does not correspond to this description. Instead of the plates being of differing length, and so proportioned that when the stretcher is folded the bars will be in a single plane, appellants' commercial curtain-stretcher contains brace plates of the same length; and instead of both side bars being pivotally connected upon the plate (that is, closely connected), the slot is used to give a loose adjustment, so that when folded up, instead of being in a single plane, the bars can be in two separate planes, lying with their sides upon each other, and without utilizing the springing quality of the material at all. And this, though absent from the description, is said to be contained in the claims sued upon. The question of law presented, then, is this: Can the patentee rightfully include in his claims something that does not emerge from the description? Can a patentee describe something to the world in his letters patent that means just that thing or its equivalents and nothing else, and, having claimed that, claim in addition something not thus described and not its equivalents?

We think not. The description is required to set forth the invention in such full, clear, concise and exact terms as to enable any person, skilled in the art to which it appertains, or with which it is most nearly connected, to make and use the same; and the claim is to enable the public to know the bounds and scope of the invention "thus disclosed"; but "any claim which is broader than the described invention, is void; even where that invention is valuable, and could have supported a valuable claim." Walker on Patents (4th Ed.) § 177, citing Edison v. American Mutoscope Co., 114 Fed. 934, 52 C. Č. A. 546.

There is nothing in Winans v. Denmead, 15 How. 330, 14 L. Ed. 717, or the Paper Bag Patent Case, 210 U. S. 405, 28 Sup. Ct. 748, 52 L. Ed. 1122, brought to our attention since the argument, nor in any of the rules of law cited ("that the claims of every patent should be construed, if possible, to cover and protect the actual invention made by the patentee, and should not be restricted to the particular form of device disclosed in his patent, if other forms may embody it," or that "the patentee's claim is the 'measure of his invention,'" or that "where the claims of a patent are clear and unambiguous, there is no room for construction") that contravenes what has just been said; for what is said in both of these cases, and in all of these rules, is based on the fact that the inventive concept is disclosed in the description, whatever may have been the mechanical form that such concept subsequently took. Certainly it was not intended by these cases or these rules that an inventive concept, that is separate and apart from the one embodied in the description, should become a part of the patent simply by being included in the claims.

The concept contained in the description of the letters patent before us is a curtain-stretcher, the bars of which, when folded, will lie in the same plane. That concept runs throughout the whole description. Both the advantage of the invention and its means of operation are confined to that concept. "By reason of the fact that they lie in the same plane," says the description, "both sets will be held against unfolding without any other fastening means." Now, the stretcher actually put upon the market, different from this, is clearly an afterthought. And the mere omission of the words "adapted to fold in the same plane,"

in the claims sued upon, cannot be held to show a concept in the description different from the one to which the description is confined The decree of the Circuit Court is affirmed.

NOTE. The following is the opinion of Kohlsaat, Circuit Judge, in the trial court:

KOHLSAAT, Circuit Judge. Complainants seek to have defendant enjoined on final hearing from infringement of claims 2, 3, 5, 6, and 9 of patent No. 705,857, granted to complainant Mayr, July 29, 1902, on application filed November 16, 1901, for a curtain-stretcher. The claims in suit read as follows, viz. : "2. In a curtain-stretcher, a center brace, a plate secured to one end thereof, a plate adjustably secured to the other end of said brace, and jointed side bars pivotally connected with said plates respectively and both retained in pivotal connection in an extended and folded position for the purpose set forth.

"3. In a curtain-stretcher, a center brace slotted at one end, a plate secured to the unslotted end, a plate adjustably secured to the slotted end by a bolt and winged nut, and jointed side bars pivotally connected with said plates and both retained in pivotal connection in an extended and folded position, as and for the purpose set forth."

"5. In a curtain-stretcher, a center brace, a plate connected with each end thereof, jointed side bars pivotally connected with said plates and both retained in pivotal connection in an extended and folded position, said side bars having rounded inner corners and flat ends, as and for the purpose set forth. "6. In a curtain-stretcher, a center brace, a plate adjustably secured to one end thereof, a plate secured to the other end thereof, a side bar composed of two pieces pivotally connected with each of said plates and both retained in pivotal connection in an extended and folded position, the abutting ends of said pieces having rounded inner corners and flat ends, as and for the purpose set forth."

"9. The combination in a curtain-stretcher of two end bars, two side bars each of which is composed of two pieces, a center brace bar pivotally connected with said side bars at each end, and both retained in pivotal connection in an extended and folded position, each of the two pieces composing said side bars having rounded corners whereby they may be folded inward upon said center brace bar, as and for the purpose set forth."

The main difference between the claims sued on and those not sued on consists in the omission from the former of the provision requiring the device to be "so constructed as that it shall be adapted to fold in the same plane." This clause, defendant insists, should be read into all the claims. Complainant's commercial device does not conform to this description. The only stretcher covered by the drawings and specification consists of two side bars slotted at their outer ends, supported by a center bar or brace, and two end bars or braces, all slotted at their ends next the upper side bar, as shown in the drawings, whereby the size of the frame may be varied. These side bars are each in two parts, or sections, pivotally secured to plates, one which is rigidly attached to the lower end of the middle brace at the longitudinal center of said lower side bar, the other having movable or floating connection with the slot in the upper end of said center bar, wherein its upward and downward movement in the slot are made rigid at will by means of a set screw. This upper plate, as stated, is made wider than the lower plate, and when moved in the slot carries the pivoted sections of the upper side bar with it. The outer ends of the upper side bar move correspondingly in the slots formed in the end bars. Whenever it is desired to narrow the frame, the end braces or bars are moved toward the center in the slots provided in the side bars for that purpose, and likewise fixed at desired points by set screws. By reason of the greater width between the pivotal connections of the sections of the upper side bar, those sections are shown to fold downwardly, so as to inclose in the same plane the upwardly folded sections of the lower side bar, edge to edge. Of course, it is a matter of indifference as to which plate is the wider. The upper is taken for the purpose of illustration, merely, in the drawings. Defendant's device, as well as complainant's commercial sketches, do not employ 180 F.-47

180 FEDERAL REPORTER.

the plates of different width. Therefore, if it be an essential feature of the patent in suit that the side bars be folded in the same plane, defendant cannot be held to infringe, since his device is not adapted to be, and is not, folded in the same plane.

The curtain-stretcher art is an old one, and analogous to quilting and other stretcher arts. The patent in suit had a hard struggle in the Patent Office, mostly in overcoming the provisions of patent to Whipple, No. 680,301, granted August 13, 1901, for quilting frames. It is claimed by complainant that the examiner's objections were overcome after several attempts by the addition of words providing for a device wherein the sections of the side bar should, respectively, remain in pivotal connection with the several plates at all times, whether open or folded. leaves the court in doubt as to whether this change in wording, or persistent An examination of the file wrapper and contents insistence won the day. The claims in suit do not call for adaptability to being folded in the same plane. Nothing is said in them about folding. Indeed, it is not disclosed how the device of the claims in suit could be folded, in the absence of drawings and specification. The sections of the side bar as described in the claims must inevitably obstruct each other in folding.

This device seems somewhat at variance with the stretcher covered by the patent. If, however, it be conceded that complainant is entitled to a stretcher which employs plates of equal length at both ends of the center brace, it becomes necessary to look into the prior art to ascertain whether there be any novelty in maintaining pivotal connection between the side bar sections and the several plates upon the center brace. The prior art, in this respect, is fairly summed up in the Whipple stretcher, as shown in figure 5 of the drawings accompanying Whipple patent No. 655,038, granted April 7, 1885. Substantially the only difference between this latter stretcher and that now claimed by complainant consists in the means employed for securing pivotal connection of the side bar sections with the plate located near the end of the center brace.

For the purpose of insuring freedom of action in folding the sections, or arms, the plate is provided near its ends with diagonal pivot slots through which the pivot moves, thus making it possible to withdraw the point of the pivoting away from the center of the plate. The side sections may in this way be raised into, or lowered from, an end to end alignment without undue frictional interference with each other. This result is attained in the patent in suit by rounding the corners of the ends of the bars or sections of the side bar adjoining the center brace. This would seem to be the equivalent of the pivot slot of the Whipple patent above referred to. In both devices, the arms or sections of the side are in constant pivotal connection with the plate upon the center brace; the one, more convenient than the other perhaps, but to all intents and purposes the same. That the Whipple device shows the operation as to one side bar does not change the situation. Both require the clamping of set screws to hold them in place. The rounding of the corners above spoken of is found, but not claimed, in the Carlson patent No. 701,014. This patent discloses a stretcher which folds in practically the same manner as does defendant's and complainant's commercial device.

From the file wrapper and contents it appears that the patent in suit was not cited by the examiner in connection with the granting of this patent, although it was pending at the same time and granted prior to the issue of the patent in suit upon an application filed subsequent to the filing of the application for the patent in suit. It is also found in patent No. 314,997, granted to Camp on April 7, 1885, for a cot.

There is no merit in complainant's contention that the term "pivotally connected," as used in the claims in suit, is not broad enough to include what they term the shifting oscillating connection of the bolts in the slots f4 and fs of the Whipple device. Pivotal connection does not necessarily mean that the pivot shall be permanently located or fixed. clearly a pivotal connection. If the specification and drawings are to be reThe Whipple arrangement is sorted to, they call for a stretcher which is so constructed that it will fold in the same plane. The same construction which is asked for by complainant as to the claims in suit-i. e., that folding in the same plane is not contemplated therein-would eliminate the rounded corners and flat ends from claims 2 and B, since they are not therein mentioned. These claims, if so construed, would

read exactly upon the Whipple patent. If the diagonal plate slot of Whipple is the equivalent of the rounded inner corner and flat end of claims 5, 6, and 9 in suit, and of each thereof, then the same is true of these claims. Unless the claims in suit are limited to stretchers so constructed as to fold in one plane, they are deemed to be anticipated by the prior art. If they be so limited, defendant does not infringe.

The bill is dismissed for want of equity.

GEORGE FROST CO. et al. v. SAMSTAG et al.

(Circuit Court of Appeals, Second Circuit.

No. 327.

July 19, 1910.)

1. PATENTS (§ 21*)—Use of Different MATERIAL—“INVENTION." The use of a different material in constructing an article previously patented involves invention where it produces a useful result, increased efficiency, or a decided saving in operation.

[Ed. Note. For other cases, see Patents, Cent. Dig. § 23; Dec. Dig. 21.*

For other definitions, see Words and Phrases, vol. 4, pp. 3749-3754.] 2. PATENTS (§ 328*)-INFRINGEMENT-HOSE SUPPORTERS.

Gorton patent, No. 552,470, for a hose supporter, in so far as it provided for a rubber button, involved patentable invention and covered a supporter having a shankless button of rubber or other clinging material Appeal from the Circuit Court of the United States for the Southern District of New York.

Suit by the George Frost Company and another against Henry F. Samstag and others. From a decree of the Circuit Court for the Southern District of New York dismissing the bill on the ground that letters patent No. 552,470, for hose supporters, was not infringed ([C. C.] 173 Fed. 793), complainants appeal. Reversed.

W. K. Richardson and A. D. Salinger, for appellants.
Edmund Wetmore and George D. Seymour, for appellees.

Before WARD and NOYES, Circuit Judges, and HAND, District Judge.

WARD, Circuit Judge. This patent has been heretofore considered by this court and upheld as for an invention which made the first really practical garment supporter. The Circuit Court in Frost v. Cohn (C. C.) 112 Fed. 1009, and this court on appeal-119 Fed. 505, 56 C. C. A. 185—have held that Gorton's invention was the substitution in garment supporters of rubber or an equivalent material for the button in combination with the old metal pear-shaped loop in place of any other material previously used. Judge Coxe said:

“The crucial question is one of invention. It is argued by the defendants that Gorton's sole contribution to the art was the substitution of a rubber button for the metal buttons previously used, and that this was merely a change of material involving only mechanical skill. Conceding that the defendants' diagnosis of the issue is somewhat severe in lopping off the other members of the combination, nevertheless the court sees no way to escape the conclusion that the fate of the patent depends upon the effect of the introduction of the rubber button into the old structures. Did this involve invention? Assuming that the case involves a change of material and nothing more, how stands the law?"

*For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

180 FEDERAL REPORTER.

In Hicks v. Kelsey, 18 Wall. 670, 21 L. Ed. 852, Mr. Justice Bradley states the rule as follows:

"The use of one material instead of another in constructing a known machine is, in most cases, so obviously a matter of mere mechanical judgment, and not of invention, that it cannot be called an invention, unless some new and useful result, an increase of efficiency, or a decided saving in the operation, is clearly attained. Gorton's achievement is clearly within the exception and combines the three alternative essentials there stated. His supporter attains a new and useful result, an increase of efficiency and a saving in operation."

He referred to his decision in Union Hardware v. Selchow (C. C.) 112 Fed. 1006, handed down at the same time, in which invention was not found in substituting sheet steel for cast steel in trucks for roller skates. There can be no doubt as to what his opinion of Gorton's invention was.

Judge Wallace on appeal said:

"As the scope of the claim must be as broad as any structure which would infringe it, the consideration of its patentable novelty is narrowed to the single question whether it was invention to substitute in the old hose supporter, in lieu of the metal button, a button made of rubber, leather, felt, or any other fibrous or yielding material to which the fabric of the stocking would tend to cling.

"On first impression it would seem to have been an obvious thing to select some kind of material for the button that would resist the tendency of a smooth button to slip, although firmly gripped, and yield sufficiently, while resisting the slipping, to obviate the abrasion of the fabric. knowledge that rubber is neither as hard nor as unyielding as metal, bone, or It was common pearl. It was also common knowledge that it has the property of clinging, and its use on shoes, stairway steps, and for mats and floor coverings are familiar instances illustrating its adaptability to prevent slipping. It had also been used for buttons in order that its elasticity would permit the button to yield easily to sudden pressure, and yet not abrade the fabric of the buttonhole, as in the instance of the collar stud of the Allen patent. But in none of its prior uses had it been employed as the member of a device between which and another member a portion of the fabric was to be clamped. The instances of the prior use of such a material do not necessarily suggest its adaptability to do the work required of a button in a hose or garment supporter more efficiently than one of metal. That its selection was not an obvious thing is persuasively and cogently shown by the fact that' during many years numerous inventors were trying to remedy the defects in the old device, and it did not occur to them how simply and satisfactorily this could be done by making the button of rubber or some other elastic or yielding material. in the device of the patent was a new one, and imparted to the device a remarkable efficiency, as compared with that of the best type of former devices. Its employment Without the aid of such an experimental demonstration as was made upon the argument, it would be difficult to realize the practical value of the improvement.

"We have not overlooked the prior patent showing a device having a pair of jaws faced with springy or elastic material, which are pressed against the intervening fabric to hold it between them, nor the prior patent for a supporter in which an ordinary button of pearl or bone or some hard material is stitched to its place by thread. These patents are of insignificant value as anticipatory references, or as suggesting the adaptability of the material for the new occasion of its use."

It is true that the court was only considering claim 1 of the patent in connection with a button having a rubber-covered shank.

"Claim 1. In a hose supporter, the combination of the webbing, the loop having an opening large at one end and narrower at the other, the button supporting plate, and the button composed of the central support and the surrounding rubber portion, substantially as set forth."