same thought that Edward has persistently expressed in terms of function,-e. g., in the proposed claims first above quoted. It may be true, as argued, that if Egbert's claims had been allowed after he had lost his demand for priority he would have been compelled to pay tribute to the fundamental claims advanced by Edward, and that therefore he sought to create a precedent against himself in the courts of the District by taking an appeal, which if successful would still have left him an infringer had Edward also succeeded. But when Egbert lost in the appellate tribunal, as he did, he had rendered it impossible, without new evidence or an overruling of solemn judgment once given, for anybody else to get what he (Egbert) had failed to obtain. It may also be true that this was the reason why Commissioner Ewing gave that consent which is the only excuse for jurisdiction in this circuit. Even if we admit all the foregoing, we remain of opinion that the decent and seemly administration of the law does not permit a court of (in this matter) substantially coördinate jurisdiction to overrule (in effect) or disregard all that has hitherto been done, unless and except this whole court is very sure of the matter after considering evidence that is not only persuasive but new. Not being able to arrive at that degree of certainty, the decree appealed from is affirmed without costs. [U. S. Circuit Court of Appeals-Second Circuit.] EDWARD E. GOLD AND GOLD CAR HEATING COMPANY v. NEWTON, COMMISSIONER OF PATENTS. Decided December 16, 1918. 257 O. G., 108. ON PETITION for rehearing. Mr. A. C. Fraser for complainants-appellants. Before WARD, HOUGH, and MANTON, Circuit Judges. PER CURIAM: The opinion heretofore filed (ante, 310; 256 O. G., 649) is misunderstood, when it is represented as a surrender of the majority to the minority. A The questions as to which disagreement exists are not of law but fact; and as to such matters the majority remain firmly of opinion that this court, unless strongly and unanimously convinced of the error of other numerous and competent tribunals, should not in effect reverse their findings. Motion denied. [U. S. Circuit Court of Appeals-Second Circuit.] H. WARD LEONARD, INC., v. MAXWELL MOTOR SALES CORPORATION. Decided June 5, 1918; on motion for rehearing, August 1, 1918. 257 O. G., 817; 252 Fed. Rep., 584. 1. APPLICATION—AMENDMENT-NEW MATTER. Where plaintiff's original application disclosed as the preferred form of the invention the combination of a variable-speed engine, a generator driven therefrom through a magnetic clutch adapted to be rendered intermittently operative, a storage battery to be charged by the generator, and a relay in series in the charging-circuit arranged to intermittently energize and deenergize the clutch to hold the charging-current as nearly constant as possible, and where Figure 5 disclosed a continuously-driven generator provided with a rheostatic generator-field regulator adapted to be gradually operated in one direction or the other through relay-controlled magnetic clutches of the same type as used in the preferred form and the purpose of the arrangement of Fig. 5 was also to "maintain constant a function of the output, and where the invention resided in the combination, the broad idea of regulating the current in such a system being old, and where there was no word of warning that a particular type of relay was essential, Held that amendments are invalid which substitute a pulsating-current theory of operation based upon the action of a particular type of relay, which mode of operation was not originally mentioned and was impossible with Fig. 5, which was accordingly canceled. 2. SAME-SAME-SAME. The practice of amending a case by insertion of nebulous claims and cryptic allusions to possible alternative forms, with the purpose of anticipating subsequent developments in the art, where more explicit amendments would have caused the Examiner to raise the question of new matter, condemned. 3. SAME DISCLOSURE MUST BE DEFINITE. An inventor must do more than give cues for future experiment, and unless he is dealing with elements whose action and reaction are known and certain he is bound to disclose how the combination will operate, a patent being the reward of a tested contribution to the art, not of a pregnant surmise or a promising hypothesis. 4. PATENTS-INFRINGEMENT. Where the combination used by defendant differs from that set forth in the original application of plaintiff by the substitution of an element not the equivalent of any element disclosed by plaintiff, infringement will not be held, even though the plaintiff's claims read on the defendant's device. 84150°-1923 5. SAME-SAME TEST OF EQUIVALENCY. The test of whether one element is the equivalent of another in the combination is whether a journeyman in the art would readily turn from one to the other with certainty of result. On motion for rehearing. 6. SAME MECHANICAL COMBINATION-INVENTION. The specification of a mechanical combination patent generally discloses a large number of elements, and the invention consists in the act of selecting some of these elements for the combination, which constitutes an independent entity, serviceable to the art and theretofore unknown. 7. APPLICATION AMENDMENT-NEW MATTER. Where certain elements are selected for the combination in an application as originally filed, applicant cannot abandon elements originally selected as necessary and substitute other elements not originally suggested as essential where a wholly new idea of coöperation results. APPEAL from the District Court of the United States for the Southern District of New York. Suit by H. Ward Leonard, Incorporated, against the Maxwell Motor Sales Corporation. Decree for complainant, and defendant appeals. Reversed, and bill dismissed. STATEMENT OF CASE. Appeal from a decree awarding the usual injunction upon patents to H. Ward Leonard, Nos. 1,122,774 and 1,157,011. The patents concerned a regulator to prevent the overcharge of a storage battery by a generator connected with the engine of a motor-car. The system included the engine, the generator, the storage battery, and the lamps and other accoutrements requiring the energy of electricity. Two things were necessary to keep the system operative: first, an automatic switch between the generator and the storage battery, which should open when the generator was not in motion. This prevented a leakage of the stored energy from the storage battery back into the generator. It was fully disclosed in the patent, but was old, and does not come into this case, except incidentally. The second is the regulator designed to prevent the greater amperages, generated when the engine goes at high speeds, from "gassing" the battery. The disclosure effects this by disconnecting the generator from the engine at such speeds. The defendant reaches the same result by weakening the field-current of the generator. This is done by throwing into series with the field-coil a resistance, normally short-circuited. Several devices of similar purport were put in evidence, a sufficient description of which appears in the opinion. The claims in issue are: in Patent No. 1,157,011, claims 1, 4, 5, 6, 7, 8, 9, 10, and 12; in Patent No. 1,122,774, claims 2, 3, 4, 9, 10, 11, 16, 21, 22, and 24. Mr. Drury W. Cooper and Mr. Edwin B. H. Tower, Jr., for the appellant. Mr. Clifton V. Edwards and Mr. Lawrence K. Sager for the appellee. Before ROGERS, Circuit Judge, and LEARNED HAND, and MAYER, District Judges. HAND, Dis. J., (after stating the facts above :) The problem before inventors was to prevent the charging of storage batteries by too high a current, resulting in the destruction of those accumulations in the cells upon whose creation the stored energy depends. If the current be too large, which in this instance also means a current of too high voltage, these products, normally aggregated for future use, are turned into gas to the loss and injury of the battery itself. As the battery becomes charged, its voltage rises, and with it the voltage in the charging-current, with which varies the amperage. Hence the amperage of that current is always the test. It must for safety be kept within predetermined limits. As the current varies with the energy developed at the armature of the generator, it necessarily depends upon the speed of revolution; i. e., the revolutions per minute (R. P. M.) of the shaft upon which the armature is fixed. Since the speed of the engine cannot for practical reasons be regulated to the needs of the battery, it follows that either there must be a periodic disconnection or slip between the armature and the engine, which will result in the partial disconnection of the system from its prime motor, or there must be some way of damping or disconnecting the current created by the generator from the battery itself. No plan appears in the record for a periodic disconnection of the generator from the battery, and the alternatives are therefore limited to a disconnection or slip between the generator and its prime motor and the damping of the electromotive force (E. M. F.) of the generator. One of the points of the case, in our judgment a critical one, is whether these two methods of dealing with the problem are for purposes of invention to be deemed equivalent; but we pass this for the moment, assuming for the statement of the problem that they are to be treated as substantially interchangeable. No one disputes that it was well understood among electricians that the electromotive force generated by the rotation of an armature within its field depended upon the current in the field and that a common device to reduce that current was by the introduction of a resistance in the field-circuit. Such a resistance is shown in a system such as is here in question in the patents of Thomson and Moskowitz, though its effect is certainly gradual, and not inserted and with drawn all at once, and at opposite phases of the main current. The new thing which Leonard devised, if anything, did not therefore depend upon the diminution of the current charging the battery, but in the way that that diminution was accomplished. That was as follows: When the current in the charging-circuit rose to an amperage which sufficiently energized the magnet, 28, so that it attracted the armature 28', the circuit was broken, which energized the clutchmagnet. This mechanically disconnected the clutch, and deprived the armature of all future energy from the engine. Any further rotation of the armature depended altogether upon the mechanical momentum theretofore acquired. This would soon be destroyed by the reluctance within the generator, and with it would disappear the current generated in the charging-circuit. When that current had fallen enough to release the armature, 28', it would be snapped back by its spring, and, the clutch-coils coming again into circuit, the clutch-magnet would engage that member of the clutch which was always in connection with the engine. The mechanical connection between the engine and the generator would be reëstablished, and the engine would rotate the armature as before. Now the magnetization of the magnet, 28, must be stronger to attract the armature than to release it because of the air-gap, and the system independently of its inertia, has therefore a maximum current of one value at which the clutch is disconnected and a minimum of another at which it is connected. It is urged that the full corrective effect of the clutch becomes effective at once, either in connection or disconnection; and this is perfectly true, although it is not true that the effect is immediately translated into terms of current. The effect upon the current, on the contrary, is gradual, resulting in a pulsating or vibrating unidirectional flow. A confusion of issues readily arises over the issue of the vibratory character of the current. From the aspect of the battery a constant current is quite as good as a pulsating; Thomson and Moskowitz would charge a storage battery quite as well as Leonard. The supposed advantage of Leonard's device was that his relay operated only at the two critical periods in the current, the maximum and the minimum, and then it operated all at once, and without any possibility of derangement by the jars and shocks constantly happening in a motor-car. The pulsations of the current are therefore taken, perhaps correctly, as a symptom of a system which operates at opposite critical phases in the charging or work current, and that, too, by the entire effect of the corrective. Nevertheless, unless it also appears that such a method of correction necessarily involves a structure which will not be deranged by jars and shocks, it would |