the reference letter in connection with the part does not naturally do more. In either case, the claim refers to the named part, in the form shown in the specification and drawings or in any other form which is the equivalent of the form shown; and in determining equivalency, we cannot, usually, get aid from any supposed limitation arbitrarily to be implied from the use of a reference letter. We are aware that sentences may be found among some of the opinions of the Supreme Court, and, indeed, of this court, which, taken by themselves, imply the existence of such an arbitrary limitation, but in no case do we find this to have been the essential ground of decision or to have been more than a makeweight. In Knapp v. Morss, 150 U. S. 221, 228, 14 Sup. Ct. 81, 37 L. Ed. 1059, it is said that the patent must be restricted to the specific form indicated by the letters of reference, because "otherwise, the effect would be to make the claim coextensive with what was rejected in the Patent Office"; and so it appears there that, as usually, the limitation was in truth imposed by the state of the art and not by the reference letters. So, also, in Ross Co. v. Randall, 104 Fed. 355, at page 359, 43 C. C. A. 578, this court, in an opinion by Judge Day, reviewed some of the cases which touched on the subject, and said:

"An analysis of the cases will show that the conclusion reached depends upon the character of the improvement under consideration."

The case held, in substance, that when the invention has already been decided to be of a very limited character, the use of reference letters may re-enforce that conclusion. In two opinions of this court, written by Judge Taft (McCormick Co. v. Aultman, 69 Fed. 371, 393, 16 C. C. A. 259, and Bonnette Co. v. Koehler, 82 Fed. 428, 431, 27 C. C. A. 200), it is held and reaffirmed that the patentee describing his elements by reference to letters on the drawing does not thereby deprive himself of the benefit of the doctrine of equivalents otherwise applicable to his patent. See, also, National Co. v. Interchangeable Co. (C. C. A. 8), 106 Fed. 693, 715, 45 C. C. A. 544; Kelsey Co. v. Spear Co. (C. C. Pa.), 155 Fed. 976, 980, 981; Walker on Patents (4th) Ed.) § 117a.

Rarely, if ever, can a claim using reference letters be saved from anticipation by limiting it to specific form, when the same result would not follow from the mere naming of the part with the implied reference to specification and drawing for identification. To hold that a limitation, beyond what would otherwise exist, is necessarily to be implied from the presence of reference letters, would be so contrary to the underlying principle of interpreting claims by reference to the specification that it cannot be accepted as a general rule. We may add that, just as with "substantially as described," it was, 40 years ago, very common-almost universal-to find reference letters in a claim, while now it is unusual; and it cannot be supposed that patents have grown broader as their number, complexity and refinements have increased. National Tube Co. v. Mark, supra, at page 521 of 216 Fed., 133 C. C. A. 13.

This application, as originally filed, showed an exception, or a possible exception, to the general view just stated. The natural ground

for assuming, as the examiner did, that the first claim was broader than the second, was that the second used reference letters and the first did not. If two claims differ from each other only in this respect, it must be assumed that the letters are intended to imply a smaller range of equivalents than is intended by the claim without the letters; and we may concede that the examiner was justified (as to most of the elements) in taking this view of the first claim. In response to the office action, plaintiff amended his first claim by inserting reference letters, thus making it exactly like the second (save for the addition of "recurved," and the omission of "extending laterally in the same direction"), and then he added the functional reference to use “for twisting wire ties having eyes upon their opposite ends" which is said to limit this claim to the particular form of tool specially adapted to engage with that particular form of tie. At any rate, it is clear that the first claim took such form that it might be narrower than the second, as to the element "hooks." The claim, as so amended, was at once allowed. We see nothing extraordinary, nor, indeed, unusual in this result. The examiner, from the beginning, saw that a claim which covered this tool and not Cassidy's was allowable. He feared, rightly or wrongly, that the language of the original first claim was so vague that it might cover Cassidy's, and so he required some limitation: the plaintiff could not have two claims alike, and so, rather than abandon the first claim altogether and rest the case upon his second, he limited his first claim so as to be not as broad in this respect as the second.

In all this, there is nothing which should limit the second claim beyond the fair import of its words. The second claim is for:

"The head, d, upon the end of the spindle with two hooks, e, f, extended in the same direction laterally upon the head, equidistant from the axis of the spindle and at a suitable distance apart to hold the ends of a wire tie in position for untwisting."

The entire structure thus described in this part of the claim was novel over Cassidy; it is the essential basis for a very successful tool; the "hooks e, f," are not limited to a recurved form as in the first claim, and as this recurved form was specially intended for engagement with an eye, the hooks, when spoken of without that limitation must be thought of as capable of other engagement also; and for every purpose and every function here important, both in twisting and in untwisting, the engagement of a double claw hook with a head on the wire is the equivalent of the engagement of a single claw hook with an eye on the wire. This is emphasized by the fact that the two forms of tie-with eye and with head-were well-known alternatives before Curry selected one of the forms, and by the further fact that although the tie with the head, the defendants' form, could not be used in the Curry tool constructed as shown in his drawing, because the head would slip off from the hook; yet the Curry tie, the form with the eye, can be used in defendants' tool, since, if the tie just below the eye is passed into the double claw, the base of the eye serves as a head. This method of use is not convenient nor very practical, but that it is possible strongly indicates the essential similarity between the two tools. We are satisfied that claims 2 and 3 are fairly entitled

to such a range of equivalency that defendants' tool, Complainant's Exhibit 5, infringes.

Among the exhibits, we find a tool marked "Defendants' Exhibit 2." We can find no reference to this exhibit in the record, save when it was mentioned by expert witnesses, and we infer that it was a tool constructed only to illustrate a theory. If there were evidence of the making or selling of this form, it would be necessary to decide whether it escaped claims 2 and 3, on the theory that its two hooks did not extend in the same lateral direction from the head, and, if so, then whether it was within claim 1; but, as to these questions, there is neither evidence nor argument, and, as was said in Grever v. Hoffman Co., 202 Fed. 923, 927, 121 C. C. A. 281, it will be time enough to determine such questions, when the device is put into actual use and becomes important enough to justify an infringement suit.

[3] The decision below was in part rested upon the inference to be drawn from the fact that defendants' tool was made pursuant to a later patent granted to one Beam, and it was said that the issuing of the later patent to Beam was either a mistake or a Patent Office decision that the Beam tool did not infringe the Curry patent. In view of what was said on this general subject by this court in Herman v. Youngstown Co., 191 Fed. 579, 584, 112 C. C. A. 185, we infer that the court below thought this case came within the exception suggested in the Herman-Youngstown Case, rather than within the general rule there stated. We are not able to accept that view. If it were to be assumed that the Curry patent was so limited that it could reach nothing except the precise form shown in the drawing or other forms equivalent in every detail and aspect, then it would be true that the later patent could be valid only on the theory that its device was not that kind of an equivalent of the device of the earlier patent; but, obviously, if it is assumed, as we here conclude, that the earlier patent is entitled to a range of equivalency broad enough to reach the later form, the question whether the later form also embodies patentable modification or improvement is quite immaterial. Such confusion as there is on this subject, must come from failing to observe that the word "specific" has only a relative meaning. An invention may be most properly characterized as specific with reference to what has gone. before; but if there ever was a specific improvement or construction which was worthy the name of invention and so entitled to a patent, and yet which might not turn out to be relatively generic-and so entitled to the benefit of equivalents-as against some possible future construction, such a case does not readily suggest itself in concrete form; and, at any rate, this is not one. It is a natural thought that if device b is the mechanical equivalent of patented device a and so infringes, then, because it is the equivalent of what is old in the art, it cannot be patentable, and the finding that it is patentable implies that it is not an equivalent; but this also fails to observe the relative rather than the absolute meaning of equivalency. Its existence depends on its range or scope, and device b may be the equivalent of a, when the latter is broadly considered, and yet a not be the equivalent of b, when the latter is defined as narrowly as it must be.

The decree below is reversed and the usual injunction and accounting decree will be entered as to claims 2 and 3. It may be silent, as to claim 1; but since the matter of infringing claim 1 is not decided either way, but is thought to be immaterial, we do not see that the normal disposition of costs should be affected.

Urschel's personal liability has not been considered in the court below or here, and it will be determined by the District Court.

(230 Fed. 430)

HAMILTON BEACH MFG. CO. v. P. A. GEIER CO.
(Circuit Court of Appeals, Seventh Circuit. January 4, 1916.)

No. 2209.

1. PATENTS 328-VALIDITY AND INFRINGEMENT-VIBRATOR.

The Kirby patent, No. 891,776, for a vibrator for movement cure purposes, held not anticipated, valid, and infringed.

2. PATENTS 66-ANTICIPATION-PATENTS IN PRIOR ART.

A patent speaks as an anticipation from the date of its issue, and not from the date of filing of the application.

[Ed. Note. For other cases, see Patents, Cent. Dig. §§ 79, 81; Dec. Dig. 66.]

3. PATENTS165-VALIDITY-DUPLICATION OF CLAIMS.

A claim of a patent in suit will not be held invalidated by other claims not in suit, except in clear cases of duplication.

[Ed. Note. For other cases, see Patents, Cent. Dig. § 241; Dec. Dig. 165.1

4. PATENTS 20, 244-INFRINGEMENT REVERSAL OF PARTS-"INVENTION." There is no invention in the mere reversal of parts, when the result produced is the same, nor does such reversal avoid infringement.

[Ed. Note. For other cases, see Patents, Cent. Dig. §§ 20-22, 385; Dec. Dig. 20, 244.

For other definitions, see Words and Phrases, First and Second Series, Invention.]

Appeal from the District Court of the United States for the Eastern District of Wisconsin; Ferdinand A. Geiger, Judge.

Suit in equity by the P. A. Geier Company against the Hamilton Beach Manufacturing Company. Decree for complainant, and defendant appeals. Affirmed.

This suit involves claims 9 and 13 of patent No. 891,776, granted to J. B. Kirby June 23, 1908, for a "vibrator for movement cure purposes," and now owned through mesne assignments by appellee. Those claims read as follows, viz.:

"9. In vibrators, an electric motor and an applicator having vibratory connection with said motor, in combination with a speed regulator for said motor comprising a brush holder having frictional supporting parts and rotatably supported in respect to the field of the motor to vary the speed of the motor."

"13. In vibrators, a hollow body and an electric motor supported therein, and a shifting brush holder for said motor comprising a rotatable spring support frictionally engaged with said body, in combination with an applicator and a vibratory support for said applicator operatively connected with said motor."

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

"The general purpose of my invention," says the specification, "is to produce a rotary vibratory movement by simple and durable means comprising in part a yielding fulcrum support for the applicator adapted to minimize friction and wear. A further object of the invention is incorporated in the shifting brush holder adapted to vary the speed of the motor and the vibratory movement of the applicator."

Figs. 1 to 5 of the drawings are herewith reproduced:

The specification reads:

"A two-part hollow body is shown which consists of a main section 2 of semi-spherical shape, and an extended section 3 secured thereto by a pair of bolts or screws 4. Main section 2 provides a housing support for an electrical