*466

"It has heretofore been the practice to cover the tops of smokestacks of locomotives with a wire netting or grating, for the purpose of preventing the escape of sparks and cinders; and in some cases an inverted metal cone is also placed in the center of such netting or grating, to receive and break the force of the cinders as they are thrown against it.

"In all of these contrivances the cinders receive so much force from the exhausting steam while on their way up the petticoat pipe and smokestack that they very soon destroy the netting or grating placed at the top of the smokestack, and, where a cone or other device is used to turn the cinders downwards and partially protect the grating, the gases are also retarded in their escape.

"In order to overcome these difficulties, we place a grating, D, at or near the lower end of the petticoat pipe, E, so as to surround the exhaust pipes, I, I, and prevent any cinders or sparks entering the pipe, E, while allowing free passage for the smoke and gases. We also place a grating or netting, F, around the top of the petticoat pipe, to cover the aperture left between it and the smokestack, in order to arrest any sparks or cinders that may be drawn to that point.

"[In the construction of the grating, E, we prefer to use vertical bars, as shown in the drawing, but any style or kind of grating may be used that will prevent cinders or sparks from entering the petticoat pipe, such as a perforated surface or a grating formed in any manner desired, and the apertures or perforations may be regulated in size, and area of surface covered, by the amount of opening required for the regular draught, and escape of smoke on kindling the fire, or when the engine is not in motion.] We construct the grating, D, with straight vertical bars of iron, placed at small distances apart, but these spaces should be such, in the aggregate, as will be sufficient for the draft and escape of the smoke, on kindling the fire, or when the engine is not in mo

tion.

"By this arrangement, nothing but smoke and gas are allowed to pass the netting, F, and no coals or dangerous sparks can pass out of the smokebox into the petticoat pipe; they being arrested by the grating. D. before having received any very great impulse by reason of the exhaust pipes. The strong draught up the pipe. E. and smokestack, brings the greatest portion of the cinders and sparks to the grating. D. against which they strike. and fall harmless to the bottom of the smokebox, while the smoke and gases have free and uninterrupted egress

through the petticoat pipe and smokestack they being perfectly clear; and the grat ings, D and F, are not liable to be injure by the cinders striking against them, as they are arrested before having obtained the force they would have if allowed to pass up into the smokestack.

"What we claim as our invention, and desire to secure by letters-patent, is:

"[First. Placing a grating in the smokebox of a locomotive to prevent sparks or cinders entering the petticoat pipe, substantially as described and shown.

"[Second. The combination of the grating, D, with the netting, F, substantially as and for the purposes described and shown.]

"First. The grating, D, with vertical bars placed at the foot of the spark or petticoat pipe, E, in the manner and for the purpose substan tially as described.

66

Second. The combination of the grating, D, with the netting, F, in the manner and for the purpose substantially as described."

The drawings accompanying the reissue were, with some difference of lettering, practically the same as accompanied the original application, and were as follows:

470

"formed either with bars, or of netting or perforated plates. The shape is not material. We make them circular, as being most convenient in ordinary cases." But after the application was rejected, on reference to the Vauclain patent of August 20, 1861, the specification was changed so as to disclaim the construction of Vauclain, and the claim of a combination of "a spark arrester with the smokehead of a locomotive" was altered to a claim for "the grate, D, with longitudinal bars," the specification being amended accordingly. The construction of the grate "either with bars, or of netting or perforated plates," was changed into "perpendicular bars, with fixed apertures, sufficiently fine to stop the sparks which come from the fire"; and the clause that "the force of coals drawn from the fire, when impelled by the exhaust steam up the chimney, is such as to cut through netting, and even cast iron over a quarter of an inch thick, in two or three months, in any description of spark arresters located in the smokestack," was struck out. The claim, taken with the specification and drawings, covered the combination, in the smokebox of a locomotive engine, of a petticoat pipe with a spark-arresting grating, composed of longitudinal bars; and as no other form was described or illustrated, and the grating was designated by the reference letter, it followed that it must be of the form shown in the drawings, namely, a series of long bars placed vertically, with long openings between them, extending from the top to the bottom of the grating.

The rule is that where the applicant acquiesces in the rejection of claims by the patent office, or in a construction which narrows or restricts them, and where the elements which go to make up the combination of the claim are mentioned specifically, and by reference letters, leaving no room for question as to what was intended, the claim must be confined and restricted to the particular device described. Knapp v. Morss, 150 U. S. 221, 14 Sup. Ct. 81.

We find nothing in the specification to inIdicate that the use of the vertical bars was patentably different from the netting or perforated plates originally stated to be equivalent devices, and no new result produced by the use of those bars is pointed out. As to the specification of the reissue application, it will have been seen that what was omitted before, because rejected by the patent office, was restored; and it was again stated that the form of the grating was not material, but that any kind of apertures or perforations might be used, though a preference was expressed for the use of vertical bars, as shown in the drawing. There was in the reissue a description of a piece of boiler plate or sheet iron at the bottom of the smokebox, providing a flat surface for the grate to rest on, and having holes for the passage of the exhaust pipe; and this plate (letter H in the reissued drawings) was not described in the

original patent, although in the original drawing there was a faint line running across the smokebox, which might be said to be such plate, as the grate could not stand on nothing. The disclaimer was also omitted. The claims of the reissue patent, as filed, were (1) placing a grating in the smokebox of a locomotive, to prevent sparks or cinders entering the petticoat pipe, substantially as described and shown; (2) the combination of the grating, D, with the netting, F, substantially as and for the purposes de scribed and shown. These were substantial ly the same claims as were made on the original application, and afterwards abandoned. The reissue application having been rejected, these claims were struck out, and two others substituted, the second of which was substantially the same as the original second reissue claim, and the first of which limited the invention to the specific form of grating shown; and the specification was amended by erasing the matter which provided that the form of grating was immaterial, and inserting the paragraph stating the construction of the grating, D, with straight, vertical bars of iron placed at small dis tances apart.

We are of opinion that the patent was limited to a grating composed of vertical bars, and the spaces between them, the bars being attached at their upper ends to the bottom of the petticoat pipe.

Ordinarily, the tubes for heating water in locomotive boilers lead from the fire box into the smokestack; and smoke, gases, and cinders are discharged into the atmosphere through the smokestack, propelled by the draft created by the exhaust steam. To arrest the discharge of sparks and cinders, locomotives were provided, years before the date of this patent, with various devices known as "spark arresters."

On the hearing, several forms of pipe into which the exhaust steam is discharged through exhaust nozzles were referred to as long in use; particularly, that shown in the, Kearney and Tronson patent, technically! known as a "petticoat pipe," in which the pipe is greater in diameter at the bottom, and an opening is left between the top of the pipe and the opening for the stack leading out of the top of the smokebox, and guarded by a screen, and that shown in the May patent, where the pipe is a downward extension of the smokestack into the smokebox, and there is no opening around the pipe at the point at which it passes through the top of the smokebox. In the petticoat pipe there are two points of entry into the stack, -one at the top, and one at the bottom of the pipe. In the other the point of entry is at the bottom.

The patents referred to by the patent of fice, and others, were introduced on behalf of defendant, to show the state of the art at the time of the grant to Kearney and Tronson.

The patent granted to Hubbell, June 26,

1841, for a spark arrester (No. 2,143), furnishes an example of a spark arrester below the base of the smokestack; and this patent shows that in that year a cylinder of perforated metal or wire gauze could be used for arresting sparks at the front end of a locomotive, and within the smokebox. The patent to May, July 28, 1857 (No. 17,884), showed a spark arrester in a locomotive smokebox, the two exhaust nozzles entering a drum made of perforated plates of metal or wire gauze. This drum, at the upper end, is attached to a downward prolongation of the stack into the smokebox. May's claim was: "My arrangement of the spark arrester within the smokebox of the locomotive steam boiler so that the stack or chimney shall be prolonged down into the smokebox, and made of wire gauze or perforated plates, and otherwise so constructed, as specified, that the entire track of the smoke shall be through the gauze or perforated plates." He sets forth "the advantages of making the spark arrester within the smokebox, instead of plaIcing it within the chimney, or in a chamber arranged above the smokebox, and made to communicate therewith by a flue."

Fig. 1 of May's drawings is as follows:

plaintiffs, but it approaches very near to it. The slots and iron strips are also placed horizontally, whilst the plaintiffs' patent is for a grate with vertical bars." But there is no suggestion in the patent that the perforated screen is made of sheet metal. Nothing is said in the specification as to material, and the drawings do not impress us as affording a satisfactory basis for the conclusion that the material was sheet, rather than cast, iron. Fig. 1 of this patent is as follows:

Figl

C

The patent of Vauclain of August 20, 1861 (No. 33,114), has a similar cage or grating to that of May's patent, and the same arrangement of downward extension of stack and exhaust nozzles; but there is a screened opening at the top of the cage for the passage of smoke and gases, and the perforations are horizontal. These apertures, as stated in the specification, may consist chiefly or wholly of latitudinal slots, and the drawings show that the perforations are quite elongated.

In the opinion of the circuit court it is said that the apertures appear, from the drawing, to be cut out of sheet iron, and that such a screen "could not be said to be made of iron bars, which are the thing patented to the

In the patent to Sweet dated June 23, 1863 (No. 38,992); the exhaust nozzles enter a hollow cylinder made of wire gauze, and the screens are described as being either in the form of a cylinder, or the frustrum of a cone.

In Smith's patent of August 16, 1870 (No. 106,515), a device of perforated metal is used. This patent shows the exhaust nozzles as entering the frustrum of a cone formed of perforated metal, which at the top unites with a downward extension of the chimney, the perforations extending up to the smokearch, and outside of the spark arrester is a lift pipe which may be made adjustable.

The patent to Weideman, Major, and Sample, of December 20, 1870 (No. 110,315), shows a spark arrester of finely perforated metal, a petticoat pipe, and what is called a "draft pipe."

Smith's patent of March 7, 1871 (No. 112,506), describes a spark arrester consisting of a grated tubular casing made by a continuous bar of wrought iron coiled spirally in horizontal coils, or of cast-iron rings, one above the other, lying horizontally, and strung to upright rods to keep them a proper distance apart, "or, the grating may be made in any other desired manner, providing it presente

rigid bars for the hard, ignited cinders to strike against, and providing there are openings sufficient in number and size to permit the free escape of lighter particles with the products of combustion." This was held by the circuit court to closely approach the invention patented by the plaintiff, the only difference being that the coiled wrought-iron bar and the cast-iron bars or rings were horizontally arranged, while plaintiff's patent required the bars to be vertical; but the circuit court was of opinion that this patent should be laid out of view, because plaintiff's application was sworn to December 31, 1870, and filed in the patent office January 5, 1871, and the time of the filing of Smith's application was not shown. It should, perhaps, be noted that as Kearney and Tronson modified their claims on the reissue upon the citation of this patent with those of Vauclain and Weideman, Major, and Sample, they apparently conceded the seniority of Smith's invention.

These patents show that, prior to Kearney and Tronson's invention, spark arresters had

long been placed at the base of the smokestack, in connection with a petticoat pipe, or a downward extension of the stack; that the advantage of placing a spark arrester in the smokebox, instead of in the smokestack, was recognized as early as the May patent,— July 28, 1857; that the exhaust nozzles had been led into the base of such arresters; and that such arresters had been made from wire gauze and from perforated metal, the apertures producing, in one instance, horizontal gratings.

The spark arrester with vertical slots or perforations, used by defendant, until discontinued upon the commencement of this suit, was devised by its own employés, and was used in ignorance of complainants' patent, as matter of fact, and taken out upon notice of the claim for infringement. This spark arrester was originally constructed under the patent to*Alexander Mitchell (No. 178,-* 181), May 30, 1876, and was provided with round perforations, afterwards changed so that the perforations were elongated.

The device is, in substance, as follows:

477

476

What is claimed is that these apertures are an infringement, because they are upright, although conceded that if rectangular they would not infringe.

The defendant's expert testified-correctly, as we think-in regard to this device, as compared with that described and claimed in the reissue patent, that in defendant's structure there is no such grating as the grating, D, with vertical bars, "but there is, on the other hand, a grating made up of short, vertical slots, only about three and a quarter inches in length, which none of them run the entire height, or even half the height of the spark arrester. It takes five of the short slots of the defendant's structure, with the accompanying cross pieces, to make up the height of the defendant's device. Neither in the defendant's device is the grating made of vertical bars, but it is a casting having slots in it, which slots, it is true, are longer vertically than they are horizontally, but which slots are not spaces formed between and by vertical bars arranged close together." As to the second element in the combination of the first claim, the petticoat pipe, it is the function of that pipe to produce "two lines of draft from the smokebox, one through the grating, D, and up through the petticoat pipe, and the other from the smokebox around the outer and upper edge of the petticoat pipe, and as shown in complainants' patent through the grating, F." And the petticoat pipe within the smokebox is not present in defendant's structure.

In respect of the second claim of the patent, which relates to the netting, F, over the opening at the upper end of the petticoat pipe, both Kearney and his expert admit that there is no infringement, as there is no such opening and no such netting in defendant's device. Something was said about complainants' grating being of cast metal, but there is nothing on this subject in complainants' patent, and they were not pioneer inventors entitled to invoke a broad range of equivalents.

We have already seen that Kearney and Tronson, who were experienced and practical railroad men, declared in their original applications for the patent, and for the reissue, that the shape of their grating was not material, and that it might be made either from bars or netting or perforated plates; and if their particular construction of grate with the long, vertical bars was a mere equivalent for the grates shown in the prior patents, then it would not be a patentable invention, but a mere change of form.

And we do not understand the specifications to set up any new or improved result by the grating composed of vertical bars, although the advantage resulting from placing the spark arrester in the smokebox, which was old, was shown, nor do we find from the evidence that the change of form constituted any advance in the art.

It appears that a spark arrester such as Kearney and Tronson's was used upon a few locomotives on the Morris & Essex Railroad, of which Kearney and Tronson were employés,-Tronson being the master me chanic, and that the use was discontinued after a year or so; that it was used experimentally on a locomotive on the Central Railroad of New Jersey, and on one on the Troy & Whitehall Railroad. But a careful consideration of the evidence, which we deem it unnecessary to review in detail, convinces us that Kearney and Tronson originally correctly averred that bars or perforated plates or wire nettings were equivalent devices, and that a grating with vertical bars was not productive of any better result than was accomplished by the prior devices.

Upon the whole, therefore, we conclude that the Kearney and Tronson reissue is void for want of patentable novelty.

Decree reversed and cause remanded, with a direction to dismiss the bill.

(158 U. S. 285)

UNION PAC. RY. CO. v. WYLER.
(May 20, 1895.)
No. 217.

PLEADING-AMENDMENT-DeparturE.

1. Plaintiff brought an action in a Missouri court against the defendant corporation for a personal injury, which occurred in April. 1883, alleging that defendant employed, as a fellow servant of plaintiff, one K.. who was, and was known to defendant to be, incompetent, and unfit for his position, and that, through the negligence of defendant in employing said K., the injury happened. The cause was removed to the federal court, and, after proceedings there, plaintiff amended his petition by adding an averment that the injury resulted from the negligence of defendant. its agents and servants, and in consequence of the negligence of said K. In November, 1888, plaintiff again amended his petition by omitting the allegations as to the incompetency of K. and defendant's knowledge thereof, and rested the cause of action solely on the negligence of K.. under a statute of Kansas, in which state the injury occurred, giving a right of action for the negligence of a fellow servant, which statute was pleaded. Held, that the second amended petition, by changing the ground of the action from the general law to a special statute, constituted a departure, and set up a new and different cause of action from that stated in the former petitions. 2. Held, further, that such new cause of action did not relate back to the commencement of the action, but was barred by the Missouri statute, limiting actions for personal injuries to five years from the occurrence of such injuries.

In Error to the Circuit Court of the United States for the Western District of Missouri.

On the 25th of September, 1885, Otto Wy. ler, the defendant in error, sued the Union Pacific Railway Company, plaintiff in error, in the circuit court of Jackson county, state of Missouri, to recover damages for a personal injury. The petition alleged that in April, 1883, and for a long time prior thereto, he was employed by the defendant at Wyandotte, Kan., in repairing locomotives and engines; that at the date stated the corporation had in its employ other men besides