Harlan F. Stone

“ Upon comparison of the withdrawn claim with Claim 8 of the patent as allowed it will be observed that both are combination claims for a piston having a head, a divided or slotted skirt disconnected from the wall portion of the head and connected with the head by ribs, webs or skirt carriers. The only material difference in view of what has been said to be the invention is the statement in the withdrawn claims that the skirt carriers (webs) are 'susceptible of being slightly flexed radially' or the like. ”

“ But in the specifications of the patent, which so far as now material appeared in Jardine's application describing the invention, he makes specific reference to the webs constructed in such proportions as to enable them to 'bend' in response to the reaction force of the cylinder wall on the outer faces of the guide segments as the piston expands, and to the cooperation of the 'bending' web with the thermal expansion of the guide part of the piston without a corresponding increase in its outer diameter. ”

“ In submitting the final amendment cancelling the flexible web claims in interference and presenting the claims 8 and 11 of the Jardine patent held valid by the court below, there is no mention of flexing webs, the features stressed being in the case of Claim 8 that the webs are integral with the ring flange and in the case of Claim 11 that the webs are integral with the flange and extend 'convergingly inwardly' therefrom. ”

“ The Jardine patent was described as of the slipper type of piston although not limited to that type, the skirt consisting of two separated parts circumferentially separated from the piston head, supported by the webs which connect the skirt or slippers with the piston head and support wrist pin bosses from which the skirt is retracted or cut away. ”

“ The combination which it found to be preserved in Jardine's claims was 'a combination with balanced skirt flexibility due to cooperation of longitudinal and vertical slotting with flexing webs supporting retracted bosses and connected to a skirt thereby made responsive to physical compression and thermal expansion so as to permit of minute clearances between piston and cylinder, a concept perceived in Gulick as amended and minus amendment no longer perceived.' 108 F.2d 114. ”

“ True, the rule is most frequently invoked when the original and cancelled claim is broader than that allowed, but the rule and the reason for it are the same if the cancelled or rejected claim be narrower. ”

“ Respondent the Cleveland Trust Co. is the assignee in trust under a pooling agreement of some eighty patents relating to pistons for gas engines. It brought suit in the district court for northern Ohio against petitioners, three piston dealers, customers of the Sterling Products Company, to restrain infringement of five of the patents, including the Gulick patent No. 1,815,733, applied for November 30, 1917 and allowed July 31, 1931, the Jardine patent, No. 1,763,523, applied for March 11, 1920 and allowed June 10, 1930, and the Maynard patent No. ”