
    JOHNSON v. OLSEN.
    (Circuit Court, D. Indiana.
    May 29, 1894.)
    No. 8,782.
    1. Patents—Limitation on Claims—Rejection and Acquiescence.
    The principle that ar inventor who acquiesces in the rejection of a claim is estopped from insisting upon such a construction of the claims allowed as would be equivalent to what was rejected, applies when the rejected claim is narrower, as well as when it is broader, than those allowed. Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 14 Sup. Ct. 627, followed.
    2. Same—Invention— Bxoklsiok Machines.
    The use of lugs to prevent lateral movement having been long known and practiced, their adaptation to an excelsior machine, to prevent lateral movement of the sliding plate, involves no invention.
    8. Same.
    Wooden bearings for excelsior machines being old, there is no invention in placing the wood so that the grain will run vertically with the line of motion, instead of at right angles thereto.
    
      i. Same.
    The Johnson patent No. 452,553, for improvements for excelsior machines, is void for want of novelty and invention.
    This was a suit by Jesse B. Johnson against Olaf B. Olsen for infringment of a patent for improvements in excelsior machines.
    
      V. H. Lockwood, for complainant.
    Chester Bradford, for defendant.
   BAKER, District Judge.

This is a suit in equity for an injunction, and for the recovery of damages for the infringement of letters patent of the United States No. 452,553, issued May 19, 1891, to the complainant, on improvements in excelsior machines. The defendant has interposed as grounds of defense: license, invention of the machine by defendant, abandonment, two years’ prior use, that the claims are for aggregations, lack of novelty, and lack of invention. The defendant’s contention—and the only one which the court deems it necessary to pass upon—is that the complainant’s patent is void for lack of novelty and lack of invention. The object of the invention is to enable upright excelsior machines to cut a larger quantity of long, unbroken, hair-like fibers from wood than prior machines had been able to cut, and to produce a machine which could be operated more cheaply, while it would last longer, and need less repairs. The claims as finally allowed, and the, claims originally made and rejected, and afterwards canceled by complainant, and also the various amendments which appear in the record of the application on which the patent was granted, are as follows:

Xn analysis and comparison of the rejectéd and canceled claim 1 of the application, and the original claim 2 of the application, ■which became claim 1 of the patent, will show that the only material difference between them is in the addition of lugs to the bed plate, and the crank and gear mechanism for operating the sliding plate in the claim allowed. (Haim 1 of the application was rejected bv the examiner on the distinct ground that it had been anticipated in former patents, American, English, and German. This decision of the examiner was acquiesced in by the complainant, and the rejected claim was canceled. The patentee} having once presented his claim in that form, and the patent office; having rejected it, and he having acquiesced in that rejection, is, under the repeated decisions of the supreme court, now estopped to claim the; benefit of his rejected claim, or such a construction of his present claims as would be equivalent thereto. Leggett v. Avery, 101 U. S. 256; Shepard v. Corrigan, 116 U. S. 593, 6 Sup. Ct. 493; Crawford v. Heysinger, 123 U. S. 589, 8 Sup. Ct. 399; Union Metallic-Cartridge Co. v. U. S. Cartridge Co., 112 U. S. 624, 5 Sup. Ct. 475.

It is true that these we;re eases where the original claim was broader iban the one- allowed, but the principle is the same if the rejected claim is narrower. Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 14 Sup. Ct. 627. Why the claims 1 to 4, inclusive, of the present patent were allowed after the rejection of claims 1, 3, 5, and 7 of the original application does not appear. The objections made to the claims as originally presented seem to he equally applicable to (hose allowed. The crank and gear mechanism for operating the sliding plate are old and familiar, and no novelty is shown in their combination or use. The lugs to prevent lateral movement of the sliding plate are made an element in the first four claims of the patent, qnd it would seem that they constituted ilie feature which was regarded by the examiner as distinguishing these four claims from the prior art. The use of lugs to prevent lateral movement has been long known and practiced, and, even if this were not so. their application by the patentee as shown and described in his patent would not constitute invention. If lugs had not been previously used in excelsior machines, their use would have been readily suggested to a skillful mechanic familiar with such machines.

If the springs connected with the sliding plate for holding the upper roll in contact with flu; wood were not the mechanical equivalent of the weights formerly in use to accomplish the saiue purpose (and I am inclined to think they are), still the springs were an essential part of the rejected claims, and, having acquiesced in their rejection, the complainant is now estopped to ask for such a construction of his present claims as would give him the benefit, of his rejected .claims.

Claims 5 and 6 are in all their essential features old and well known, and conceded to be, except that the wooden linings in the slides are arranged with the grain of the wood running vertically with the line of motion. Wooden hearings, wooden linings for bearings, and wooden slides for bearings are all old and well-known devices. Wooden bearings for excelsior machines were known and in use prior to complainant’s alleged invention, differing from it in no important particular except that the grain of the wood was placed at right angles with the line of motion. This change, in my opinion, does not constitute invention.

In view of what has already been said, I do not deem it necessary to express any opinion upon the other grounds of defense. The bill will be dismissed for want of equity, at complainant’s cost.  