Opinion of the Court. which necessarily included a space between them. So, too, the lock of the Gory patent had a projecting rear-plate, but lacked the bent-in feature and slitted front-plate. But the Spiegel patent presented no patentable differences. The specification and claim of the original patent, as allowed, described and covered a lock per se of a special construction, and did not extend to or include anything in combination therewith. In the application for reissue, filed April 28, 1883, the original specification was amended in two material respects. The new matter consisted of a statement describing how a mortise should be formed, and how the lock is to be combined therewith, so as to be held laterally therein, as follows: "By means of the portions of the walls of the mortise which are in front of the locking-plate G' and in the rear of the frontplate of the lock." And there was also added this further statement: "It will thus be seen that the lock is prevented from lateral displacement by the projections upon the backplate in combination with the corresponding shape of the mortise, and that it is prevented from vertical displacement by the thin strip m and bent part G'." With these additions to the original specification, there were allowed in the reissue, the original claim and three new claims, as follows: "1. A cabinet-lock having its front-plate and rear-plate extending laterally beyond the body of the lock, in combination with the mortise, whose walls enter the space between the front and rear-plate, whereby fastening screws are dispensed with, substantially as described. "2. A cabinet-lock having its front-plate and rear-plate extending laterally beyond the body of the lock, and having also the edge G' upon the rear-plate bent toward the companion plate, substantially as described, and for the purpose specified. "3. A cabinet-lock having the thin strip m and the slit n at the lower corner of its outer plate, substantially as described, and for the purpose specified." Of these reissue claims the first is the only one which it is insisted the defendant's lock infringes. It is perfectly manifest that the new matter in the reissue specification was Opinion of the Court. inserted to lay the foundation for either changing the original claim, or the patent covered thereby; or for the purpose of expanding that claim, so as to make it cover substantially what had been rejected on the original application. An examination of the proceedings in the Patent Office, in connection with the original application, and the claim of the original patent, renders it perfectly obvious that the first claim of the reissue is not for the lock as such, but is for a combination of a lock with a mortise, and in this respect it is for a different invention from that described in the single claim of the original patent, which covered only a lock of a definite description. The first claim of the reissue clearly includes, as an element of the combination therein described, a peculiarly constructed mortise to receive the lock. This element the original patent does not indicate as being any part of the invention of the patentee. As already stated, the claim of the original patent is for a lock as such, while the first claim of the reissue is for a combination of that lock with something not claimed as an element in the original patent, viz. a peculiarly shaped mortise. This was a departure from the original claim not warranted by anything appearing in the original specification. Again, this first claim of the reissue clearly operates to broaden and expand the original claim, in that it omits or contains no reference to any means whatever for holding the lock in place vertically, such as are described in the original claim. It drops out and eliminates elements shown in the original claim, such as the bent-in portion of the plate and the slit n and strip m, by means of which the necessity for fastening screws was to be dispensed with. This claim of the reissue was, for these reasons, clearly unwarranted. It does not appear that there was any accident, inadvertence, or mistake in the specification and claim of the original patent, or that it was void or inoperative for any reason such as would entitle the patentee to have a reissue thereof. It is settled by the authorities that to warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated in the original specification, drawings, or models, but it must further appear from the original patent Opinion of the Court. that they constitute parts or portions of the invention which were intended or sought to be covered or secured by such original patent. It is also settled by the authorities that in applications for reissue the patentee is not allowed to incorporate or secure claims covering or embracing what had been previously rejected upon his original application. Bantz v. Frantz, 105 U. S. 160; Heald v. Rice, 104 U. S. 737; Miller v. Brass Co., 104 U. S. 350; James v. Campbell, 104 U. S. 356; Topliff v. Topliff, 145 U. S. 156. For these reasons, and other reasons which might be stated, we are clearly of opinion that the first claim of the reissue patent No. 10,361, dated July 31, 1883, is void, and that appellant was entitled to no relief in respect thereto, even if the original patent on which it was founded could be sustained as a valid patent. In respect to the Spiegel patent of 1885 for improvements in cases for locks, we concur in the conclusion reached by the Circuit Court that it was invalid for want of patentable invention. We are further of opinion that, in view of the state of the art, as shown by the "old-style" lock, by the Gory patent of 1873, and by the Spiegel patent of 1881, the patent of 1885 was fully anticipated. The application for the patent of 1885, as originally filed, contained a single claim, as follows: "I claim as my invention the herein described lock-case having overhanging edges and a front-plate projecting laterally and below the adjacent sides of the case, and rounded at the bottom, whereby the lock is adapted for insertion in a routed cavity into which the lock-plate fits, substantially as described." This was a broad claim to a lock having a projecting frontplate and a projecting cap-plate, so as to form intervening spaces or grooves on the opposite edges of the lock-case, the front-plate being rounded at the bottom. It was practically for the same construction of lock-case as shown in the prior Spiegel patent of 1881, except that the front-plate was to be rounded at the bottom. This claim on an interference with the Orum patent No. 262,977, of 1882, was rejected, the Commissioner of Patents holding that Spiegel had no right to make Opinion of the Court. a claim any broader than the specific device which he showed. He thereupon amended his claim so as to read as follows: "A lock-case having a top-plate and an overhanging cap, and a front-plate projecting beyond the adjacent walls of the cap, and rounded at the bottom, whereby the lock is adapted to be inserted and held in a routed cavity by the projecting front and cap-plates." It was held by the Commissioner of Patents, under the interference already referred to, that this claim was lacking in patentability. Spiegel subsequently presented a specification which, after describing the state of the art, and referring to the original patent of May 24, 1881, stated that "while this latter construction of lock possesses valuable features of improvement not disclosed by the prior art, yet the form of lock shown and described in the patent is such as to preclude its adoption for use in routed cavities, because its front-plate is not of the proper form to fit within and cover a cavity made by a routing-tool. The object of this invention is to obviate the objectionable features herein before set forth, and provide a lock-case of such form and construction that it may have a projecting key-post, if so desired, and be secured within a routed cavity and snugly retained therein, so as to conceal the cavity from view, and form a neat and finished appearance when in place. With these ends in view, my invention consists in a lock-case having its edges constructed to engage or interlock with the side walls of a routed cavity, and provided with a front-plate having a rounded bottom, adapted to fit within a countersunk recess around the routed cavity and constitute a support for the lockcase and conceal the cavity from view." What he claimed as new and desired to obtain by letters patent was: "1. A lock-case having a front-plate formed with a rounded bottom, a cap-plate forming in connection with the front-plate intervening spaces or grooves on the opposite edges of the lockcase, and a top-plate extending over and beyond the cap-plate, the projecting edges of the front-plate being adapted to fit within a countersunk recess around the routed cavity within which the lock-case is inserted, substantially as set forth. Opinion of the Court. "2. A lock-case having a front-plate formed with a rounded bottom, a cap-plate secured to or connected with the front-plate and constructed to form therewith intervening spaces or grooves on opposite edges of the lock-case, and a top-plate extending over and beyond the cap-plate, in combination with a support having a routed cavity provided with a countersunk recess adapted to receive the outer and projecting edges of the frontplate, substantially as set forth. "3. A lock-case having a front-plate formed with a rounded bottom, a cap-plate secured to or connected with the front-plate and constructed to form therewith intervening spaces or grooves on opposite edges of the lock-case to retain it in place within the routed cavity, and a top-plate extending over and beyond the cap-plate, in combination with a support provided with a rounded cavity of a depth sufficient to receive the projecting edge of the top-plate flush therein, substantially as set forth.” These claims were several times rejected by several different examiners, and Commissioners of the Patent Office, because they were lacking in patentable invention, and were anticipated by the prior state of the art and previous patents. How they came to be finally allowed and issued is wholly unexplained in the record. The claim to invention in this patent of 1885 must rest upon differences which existed, if any, between the lock and the mortise, therein described, and what was shown and disclosed in the prior state of the art, and in the Gory patent of 1873, and the Spiegel patent of 1881. In the lock of the patent of 1881, the front-plate was straight at the bottom instead of being rounded as in the patent of 1885. This change involved nothing more than mechanical skill so as to make the bottom of the front-plate fit in the routed cavity, which was necessarily rounded. The further change described in the patent of 1885, of a countersunk recess to receive the projecting frontplate of the lock, flush therewith, was not new; for such countersunk recess was frequently found in the "old-style" locks, when it was desired to make the front-plate thereof flush for the purpose of presenting a neat finish. This countersunk recess, used in connection with the "old-style" locks, was |