This action was brought by appellant charging infringement of patent No. 1,015,989 to Buchholz, for improvement in door frames, title to the patent having by mesne assignment passed to appellant. The District Court dismissed appellant's bill for want of equity.

The claims of the patent of which infringement is alleged are sufficiently shown in Fig. 4 of the patent, which is as follows: This shows a section of a metal door frame d', having inwardly extending vertical ribs g, g' on the inner surface of the opposite sides or jambs. Engaging the inner surface of the sides or jambs, extending transversely between them is shown a piece of metal ', having its ends recessed to receive the projecting rib on either side.

The claims of which infringement is charged are as follows:

"1. A metallic door frame provided with a pair of vertical ribs, in combination with a bracing cross-bar of solid construction, extending transversely from one jamb of said door frame to the other, recessed in its ends to permit adjusting said bar up or down in said frame on said ribs without separation, thus varying the point at which said frame will be braced."

"2. A metal bar of door frame form and Ushape in cross section provided with vertical ribs, in combination with bracing cross-pieces of solid construction, extending transversely from one jamb of said frame to the other, recessed to fit said ribs and adapted to be raised and lowerered in said frame while engaging said ribs."

The alleged infringing structure appears in Fig. 1 of complainant's exhibit of drawings of defendant's device, and is as follows:

Fig.1

да

d'

The use complained of is in door frames employed in the construction by appellee of the new Cook County, Illinois, Hospital. The metal door frames there used are of heavy rolled steel having inwardly projecting flanges g, g' on the sides or jambs. The contract for the building required that the metal door frames be anchored to the walls, and for such anchor appellee employed single pieces of thin sheet metal, transversely corrugated, cut substantially to fit into the section of the door frame, and extending from the door frame back into the wall, engaging inwardly projecting flanges of the door frame by slots or shoulders in the sheet metal anchor at g, g', the sheet metal

having small holes through it so that the grout or mortar of the wall may have better hold. The anchor may be raised or lowered at any point along the frame and thus laid into the wall at any place where it is desired during the construction of the wall to have the frame anchored to it.

It is claimed on behalf of appellee that claims 1 and 2 are invalid because of inventions shown in various prior patents, notably a patent of the German government published March 18, 1909, and United States patent to Shean No. 978.948, December 20, 1910; and that in any event claims 1 and 2 are not infringed by appellee's structure.

Frank T. Brown, of Chicago, Ill., for appellant.

Charles C. Linthicum and William N. Cromwell, both of Chicago, Ill., for appellee.

Before KOHLSAAT and ALSCHULER, Circuit Judges, and ANDERSON, District Judge.

ALSCHULER, Circuit Judge (after stating the facts as above). There is no issue here as to the right to use a metal door frame having vertical ribs or flanges extending inwardly from the door jambs. The claims in issue are for metal door frames of such construction, “in combination with a bracing cross-bar of solid construction extending transversely from one jamb of said door frame to the other," etc., as stated in claim 1, and "in combination with bracing cross-pieces of solid construction extending transversely from one jamb of said frame to the other," etc., as described in claim 2.

The claims make no reference to the use of the cross-bar or crosspieces in relation to anchorage of the frame to the wall. Claims 4 and 5, which are not in issue, refer to slots in the cross-pieces adapted to receive the ends of a "hold-fast" in the wall, but even if these claims were in issue, no such alleged infringing structure is here claimed. The expert testifying for appellant construes claims 1 and 2 as having reference to means for anchoring the door frame into the adjacent wall, and he attaches little importance to the expressions "solid construction" and "bracing" as employed in the claims, stating that the phrase "solid construction" is a curious one, and he could not, in the absence of the file history, state what it means. The same expert says that the specification of the patent throws little light on this language of the claims, and in his opinion the alleged "bracing" action seems to be of very little practical importance.

But it might be of considerable importance if the material of the frame itself were not stiff enough to afford the necessary resistance to shocks. Frames may be of thick or of thin material. The specification and drawings of the patent do not indicate what is there contemplated. The thinner the material the greater utility will be found in the bracing action of solid metal cross-pieces. The thicker and stiffer the material of the frames the less necessity would there be for additional bracing. There seems to be nothing complicated or mysterious about this. The language of the claims is such that if there is nothing novel or useful in the "bracing" cross-pieces of "solid construction" the patentee takes nothing by these claims.

[1] The fact that door frames can be made of metal thick and stiff enough to obviate the necessity for the additional bracing afforded

by metal cross-pieces of solid construction cannot authorize abandonment of the claims in this connection, and a revival of them as an element in some anchoring device, merely because they might also be useful in such a function. The monopoly of the patent is limited in its scope to the claims thereof. White v. Dunbar, 119 U. S. 47, 7 Sup. Ct. 72, 30 L. Ed. 303; Cimiotti, etc., Co. v. Am. Fur Ref. Co., 198 U. S. 399, 25 Sup. Ct. 697, 49 L. Ed. 1100; McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800; Harder v. U. S. Piling Co., 160 Fed. 463, 87 C. C. A. 447 (7th Circuit); Wolff Truck Frame Co. v. Am. Steel Foundries, 195 Fed. 940, 115 C. C. A. 628 (7th Circuit).

[2] It is claimed for appellant that any metal, however thin, placed in the frame extending from one side to the other, would have some bracing effect, and would therefore be readable on claims 1 and 2. The file history which is in evidence shows that claims 1 and 2 were originally drawn to cover any iron or steel that might be employed for a cross-piece, but that the claims were not thus broadly allowed. The terms "bracing" and "of solid construction" were afterwards inserted. This was done to avoid conflict with the prior Shean patent, No. 978,948, for wall-tie, granted December 20, 1910. This patent shows a metal door frame, and extending into and adjustably attached to it a corrugated sheet metal piece extending also into the wall, for the purpose of anchoring the frame to the wall. Referring to this invention Buchholz said in a letter to the Commissioner of Patents November 6, 1911, that the Shean construction had no bracing crossbar, and cannot brace the door frame; and as to the words "bracing" and "of solid construction," which the said letter adopts by way of amendment to the claims, it is stated in the letter, "We have inserted a few words to make the differences more salient," thus indicating that the inventor differentiated between his solid bracing bar or cross-piece and the corrugated sheet metal of the Shean patent.

The specification of the patent seems to contemplate just such a function of the cross-piece as is stated in claims 1 and 2, wholly independent of the function of anchorage. It is there said:

"The arrangement of parts as described secures a considerable strengthening of the door frame so that any shocks or the like happening against one side are taken up by the other and thus reduced in action, so that the door frame is kept securely in place and position, even in case of excessive strain."

If the purpose to be accomplished is, as expressed in these claims and specification, to increase the resisting power of the frame itself as against any shock applied to one side, by communicating the shock. through means of the solid bracing piece to the other side, it is manifest that nothing short of a solid piece of metal or its equivalent would do this. It seems clear to us that the structure complained of is an anchor pure and simple. It is not a cross-piece of "solid construction," nor does it have a "bracing" effect within the purview of claims 1 and 2 of the patent.

The transverse corrugations of the sheet metal would, in some degree, add to the stiffness of it if pressure were brought against its edges, but we believe that as a resisting agent in a metal door frame

this would be quite negligible. The purpose and effect of the corrugation was well, and probably truthfully, expressed by witness Mendenhall, who said "it was in order to have a better bond in the mortar joint."

Being of the opinion that appellee's device does not infringe claims 1 and 2 of the patent in issue, it will not be necessary to determine whether the Shean patent and the German patent referred to show prior invention by others than Buchholz.

The decree of the District Court dismissing the bill for want of equity is affirmed.

(234 Fed. 640)

THACHER v. TRANSIT CONST. CO.

(Circuit Court of Appeals, Second Circuit. June 7, 1916.)

No. 290.

1. PATENTS 324(5)-SUITS FOR INFRINGEMENT-REVIEW-QUESTIONS PRE

SENTED.

Where defendant did not appeal from that portion of a decree adjudging a patent valid, the matter will not be reviewed on complainant's appeal from a finding that there was no infringement, except as may be necessary in interpreting the claims.

[Ed. Note.-For other cases, see Patents, Cent. Dig. § 606; Dec. Dig. 324(5).]

If possible, the claims of a patent should be construed so as to uphold and not to destroy it.

[Ed. Note.-For other cases, see Patents, Cent. Dig. § 231; Dec. Dig. 157(2).]

3. PATENTS 168(2)-PROCEEDINGS IN PATENT OFFICE-CONCLUSIVENESS. Where the patent office disallowed a patentee's broadest claims and to obtain the patent he limited his claims, he cannot thereafter assert that his invention included such broad claims.

[Ed. Note. For other cases, see Patents, Cent. Dig. § 244; Dec. Dig. 168(2).]

*

4. PATENTS 328-CONSTRUCTION-IMPROVEMENT IN CONCRETE ARCHES. The Thacher patent, No. 617,615, for an improvement in concrete arches, consisting of a combination with abutments and a concrete arch spanning the intervening space, of a series of metal bars, in pairs, each bar of a pair being independent of the other," is valid, but is limited to a structure in which the bars of a pair are not physically connected, but each is independent of the other in action, except as affected by the concrete, and, as so construed, held not infringed.

Appeal from the District Court of the United States for the Southern District of New York.

Bill by Edwin Thacher against the Transit Construction Company. From a decree (228 Fed. 905), dismissing the bill for want of infringement, complainant appeals. Affirmed.

A. A. Thomas, of New York City, for appellant.

E. C. Seward, of New York City (Brown & Seward and Wm. McK. Barber, all of New York City, of counsel), for appellee.

Before COXE and WARD, Circuit Judges, and CHATFIELD, District Judge.

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

CHATFIELD, District Judge. This action involves a charge of infringement of claims 1 and 3 of patent No. 617,615, granted to Edwin Thacher, the plaintiff-appellant, on January 10, 1899, upon an application filed October 16, 1896. Claim I sufficiently shows the question presented and reads as follows:

"1. The combination with abutments, and a concrete arch spanning the intervening space, of a series of metal bars, in pairs, one bar of each pair above the other, near the intrados and extrados of the arch, and extending well into the abutments, each bar of a pair being independent of the other, substantially as described."

The District Court found the patent valid, following a decision by Judge Rose (Thacher v. Mayor, etc., of Baltimore [D. C.] 219 Fed. 909), in which the claims of the patent were held both valid and infringed.

On the question of infringement, however, the District Court, in the present action, reached the conclusion that the structure of the defendant, which consists of a series of concrete arches to support the Ashokan bridge of the aqueduct for the city of New York, did not include pairs of bars or rods of which one bar of each pair was "independent of the other," in the sense in which those words were used in the claims of the patent. It therefore held the claims not infringed and, in so doing, stated that the structure under consideration by Judge Rose was substantially the same as that described in the patent. The invention claimed in this patent "relates to concrete arches for bridges or vault-covering or for spanning openings in building construction."

The file wrapper shows, among the citations by the Patent Office, a patent, No. 545,301, granted August 27, 1895, to one Milliken, which was not pleaded as an anticipation, but was the only patent of the prior art presented in the record or discussed in the opinion of the court below. This Milliken patent provided a method for the construction of arches, partitions, floor, etc., and evidently contemplated the use of I-bars or iron beams from which the concrete arch should spring. This arch was to be made by concrete poured around and through wire netting or corrugated metal, so woven or bent as to connect and inclose longitudinal strengthening bars, which bars were to be placed at different levels in the arch, and were to follow the lines of curvature according to their location. These bars were to be interwoven in or fastened to the wire mesh or corrugated metal, and were to be as long as the total arc of the span. When applied to a bridge it can be seen that no such mass of rods, corrugated plates, or wire mesh could be evenly bent into an arch of varying thickness. The larger the span the more impossible would be the construction, and no machinery could make the metallic arch in one piece for transportation or bend it in shape if first assembled for the entire length.

In this sense the Milliken patent is impracticable and could not be considered as an anticipation of the Thacher patent. This Milliken patent was not mentioned by Judge Rose in the Baltimore Case, supra. In the court below, however, the Milliken patent was considered in so far as it disclosed a concrete arch with upper and lower bars im