ward projections of the sleeve to lock, Oetting patent, No. 642,825, and to the by snap action, with recesses in the cap Kenney patent, No. 712,686, and it is against longitudinal movement in the clear that the chief concern of the apone, there are the bayonet slots in the plicant thereafter was to distinguish his sleeve to lock with studs in the cap of construction from that of Kenney, the other, to accomplish the same re- which is very similar to that of respondsult without snap action. But these dif- ent. The Kenney socket has lugs in the ferent constructions not only differ rad- cap and bayonet slots in the sleeve, to ically in structural features, but they lock against longitudinal movement, as do not function in the same manner; respondent's socket has, and also slots for locking against longitudinal move- with open ends and locking holes simment in the one is by snap action upon ilarly placed in the sleeve to lock direct longitudinal thrust of the sleeve against rotary movement when the lugs into the cap, while the other requires in the cap engage with them. The chief first a longitudinal movement or thrust, difference between the Kenney and and then a rotative movement, without respondent's socket is that in Kenney which it is entirely ineffective, whereby the lug passes down the slot to a posiit locks against longitudinal movement without snap action.

But it is argued that the infringement lies especially in the locking hole (15) in respondent's socket and the associated lug, which operate by snap action and afford a positive lock against rotation of the two members on each other. The sufficient answer to this is that the patent in suit makes no suggestion of a lock against the rotative movement of the cap and sleeve on each other, and contains no disclosure providing for it, but, on the contrary, because [676] the beveled sides which are required by claim 4, for the projections on the sleeve, permitted such movement, a subsequently patented addition was added to prevent it. The petitioner cannot read into the patent in suit the additional slot in the cap and the additional projection on the sleeve of patentee's second patent, and without them there is no lock against rotative movement in the socket of the first patent to be infringed by the stud snapping into the locking hole of the sleeve of respondent's socket.

tion opposite the locking hole, and [677] then with the rotary movement mounts and rides over the narrow strip of metal

"the bridge"-into the hole, while in the respondent's socket the lugs having plain faces ride on the metal near to the edge of the slot during the longitudinal movement, and from that position pass into the locking holes with the rotative movement.

When his application was rejected by the Patent Office on reference to the Kenney patent thus described, the applicant, without objection or appeal, amended his claim 7 (numbering it 4) by adding the words in italies, and in his explanatory "remarks," when submitting these amendments, it was said: "Claim 4, originally 7, is now drawn to a specific structure, having advantages not found in either of the references cited. By transversely slitting the sheet metal shell and displacing the wall on one side of said slit to form a beveled or inclined projection, the parts are permitted to be applied to each other by simply inserting one within the other, without manually compressing the inner member." And again: "Kenney's device is adapted to unlock by simply rotating one member upon another in the same manner that the parts are locked together, no manual compression of the inner member being necessary."

This is sufficient to dispose of the case, but we also fully agree with the circuit court of appeals that the prior art, the file wrapper, and the second patent to the same patentee, No. 916,812, supra, require that the expressions in the fourth claim, "telescopically received" and "telescopically applied," must be Thus the patentee, in order to avoid restricted to a direct longitudinal move-infringing Kenney's construction, volment or thrust of the sleeve into the untarily restricted himself to a "specific cap, and that for this reason the con- structure," operative when the sleeve struction of respondent, requiring a was "simply" inserted in the cap, withrotary movement to render it effective, out suggesting any rotary movement does not infringe that of the petitioner. whatever, but, on the contrary, by his In the application for the patent in reference to Kenney as locking and unsuit this fourth claim, originally the locking by "simply rotating one member seventh, read, as we have quoted it, upon the other," clearly implying that omitting the words in italics. In no such rotary movement was necessary this form it was promptly rejected by in the adjustment of his socket. Having the Patent Office on reference to the thus narrowed his claim against rotary

677-679

movement in order to obtain a patent, the patentee may not by construction, or by resort to the doctrine of equivalents, give to the claim the larger scope which it might have had without the amendments, which amount to a [678] disclaimer of rotation as an operative feature of his device. Shepard v. Carrigan, 116 U. S. 593, 598, 29 L. ed. 723, 724, 6 Sup. Ct. Rep. 493; Hubbell v. United States, 179 U. S. 77, 80, 45 L. ed. 95, 98, 21 Sup. Ct. Rep. 24.

upon each other, and also because the file wrapper and the subsequent patent show that the disclosure is, and was intended to be, limited to a construction operative by direct longitudinal movement or thrust without such rotative movement.

The contention, pressed strenuously upon our attention, that the added open slot in the cap and projection on the sleeve, provided for in the second patent, were devised simply to secure the But that no rotary movement was im- alignment of the projections and recesses of the first patent in making plied in the use of "telescopically received" and "telescopically applied" in telescopic application of the two memthe patent in suit is further unmistak- bers to each other, is not convincing ably shown by the frequent use of the [679] in the presence of the fact that same or equivalent expressions in the claims 1, 3, 13, and 14 of the second specification and claims of patentee's patent are devoted almost wholly to later patent, No. 916,812, supra, in claiming that this improved construction which claims 1, 3, 13, and 14 relate al- is intended "to prevent relative rotative most wholly to an improvement which movement" of one member upon the renders rotation of the members one other, while only claims 11 and 12 upon the other impossible, and which refer, quite incidentally, to what is petitioner added to the construction of now claimed to be the chief function the patent in suit before putting the sockets upon the market. That the inventor did not intend to claim, and that he certainly did not disclose, that any in such rotary movement was necessary his socket as was required to render the socket of the respondent effective, is, we think, for these reasons, so clear that it is not necessary to consider the dictionary definitions of the words used, upon which the circuit court of appeals, with sound reason, relied in reaching this

Without a

of the added parts, that of a guide to the positioning of the recesses and projections of the first patent with reference to each other. guide, the difficulty should not be very great of aligning projections and recesses distant from each other but a fraction of an inch when the edges of the cap and sleeve are in contact. The constructions held by the circuit court of appeals of the second circuit to infringe the patent in suit were so essentially different from that of the reFor the reasons thus elaborated, we conclude that the socket of the respond-spondent that we regard discussion of ent does not infringe the fourth claim them as quite unnecessary. of the patent in suit because there is no claim made therein of a lock against rotative movement of the cap and sleeve

same conclusion.

1168

It results that the decree of the Cir. cuit Court of Appeals as to claims 1 and 4 must be affirmed.

256 U. S.

MEMORANDA

OF

CASES DISPOSED OF WITHOUT OPINIONS.

In Error to the District Court of the Writs of Certiorari, Prohibition, and United States for the Northern District Mandamus in these cases severally. of Illinois. Mr. William J. Hennessey for petitioners.