
    HENDEY MACH. CO. et al. v. PRENTISS TOOL & SUPPLY CO.
    (Circuit Court. S. D. New York.
    October 14, 1901.)
    Patents — Infringement—Peed Mechanism for Screw-Cutting Lathes.
    Tbe Norton patent, No. 470,001, for an improved feed for screw-cutting engine latbes, construed, and held limited to the particular combination shown in the claims, and, as so limited, not infringed.
    In Equity. This is a suit brought for the alleged infringement of United States letters patent No. 470,591, granted to Wendell P. Norton March 8, 1892.
    Worth Osgood, for plaintiffs.
    Wood & Boyd, for defendant.
   LACOMBE, Circuit Judge.

The object of the invention, as stated in the specification, is to “provide a new and improved feed especially designed for use on screw-cutting engine lathes, to conveniently and rapidly change the speed of the feed screw according to the requirements of the screw to be cut. The invention consists of certain parts and details, and combinations of the same, as will be fully described hereinafter, and then pointed out in the claims.” There are two sets of devices availed of in the patent to effect changes of speed. The one co'nsists of a series of 3 interchangeable gear wheels, of varying diameters, arranged at one end of the machine; speed variation being secured by changing their relations to each other, which can only be done when the machine is at rest, since nuts have to be unscrewed, the wheels removed, and replaced on different spindles. By such changes 3 different speeds may be imparted to the feed screw. The other set of devices consists of a series of gear wheels, of varying diameters, arranged step-like. As shown in the patent, there are 12 of these. By means of a hand lever and connecting mechanism, one or other of these may be brought into engagement while the machine is in motion, and thus 12 varying speeds be imparted to the screw feed. A combination of both seta of devices secures 3 times 12 changes, — 30 in all. The claims declared on are as follows:

“(1) In a device of tlio class described, the combination, with a. series of interchangeable gear wheels, of a shaft driven from the said series of Interchangeable gear wheels; a pinion mounted to turn with and to slide on the said shaft; a driving gear wheel in mesh with the said pinion; and a second series of gear wheels, of various diameters, arranged stop-like on the feed shaft, and adapted to be engaged by the said driving gear wheel,— substantially as described and shown.
“(2) In a device of the class described, the combination, with a series of interchangeable gear wheels, of a shaft driven from the said series of interchangeable gear wheels; a pinion mounted to turn with and to slide on the said shaft; a driving gear wheel in mesh with the said pinion: a second series of gear wheels, of various diameters, arranged step-lilce 011 the feed shaft, and adapted to bo engaged by the said driving gear wheel; and a lever carrying the driving gear wheel, and arranged for shifting the said pinion on the said shaft, and moving the driving gear wheel in and out of mesh with the feed-shaft gear wheels, — substantially as shown and described.
“(8) In a device of the class described, the combination, with a series of interchangeable gear wheels, of a shaft driven from the said series of Interchangeable gear wheels; a pinion mounted to turn with and slide on the said shaft; a driving gear wheel in mesh with the said pinion; a second series of gear wheels, of various diameters, arranged step-like on the feed shaft, and adapted to be engaged by the said driving gear wheel; a lever carrying the driving gear wheel, and arranged for shifting the said pinion on the said shaft, and moving the driving gear wheel in and out of mesh with the feed-shaft gear wheels; and a locking mechanism for the said lever, — substantially as shown and described.
“(4) In a device of the class described, the combination, with a series of interchangeable gear wheels, of a shaft driven from the said series of interchangeable gear wheels; a pinion mounted to turn with and to slide on the said shaft; a driving gear wheel in mesh with the said pinion; a second series of gear wheels, of various diameters, arranged stop-like on the feed shaft, and adapted to bo engaged by the said driving gear wheel: a lever carrying the driving gear wheel, and arranged for shifting the said pinion on the said shaft, and moving the driving gear wheel m and out of mesh with the feed-shaft gear wheels; and a plate having a curved slot forming a guide for the said lever, — substantially as shown and described.
“(5) In a device of the class described, the combination, with a series of interchangeable gear wheels, of a shaft driven from the said series of interchangeable gear wheels; a pinion mounted to turn with and to slide on the said shaft; a driving gear wheel in mesh with tlia said pinion; a second series of gear wheels, of various diameters, arranged step-like on the feed shaft, anti adapted to be engaged by the said driving gear wheel; a lever carrying the driving gear wheel, and arranged for shifting the said pinion on the said shaft, and moving the driving gear wheel in and out of mesh with the feed-shaft gear wheels; a plate having a curved slot forming a guide for the said lever; and a mechanism for locking the said lever to the said plate, — substantially as shown and described.”
“(7) In a device of the class described, the conibination, with a series of Interchangeable gear wheels, of a shaft driven from the said series of interchangeable gear wheels; a pinion mounted to slide on and to turn with the said shaft; a lever fulcrumed b osely on the said shaft, and adapted to carry along the said pinion a driving gear wheel in mesh with the said pinion, and mounted to turn on the said lever; a series of gear wheels, of varying diameters, and arranged in step form, on the feed shaft, each of the said series of gear wheels being adapted to be engaged by the driving gear wheel; a hand lever pivoted on the said lever, and formed with a pin and a plate formed with a slot, and a series of openings adapted to be engaged by the said pin, — substantially as shown and described.
“(8) In a device of the class described, the combination, with a series of gear wheels arranged In step form on the feed shaft, of a driving gear wheel adapted to engage each of the said gear wheels in the series of gear wheels; a lever carrying the said driving gear wheel; a plate formed with a curved slot, through which passes the said lever for guiding the same,— substantially as shown and described.
“(9) In a device of the class described, the combination, with a series of gear wheels arranged in step form on the feed shaft, of a driving gear wheel adapted to engage each of the said gear wheels in the series of gear wheels; a lever carrying the said driving gear wheel; a plate formed with a curved slot, through which passes the said lever, for guiding the same; and a locking mechanism for locking the said lever on the said plate,— substantially as shown and described.”

An examination of the prior state of the art, as disclosed in the proofs, shows that the patentee was not a pioneer. Indeed, it is not .contended that he was. He has used old devices in a new combination (for there is no actual anticipation shown) to accomplish a particular result (rapidity of speed change), and a like result may be obtained by other combinations. The case is one, therefore, where the particular combination of parts and details which the patent secures to hiqi is to be conformed to the self-imposed limitations which the patentee has inserted in the claims, and “nothing can be an infringement which does not fall within the terms the patentee has chosen to express his invention.” McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800; Groth v. Supply Co., 9 C. C. A. 507, 61 Fed. 284. It will be noted that in every one of the claims above recited the series of gear wheels, of varying diameters, arranged step-like or in cone shape, is explicitly described as being located “on the feed shaft.” In the combination of defendant’s lathe a similar step-like or cone-shape series of gears is found,.but it is not located on the feed shaft; but upon a counter shaft arranged adjacent to, and parallel with, the feed shaft. The result of this change of location is that defendant is able to introduce a second set of interchangeable or relatively shifting gear wheels between these step-like gears and the feed shaft. Defendant contends that this is an important improvement, — a contention which complainant disputes, and which need not be decided. It would seem to be sufficient, under the authorities cited supra, that the step-like gears are not located where in eight separate claims the patentee distinctly asserted that they should be, to embody his invention.

The bill is dismissed.  