"(2) In a gas-burner, the combination of the main burner. a refractory mantle supported above the burner, an adjustable chimney adapted to be vertically adjustable to expose or completely inclose the refactory mantle, a glass globe inclosing the chimney, mantle and burner and means to support the chimney in its adjusted position.

"(3) In a gas-burner, the combination of the main burner, a refactory mantle supported above the burner, an adjustable chimney adapted to be vertically adjustable to expose or completely inclose the refractory mantle, means to support the chimney in its adjusted position, and a conical shield encircling the base of the refractory mantle or burner and over which the verticallyadjustable chimney fits."

Complainant claims that Marsh was the first to provide a chimney which could be lowered to fit over mantles of various sizes to the end that a desired draught might be created. The claims, though the language is broad, must be restricted, however, on account of the prior state of the art, to the precise construction shown. In the patent of Fischer, No. 308,762, dated December 2, 1884, is shown a combination. of elements, one of which is a vertically-adjustable lamp chimney. The chimney which may be raised or lowered is arranged in telescopic fashion; that is, the construction consists of two tubes, the outer tube having a slanting slot and a set screw which is used to fasten the inner tube. The fact that the patent relates to an oil lamp is not thought material. It certainly was old at the date of the invention to provide lamps with tubular flues which were adjustable substantially in the same manner as in the Marsh structure. See patents to Fish, No. 127,685, issued June 11, 1872, for street lamps; Hagerty, No. 142,693, issued September 9, 1873; Miller, No. 307,406, of October 28, 1884; Pfingst, No. 347,375, of August 17, 1886. It is true that the chimney arrangement of the Fischer patent was to provide means to fit the lamp to cars and to enable convenient removal of the globe. Such arrangement of the chimney, however, is not far removed from the alteration made in the structure in suit. That the Marsh conception by which the tubular chimney is lowered over the mantle, and down upon the cone of the chimney gallery was a patentable improvement is not seriously controverted. The principal question is whether or not the scope of the involved claims in view of the prior art entitles the patentee to a construction of such breadth as will include a telescopic arrangement for sliding the chimney. Probably, some credit is due the inventor for having slightly improved the art, but his conception was not that of a pioneer, and accordingly he is entitled only to protection for the means by which he achieved the result. Complainant's structure has a three-part chimney-an upper and lower section, the inner part and the outer part being in concentric position, the lower section resting upon a so-called perforated shell at the lower end of the mantle. To lower the upper portion of the chimney the rod is operated in the manner as stated in the patent. The defendants' chimney and the manner of its operation is described in the specification of patent No. 791,355, issued to Momand, as follows:

"A flue, as J, is slidably fitted within the member, H, and is provided with a radial stud or pin, j. adapted to enter the slot, h, an do lie within any one of the sockets, h', to support the flue thereby at a predetermined height above

the mantle, I. The vertical position of said flue is to be determined according to the air-draft conditions of the lamp, and, as is obvious, will be regulated by adjusting the flue so that its stud or pin, j, rests in a suitable socket, h'. When desired to remove the flue from its sheath, the pin or stud, j, Is disengaged from the slot, h3, and is moved downwardly through a channel, h3."

The defendants' chimney is adjusted similarly to the method described in the Fischer patent. The tubes are telescopic in form, and are adjusted at variable heights by a pin and rack arrangement. According to the proofs, the patentee did not design his invention to lower the inner tube so as to enclose the mantle and protect it from draughts. It has been held that when a defendant makes and uses a device according to the specification of a patent held by him, the presumption of patentability between him and a prior patentee is balanced. Hence, the Momand patent, describing the structure of the defendants, granted subsequently to the Marsh patent in suit, is some evidence tending to show that in the estimation of the Patent Office there was a patentable difference between the two lamp chimneys and the features by which they were lowered over the mantle. Boyden Power-Brake Co. v. Westinghouse Air-Brake Co., 70 Fed. 816, 17 C. C. A. 430; Bates v. Keith (C. C.) 82 Fed. 100. I have not considered the patent to Prendergast & Slinack, which defendants claim anticipates the patent in suit. The question, therefore, of whether the interference proceedings and the decision of the Patent Office declaring that Marsh was the prior inventor were binding upon the defendants who were not parties to the interference proceeding, need not be decided. Enough has been said to indicate that the combination claims 1, 2, and 3 are only entitled to a narrow construction. Such being the fact, the defendants' chimney is thought not within their scope.

The bill charging the defendants with infringement of patents No. 613,648 and No. 652,730, is not sustained, and, accordingly, is dismissed with costs.

WELSBACH LIGHT CO. v. CREMO INCANDESCENT LIGHT CO.

(Circuit Court, S. D. New York. March 9, 1906.)

1. PATENTS-CONSTRUCTION OF CLAIMS-CHANGES IN PATENT OFFICE.

The claims of a patent as allowed must be construed with reference to the action of the Patent Office thereon as the prior art; they are not affected by a mere change in the wording at the instance of the Patent Office which leaves the substance unchanged, but, if narrowed in scope, and so accepted by the applicant, he is bound thereby.

[Ed. Note. For cases in point, see vol. 38, Cent. Dig. Patents, §§ 24312, 244.]

2. SAME-INFRINGEMENT-LAMP APPLIANCE.

The Heald patent, No. 423, 317, for an appliance for use with incandescent gas lamps, cannot be construed to cover, as a part of the invention, the removable tubular support for the lower end of the mantle and the supporting rod, which was old, and a claim therefor rejected by the Patent Office, but is limited to the feature of the refractory ring support at the top of the mantle. As so limited, held not infringed.

In Equity. On final hearing.

Thomas W. Bakewell, Thomas B. Kerr, and Hillary C. Messimer, for complainant.

Louis Hicks, for defendant.

HAZEL, District Judge. The bill in this action was filed to restrain the alleged infringement of letters patent No. 123,317, dated March 11, 1890, to Arthur Heald, and to recover profits and damages for past infringement. The patent now owned by complainant relates to improvements in appliances for use with incandescent gas lamps. The answer denies infringement, and alleges anticipation by various prior patents granted in this country and in England. The object of the inventor was to remove certain deficiencies existing in incandescent gas mantles which particularly relate to what is commonly known as the Welsbach type. This type of gas mantle is tapered or conical in form and is a product of oxides of refractory earths. It is manufactured by saturating a textile fabric with a solution of chemical salts of rare earths and then incinerating the mantle. The resultant of the process is a netlike structure which on account of its fragility requires further fluidal treatment to harden the material. Upon this being done, and when properly protected from shocks or jars, the mantle can be handled or transported safely. When a mantle comes in contact with the flame of a lamp the hardening fluid is burned off, leaving the refractory brittle material intact and capable of emitting a brilliant light. It is necessary to sew to the mantle at the upper end a piece of Brussels netting, which being turned backward over the edge leaves a varying thickness extending downward from the apex about 1 inches. In this situation the mantle is saturated with lighting fluid and a platinum wire is threaded through the hem and upon being drawn taut leaves a small opening. The ends of the platinum wire are thereupon fastened to the steel ring portion of a perpendicular rod, which is attached by a set screw to the shell or ledge of the burner or lamp. Such, briefly, was the state of the art in relation to the mantle at the date of the invention in suit. It will be noted that the incandescent mantle after it was in condition to suspend over the gas burner was adjusted by means of a rigid vertical steel rod, which was firmly attached to the gallery or ledge of the lamp. At its lower end the rod was kept in place by a set screw connecting it with the gallery through a hole in the boss, while at the top end it was suspended over the burner by fastening the platinum wire to the ring in the rod. According to the patentee, the method just described involved disadvantages which he designed to overcome. The patent has three claims; the first and second alleged to be involved read as follows:

“(1) In an appliance for use with gas lamps to produce light by incandescence, the combination, with a tubular mantle of the kind herein referred to, of a lower support constructed to be removably attached to a part of a lamp and to carry the lower end of said mantle, a rod carried by said lower support and external to said mantle, and a ring of refractory material carried by said rod, and to which the upper end of said mantle is secured, substantially as herein described.

"(2) In an appliance for use with gas lamps to produce light by incandescence, the combination of a tubular support capable of being applied to and removed from a burner, a holding device carried by said tube or equivalent, a rod firmly held by said holding device, a support carried by said rod, and a mantle having its lower end fitted to said tube, and its upper end directly attached to said support, substantially as herein described."

The patentee claims that he has made a step forward in the art by altering the form of the mantle support and tubular support and thus enabling an accurate adjustment of the mantle over the flame or burner and also obviating the necessity of reinforcing and threading. He asserts that by simply lifting the tube or slip with the attached portions, i.e., the rod and mantle, styled the "cap and carrier," he can readily remove the mantle from its position over the burner and replace it by another. Stress is laid upon the assertions that great care was necessarily exercised to properly adjust and align the mantle of the Bunson burner, that a customer frequently could not attach the mantle to the lamp, and that an employé of the vendor usually was sent to the house of the consumer to make the installation. Such claimed difficulties of handling and adjusting the mantle are denied by the defendant. That the mantle is mounted at the factory so as to secure accurate adjustment over the gas burner is undeniable. Indeed, there is evidence by defendant's witness Berlinecke to the effect that the sale of mantles that were unaccompanied by a tube was abandoned "because the other could be made better, and was easier to put on." Certainly, it was necessary properly to center the mantle at a certain height to obtain the best results. Evidence was given to show that before the patent in suit the mantle was removed from the burner by loosing the set screw and pulling out the rod from the boss, and to replace another required inserting the lower end of the rod in the boss; but this is an immaterial point in view of what is plainly stated in anterior patents. There was earnest disputation at the hearing in relation to the scope of the claims, as to whether or not they included the tubular support for the mantle at its lower end. Complainant contends that the invention is not only for the manner of supporting or suspending the mantle from a refractory ring at the top, but also for a removable support attached to the burner of the lamp and to the rod. As heretofore explained, the lower support consists of the tubular ring which fits the burner and, together with the rod and mantle, comprises the so-called cap and carrier. The claims are for a combination of old and separately well-known elements, together with new elements. In view of the action of the Patent Office limiting the claims, as hereinafter stated, the new elements are not at first reading of the patent apparent with reasonable certainty. It is a rule of patent law that a claim as allowed in order to ascertain the real invention must be interpreted with reference to the action of the Patent Office and the antecedent art. If the simple wording of the claims was changed by the patentee at the request of the commissioner of patents, leaving the substance of the claims unchanged; that is, allowing the language employed to cover the invention as originally asserted by the inventor, a meritorious patent, one that has progressed the art, should not be destroyed. Hubbell v. United States, 179 U. S. 80,

21 Sup. Ct. 24, 45 L. Ed. 95; Leggett v. Avery, 101 U. S. 256, 25 L. Ed. 865; Campbell Printing P. Co. v. Duplex Co., 101 Fed. 282295, 41 C. C. A. 351; Walker on Patents, § 187. In Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. 493, 29 L. Ed. 723, the Supreme Court says:

"If an applicant, in order to get his patent, accepts one with a narrower claim than that contained in his original application, he is bound by it. If dissatisfied with the decision rejecting his application, he should pursue his remedy by appeal."

It is important to know whether this principle is applicable to the facts here. The file wrapper and contents show that when the application was filed it contained seven claims, evidently, in the judgment. of the examiner, describing old elements, for such claims were twice rejected on the ground that they lacked novelty. The examiner cited. as to claim 1, the patents to Requa, No. 266,889; Lungren, No. 336,576; and Lungren, No. 365,832. Claim 2 was also rejected on the patent to Lungren, No. 336,576. Claims 3, 4, and 5 were rejected on the patent to Fahnehjelm, No. 332,650, and on the British patent, No. 5,354 of 1887. Later, the application was amended by substituting narrower claims. The amended claim which was for a tubular support for the mantle, “constructed to be removably attached to a part of the lamp," was again rejected on British patent, No. 7,990 of 1887, to Imray. There was an allowance of the patent when the inventor added to the first claim the limiting feature of the refractory ring support at the top of the mantle. The second claim in suit is not thought to cover more than the first, excepting that it more clearly indicates that the clay ring described in the specification shall be attached directly to the mantle. Upon reference to the specification in relation to the manner of attaching the mantle to the ring, it would seem reasonably certain that by the words, "directly attached," the patentee meant to be understood as claiming a method without sewing the Brussels net, and threading the hem with platinum wire. In the beginning, the inventor claimed the tubular support, but he acquiesced in the rejection of this feature on reference by the patent office to the Imray structure. The Patent Office manifestly did not intend to cover any other mantle support than a ring of clay or other suitable material, sufficiently large to allow the mantle to be drawn through it so that it might be turned over at the top edge, and thus avoid the necessity of sewing on the netting and threading with platinum wire the reinforced portion. That being done, the specification says, "the cotton mantle is then incinerated and the finished mantle remains fixed on the ring." Concededly, this element was a departure from the prior art. The essence of neither of the involved claims considering the limitations of the Patent Office can be construed to include the removable tubular support at the lower end. The principle of the adjudications referred to are thought applicable to this case. This conclusion finds support in the evidence. It is shown that the gas mantle, a vertical rod with a ring or hook at the upper end, and a cover for the burner were old at the date of the invention in suit. But such fact, standing alone, is immaterial, as that can be said of other com