue of the door bolt in such a manner that the door bolt may be retained in an unlocked condition for shutting, and prevented from being withdrawn when locked until both locks have been unlocked, the prime object being that each lock shall have an independent action, so that the clock lock will not release the bolt until a certain determinate hour, and when it does release its bolt, the combination

Page 135 U. S. 347

or key lock still remains locked and secures the door."

"A represents the combination or key lock, and B the clock lock. These locks are provided with bolts C, D, of any desired kind, against which strike the studs, a a', of the tie piece, E. When the locks are locked, the bolts hold said studs out, and both locks have to be unlocked to allow the door bolt to retract."

"The locks, A, B, are separate and independent of each other, and complete in themselves, and may be located at any position on the door. The combination or key lock will naturally be located in line with the spindle that operates it, but the clock lock may be placed anywhere where space is best found for it on the door, and the stud, a', of the door bolt, which connects with it, may be lengthened, bent, or otherwise arranged to rest against the lock bolt, in whatever position it may be, as shown in Fig. 1."

"In locking the safe or vault door, some device is necessary to allow the door bolt to remain back in the unlocked position until the door is closed, without interfering with the clock lock."

"In Fig. 1, the bolt, D, of the clock lock is constructed in two

Page 135 U. S. 348

parts, D1 D2, turning independently on the same bearings, c. The inner part, D2, has the socket, d, into which the stud of the door bolt enters in drawing back. It is connected to the outer part, D1, by a coiled spring, f, Fig. 3, resting in a cavity in the side of the outer part. The outer part is also connected by a similar coiled spring, g, with the fixed bearing, c. Instead of the spring, g, it may have a counterweight, g', Fig. 5. The spring, g, causes the outer part, D1, to turn back or fall, so that the socket, d, of the inner part, comes in position to allow the stem, a', of the door bolt to enter therein. When this is done, the outer part is turned up to engage the dog (presently to be described), while the inner part remains stationary, on the stem of the door bolt. The door is then shut, and the door bolt thrown out, and the tension of the spring, g, causes the part, D2, to turn when released, thereby locking the door bolt. The parts, D1 D2, are provided with suitable stops, by which the motion is gauged to bring the socket of the part, D2, in proper position in its throw."

"The device above described forms a part of the clock lock, being the bolt of the same. In Fig. 1 is shown another device for the same purpose, situated outside the lock, which is the subject matter of a separate application. It consists of a socket or bearing, h, attached to the tie piece, E, of the door bolt, and sliding on an independent stud, a', resting against the lock bolt. A spring locking-pin, i, is used to connect the parts when the door bolt is thrown forward to connect with the jamb. In this case, the lock bolt, D, may be made solid, and may be either of the turning or sliding kind."

"G is a dog for holding the lock bolt, D, up in the locked position. It turns on an axis, k, and its point engages under a stop, l, preferably a roller, of the bolt when the latter is raised. It is held in engagement by a light spring, j. The dog has two branching arms, m m, projecting inward over the faces of the dial wheels, H H. The dial wheels have pins, n n, projecting out from their faces, and when they or either of them strike the levers, m m, they release the dog from its engagement with the bolt, and the latter turns back or falls, thereby unlocking the lock, as before described."

"I prefer to use two independent time movements or clocks, each connected with and operating one of the dial wheels, H, so that if one movement should accidentally stop, the other would be sure to unlock the lock."

"The dial wheels are indexed or marked with a scale of hours from 0 to 48, or any other number corresponding with the longest interval the lock is to remain locked at one time -- say from Saturday night to Monday morning. This scale is used in conjunction with a pointer, e, at the top of the wheel. In setting the lock, the dial wheels are moved backward from 0 to any number in the scale that will indicate the number of hours the safe or vault is to remain closed, and the pins, n n, must be so located with reference to the scale as to strike the levers, m m, and release the bolt, when the 0 mark comes forward to the pointer. The time movements or mechanism may be of any ordinary construction to measure time."

"Each of the dial wheels, H H, is cogged, and engages with the arbor, o, of the mainspring barrel either directly by means of the pinion, p, attached to said arbor, or through intermediate gearing. The arbor, o, is the stem by which the clock is wound."

"When the clock is finished, it is fully wound up before the dial wheel is adjusted in place. The motion is then imparted to the dial wheel, which runs forward to unlock the lock, and in moving the dial wheel back to reset the lock the clock is rewound."

"The dial wheel is turned back to reset the lock by a key applied at the winding arbor, o."

"By the means above described, I obviate a great objection to common clock locks, which run on until they run down, thus subjecting the lock to the danger of being locked in by neglect of winding. By this means, the lock cannot be reset without winding, for the pins, n n, resting in contact with the levers, m m, prevent the dog, G, from being engaged with the bolt until the dial wheels have been moved back, as described. The relocking of the lock therefore requires rewinding of the clock as a necessity."

"On the back of the dial wheel, H, is a pin, r, Fig. 4, forming a stop. On the pallet, s, which engages with the scape wheel, t, is a pin, u, which projects out through a slot v, of the stationary clock frame. As soon as the dial wheel has acted upon the lever, m, to unlock the lock, the pin, r, of the dial wheel strikes the pin, u, of the pallet, and locks the latter in the scape wheel, thereby stopping the clock. There is therefore no loss of motion, nor can the dial wheel get out of position with respect to the pointer."

"By combining an independent clock lock and combination or key lock with the door bolt, as described, I produce an effect which cannot be produced by a clock lock alone, or by two or more combination locks together. The clock lock serves as a safeguard by night, and the combination lock by day. If the holder of the combination is forced to open the combination lock at night, the clock lock remains intact, and cannot be opened by the burglars or the holder of the combination. On the other hand, when the clock lock releases its bolt in the morning, the combination lock still remains locked, and burglars cannot make an entrance to the safe. Such results cannot be accomplished by a clock lock alone, because when it releases its bolt, the safe is absolutely unlocked; nor by two or more combination locks together, because the holders of the combination may be taken to the bank and forced to open the lock. Neither can tampering with the combination lock affect the clock lock."

"The combination lock may be punched from place, but the clock lock, being separate and independent from it and having no opening through the door, cannot be affected. It is therefore superior to a lock which has the time movement combined directly with the combination lock, both forming one lock, in which case any violence to the lock work disarranges the clock. Another advantage of this invention is the capability of the separate locks of being applied on different parts of the door indifferently. The bolt work on different doors is frequently such that the two locks cannot be applied together. The clock lock in such case may be attached at the most convenient location, as before described. It can also be applied with facility on old safes having the combination or key lock already on, thus securing the advantage of a clock lock and combination lock without the necessity of removing the old lock and substituting a new one having a time movement combined directly with the lock."

"I do not claim, broadly, a clock lock; nor do I claim two or more combination locks combined with the door bolt; but"

"I claim --"

"1. The combination, with a door bolt, E, of a clock lock, B, and a combination or key lock, A, applied independently on a safe, vault, or other door, so as to rest against or connect with said door bolt, and "

provided with a device whereby the door bolt may be retained in the unlocked position for shutting the door, the whole arranged so that the door bolt cannot be withdrawn when locked until both locks have been unlocked.

"2. The combination of a clock lock and a combination or key lock, both constructed to be applied on a safe, vault, or other door, so as to rest against the door bolt, and provided with a lock bolt having an opening or an offset, which is automatically brought in and out of coincidence with the tongue of the door bolt, whereby the door bolt may be retained in the unlocked position for shutting the door, and prevented from being withdrawn, when locked, until both locks have been unlocked."

"Reissue No. 7947"

"Be it known that I, James Sargent, of the City of Rochester, in the County of Monroe and State of New York, have invented a certain new and useful improvement in combined time locks, combination locks, and bolt work for safe and vault doors, and I do hereby declare that the following is a full, clear, and exact description of the construction and operation of the same, reference being had to the accompanying drawings, in which figure 1 illustrates a portion of a safe or vault door having thereon a time lock and a combination lock, both of said locks being represented in a locked condition, with the bolt work projected and locked. Fig. 2 illustrates one form of lock bolt or obstruction for use in a time lock. Fig. 3 illustrates an inside view of said lock bolt or obstruction. Fig. 4 represents detached views of the pallet and escape wheel, and a portion of one of the revolving dials. Fig. 5 illustrates another form of lock bolt or obstruction for use in connection with the time lock for admitting of locking or unlocking of the bolt work."

"My invention consists first, in the combination with the bolt work of a safe or vault door, of a time lock and a combination or key lock, both constructed to be applied on a safe, vault, or other door, so as to rest against or connect with the bolt work on said door, and provided with a device whereby the bolt work may be retained in the unlocked position for shutting the door, and be automatically locked by the lock bolt or obstruction of the time lock, and mechanically by the combination or key lock, the whole so arranged that the bolt work cannot be withdrawn when locked till both locks have been unlocked; second, in the combination of a time lock and a combination or key lock, both constructed to be applied on a safe, vault, or other door, so as to rest against the bolt work, each of said locks being provided with a lock bolt or obstruction, that of the combination lock or key lock being of the usual construction, while that of the time lock has an opening or offset, which is automatically brought into and out of coincidence with the tongue of the bolt work, whereby the bolt work may be retained in the unlocked position for shutting the door, and prevented from being retracted when locked, until both locks have been unlocked; third, in the combination, with the bolt work of a safe or vault door, of a combination lock, controllable mechanically from the exterior of said door, with a time lock, controllable automatically for unlocking by the operation of its time mechanism, both of said locks arranged to control the locking and unlocking of the bolt work, so that said safe or vault door cannot be opened when locked until both of said locks have been unlocked or released their dogging action to enable the door to be opened, substantially as hereinafter described."

"The construction and arrangement of the time lock will be more fully hereinafter described, but it is evident that any form or construction of a time lock may be used as a part constituting one element of the combination called for in my claims."

"Combination or key locks have heretofore been used by bankers and others for the purpose pose of preventing the unlocking of the bolt work of a safe or vault door, but as such locks are 'set on' combinations, or operated by means of keys, burglars can force the holders of the 'combination' or key to unlock the combination lock or locks, and thus admit of the bolt work being retracted, and the door thrown open. Therefore such locks are not a safeguard against robbery."

"Clock locks have also been used upon safe or vault doors for the purpose of opening the door at a predetermined hour, thus placing it beyond the power of any person, until the arrival of the appointed time, to open the door; but, as far as I am aware, such clock locks have either been used singly on a safe door, so that, when said lock released the bolt work or other fastening of the said door, it was unlocked, and the door could be opened by anyone, or, in another instance, when a time movement had been combined with a combination lock in such a manner that the two really constituted but a single lock, the time mechanism constructed and provided with a lever to engage with the fence or dog of the combination lock, so that the entire mechanism of the time movement and combination lock really constitute but a single lock, as aforesaid, the result being that, if violence be applied to such a lock through the dial spindle or otherwise, the efficiency of the time movement will be destroyed."

"Referring to the drawings, the letter A designates a combination or key lock, and B the time lock. These locks are illustrated as being upon a portion of a safe or vault door, with the bolt work projected and locked, the lock bolts or obstructions being in locked position. The lock bolts or obstructions, C D, are, in the present example, shown as being constructed each with a notch or recess, so that, when said notches or recesses are brought in line with the tongue pieces or studs, a, a', arranged upon the carrying bar, E, of the bolt work, they (the said tongue pieces or studs) can, by a movement of the bolt work, be made to enter said notches or recesses, and thus the bolt work can be retracted, and the safe or vault door thrown open. When the bolt work is projected or cast so as to lock the safe or vault door, the lock bolts or obstructions can be brought into a locked position, the lock bolt or obstruction of the combination lock being placed in a locked position by mechanically operating the dial spindle, which controls the movements of the tumblers and other portions of the lock, while the lock bolt or obstruction of the time lock will automatically bring itself into a locked position after the door is closed, whereby the door of the safe or vault will be locked and guarded by two locks, one of which is operated from the exterior mechanically, while the other operates on the interior automatically, there being no hole through the door whereby it might be operated upon by any mechanical means."

"The combination lock and the time lock are separate from each other in performing their office or function with respect to the bolt work on the safe or vault door, and each of said locks should be complete in itself, and so constructed that they may be placed at any position on a safe or vault door."

"The combination or key lock should be located in line with the dial spindle or key which operates it, but the time lock may be located anywhere on the safe or vault door where sufficient space is present for it, and the tongue pieces or studs on the carrying bar of the bolt work may be of any required length, bent or otherwise arranged so as to connect with or rest against the lock bolts or obstructions, when the latter is moved to the proper position for obstructing or dogging the bolt work, and prevent its retraction or unlocking, thus retaining the door in a locked position until both locks have been unlocked."

"When it is desired to lock or fasten the bolt work of the safe or vault door by means of a combination lock and a time lock, some mechanical arrangement or device should be employed to enable the lock bolt or obstruction of the time lock to be set or adjusted while the safe door is open, and the bolt work in a retracted or unlocked position, so that the door can be closed to admit of the bolt work being projected or cast. The lock bolt or obstruction will, as hereinafter set forth, present its lock bolt or obstruction automatically, thus securing the door in a locked position until the arrival of the time determined by the time mechanism or register at which time the lock bolt or obstruction will be automatically moved and brought into a position for admitting of the releasing and unlocking of the bolt work, so that said door can be opened."

"To accomplish such mechanical arrangement or device in the time lock, a lock bolt or obstruction is employed in the time lock itself, or by means of an adjustable tongue-piece or stud connected with the carrying bar of the bolt work, such for instance, as those illustrated in Figs. 1, 2, 3, 5, of the accompanying sheets of drawings."

"The lock bolt or obstruction, D, illustrated in Figs. 1, 2, and 3, is one of the devices that should be employed to enable the time lock to be set while the bolt work remains in a retracted or unlocked position, so that the bolt work will remain in such retracted position without interfering with the time lock; the combination lock, of course, during such intervals, being in an unlocked position, and through such mediums the bolt work, when projected for closing the door, will be held in a locked position by the automatic movement of the lock bolt or obstruction of the time lock, and by the lock bolt of the combination lock, which is brought into a locked position by the mechanical operation of the dial spindle."

"The lock bolt or obstruction of the time lock is constructed"

in two parts, D1,\ D2, adapted to turn independently of the other on the same bearing c. The inner part, D2, has a notch or recess, d, into which the tongue piece or stud on the carrying bar enters when the bolt work is retracted, so as to open the safe or vault door if the combination lock be unlocked. The said inner part, D2, is connected to the outer part, D1, by a spring, f, resting in a cavity or recess in the side of the outer part. The outer part, D1, is also connected by a spring, g, with the bearing, c. The spring, g, being connected with the outer part, D1, and with its bearing, c, causes the outer part, D1, to be moved or turned on its axis, so that the notch, recess, or offset, d, of the inner part, D2, is brought into a position to allow the tongue or stud, a', of the carrying bar to enter it, and thus the bolt work can be retracted, and when so retracted the outer part, D1, is turned or moved, and made to connect and engage with the portion of a yoke, while the inner part, D2, remains stationary, being prevented from moving or turning on its axis by the tongue piece or stud on the carrying bar resting in the notch or recess of the part, D3, of the lock bolt or obstruction.

"The parts constituting the lock bolt or obstruction, and forming a part of the time lock, being thus constructed, arranged, and adjusted, the time mechanism having been previously wound, and the dials set for a certain predetermined time, the bolt work is projected or cast, when the lock bolt or obstruction of said time lock will automatically be brought into a locked position, and the door of the safe or vault securely guarded by a combination lock, if it be locked, and a time lock, and the bolt work be prevented from being retracted, or the safe or vault door opened, until both locks have been unlocked."

"The parts, D1, D2, composing the lock bolt, or obstruction, are supplied with suitable stops, by which their motion or throw is limited so as to bring the notch recess or offset of the part D2 in proper position in its rotation to coincide with the tongue piece or stud on the carrying bar of the bolt work."

"In lieu of forming the lock bolt or obstruction in two parts, as above described, it has been found eminently practical and successful to employ a lock bolt or obstruction made in a single piece, or as an integral. Such a lock bolt or obstruction is shown in Fig. 5 of the drawing, and, as it will be perceived, it is constructed with a notch, recess, or offset, to admit of a tongue piece or stud entering it when the bolt work is retracted for unlocking the safe or vault door, and said lock bolt or obstruction is likewise provided with an arm, g', having a pin or stud connecting or engaging with a yoke in such a manner that when said arm and yoke are in connection the lock bolt or obstruction will be placed so as to prevent the retraction of the bolt work, and when said arm and yoke are disconnected through the medium of revolving dials, to be hereinafter mentioned, the lock bolt or obstruction will be automatically brought to a position for allowing the bolt work to be retracted, and such automatic movement of the lock bolt or obstruction is due to the action of the arm, g', acting as a counterweight."

"When a lock bolt or obstruction of the character last described is employed, some provision must be made for adjusting and setting the time lock, or the lock that measures time, prior to closing the safe or vault door, and this must be accomplished while the bolt work is in a retracted position; therefore, to enable such to be done, there is arranged on the carrying bar of the bolt work a socket or bearing, which is provided with a movable tongue piece and a spring bolt, constructed and arranged in such a manner that, when the spring bolt is moved out of contact with the socket or bearing of the movable tongue piece or stud of the carrying bar, it, together with the bolt work, can be retracted as the socket or bearing on said carrying bar moves or slides along the tongue piece or stud in a longitudinal direction, one end of it bearing upon the lock bolt or obstruction of the time lock, and in such condition the safe or vault door can be closed, and, when the bolt work is projected or cast into the jamb of the door, the socket or bearing moves along the tongue piece until the spring bolt engages with it, when it -- the socket or bearing -- will be automatically locked, in place, and the bolt work, performing its office, will securely fasten the safe or vault door, upon which the combination lock is placed, together with the time lock."

"From the foregoing it will be seen that the lock bolt or obstruction shown in several figures are each stationary, except during the brief interval of time when locking or unlocking is being effected, and that each is adapted to be turned on its pivot or bearing for obstructing or cogging the bolt work for preventing its retraction, or for releasing the bolt work at the time appointed, so that it can be retracted, and it should be noticed that the lock bolt or obstruction of the time lock is so located in the time lock that if pressure be exerted upon the lock bolt or obstruction, by force applied to the bolt work, such pressure will not be transmitted to the delicate workmanship forming part of the time lock; for the lock bolt or obstruction, so to speak, is isolated from the time mechanism, in order to bring and retain the lock bolt or obstruction in a position to have the bolt work, or to move it to release the bolt work, the bolt work, or to move it to release the bolt work, whereby the same may be retracted."

"There is arranged within the time lock a yoke, G, which is capable of being oscillated or turned on its axis or pivot, said yoke being acted on by two rotating dials, H H, in such a manner that said yoke will be operated by either or both of said dials at the predetermined time for which said revolving dials have been set."

"In the example shown in the time lock in Fig. 1, the yoke engages under a stop, l, preferably a roller, arranged on the lock bolt or obstruction, and, when the latter is brought into a position for obstructing the bolt work, to prevent its retraction until the arrival of the predetermined time, while in the example shown in Fig. 5 said yoke connects or engages with the bolt lock or obstruction."

"In both examples the yoke retains the lock bolt or obstruction in a position for obstructing and preventing the retraction of the bolt work until the arrival of the predetermined time for which the revolving dials carrying pins have been set."

"The arms or members, m m, of the aforesaid yoke extend over a portion of the revolving dials, from which project pins, and when either of said pins comes in contact with the arms or members of said yoke, which will occur at the arrival of the time previously determined upon when setting the revolving dials, it (the said yoke) will be operated or turned on its axis or pivot, and release the lock bolt or obstruction, and leave the same to be brought into a position to permit the bolt work to be retracted, which is accomplished by turning the knob or handle connected with the carrying bar, said knob or handle being on the outside the safe or vault door."

"It is preferred to use two independent time mechanisms, each connected with and operating one of the revolving dials, so that if one of the time mechanisms should accidentally stop the other would be sure to operate the yoke, and by its movement release the lock bolt or obstruction, which would automatically assume such a position as to present an unobstructed pathway for the tongue piece or stud to move in, and thus the bolt work could be released and be left free to be with-drawn or retracted."

"The revolving dials are cogged -- that is, provided with teeth, which engage with the arbor, O, of the mainspring barrel, either directly or by means of the pinion, p, attached to said arbor, or through intermediate gearing -- so that the setting of the time mechanism for operating the yoke at any given time will necessarily wind up the time mechanism, to the extent at least, that it will unwind by the arrival of the predetermined time at which the lock bolt or obstruction is to be released for enabling the bolt work to be retracted."

"The revolving dials are indexed or marked with a scale from zero (0) upward to 48, or any other number corresponding with the longest interval the time lock is to present its lock bolt or obstruction to obstruct the bolt work at one time -- say, from Saturday night to Monday morning. This scale is used in conjunction with a pointer or index, e, arranged in the time lock above the revolving dials."

"In setting the time lock, the revolving dials are turned or moved backward from zero (0) to any number in the scale that will indicate the number of hours the safe or vault door is to remain closed or locked, and the pins, n, of the revolving dials must be so adjusted with reference to the yoke as to come in contact with the arms or members, m m, of the yoke, so that either or both of the said arms or members will act upon the yoke, causing it to move so as to release the lock bolt or obstruction of the time lock when the zero (0) mark arrives at the index or pointer."

"The winding up of the time mechanism and the setting of the revolving dials is per formed simultaneously by imparting proper motion to the arbor, o, of the mainspring barrel."

"The revolving dials are provided with a pin, r, as shown in Fig. 4, the same serving as a stop."

"On the pallet, s, which engages with the escape wheel, t, is a pin, u, which projects out through a slot v, of the stationary time mechanism frame, the whole arranged in such a manner that, as soon as the revolving dial has acted upon the yoke for causing it to release the lock bolt or obstruction, the pin, r, of the said revolving dial, will strike the pin, u, of the pallet, and lock the latter in the escape wheel, thereby stopping the time mechanism, so that there will be no loss of power, as it is intended that the time lock should be wound up when first finished, prior to adjusting in place the revolving dials; and, further, by stopping the time mechanism, as above described, the revolving dials cannot get out of position with respect to the index or pointer."

"By my invention, the time lock cannot be reset without winding, for the pins of the revolving dials, resting in contact with the arms or members of the yoke, prevent it from being brought into action with the lock bolt or obstruction until the revolving dials have been moved back the number of hours for which it is designed to obstruct the bolt work. Thus, the resetting of the time lock requires rewinding of the time mechanism as a necessity, and hence no danger of it being unlocked accidentally during the period of hours for which it is set."

"The dial wheel is turned back to set the time lock by a key applied at the winding arbor, o."

"By the means above described I obviate a great objection to common clock locks, which run on until they run down, thus subjecting the lock to the danger of a 'lock out,' caused by neglect of winding."

"By this means, the time lock cannot be set without winding, for the pins, n n, resting in contact with the arms of the yoke, it (the yoke) cannot be engaged with the lock bolt or obstruction until the dial wheels have been moved back to set the lock, as before described."

"By combining an independent time lock of the character described and a combination or key lock, I produce an effect or result which cannot be produced by a time lock alone, or by two or more combination locks together."

"The time lock serves as a safeguard by night, in connection with the combination lock, for holding the bolt work in a locked condition; but, when the time lock releases the bolt work at the appointed hour, the bolt work will remain locked, and the safe or vault door closed, until the combination lock is unlocked by the holder of the combination on which said lock is set when the bolt work can be retracted and the door opened, thus leaving the time lock free from performing any locking action, which leaves the combination lock free for use during the day for locking or unlocking the safe or vault door, an important desideratum present in my invention."

"If the time lock present on the safe or vault door is set for holding the bolt work from the time the bank closes in the afternoon to release the bolt work at a certain hour the next morning, it will admirably and with certainty perform its office, leaving the combination lock to be opened before the bolt work can be retracted, and should the officer if the bank bolding the combination be seized during the night, carried to the bank, and forced to open the combination lock, the time lock will remain intact, and cannot be opened by the burglars or the officer in charge of the combination. Such results cannot be accomplished by a time lock alone, because when it releases its bolt work, the safe or vault door is absolutely unlocked, and no lock present for use during the day, nor by two or more combination locks together, because the holders of the combinations may be taken to the bank, and forced to open the locks. Neither can tampering with the combination lock affect the time lock."

"The combination lock may be punched from its position by burglars, but then the time lock, being separate and independent from it, cannot be affected or disturbed, because there is no opening through the door by which it can be reached. It is therefore superior to a lock which has the time movement combined directly with the combination lock, both forming one lock, in which case any violence to the lock work disarranges the time movement."

"Another advantage of my invention is the capability of the separate locks being applied on different parts of the safe or vault door, with respect to the bolt work, indifferently."

"The bolt work on different safe or vault doors is frequently such that the time lock and the combination or key lock cannot be applied together; but in such case the time lock may be attached at the most convenient location, as no opening through the door is requisite."

"The time lock can be applied with ease and facility to the doors of old safes or vaults having the combination or key lock already thereon, thus securing the advantage of a time lock and a combination or key lock without the necessity of removing the old lock."

"I do not claim, broadly, a time lock of any peculiar construction; nor do I claim two or more combination locks combined with the bolt work of a safe or vault door, as such are old and well known."

"What I claim and desire to secure by letters patent is:"

"1. The combination, with the bolt work of a safe or vault door of a time lock and a combination or key lock, both applied independently on a safe, vault, or other door, so as to rest against or connect with the bolt work on said door, and provided with a device whereby the bolt work may be retained in the unlocked position for shutting the door, and be automatically locked by the time lock and mechanically by the combination or key lock when the bolt work is cast, the whole so arranged that the bolt work cannot be withdrawn when locked till both locks have been unlocked."

"2. The combination of a time lock and a combination or key lock, both constructed to be applied on a safe, vault, or other door, so as to rest against the bolt work, and provided with a lock bolt or obstruction having an opening or offset, which is automatically brought into and out of coincidence with the tongue of the bolt work, whereby the bolt work may be retained in the unlocked position for shutting the door, and prevented from being retracted when locked, until both locks have been unlocked."

"3. The combination, with the bolt work of a safe or vault door, of a combination or key lock controllable mechanically from the exterior of said door, with a time lock having a lock bolt or obstruction for locking and unlocking controllable from the interior of the door, both of said locks being arranged so as to rest against or connect with the bolt work, the time lock being automatically unlocked by the operation of the time movement, both of said locks being independent of each other, and arranged to control the locking and unlocking of the bolt work, so that said safe or vault door cannot be opened when locked until both of said locks have been unlocked or have released their dogging action, to enable the door to be opened, substantially as described."

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Claim 3 of reissue No. 7,947 was passed upon by Judge Shipman, in the Circuit Court for the District of Connecticut, in March, 1881, in the suits of Yale Lock Manufacturing Company

Page 135 U. S. 371

v. Norwich National Bank, and Same Company v. New Haven Savings Bank, reported in 6 F. 377. He held that claim 3 covered a new and patentable invention, and was valid. On the question of the validity of the reissue as to claim 3, he said:

"It is next urged that the third claim of the reissue is void because it was abandoned by the patentee upon the objection of the Patent Office, when the original application was pending. In Sargent's original application, he made one broad claim. The application was rejected by the examiner, whose decision was reversed by the board of examiners. The examiner then requested that a new application be made upon the ground that the case presented to the board was not the same case which had been presented to him. A new application was made, containing only the first two claims of the reissue. Then followed a long and earnestly contested litigation in the Patent Office between various interfering applicants in which apparently both patentability and priority were discussed. The Little application contained the broad claim, and the board of examiners said at one stage of the litigation, whether this question was properly before them or not, that this claim was patentable, so that when the question came before them upon appeal from the decision of the examiner against the Sargent reissue, the board said:"

"The claim in controversy is the same in substance as the first claim of Little, whose application was once in interference with Sargent, and which was admitted to be patentable by the office at the time of the declaration of the interference. The patentability of Little's claim has once been before us in the aforesaid interference, and, after full argument, we concluded that his claim was tenable, and held that someone who was first to combine with the bolt work on a vault or safe door, a key lock and time lock acting independently of each other, but jointly upon the bolt work, might have a valid patent therefor."

"These facts exclude the third claim from the decision or the dicta, in the case of Leggett v. Avery, 101 U. S. 256. I do not understand that the objection that the reissue is for a different invention from the original was pressed by either of the counsel for the defendant. It is sufficient to say

Page 135 U. S. 372

that the claims of the original were for the combination of the third claim, provided with a device whereby the bolt work may be retained in the unlocked position, for shutting the door, and be automatically locked by the time lock and mechanically by the key lock when the bolt work is cast. The patentee had shown 'means whereby,' but if I have been correct thus far, the gist of his invention consisted not in that device, but in the triple combination. Other different 'devices whereby' could be introduced by other inventors which would destroy the value of his patent if it was unduly limited. As said by the board of examiners, 'means whereby,' while being essential to the convenient use of this combination, is merely incidental to the main idea, and may be varied indefinitely without departing from the spirit and scope of the applicant's invention."

The only remark made by Judge Lowell, in his opinion in the present case, as to the validity of reissue No. 7,947 as respects claim 3 is that the patent "was reissued so soon after its granting that it is not obnoxious to the objection of undue delay." The application for the reissue was filed thirteen days after the original patent was issued, and the reissue was granted thirty-six days after the application for it was filed. Judge Lowell held claim 3 to be invalid on the ground that if it was a claim irrespective of any particular means for carrying it out, it was void as a patent for a principle, independently of the state of the art, and that in view of the state of the art, it was void. He was of opinion that there was no patentable novelty in putting a time lock, which was old, in place of one of two combination locks, where two combination locks had been before used to dog one combined bolt work; that it was not patentable to substitute a well known multiple bolt work for two such bolt works where a time lock and a combination lock had been before combined in the use of two multiple bolt works, and that there was no patentable novelty in combining two locks with a single door.

A history of the proceedings in the Patent Office in regard to patent No. 195,539 and reissue No. 7,947 shows that claim 3 of that reissue must be held to be invalid.

Page 135 U. S. 373

On the 9th of May, 1874, Sargent filed an application for a patent which claimed broadly the combination of a time lock, an ordinary lock, and a safe bolt connected with both of them. The claim he made was as follows:

"What I claim is the combination, with a clock or time movement lock and an ordinary lock, attached independently to a safe or vault door, of a safe bolt constructed so as to rest against or connect with both of said locks, substantially as described, whereby the safe bolt cannot be withdrawn till both locks have been unlocked."

In the specification he then filed, he said:

"This improvement belongs to that class in which two locks are applied upon a safe or vault door for the purpose of preventing the withdrawal of the safe bolt till both locks have been unlocked. . . . I employ one ordinary combination or key lock and one time movement or clock lock, attached independently to the door, and employ in combination therewith a safe bolt that bears against or connects with both of said locks in such a manner that, though the ordinary lock may be picked or opened, yet the clock lock cannot be reached, and the safe bolt therefore cannot be released till the clock has performed its office and unlocked its lock at the predetermined hour. . . . But it is by no means essential to this invention that the circular form of lock bolt should be used, as the ordinary style of sliding bolt, or other forms of shifting bearings, could be employed if desired. . . . Clock locks have before been used both separately and in connection with combination locks. Where used alone, they are insecure for the reason that burglars, ascertaining the hour upon which the lock is set, may, by confining or disabling the officers of the bank having control of the same, open the safe when the hour arrives. In my improvement, such result cannot occur, because the combination lock still locks the safe. Where clock locks have been combined with ordinary locks heretofore, so far as I am aware, the said locks have been connected by a lever or other connection, so that their actions are dependent on each other. In such case, if the combination or key lock is injured by a lock pick, by violence, or otherwise, the clock lock is liable to

Page 135 U. S. 374

injury also. By making these independent, as described, I avoid these difficulties."

This application was rejected by the examiner, but, on appeal, his decision was overruled by the examiners in chief, February 17, 1875. The examiner then ascertained that the case had been argued before the examiners in chief on an invention which had not been before the examiner, and that another model was used before the examiners in chief in place of the one properly in the case. The new feature of invention was a device by which the time lock could be properly set, and the door then be closed; but that device, which made the invention an operative one, was not shown in the drawing, the specification, or the model, which had been before the examiner. In a communication made to Sargent by the examiner at the time, February 20, 1875, he said:

"As far as the office knows by the record of the case, this new invention may not have been contemporaneous with the first one. The examiner would suggest that a new case be at once filed embodying this invention, which makes the devices operative, and against the patentability of which no question will be raised. The claim, however, must be not broadly for A combined with C, which is not conceded to be entirely inoperative, but A and B combined either with C or some mechanical equivalent thereof, which alone makes A and B operative."

He also said:

"It is suggested to applicant that he file a new case, introducing the new combining device, which allows the door to be shut after the time lock is set, and thus takes it out from the new reference cited, and the examiner will in all proper ways hasten the case forward upon a legitimate claim for A and B with suitable combining device to allow the door to be closed after the time lock is set, inasmuch as no obstacle exists, as the examiner is at present advised."

In accordance with this suggestion, Sargent, on the 10th of March, 1875, filed a new application, which resulted in the granting of patent No. 195,539. The specification of this application said:

"In locking the safe or vault door, some device is necessary to allow the door bolt to remain back in the unlocked position until the door is closed without interfering

Page 135 U. S. 375

with the clock lock. [A variety of devices may be employed for this purpose.]"

This clause in brackets was afterwards erased.

The specification of this application also said:

"In Fig. 1 is shown another device for the same purpose, situated outside the lock, which is the subject matter of another application. It consists of a socket or bearing, h, attached to the tie piece, E, of the door bolt, and sliding on an independent stud, a', resting against the lock bolt. A spring locking-pin, i, is used to connect the parts, when the door bolt is thrown forward to connect with the jamb. In this case, the lock bolt, D, may be made solid, and may be either of the turning or sliding kind. [Other devices might be used to allow the door to shut. I do not wish to confine myself to any particular form of the device.]"

The sentences in brackets were afterwards erased.

Sargent thus limited himself to combinations wherein one or the other of the peculiar devices invented by him should be an essential element, which is further evidenced by the fact that in claim 1, as accepted by him, the combination of the clock lock and combination lock, as applied to the door bolt, was to be provided with a device whereby the door bolt might be retained in the unlocked position for shutting the door, and in claim 2 the same combination was to be provided with a lock bolt having an opening or an offset which was automatically brought in and out of coincidence with the tongue of the door bolt, whereby the latter might be retained in the unlocked position for shutting the door.

On the 16th of March, 1875, the examiner rejected claim 1, saying that it was to be found substantially in the patent granted to Cornell, August 10, 1858, for "safe bolt work," and referring also to three prior patents for time locks, and adding, that "merely to substitute either one of the above time locks for one of the locks shown in Cornell's patent is not regarded as a patentable difference." To this Sargent's attorney replied, on the 17th of March, 1875:

"The combination is such as to require something else to be done other than to simply substitute for one of the key locks shown in Cornell's patent one of the time locks cited by the examiner.

Page 135 U. S. 376

This referred to the devices invented by Sargent, by which his combination was made operative."

On the 19th of March, 1875, Sargent's attorney struck out the parts in brackets, before quoted, and also struck out claim 1, and substituted as claim 1 what is claim 2 in the original patent as granted. On March 20, 1875, the attorney reinstated claim 1, and added as claim 2 what is claim 2 in the original patent.

On the 22d of March, 1875, the examiner rejected both of the claims on the references before made, and referred also to the English patent to W. Rutherford of April 14, 1831. He added that "a rotating lock bolt having an opening or an offset is not new," and referred especially to two prior patents, and said: "The second claim may possibly be allowed if amended by inserting the words constructed in two parts and' after `lock bolt.'"

An appeal was taken from this decision, and on the 27th of March, 1875, the board of examiners in chief reversed the decision of the examiner, doing so on the ground that the combination embracing Sargent's peculiar devices for retaining the door bolt in an unlocked position for shutting the door was new and patentable. Before Sargent's patent could issue, he was put into interference with Stockwell, Burge, and Little, and also with Pillard and Lillie. It is evident from decisions made by the examiner of interferences and by the Commissioner of Patents in questions arising in some of these interferences that Sargent was regarded as making no claim to a broad combination between the bolt work of the door, and a time lock, and an independent non-time lock, which is the subject matter of claim 3 of reissue No. 7,947.

The examiner, the examiners in chief, and the Commissioner of Patents decided priority of invention in favor of Sargent as to the combination by Sargent of the bolt work with a time lock and a non-time lock, and his device for retaining the door bolt in its retracted position, for shutting the door without interfering with the lock mechanism. The patent No. 195,539 was then issued, on September 25, 1877, with the

Page 135 U. S. 377

two claims before set forth, limited by the proceedings which so took place in the Patent Office.

The lock of the defendants did not infringe either of the two claims of the original patent, for it did not contain what is called in claim 1 "a device whereby the door bolt may be retained in the unlocked position for shutting the door," after the time lock is set, nor did it contain what is called in claim 2 "a lock bolt having an opening or an offset which is automatically brought in and out of coincidence with the tongue of the door bolt." This is apparent from the fact that it is not contended that the defendant's clock infringes either claim 1 or claim 2 of reissue No. 7,947, which two claims are substantially identical with claims 1 and 2 of the original patent.

On the 8th of October, 1877, Sargent filed an application for a reissue of patent No. 195,539. He inserted in his specification what is claim 3 of the reissue as granted. That claim is as broad as the claim made in his application of May 9, 1874, which, as before shown, he abandoned. The examiner rejected this claim twice, and after the second rejection, and on the 26th of October, 1877, Sargent appealed to the examiners in chief. In the statement of appeal, his attorney said:

"All time locks used with bolt work must have some mechanical arrangement to enable the bolt work to be retracted for closing the door. Such is present in many old patents, and has never been claimed by my client; but what is claimed by him is for the union of such an old, well known time lock with a combination lock and bolt work all arranged on the same door."

This shows the breadth of the claim as compared with claims 1 and 2 of the original patent.

The examiner, in his answer to the reasons of appeal, said:

"Leaving out the descriptive and recitative parts of the claim as well as all superfluous and misleading matter, we have, as the claim, the following elements and arrangements, viz., A combination or key lock and a time lock, combined with the bolt work of a safe door, both used independently, and resting against or connecting with the bolt work. The only elements are the two locks and the bolt work, no other element being hinted at, even, and the arrangement of

Page 135 U. S. 378

said elements is that the locks rest against or connect with bolt work, and are used independently of each other. To recite in the claim that the 'key lock is controllable from the outside' and the 'time lock upon the inside only' is entirely unnecessary, for all key or combination locks of safes are controlled only from the outside, and all time locks, as a matter of course, upon the inside, are automatically unlocked. It is a well settled principle that a mere explanation of parts or recital of functions neither adds to nor takes away from a claim. All the matter which recites that the door cannot be opened until the lock allows it is a mere superfluity. If, in an ordinary lock patent, we were to add to the claim, 'the arrangement being such that the door cannot be opened until it is unlocked,' it would be simply laughable, as all locks of all sorts serve just this purpose. This vast mass of words in the claim, while at first glance seeming to restrict the claim, will be found to be entirely misleading, the indisputable scope of the claim being 'the simple, independently acting time and combination or key lock resting against bolt work of a safe.' That is all -- no more, no less. It is to be carefully noted that the claim does not restrict to using the locks upon the door, but only 'in combination with the bolt work of the door,' and that the claim covers 'putting on Little or Derby, in the usual way, a Sargent or other combination lock.' After reviewing the various decisions which took place during the pendency of the application of Sargent for his original patent, and showing that the limitation of claims 1 and 2 thereof so as to embrace the peculiar devices of Sargent was what saved them on the question of patentability, the examiner said:"

"It very clearly follows that the claim, expanded so as to omit those restrictions, is entirely untenable, in accordance with the Very terms of the commissioner and board decisions."

The examiners in chief, however, on appeal, reversed the examiner's decision, and the reissue was granted.

It is very clear from a comparison of the specification of the original patent No. 195,539 with that of reissue No. 7,947, that the specification of the original was not defective or insufficient, and that the patent was not inoperative. Not only is there no

Page 135 U. S. 379

evidence in this suit to that effect, but the evidence is to the contrary. The sole object of the reissue was manifestly to obtain claim 3 as an enlarged claim. Not only is claim 3 an enlarged claim, but, assuming that it was new and for a patentable combination, and that Sargent would have been entitled to make it in his application for his original patent, he was debarred from making it in his reissue. As has been shown, he made such a claim in May, 1874, and abandoned it. The application on which his patent No. 195,539 was granted was pending in the Patent Office from March 12, 1875, to September 25, 1877, and no such claim was made. On the contrary, be struck out from his specification matters evincing an intention to claim something more than the specific devices he had invented, and it is quite evident that the consideration by the Patent Office of those specific devices, and the evidence of invention afforded by them, enabled him to procure his original patent with its limited claims 1 and 2.

The effect of such an abandonment of a claim upon the validity of a reissue has been often adjudged by this Court. Leggett v. Avery, 101 U. S. 256, 101 U. S. 259; Mahn v. Harwood, 112 U. S. 354, 112 U. S. 359; union Metallic Cartridge Co. v. United States Cartridge Co., 112 U. S. 624, 112 U. S. 644; Shepard v. Carrigan, 116 U. S. 593, 116 U. S. 597-598; Roemer v. Peddie, 132 U. S. 313, 132 U. S. 317.

Nor does the fact that reissue No. 7,947 was applied for only thirteen days after the grant of the original patent establish its validity. In Coon v. Wilson, 113 U. S. 268, 113 U. S. 277, enlarged claims in a reissued patent were declared invalid, although the reissue was applied for a little over three months after the original was granted, on the ground that a clear mistake, inadvertently committed, in the wording of a claim, was necessary, without reference to the length of time. See also Ives v. Sargent, 119 U. S. 652, 119 U. S. 663; Parker v. Yale Clock Co., 123 U. S. 87, 123 U. S. 103.

These views dispose of claim 3 of reissue No. 7,947, independently of the ground on which the circuit court held it to be invalid, and all other considerations urged by the defendants.

We come now to consider claims 1 and 7 of reissue No. 8,550

Page 135 U. S. 380

of the Little patent, granted January 21, 1879, on an application filed October 14, 1878. The specification, drawings, and claims of Little's original patent, No. 146,832, were as follows:

"Be it known that I, Samuel A. Little, of Buckland, in the County of Franklin and State of Massachusetts, have made certain new and useful improvements in clock locks, whereof the following is a specification, reference being had to the accompanying drawings, in which Fig. 1 is a front view of my improved clock lock attached to the inside of a safe, adjacent to the hinged part of the safe door. Fig. 2 show a seventh-day wheel, marked 'A' in Fig. 1. Fig. 3 shows a cam wheel, marked 'B' in Fig. 1. Fig. 4 shows a graduated cam wheel, marked 'C,' in Fig. 1. Fig. 5 represents the inside of a safe with the door bolts locked forward by the lever dog, which is elevated by the clock lock. Fig. 6 represents a horizontal section of my clock lock detached from the clocks, the dog lever excepted, taken through the line, x x, of Fig. 1. Fig. 7 represents a vertical section of the same (similarly detached, except that the clock wheels to which the same is immediately attached are shown), taken through the line, y y, of Fig. 1. In the various figures, similar letters indicate similar parts."

"D and E are two clock movements fastened to the inside, F, of a safe, adjacent to the hinged part of a safe door, G. Said clock movements, through the wheels and ratchets, K and L (shown by the dotted lines, Fig. 1), which are rotated once in twelve hours by the clock, propel the wheels, H and I, in the same time, in the direction of the arrows thereon. The wheels, H and I, are both geared to the common wheel, M, having twice as many teeth as either H or I, and propel the same in the direction of the arrow thereon, so that, while H and I are rotated once in twelve hours, M is rotated once a day. It will therefore be seen that both clocks work together in turning the wheel, M, and thereby operating the lock, while if either clock stops, the wheel, H or I, of the other will alone continue to rotate the wheel, M, and operate the lock, as the ratchet allows free motion to the wheel, I or H, of the other clock, although said clock may be stopped. Forming part of the

Page 135 U. S. 381

wheel, M, is the toothed wheel, N, which is geared into and drives the toothed wheel, O. Forming part of the wheel, O, is the toothed wheel, P, which is geared into and drives the seventh-day wheel, A. A has twice as many teeth as P, and O has three and a half times as many teeth as N. Therefore, while M revolves once in a day, it propels A to revolve once in seven days. The wheel, C, which is graduated for the hours of the day, is fastened upon the hub, a, of the wheel, M, by the projection, b, and rotates with the same. On the same hub is the wheel, B, which is fastened by friction to C in different positions by the thumb-screw, Q, which forms part of the wheel, B, and passes through the slot, c, of the wheel, C. p p p p p are pivots on which the several wheels revolve. The wheel, B, is cut away on the outer edge, leaving the depressions, d, and the cam projection, e, thereon, and the edge of C is similarly cut away, leaving the depression, f, and the cam projection, g, thereon. When the two wheels, B and C, are fastened together by the thumb-screw, Q, side by side, they form one wheel, and have a common depression, h, which may be enlarged or diminished by rotating the wheel, B, on the wheel, A, with the thumb-screw, and setting the same, and a common cam or projection, i, which may be enlarged or diminished in the same manner. Pivoted near the lock is the two-armed lever, R, whereof one arm carries the roller, S, and is lifted through the same by the cam, i, revolving under the same at said cam's inclined plane, k, and at the same time the other arm, T, of said lever, lifts the dog lever, V, as shown by the dotted lines, Fig. 1, up behind the door bolts, W W W W, into the position shown in Fig. 5, thereby locking said bolts forward behind the jamb of the safe so the door cannot be opened. Said dog lever, V, is pivoted at l. On the other band, when the cam, i, is rotated entirely under the roller, S, said roller is suffered to drop by gravity into the depression, h at the inclined plane, m, which allows the dog lever, V, to fall from behind the safe bolts, and the safe to be opened. The seventh-day wheel, A, has on its edge a cam projection n, which rotates once while the depression, h, rotates seven times, as described, and is so arranged relatively to the said depression, h, that, on every

Page 135 U. S. 382

"

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Page 135 U. S. 383

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"seventh revolution thereof it is brought under the roller, S, and holds up the lever, R, while the depression, h, passes under it, so that every seventh day the same prevents the safe from being unlocked."

"From the description aforesaid, the mode of operation will be obvious. The clocks are set to true time by bringing the hour mark on the dial, C, under the roller, S, which is readily done by turning the dial, as the wheels, A, B, C, and M, are freely turned in the direction of the arrow on C, inasmuch as the ratchets behind H and I do not interfere with motion in that direction, but take up, and, through the clock's force, proceed with whatever advance of said wheels may be made. The lock is then set to lock up at any given hour by loosening the thumb screw, Q, and turning the inclined plane, k, of the wheel, B, to the mark of the required hour, and then fastening the wheels, B and C, together by setting the thumb-screw, Q. If it is desired to have the lock open any amount of time earlier than the set time (nine o'clock), the wheel, C, must be turned as described until the time indicated under the roller shall be that amount fast of true time, the closing mark being altered, if desired, to suit the case. If it is desired to open later, the clocks must be stopped until they are slow of time as much as it is desired the lock shall open later than the set time, correcting the closing mark, if desired. If the wheels, A, B, C, and M, are turned as described until the cam part, n, of the wheel, A, shall be in position to come under the roller, S, and keep the lock from opening on Sunday, it will continue to do so on Sunday each week, if the clocks run on unchanged. In case that it shall be desired "

Page 135 U. S. 384

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Page 135 U. S. 385

"that the lock shall not open for a holiday or other day, the said wheels may be rotated until said cam part, n, is in position to come under and hold up the lever, R, on said day. The lock is affixed to the side, F, of the safe, as described, to avoid derangement or stoppage of the clocks by concussion on the door. It is evident that the dog lever, V, and the lever, R, may be the same piece. The object in making the same in two parts is to save the weight of the part, V, which depends upon the pivot, l, from adding to the labor of the clocks."

"What I claim as my invention, and for which I pray letters patent, is:"

"1. The combination, with one or more clock movements, of one or more wheels, H, I, one or more ratchets, K, L, and a common wheel, M, arranged as described, for the purposes set forth."

"2. The wheels, B and C, with the depressions d and f, and the projections, e and g, located relatively to each other as described, to increase and diminish the surface of a common cam, i, or depression, h, by rotation on each other, for the purposes described."

"3. The wheel A, with a cam, n, adjusted as described, to prevent the falling of the lever, R, and dog, V, either periodically or at required times, as described."

The specifications, claims, and drawings of reissue No. 8,550 are as follows:

"Be it known that I, Samuel A. Little, of Shelburne, in the County of Franklin and State of Massachusetts, have invented certain new and useful improvements in chronometric locks, and I do hereby declare that the following is a full, clear, and exact description thereof, that will enable others skilled in the art to which it appertains to make and use the same, reference being had to the accompanying drawings, and to the letters of reference marked thereon, which form a part of this specification:"

"The object of my invention is to construct a time lock which shall dog and release the multiple bolt work of a safe or vault at certain predetermined times, both the dogging and

Page 135 U. S. 386

releasing being caused by the operation of the time mechanism. By this means, the time when the lock will dog the bolt work depends entirely on the adjustment of the internal mechanism of the lock, hereinafter described."

"I provide adjustable devices so that the periods when the lock shall be locked and unlocked may be varied at will, and I also provide a device whereby at certain intervals, say on every seventh day, the lock will remain locked during the time when ordinarily it would be unlocked."

"It will thus be seen that I have constructed a lock which will of itself dog and release bolt work at a regular hour each day, except on certain predetermined days -- Sundays, for example -- when it will remain in the locked position all day. My lock, when once adjusted, is therefore absolutely automatic, requiring no attention except winding, and it is, so far as I am aware, the first time lock which locks at a time determined by the time mechanism, while at the same time the hours for locking and unlocking can be changed without altering the construction of the lock."

"To diminish the chances of accident from the stoppage of the time mechanism, I provide two independent movements, both of which assist in rotating the dial to actuate the lock, but should one stop, the other will continue to rotate the dial."

"The particular construction of my lock is that the two time movements rotate a graduated dial so arranged that its motion oscillates at certain regular, determinable intervals, a pivoted bent lever, which in turn, in one instance, for automatic locking, lifts the free part of, and thus oscillates on its stationary pivot a metallic dog or obstruction, so as to cause it to rest in the way, and prevent the retraction, of the sliding bolt work, and in the other instance, for automatic unlocking, it withdraws its support from under, and permits the dog to oscillate by gravity, so as to clear the way for the retraction of the bolt work."

"The adjustability of my lock for locking and unlocking I obtain by means of my dial, which is so arranged that what I may call its 'bolt or dog-actuating points' can readily be"

Page 135 U. S. 387

changed from one position to another, so that they will actuate the dogging mechanism at any desired hours for locking or unlocking, and it is to be noted that in all continuously running dials the adjustability for unlocking or locking preferably will be obtained in substantially the same way -- i.e. by varying the position of the dog-actuating points -- because the dial itself should always be run on correct time.

"I cause the lock to remain locked on Sundays or other desired days by means of a supplemental cam which temporarily assumes one of the functions of my dial, and by which I can at any desired time cause the lock to remain locked during a greater period than twenty-four hours."

"Referring now to the drawings in aid of a description of my lock in detail, figure 1 is a front view of my improved time lock attached to the inside of a safe, adjacent to the hinge part of the safe door; Fig. 2, a view of the same, partly in elevation and partly in section, on the line, 2 2, of Fig. 1; Fig. 3, a horizontal transverse section thereof, on the line, 3 3, of Fig. 1, with the upper time movements removed, showing a plan of the locking mechanism proper; Fig. 4, a horizontal transverse section through the center of the locking dials; Fig. 5, a perspective view of the interior of a safe, showing the door bolts locked forward by the lever dog; Fig. 6, a perspective view of the graduated dial, marked 'C' in Fig. 1; Fig. 7, a similar view of wheel, B, in Fig. 1; Fig. 8, a similar view of a seventh-day wheel, marked 'A' in Fig. 1."

"D and E designate two time movements fastened to the inside, F, of a safe, adjacent to the hinged part of the safe door, G. These time movements, through the wheels and ratchets, K and L, propel the wheels, H and I, in the direction of the arrows thereon. These wheels, H and I, rotate once in twelve hours, and are both geared to the common wheel, M, which has twice as many teeth as either of them, and they propel it in the direction of the arrow thereon, so that, while wheels, H and I, are rotated once in twelve hours, wheel, M, is rotated only once a day."

"It will be seen that both time movements work together

Page 135 U. S. 388

in turning the wheel, M, and thereby operate the lock; but, if either accidentally stops, the wheel, H or I, of the other will alone continue to rotate the wheel, M, and operate the lock, because each ratchet will allow free motion to either wheel, I or H, in the absence of its normal impelling force."

"The toothed wheel, N, forming part of the wheel, M, is geared into and drives the toothed wheel, O. The toothed wheel, P, forming part of the wheel, O, is geared into and drives the seventh-day wheel, A, which turns loosely on the hub, a, of the wheel, M. This wheel, A, has twice as many teeth as wheel P, and wheel O has three and a half times as many teeth as wheel N. Therefore, while wheel M revolves once in a day, it only causes wheel A to revolve once in seven days. The wheel, C, which is graduated for the hours of the day, is fastened rigidly upon the hub, a, by means of the projection, b, and rotates with it. Loose on the same hub is the wheel, B, which may be fastened by friction to the wheel, C, in different positions, by the thumbscrew, Q, that is attached to, or forms part of, the wheel, B, and passes through the slot, c, of the wheel, C. p p p p p designate pivots on which the several wheels revolve. The wheel, B, is cut away on its periphery, leaving the depression, d, and the cam projection, e, and the periphery of the wheel, C, is similarly cut away, leaving the depression, f, and the cam projection, g, of the same form and size as the depression and projection of the wheel, B. When these two wheels are fastened together by the thumb-screw, Q, side by side, they form one wheel or dial, having a depression, h, which may be enlarged or diminished by rotating the wheel, B, by means of the thumb-screw, and then setting it, and also having a cam or projection, i, which may be enlarged or diminished in the same manner. Pivoted near its middle to the lock case is the bent lever, R, one arm of which carries the friction roller, S, and is lifted by the cam, i, revolving under the roller at the cam's inclined plane, k, and at the same time the other arm, T, of said lever lifts the dog, V, pivoted at l, up behind the door bolts, W W W W, into the position shown in Fig. 5, thereby locking the bolts forward behind the jamb of

Page 135 U. S. 389

the safe so that the door cannot be opened. In due time, when the cam, i, is rotated entirely from under the roller, S, the latter will drop into the depression, h, at the inclined plane, m, which allows the dog, V, to fall from behind the safe bolts, when they may be retracted, and the safe opened."

"It will be noted that the dog always tends to turn on its pivot automatically by gravity, so as to present a free space for the retraction of the bolt work, and it is held up only for predetermined periods, to be measured by the time mechanism, by the bent lever."

"The seventh-day wheel, A, has on its periphery a cam projection n, which rotates once while the depression, h, rotates seven times, as described, and it is so arranged relatively to the depression, h, that on every seventh revolution hereof it is brought under the roller, S, and holds up the lever, R, while the depression, h, passes under it, so that every seventh day this projection n, prevents the safe from being unlocked."

"From the foregoing description, the mode of operation will be obvious."

"The time movements should be set to correct time by bringing the hour mark on the dial, C, under the roller, S, which is readily done by turning the dial, as the wheels, A, B, C, and M, turn freely in the direction of the arrow on wheel, C, because the ratchets behind wheels, H and I, do not interfere with motion in that direction, but take up, and, through the force of the time movements, proceed with, whatever advance of said wheels may be made. The lock should then be set to lock up at any given hour by loosening the thumb-screw, Q, and turning the inclined plane, k, of the wheel, B, to the mark of the required hour, and then fastening the wheels, B and C, together by setting the thumb-screw, Q. The dial will then indicate the time of locking and unlocking, and the operation of the time movements will cause the oscillation of the dog into position to obstruct the retraction of the bolt work in a little time, or at whatever time may have been decided upon, and it will be held there until the time arrives for unlocking, when the continued operation of the time movements will withdraw its support, and it will fall out of the way. "

Page 135 U. S. 390

"If it is desired to have the safe opened any given amount of time earlier than the set time -- say 9 o'clock -- the wheel, C, must be turned as described until the time indicated under the roller shall be that amount fast of the correct time, the closing mark being altered, if desired, to suit the case. If it is desired to open later, the clocks must be stopped until they are slow of the time as much as it is desired the lock shall open later than the set time, correcting the closing mark if desired."

"If the wheels, A, B, C, and M, are turned as described until the cam part, n, of the wheel, A, shall be in a position to come under the roller, S, and keep the lock from opening on Sunday, it will continue to do so on Sunday each week, if the time movements run on unchanged. Thus the necessity for setting the mechanism on every Saturday so that it shall keep the safe locked over Sunday is obviated, which is a great convenience to bankers and is furthermore a security against neglect to set the mechanism weekly which might sometimes occur. In case it shall be desired that the lock shall not open for a holiday or other day, the said wheels may be rotated until the cam projection n, is in position to come under the roller, S, and hold up the lever, R, on such day."

"The lock is affixed to the side, F, of the safe, as described, to avoid derangement or stoppage of the time movements by concussion on the door, but it is obvious that it may be affixed to the door without modifying its construction if desired, that being merely a change of location."

"It is evident that the dog, V, and the lever, R, may be one and the same piece. The object of making them in two parts is to save the weight of the part, V, which depends upon the pivot, l, from adding to the labor of the time movements, and also to make the dog or obstruction entirely distinct from the time mechanism."

"I am aware of the patent granted to Williams and Cumming, No. 17,245, and dated May 5, 1857, and do not claim anything shown therein, but intend to limit my claims to comprehend only the improvements I have made over the peculiar combinations shown in that patent, whereby I reduce the number, modify the construction, change the relative

Page 135 U. S. 391

position and mode of operation of the parts, and simplify my mechanical organization, as will fully appear by comparison."

"What I claim as my invention is:"

"1. The combination of independent multiple bolt work with the time mechanism and locking or dogging mechanism of a time lock, automatically both dogging and releasing the bolt work at predetermined times, substantially as described."

"2. The combination in a time lock of a continuously revolving adjustable device for determining the time of operation of the unlocking mechanism, a pivoted arm or lever actuated by said device, and a dog or obstruction movable directly by said pivotal arm at regularly recurring periods, to permit the retraction of the bolt work, substantially as described."

"3. In a time lock, the combination of time mechanism, a revolving dial actuated thereby, a dog and suitable connecting mechanism, whereby the continuous revolution of the dial causes the dog to move into the locked and unlocked positions alternatively, substantially as described."

"4. In a time lock, the combination of a continuously rotating dial and mechanism which causes the lock to lock and unlock automatically, substantially as described."

"5. In a time lock, a continuously rotating dial provided with an adjustable device for automatically determining the time of locking, substantially as described."

"6. In a time lock, the combination, substantially as above set forth, of the time movements, and an adjustable device for automatically determining the time of locking."

"7. In a time lock, the combination, substantially as above set forth, of the time movements and two adjustable devices, one for determining the time of locking and the other of unlocking."

"8. In a time lock, the combination with the time mechanism, and the locking or dogging mechanism, of an adjustable device which, through the continuous operation of the time mechanism, will periodically, or at required times, cause the lock to remain locked during a greater period than twenty-four hours, substantially as described."

"9. In a continuously running automatic time lock, the "

Page 135 U. S. 392

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Page 135 U. S. 393

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Page 135 U. S. 394

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Page 135 U. S. 395

combination, with the time mehanism and the locking or dogging mechanism, of an independent device adapted to be set to prevent at any desired time, the unlocking of the lock for a greater period than twenty-four hours, substantially as described.

"10. The combination, substantially as above set forth, of the adjustable mechanism for continuously locking and unlocking daily the time movements, and a device for preventing unlocking during a greater period than twenty-four hours."

"11. In a time lock, provided with two independent time movements, and an interlocking device common to both, the combination with each of said movements of a ratchet and pawl interposed between the last or driving arbor of each movement and the said common unlocking device, whereby the said device may be driven by either or both of the movements, and the stoppage of one movement will not necessarily cause the stoppage of the other, substantially as described."

"12. The combination with the time movements, of the wheels, H and I, the ratchets, K, L, and the common wheel, M, arranged substantially as described, for the purpose set forth."

"13. In combination with the dial, the seventh-day cam wheel, A, adjustable, as described, to prevent the falling of the bent lever, R, and dog, V, either periodically or at required times, as described."

"14. The combination, in a time lock, of time mechanism, a revolving graduated dial actuated thereby, a bent lever oscillated by the revolution of the dial on an immovable pivot, and a dog or obstruction, also oscillated on an immovable pivot, the lever and dog being so arranged that, when one arm of the lever is pushed aside at a predetermined time by the revolution of the dial, the other arm withdraws its support from under, and permits the dog to turn by gravity, thereby leaving a free space for the retraction of the bolt work, substantially as described."

"15. The combination of multiple sliding bolt work, a dog or obstruction oscillated on an immovable pivot, and tending by gravity to turn so as not to dog the bolt work, a bent lever, oscillated also on an immovable pivot, for holding the

Page 135 U. S. 396

dog in position against gravity, to dog the bolt work, a revolving graduated dial, which, by its revolution at a predetermined time, oscillates the bent lever and time mechanism that actuates the dial, substantially as described."

"16. The combination, substantially as before set forth, by means of suitable connecting mechanism, of the following elements, adapted, as combined, so to secure the door of a safe or vault, and to automatically release the same at a predetermined time, viz., first, the multiple sliding bolt work; second, the oscillating stop or dog, adapted to prevent the retraction of the bolt work, and to be turned on its pivot to release the bolt work at a time determined by the clock work; third, the vibrating lever for holding the stop or dog in position to prevent the retraction of the bolt work; and fourth, the clockwork for determining the time when said lever shall be moved to permit the stop or dog to release the bolt work."

"17. In a chronometric locking mechanism, the combination, substantially as before set forth, of the following elements, adapted as combined, to guard or dog the bolt work of a safe or vault door, and to automatically release the same at a predetermined time, viz., first, the oscillating stop or dog, adapted to prevent the retraction of the bolt work, and to be turned on its pivot to release the bolt work at a time determined by the clock work; second, the vibrating lever for holding the dog in position to prevent the retraction of the bolt work; third, the clock work for determining the time when said lever shall be moved to permit the dog to fall to release the bolt work, and fourth, the graduated wheel or dial, rotated by the clockwork, and adapted to operate said lever, and to be set for varying and controlling the time when said lever shall be moved to permit the dog to release the bolt work."

Only claims 1 and 7 of the reissue are alleged to have been infringed. They take the place of claim 2 of the original patent. They were before Judge Shipman in the cases in 6 F. above referred to, and he held that they covered new inventions and patentable improvements. Judge Lowell, in his opinion in the present case,

Page 135 U. S. 397

states that he fully agrees with the views of Judge Shipman as to the novelty and patentability of claims 1 and 7. Although the defendants' lock has but one time movement to control the lever which controls the dog, Judge Lowell held that that did not affect the question of the infringement of claims 1 and 7.

In September, 1887, in Yale Lock Mfg. Co. v. New Haven Savings Bank, 32 F. 167, in the Circuit Court for the District of Connecticut, Judge Shipman had before him the question of a rehearing as to the validity of claims 1 and 7, and especially the question whether claim 7 was an enlargement of claim 2 of the original patent. He held that claim 7

"should be limited to the invention which was described and claimed in the original patent, which invention was not confined to a 'common cam,' or to a device which was connected with the compound wheel in the same way in which the cam was connected, but was broad enough to include equivalent means of connection with the dog."

He held also that the owners of the patent had not abandoned, by proceedings in the Patent Office in respect to the two prior reissues of it, their right to claim, in reissue No. 8,550, a double or compound disk, and to obtain a valid patent therefor.

Claims 1 and 7 were sustained also by Judge Sage, in the Circuit Court of the Western Division of the Southern District of Ohio, in May, 1889, in the case of Yale & Towne Mfg. Co. v. Consolidated Time-Lock Co., 38 F. 917.

This patent, as before stated, was reissued May 9, 1876, as No. 7,104, and again, January 8, 1878, as No. 8,035. The lock used by the defendants is made under letters patent No. 173, 121, granted to Henry Gross, February 8, 1876, for an "improvement in time attachments for locks." This patent was issued prior to the granting of any reissue of the Little patent. While the original patent, No. 146,832, had only three claims, reissue No. 7,104 had eight claims, reissue No. 8,035 had 6 claims, and reissue No. 8,550 has seventeen claims. On comparing the various reissues with the original patent, it is found that the drawings and the description of them are substantially the same in all, with some changes in nomenclature, and it is quite apparent that the original patent was not

Page 135 U. S. 398

inoperative or invalid by reason of a defective or insufficient specification, within the terms of the statute, so as to warrant the reissues.

There is in the record a copy of the file wrapper and contents of reissue No. 8,035, applied for December 15, 1877, and granted January 8, 1878. The specification presented with the application contained only two claims, both of which made "a revolving dial" an essential element. On the 18th of December, 1877, an entirely new specification and claims were put in, the claims being ten in number. Claim 3 was as follows:

"3. In a time lock, the combination, substantially as above set forth, of the clock work and two adjustable devices for determining, respectively, the times of locking and unlocking."

That claim 3 is very similar to claim 7 of issue No. 8,550. On the 21st of December, 1877, that claim 3 was amended by striking out the word "clockwork," and inserting the words "time movements," so that it became almost exactly the same as claim 7 of reissue No. 8,550. On the 26th of December, 1877, that claim 3 was erased.

Claim 4 of reissue No. 8,035, as originally applied for, read as follows:

"The combination with one or more time movements of one or more wheels, H, I, one or more ratchets, K, L, and a common wheel, M, arranged as described, for the purposes set forth."

This claim 4 was erased with claim 3, and in their place there was inserted the following as claim 3:

"The combination with the time movements of the wheels, H, I, the ratchets, K, L, and the common wheel, M, arranged as described, for the purpose set forth."

Claim 5 of reissue No. 8,035, as applied for, was identical with claim 2 of the original patent, No. 146,832, as granted. That claim 5 was rejected by the examiner on the ground that it was old in valve gear for steam engines, with a reference to a prior patent, and on the 26th of December, 1877, it was erased and abandoned. Therefore, more than a year before reissue No. 8,550 was granted, claim 2 of the original patent was abandoned by Little, and at the same time he also abandoned claim 3 of his application, after he had put it in such shape that it became substantially the same as claim 7 of

Page 135 U. S. 399

reissue No. 8,550. Reissue No. 8,035 was taken out without those claims. No one of the six claims of reissue No. 8,035 was infringed by the lock of the defendants, which was applied to use during the existence of reissue No. 8,035. A little over nine months after it was granted, the application for reissue No. 8,550 was filed, and the present suit was brought eight days after that reissue was granted.

In the specification of reissue No. 8,035, the following statements were made:

"The object of my invention is to construct a time lock, and to combine it with the multiple sliding bolt work of a safe or vault door, so that, by the continuous movement of its time mechanism, locking and unlocking will be effected daily or periodically. . . . The gist of my invention, therefor, is the combination in a time lock of time mechanism revolving a graduated dial, which serves to oscillate a pivoted bent lever. That, in turn, induces the oscillation of a pivoted dog or obstruction to the retraction of the multiple sliding bolt work. Subordinate to this main principle or chief organization of my time lock, I provide that my dial shall be composite in its construction, whereby I obtain what I term a 'differential cam' for convenience of adjustment."

These statements do not appear in the specification of reissue No. 8,550. In the latter specification, what had been previously called "a revolving graduated dial" is called "adjustable devices." The dial is said to have "bolt or dog-actuating points," and a statement is made that the lock of Little

"is, so far as I am aware, the first time lock which locks at a time determined by the time mechanism, while at the same time the hours for locking and unlocking can be changed without altering the construction of the lock."

So that in this reissue, which was granted almost five years after the date of the original patent and over three years after the Gross patent was issued, the attempt is made by Little to cover all devices for determining the time of locking and unlocking on the view that he was the first to invent a lock that would lock up, as well as unlock at a predetermined time. This attempt is embodied in claims 1 and 7 of reissue No. 8,550, which are here repeated:

"1. The combination of independent multiple

Page 135 U. S. 400

bolt work with the time mechanism and locking or dogging mechanism of a time lock, automatically both dogging and releasing the bolt work at predetermined times, substantially as described."

"7. In a time lock, the combination, substantially as above set forth, of the time movements and two adjustable devices, one for determining the time of locking, and the other of unlocking."

Although the first reissue, No. 7,104, was applied for March 15, 1876, more than two months after the Gross patent was issued, no such claims as the above were applied for or taken; nor were they taken in reissue No. 8,035. Claims 3, 7, and 8 of reissue No. 7,104 were abandoned in reissue No. 8,035, and severally appear as claims 7, 16, and 17, in reissue No. 8,550; claim 7 in No. 8,550 being in these words, as claim 3, in No. 7,104:

"3. In a chronometric locking mechanism, the combination, substantially as before set forth, of the clock work and two adjustable devices for determining, respectively, the times of locking and unlocking."

Claims 1, 2, 3, 4, 5, 8, 9, and 11 in No. 8,550 are entirely new. Claim 2 of the original patent, No. 146,832, was not retained in No. 8,550, and only 2 claims out of the 17 in No. 8,550 are found in the original patent.

Infringement is alleged of claim 1 of reissue No. 8,550, which is an entirely new claim, not found in the original patent or in any prior reissue, and of claim 7, which was claim 3 in reissue No. 7,104, and was first amended and then abandoned in the application for reissue No 8,035. If claim 1 of reissue No. 8,550 is construed to cover only the specific devices of Little, operating in the mode described by him, and thus is no broader than claim 2 of the original patent, the defendants' lock does not infringe it. If it is not so limited, it is void, under numerous decisions of this Court.

In Little's time lock, there is a compound cam wheel or disk, composed of two cam wheels placed face to face on the same axis, each having a portion of its outer edge cut away and so arranged that they can be turned with relation to each other so as to increase the length of their common projection or common depression, and be fastened together in any desired

Page 135 U. S. 401

position by means of a slot and a thumb-screw in one of them. When adjusted, this compound cam wheel is revolved by clock work, and made alternately to lift up and let down a lever which in turn lifts up or lets down another lever, the end of which is supported in a position behind one of the bolts of the door, or is allowed to drop away from behind it, thus alternately dogging and releasing the bolt. It is the office of the common projection on the wheels to lift and then hold up the levers in the dogging position, and the length of time the bolts will remain dogged depends solely on the length of the common projection.

In the defendants' lock, there is only one time movement, and there are no wheels of any kind, much less wheels like the cam wheels, B and C, of Little's original patent, with projections and depressions, which can be rotated so as to increase and diminish the surface of a common cam or depression; nor has it any cam projection or cam depression of any kind, formed in any manner, whose office is to lift and hold up and let fall a lever and thus dog and release the bolt of a safe door; nor has it a device of any kind capable of performing the function of Little's cam wheels. Little does not describe or suggest in his original patent any way by which he can dispense with the use of his cam projections to lift and hold up the dog, and he confines claim 2 of his original patent to a combination in which two cam wheels, capable of being rotated and adjusted with relation to each other, so as to increase and diminish the surface of a common cam, for the purpose of lifting and holding up the dog, are essential.

Claim 7 of reissue No. 8,550 was evidently drawn so as to cover the time attachment of the defendants' lock, which does not itself lock up or unlock the bolt work, but only determines the time when the bolt work may be unlocked by the combination lock. Claim 7 is not limited to devices which automatically lock and unlock, but extends to devices which merely interfere with mechanical locking and unlocking. Such a construction of claim 7 -- a claim once abandoned in the Patent Office, and restored in this reissue -- cannot be admitted in consistency with numerous decisions of this Court on the

Page 135 U. S. 402

subject of reissues. If, however, claim 7 is so construed as to be no broader than claim 2 of the original patent, then the defendants' lock, as it did not infringe the latter claim, does not infringe claim 7.

It is shown that it was old to use time mechanism revolving dials with adjustable devices, pivoted levers, and dogs to lock and unlock door bolts, and that the combination of clockwork, adjustable cam wheels, and a two-armed lever oscillated thereby was old. In this view, in his original patent, Little very properly limited his claims to his mode of connecting two clocks with a common wheel, so that both could act together in turning it, and either one could turn it alone in case the other stopped, and to the employment of the specific cam wheels with depressions and projections so located as to increase and diminish the surface of a common cam by rotation on each other, so as to lift and hold up the dog behind the bolt of the door, and to the introduction of his Sunday wheel. The lock of the defendants did not infringe any of the claims of the original patent because it did not have the two clocks, the Sunday wheel the cam wheels, or any mechanical equivalent therefor, and did not move the dog automatically into the dogging position.

The application for reissue No. 7,104 was made more than two years after the original patent was granted, and one month and seven days after the Gross patent was issued containing the devices which are employed in the defendants' lock. Reissue No. 8,550 was applied for nearly four years and nine months after the original patent was granted, and more than two years and eight months after the Gross patent was issued, and after the lock of the defendants had been put into use. No excuse is shown for these delays, nor is there any defect or insufficiency in the specification of the original patent. In December, 1877, during the pendency of the application for reissue No. 8,035, Little acquiesced in the rejection, for want of novelty, of claim 2 of his original patent, and then abandoned a claim corresponding with claim 7 of reissue No. 8550, and took out reissue No. 8,035 without such claim. The lock of the defendants did not infringe any claim of reissue

Page 135 U. S. 403

No. 8,035. Claim 1 of reissue No. 8,550 is entirely new, and claim 7 of that reissue is the same as claim 3 of the application for reissue No. 8,035, which claim was first amended and then abandoned. It was not lawful to introduce claim 7 into reissue No. 8,550, after such formal abandonment of it. If either claim 1 or claim 7 of reissue No. 8,550 covers a device which would not have been covered by claim 2 of the original patent or by any of the claims of reissue No. 8,035, it is invalid, and even if claims 1 and 7 could properly be restricted to the cam wheels of the specification or their mechanical equivalents, operating as described, as claim 2 of the original patent was restricted, the lock of the defendants does not infringe either claim 1 or claim 7.

For these reasons, it must be held that the plaintiffs have no cause of action against the defendants under claims 1 and 7 of reissue No. 8,550.

It results that the decree of February 12, 1886, must be affirmed so far as it relates to the Sargent reissue, No. 7,947, and reversed so far as it relates to the Little reissue, No. 8,550, and the cause be remanded to the circuit court with a direction to dismiss the bill of complaint, with costs to the defendants. As the plaintiffs fail in this Court on both appeals, they are to pay the costs of this Court on both appeals.