Opinion of the Court.

Claim 3 of reissue No. 7947 was passed upon by Judge Shipman in the Circuit Court for the District of Connecticut, in March, 1881, in the suits of Yale Lock Manufacturing Com

Opinion of the Court.

pany v. Norwich National Bank, and the Same Company v. New Haven Savings Bank, reported in 19 Blatchford, 123, and 6 Fed. Rep. 377. He held that claim 3 covered a new and patentable invention and was valid. On the question of the validity of the reissue as to claim 3, he said: "It is next urged that the third claim of the reissue is void, because it was abandoned by the patentee upon the objection of the Patent Office, when the original application was pending. In Sargent's original application he made one broad claim. The application was rejected by the examiner, whose decision was reversed by the board of examiners. The examiner then requested that a new application be made, upon the ground that the case presented to the board was not the same case which had been presented to him. A new application was made, containing only the first two claims of the reissue. Then followed a long and earnestly contested litigation in the Patent Office between various interfering applicants, in which, apparently, both patentability and priority were discussed. The Little application contained the broad claim, and the board of examiners said, at one stage of the litigation, whether this question was properly before them or not, that this claim was patentable; so that, when the question came before them upon appeal from the decision of the examiner against the Sargent reissue, the board say: The claim in controversy is the same, in substance, as the first claim of Little, whose application was once in interference with Sargent, and which was admitted to be patentable by the Office at the time of the declaration of the interference. The patentability of Little's claim has once been before us in the aforesaid interference, and, after full argument, we concluded that his claim was tenable, and held that some one who was first to combine with the bolt-work on a vault or safedoor, a key-lock and time-lock acting independently of each other, but jointly upon the bolt-work, might have a valid patent therefor.' These facts exclude the third claim from the decision, or the dicta, in the case of Leggett v. Avery, 101 U. S. 256. I do not understand that the objection that the reissue is for a different invention from the original was pressed by either of the counsel for the defendant. It is sufficient to say,

Opinion of the Court.

that the claims of the original were for the combination of the third claim, provided with a device whereby the bolt-work may be retained in the unlocked position, for shutting the door, and be automatically locked by the time-lock and mechanically by the key-lock when the bolt-work is cast. The patentee had shown 'means whereby' but, if I have been correct thus far, the gist of his invention consisted, not in that device, but in the triple combination. Other different 'devices whereby,' could be introduced by other inventors, which would destroy the value of his patent, if it was unduly limited. As said by the board of examiners, 'means whereby,' while being essential to the convenient use of this combination, is merely incidental to the main idea, and may be varied indefinitely without departing from the spirit and scope of the applicant's invention."

The only remark made by Judge Lowell, in his opinion in the present case, as to the validity of reissue No. 7947, as respects claim 3, is, that the patent "was reissued so soon after its granting that it is not obnoxious to the objection of undue delay." The application for the reissue was filed 13 days after the original patent was issued, and the reissue was granted 36 days after the application for it was filed. Judge Lowell held claim 3 to be invalid on the ground that, if it was a claim irrespective of any particular means for carrying it out it was void as a patent for a principle, independently of the state of the art; and that, in view of the state of the art, it was void. He was of opinion, that there was no patentable novelty in putting a time-lock, which was old, in place of one of two combination locks, where two combination locks had been before used to dog one combined bolt-work; that it was not patentable to substitute a well-known multiple bolt-work for two such bolt-works, where a time-lock and a combination lock had been before combined in the use of two multiple bolt-works; and that there was no patentable novelty in combining two locks with a single door.

A history of the proceedings in the Patent Office in regard to patent No. 195,539 and reissue No. 7947, shows that claim 3 of that reissue must be held to be invalid.

Opinion of the Court.

On the 9th of May, 1874, Sargent filed an application for a patent which claimed broadly the combination of a time-lock, an ordinary lock and a safe-bolt connected with both of them. The claim he made was as follows: "What I claim is the combination, with a clock or time-movement lock and an ordinary lock, attached independently to a safe or vault-door, of a safe-bolt constructed so as to rest against or connect with both of said locks, substantially as described, whereby the safe-bolt cannot be withdrawn till both locks have been unlocked."

In the specification he then filed he said: "This improvement belongs to that class in which two locks are applied upon a safe or vault-door for the purpose of preventing the withdrawal of the safe-bolt till both locks have been unlocked.

I employ one ordinary combination or key-lock and one time-movement or clock-lock, attached independently to the door, and employ in combination therewith a safe-bolt that bears against or connects with both of said locks in such a manner that though the ordinary lock may be picked or opened, yet the clock-lock cannot be reached, and the safe-bolt therefore cannot be released till the clock has performed its office and unlocked its lock at the predetermined hour.

But it is by no means essential to this invention that the circular form of lock-bolt should be used, as the ordinary style of sliding-bolt, or other forms of shifting bearings, could be employed, if desired. . Clock-locks have before been used both separately and in connection with combination locks. Where used alone they are insecure, for the reason that burglars, ascertaining the hour upon which the lock is set, may, by confining or disabling the officers of the bank having control of the same, open the safe when the hour arrives. In my improvement such result cannot occur, because the combination lock still locks the safe. Where clock-locks have been combined with ordinary locks heretofore, so far as I am aware, the said locks have been connected by a lever or other connection, so that their actions are dependent on each other. In such case, if the combination or key-lock is injured by a lock-pick, by violence or otherwise, the clock-lock is liable to