all respects with claim 1 (and substantially identical with claim 2) except for the fact that it called for a "coiled wire tube" instead of "means intervening" was disallowed by the Examiner, as so anticipated. The plaintiff then amended by including a "barrel" feature in both claims and claim 1 was allowed. Claim 17 was again rejected "as not patentably distinct from claims 1 and 4 allowed." In this action the plaintiff acquiesced.
The case is so nearly on all fours with U.S. Repair, etc., Co. v. Assyrian Asphalt Co., 183 U.S. 591, 22 S. Ct. 87, 46 L. Ed. 342, that the opinion in that case may be applied to this with a very little paraphrasing, thus: "Another objection to the proposed limitation of the claim by making it read * * * ('a coiled wire tube') * * * in lieu of the unqualified word * * * ('means') * * * is the fact that the * * * ('17th') * * * claim, which contained the additional words, was withdrawn by the patentee upon a ruling or declaration of the Patent Office that the 1st and * * * ('17th') * * * claims were the same in substance and could not both be permitted to remain in the case. * * * Having voluntarily abandoned the claim for * * * ('a coiled wire tube') * * * the patentee * * * may not now insist that a broad claim containing no suggestion of such inventijon shall nevertheless be subjected by construction to the same restriction."
The Examiners' additional statement in rejecting claim 17, "the use of the 'coiled wire tube' for the 'intervening means' defined in claim 1 is not patentable in view of the German patent of record," is not so hard to understand as the plaintiff appears to think. In allowing claim 1 the Examiner obviously felt that a barrel feature was the only thing which saved it. He had already said that "means intervening" was not patentable, and then he went on to say that further defining "means" as a "coiled wire tube" did not help the situation, because the coiled wire tube was no advance over the German patent. Therefore, he said, the combination as patentable, which meant including the barrel, was identical in the two claims. Of course, he was in error in thinking that the barrel was a new feature, because it is clearly disclosed in British No. 5,741 of 1906 to Edwards and Watson, but that patent probably had not been called to his attention.
Claim 3 is clearly not infringed and the plaintiff does not seriously contend that it is. In the defendant's device the inner thrust member does not surround either the stem or the slide member.
Claims 5 and 6 call for a closely coiled inner tube and could be dismissed as invalid for want of patentable novelty for the same reasons which apply to claims 1 and 2, except for the fact that they contain the additional requirement that one of the features of the combination -- a small rigid stem which takes power from the thrust member and actually pushes the shutter -- be "adjustably joined" to the thrust member (claim 5) or "threaded to" it (claim 6). This form of connection was described by the plaintiff himself as "a minor feature of the machine * * * only a side issue" and though claims 5 and 6 are expressed as combination claims they are obviously in reality nothing more than claims for this particular form of connection. The patent to Dakin and Underwood shows a method of joining the thrust member to the stem which is substantially the same as that of the alleged infringing device. The argument made by the plaintiff that the two prick points disclosed in the Dakin drawing deform the coils of the thrust member and prevent it from being screwed out is without support in the record, and the fact that Dakin uses the word "fixed" in describing his method of attachment does not necessarily mean that the stem is so fixed that it cannot be unscrewed. The connection of the infringing device is a single prick point and it is rather hard to see from an X-ray photograph to what extent it deforms the coils of the thrust member if at all, but, taking the substance of the matter, that type of connection is clearly disclosed by Dakin. If the claims are to be construed as covering it they would be invalid as anticipated, and as a matter of fact I think they are.
I have not dealt with the question of the anticipation of the plaintiff's device by the defendants themselves because, in view of the conclusions reached in this opinion, it is unnecessary for me to make any definite findings upon this point, and I refrain from so doing.
The statements of fact contained in this opinion may be taken as findings of fact. If sepasrate findings of fact are desired the parties may submit requests in accordance herewith.
The conclusions are:
(1) The combination of closed coil inner thrust member and open coil outer sheath member is not patentable because its elements were known to the prior art and no new mode of operation or functional relationship arises from putting them together.
(2) Claims 1 and 2 cannot be interpreted as calling for a closed coil inner thrust member in view of the file wrapper history of this patent.
(3) Claims 1 and 2 are anticipated.
(4) Claim 3 is not infringed.
(5) Claims 5 and 6 are invalid because United States patent No. 1,297,327 to Dakin and Underwood antedating the plaintiff's application discloses the method of attaching the thrust member to the stem claimed, and conclusion "1" applies to these claims.
Judgment may be entered for the defendant.
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