151 FEDERAL REPORTER.

ticular art could have suggested and introduced without the exercise of inventive faculty. This evidence is supplied, not only by the many patents for improvements, which fell short of producing the simple, compact, less expensive, and more efficient bearings of the patent, but by the sterility, during 20 years, of the great army of mechanics employed by the various sewing-machine manufacturers."

In Brunswick v. Thum, 111 Fed. 904, 50 C. C. A. 61, the patent covered merely an upgrade portion inserted in a bowling-alley returnway. There the court said as follows:

"The improvement consists in an extremely simple, and, it would seem, perfectly obvious, application of common knowledge as to the law of gravitation. Were there nothing in the record but the bare statement of facts above set forth, we would be inclined to concur with the court below in the proposition that, 'had any skilled mechanic been asked to perfect a structure that should gradually arrest the momentum of the returning ball, an ascent would obviously have been the structure needed.' But in this case, as in the Singer Case, the evidence shows conclusively, and indeed without contradiction, that this very demand for an arrester of the returning ball was before skilled mechanics for many years, and yet no one before Reisky hit upon the device, which now seems so obvious."

In George Frost Co. v. Cohn, 119 Fed. 505, 56 C. C. A. 185, where the invention consisted in the substitution of a button of rubber or similar material for a metal button in a hose supporter, this court said as follows:

"Whether the feature of novelty is the employment of a new material, or a change of adaptation in other respects, the inquiry always is whether what was done involved the exercise of inventive faculty as distinguished from the ordinary skill of the calling. When the substitution has accomplished a result which those skilled in the art had long and vainly sought to effect, the evidence that it involved something beyond the skill of the calling is so persuasive that it generally resolves the inquiry in favor of patentable novelty. Applying that rule to the present case, we conclude that the patent in suit, as regards the claim in controversy, is not valid for want of patentable novelty."

Upon the same ground, in Brown v. Huntington Piano Co., 134 Fed. 735, 67 C. C. A. 639, this court sustained a patent for a minor improvement in making the adjustment of a music desk on a piano automatic; and in Rumford Chemical Works v. Baking Co., 134 Fed. 385, 67 C. C. A. 367, the patent was sustained where the change from the prior art consisted in substituting granular for pulverulent material in baking preparations.

In these circumstances, the disk produced by the patented process responds to the test of success where others have failed. But, in addition to this inventive success, it is also a commercial success. And this success is not subject to the criticism that it is due to extensive advertising, or the attractive manner of placing the articles before the public, or "the energy with which they were forced upon the market." McClain v. Ortmayer, 141 U. S. 419, 428, 12 Sup. Ct. 76, 35 L. Ed. 800. Nor is the disk merely such an element of a device that its sales may be ascribed to the popularity of other elements thereof, or of the entire organism. Doig v. Morgan, 122 Fed. 460, 59 C. C. A. 616. The patentable novelty of the process of the patent is not only indicated by large sales, but also by the unassailable evidence of that most sincere form of flattering recognition, namely,

imitation and appropriation by rival manufacturers. In short, it has so far supplanted all other methods previously used that apparently all disk records are now made by said process, and complainant's chief competitor admits that it has discarded its own patented etching process and has substituted there for the process of the patent in suit. The validity of the patent is thus established by commercial success, resultant solely from inventive success, and such extensive public use as to supersede disks made by other processes, which is "pregnant evidence of its novelty, value, and usefulness." Magowan v. New York Belting & Packing Co., 141 U. S. 332, 343, 12 Sup. Ct. 71, 35 L. Ed. 781.

As to the objections raised that the patent in suit covers a mere mode of operation, we concur in the conclusion of the court below that the process of the patent in suit was a patentable one.

The contentions in support of the defense of noninfringement do not require extended discussion. The defendant, the Universal Company, denies infringement, under a claim that its tool does not cut or engrave its soft material, but displaces it. It does not appear from the evidence that defendant does not use the patented process in making its commercial records. The result of an inspection thereof indicates that they are formed by "cutting or engraving upon a tablet of suitable material by means of * * a suitable stylus," as claimed in the patent in suit. Therefore, as this court said in Hemolin Co. v. Harway Co. (C. C.) 131 Fed. 483, 487, "if the defendants can prove to the contrary, they should do so."

*

The defendant, the American Record Company, denies infringement, on the ground that it does not impress the matrix of the patent "into a tablet of suitable material," because it interposes a process of making an additional matrix, not included in the patented process, and impresses this additional matrix into the material. In effect, it claims that although it employs the first processes of the patent to make the matrix and the last process of the patent to make the commercial record, yet because of the interposition of a superfluous additional duplicating process it escapes infringement. It is unnecessary to refer to the authorities that such a claim is without merit.

The decrees are reversed, with costs, and the causes are remanded to the court below, with instructions to enter decrees for injunctions and accountings in accordance with this opinion.

VICTOR TALKING MACH. CO. et al. v. AMERICAN GRAPHOPHONE CO. (Circuit Court of Appeals, Second Circuit. January 14, 1907.)

No. 116.

1. PATENTS CONSTRUCTION OF CLAIMS-PROCEEDINGS IN PATENT OFFICE. Where it is shown that a patentee has acquiesced in the rejection of broad claims by the Patent Office by their cancellation and the substitution of narrower claims therefor, the limitations thus introduced into such claims must be read and interpreted in the light of the circumstan

ces surrounding the issuance of the patent, as shown by a reference to the rejected claims and to the prior state of the art.

[Ed. Note. For cases in point, see Cent. Dig. vol. 38, Patents, § 244.] 2 SAME.

An applicant for a patent is entitled to specify and claim in his application the subject-matter of which he believes himself to be the original inventor, and to persist in his assertions and claims until final action thereon by the Patent Office; but when his claims are rejected on references cited against them, he is called upon to exercise his election between insistence and appeal, or desistance and acquiescence, and, if he acquiesces, the public is entitled to the benefit of the limitations and admissions imposed upon him as a condition precedent to the allowance of the patent.

[Ed. Note. For cases in point, see Cent. Dig. vol. 38, Patents, § 244.] 3. SAME-INFRINGEMENT-SOUND RECORDS.

The Berliner patent No. 548,623, for duplicate sound records and method of making the same, in which the matrix is protected against the sulphur fumes from hard rubber by facing it with a metal not attacked by such fumes, is limited by the proceedings in the Patent Office to records composed of hard rubber, and is not infringed by records made from a different material and one which does not require the method of the process claims.

In Error to the Circuit Court of the United States for the Southern District of New York.

For opinion below, see 145 Fed. 189.

This cause comes here on appeal by complainants from a decree on final hearing of the United States Circuit Court for the Southern District of New York, dismissing bill for infringement of patent No. 548,623, granted October 29, 1895, to Emil Berliner, for duplicating sound records. The opinion of the court below is reported in 145 Fed. 189.

Horace Pettitt, for appellants.

Philip Mauro and C. A. L. Massie, for appellee.

Before WALLACE, LACOMBE, and TOWNSEND, Circuit Judges.

TOWNSEND, Circuit Judge. The court below reached the conclusion that the sound records of the defendant did not infringe the claims in suit, for the reason that said claims were limited in terms and in fact to an article of manufacture composed of hard rubber. An examination of the file wrapper confirms the correctness of this conclusion. It appears therefrom that the patentee, by reason of the rejection of his broad original claims, was forced to substitute the narrower claims upon which the patent was finally allowed.

The original application for the patent was filed by Berliner himself, and in its specification covered generally a method of making duplicate records by impressing a matrix, into suitable material, or blank sheets of impressible material, and a modified method of making such records. when rubber was used, which consisted in coating the matrix with iron or nickel so as to protect it from the sulphur fumes generated by the rubber. One claim covered broadly the method of pressing the matrix "into a material which is hard in a cold state and soft and yielding

in a warm state." Other claims were for pressing it into "softened hard rubber." The broad claim was twice rejected. Thereupon, Berliner, through his attorney, canceled said claims, and for the broad claim substituted two new claims, one for pressing the matrix "into a material, while the latter is softened by heat, and holding it in contact with the same until the material has cooled and hardened," and another for pressing it "into plastic material" and holding it in contact, as above, and he inserted for the first time a claim for a product, being for a record consisting "of a disk of hard rubber," etc. Both of the above substituted claims were rejected and canceled; the narrow claims were not rejected. Thus every claim of invention was narrowed down to the specific method of protecting the matrix against the fumes from hard rubber, and thus producing an improved matrix, and of impressing it in hard rubber, and for the resultant product.

Thereafter the attorney for Berliner, asking for a reconsideration of the case, said, inter alia, as follows:

"While the applicant is positive that none of the processes described in the references cited can be practiced, or have ever been practiced, upon hard rubber, still, in order to avoid further delay and with the hope of bringing this case to a termination, claims 1, 2, and 5 have been canceled. There now remain in this case only the process claims which stand allowed, and in addition thereto three claims for the article of manufacture produced by appllcant's process, and, as he fully believes, practically producible only by his process."

And, distinguishing the references cited to processes for making rubber stamps, the attorney says:

"They have no resemblance to each other, for the one is in the natural state soft, yielding, and elastic, and the other is hard and rigid; both serve entirely different purposes, for a rubber stamp could not be used for reproducing sounds, and a sound record could not be used for printing."

The attorney further says:

"The examiner says that the article claimed might be produced by other processes than those claimed by the applicant, and that therefore a division should be effected. Now this is only a somewhat free guess on the part of the examiner, but experience has taught this applicant that the only prac ticable way of producing the article claimed is by the process claimed, and surely the knowledge of the applicant must in these matters control the opinlon of the examiner, who is not supposed to have practical knowledge in these matters."

And again, later, the attorney says:

"Has anybody ever attempted to reproduce a sound record upon hard rubber, and, if he has attempted it, has he succeeded?"

Finally, the examiner insisted that:

"The statement of invention contained in the second paragraph of the amendment inserted in page 1 is broader than the invention covered by the claims, and should therefore be restricted. See patent No. 362,419, to Edison, of record."

The attorney for Berliner, therefore, canceled said paragraph, which is as follows:

"The process of producing copies of the sound records consists, broadly, in depositing copper or other metal on the original sound record, and thus obtaining a matrix, and then impressing this matrix into blank sheets of impressible material. The product is a duplicate of the original record."

In these circumstances, it is clear that the applicant, in order to se cure his patent, acquiesced in the rejection by the Patent Office of his broad claims, and thereby secured a patent for an article of manufacture of hard rubber, claimed by him to be producible only by his process, which necessarily consisted in the use of the materials described in the process for overcoming the difficulties encountered in making the product in hard rubber, or in the use of other materials, similar in character, for overcoming said obstacles. Here the patentee, having selected a well-known product, having well-known characteristics which made it desirable for reproducing records, invented and patented a novel means for overcoming the obstacle or objection involved in its use, and he is entitled to the benefit of this invention. But upon the familiar principles applied in such cases, his action was equivalent to a notice to the world that it could make any other duplicate records, provided they were not the records limited as specified and claimed in his patent. The construction now claimed by the patentee is, for the purposes of this inquiry, practically the same as though the statements canceled in the specification and the canceled claims had remained in the patent, namely, for any impressible material which is like hard rubber in appearance and is hard when cold and softens under heat. In this connection it may further be noted that the Herrington patent No. 399,265, one of the references cited by the Patent Office, disclosed a process of making duplicates of cylindrical records by the use of sheets of wax, resin, pitch, celluloid, glue, rubber, or their compounds, or some equivalent material adapted to be softened by means of heat or otherwise. In these circumstances, the settled rules as to the effect of the admissions and declarations of an applicant for a patent during the pendency of an application are directly in point. Where it is shown that the patentee has acquiesced in the rejection of broad claims by their cancellation, and has substituted narrower claims therefor, the limitations thus introduced into such claims must be read and interpreted in the light of the circumstances surrounding the issuance of the pat-. ent, as shown by a reference to the rejected claims and to the prior state of the art. Greene v. Manhattan Co., 135 Fed. 520, 68 C. Č. A. 70, and cases cited; Smith v. Macbeth, 67 Fed. 137, 14 C. C. A. 241. The applicant for a patent is entitled to specify and claim in his application the subject-matter of which he believes himself to be the original inventor, and to persist in his assertions and claims until final action thereon by the Patent Office. But when his claims are rejected on references cited against them, he is called upon to exercise his election between insistence and appeal or desistance and acquiescence. And while the language of the patent as issued may not be contradicted by mere voluntary expressions of opinion, or argumentative suggestions made by the applicant in his communications to the Patent Office, especially where no change is made in the claims, and while a patentee is entitled to the benefit of such equities as may be properly raised in his behalf from the transactions disclosed in the file wrap