This suit was brought for the alleged infringement of claim 3 of certain letters patent, numbered 622,532, dated April 4, 1898, for certain new and useful improvements in gold-dredging apparatus alleged to have been invented by Robert H. Post-lethwaite, who was the appellee’s assignor. The patent declares:

Not only does the patent show upon its face that it is not one of a pioneer character, but the evidence introduced in the cause shows that long before the application for the patent was filed by Postle-thwaite, which was on the 6th day of July, lSDI1, apparatus for gold dredging was described in printed publications, and was publicly used in this country, so nearly the same as the invention claimed in the aforesaid claim 3 of the appellee’s patent as, if not in truth amounting •to anticipation, certainly confines the patent here in question within very narrow limits. The opinion of the court below shows that the trial judge was very much in doubt in respect to the validity of the patent, and the file wrapper introduced in evidence shows that all the expert examiners of the Patent Office held that the appellee’s apparatus constituted no invention, although the Commissioner of Patents held otherwise and awarded the patent sued upon.

For the purposes of this case I shall assume its validity. Whether -or not the evidence shows any infringement upon the part of the 'appellants depends upon the true construction to be placed upon *227 the claim of the patent alleged to have been infringed, to wit, claim 3 above set out. It consists, as will be seen by its perusal, of seven elements, all of which were confessedly old, to wit: (1) A boat or platform; (2) rotary grizzly or separator; (3) devices for imparting rotation thereto; (1-) means for excavating and elevating the ex-cavarive material and discharging the same; (5) a perforated spray pipe; (6) a pump for forcing water into such pipe, through its perforations, onto the material fed into the grizzly or separator; and (7) collecting tables by means of which the separated metal from the dredged material is recovered. If there be anything converting such aggregation of old elements into a patentable combination, it must necessarily be one or more of the additions to or limitations upon the second, fourth, fifth, sixth, and seventh of the elements just mentioned; that is to say, the rotary grizzly or separator claimed is mounted on the boat or platform, the means for excavating, elevating, and discharging the excavative material claimed discharges such material directly into the rotar)- grizzly or separator, the perforated spray pipe claimed leads into the separator or grizzly from the lower end thereof, the pump for forcing water into the said pipe and through its perforations onto the material fed into the grizzly or separator is under disintegrating pressure, and the collecting tables, by means of which the separated metal from the dredged material is recovered, are arranged below the separator or grizzly.

I agree with counsel for the appellants that each and all of those limiting clauses in the claim are in the same category. It seems to be conceded by the appellee that all of them are essential parts of the claim, except that limiting the location of the perforated spray pipe, as to which it contends that it is not an essential part of claim 3, in which view- it was sustained by the court below. That court, in its opinion, after referring to the fact that the spray pipe of the appellants' machine is introduced into the grizzly from the upper end thereof, instead of the lower end, said:

As has been seen, the perforated spray pipe of claim 3 of the ap-pellee’s patent has two limitations in respect to its location: First, it enters the grizzly; and, second, it enters it from its lower end. The Mining and Scientific Press, of date October 8, 1887, introduced in evidence, gives this description of a gold dredger, which Postlethwaite admits in his testimony he had seen long before the making of his claimed invention:

Ill the course of his testimony Postletliwaile was questioned, and answered, among other things, as follows:

Turning to the patent itself, it is seen that the alleged inventor expressly declares that "the improvements consist in the arrangement of parts and details of construction, as will be hereinafter fully set forth in the drawings and described and pointed out in the specification,” and that the annexed drawings show the perforated spray pipe entering the grizzly at its lower end. The file wrapper from the Patent Office introduced in evidence in the cause shows that it was only by so locating the perforated spray pipe that the claim was allowed. It shows that the original claims made no reference to a perforated spray pipe. The third claim was stricken out on a reference by the examiner to a patent to Robinson of September 18, 1894, and claims 3 and 4 substituted in place of it, in each of which was inserted as an element “a water supply pipe for said screen.” Those claims 3 and 4 were rejected on certain references, whereupon claims 3 and 4 were stricken out and claim 3 substituted therefor, as follows:

In support of claim 3 as thus substituted the attorney for the applicant contended as follows:

The attorney cited in support oí his argument letters patent No. 615,667, granted December 13, 1898, to C. S. Barnett.

Claim 3, as so substituted, was rejected by the primary examiner, from whose decision the case was appealed to the examiners in chief. In rejecting claim 3, as the board of examiners did, they cited the dredging apparatus described in the Alining and Scientific Press of October 8, 188!, already referred to, saying that it included every element of the combination specified in claim 3 of the applicant, except “ ‘a perforated spray pipe leading into the separator or grizzly from the lower end thereof,’ and the statement that the water is under disintegrating pressure.” The examiners in chief held “that the only difference between the applicant’s device and that of the publication is that lie uses a perforated spray pipe leading into the rotary separator from the lower end, and discharging water under a disintegrating pressure,” and, finding, further, that it was “old to introduce a perforated spraying pipe into an inclined rotary cylinder from the bottom,” their conclusion was that there was no novelty in the device. In sustaining the patent, as the acting Commissioner did, on appeal to him, no reference was made to the location of the perforated spray pipe.

P'rom what has been said in respect to the proceedings in the Patent Office, it cannot he doubted that the location of that pipe was inserted in the claim for the very purpose of securing its allowance. It was so understood by the applicant’s attorney, as appears from the quotation from his argument above set out, and was so understood by the examiners, as also appears from the quotation from their decision that I have made. In Sargent v. Hall Safe & Lock Company, 114 U. S. 63 , 5 Sup. Ct. 1021, 29 L. Ed. 67 , it is said:

In Walker oil Patents, § 187, it is said:

To the same effect is the case of Donchian v. Kingston (C. C.) 138 Fed. 890 , where it is said, on page 895:

I am of the opinion, as has been said, that each and all of the limiting clauses in claim 3 stand upon the same footing, and that none of them can be disregarded; and, inasmuch as the record shows that the appellant’s device has no perforated spray pipe entering the grizzly at its lower end, it results that there was no infringement.

Accordingly the judgment should be reversed, and cause remanded to the court below, with directions to give judgment for the defendants.

We are unable to agree that there was error in the conclusion of the court below that the location of the spray pipe as entering the grizzly at the lower end thereof is in the nature, of a mere description, tending to show the inventor’s idea of the preferable position, and that thereby the claim is not limited to that precise description. In the original application for the patent, filed on July 6, 1897, the only reference in the claims to a water supply is for “a force pump for supplying water into the grizzly to wash and separate the material fed therein.” In the amendment made on December 3, 1898, “a water supply pipe” is mentioned, and in the following February claim 3 was amended so as to include “a perforated spray pipe leading into the separator or grizzly from the lower end thereof.” To support the application, with the amended claims, the applicant, by his attorney, made no claim of novelty or of advantage in the fact that the pipe entered from the lower end of the grizzly. No such claim appears anywhere in the proceedings in the Patent Office. On the other hand, the applicant’s contention was that his apparatus was distinguished from the prior art, in which he said water had been supplied to the grizzly for the purpose of lubricating only, or for cleansing the mesh of the separator wall, and his attorney directed attention to the fact that the applicant by the use of his force pump—

This 'contention was reiterated oil the appeal to the Commissioner, and it was urged that the applicant had incorporated in his machine the one feature which makes it successful — the introduction of the perforated spray pipe into the rotary grizzly, so that the work of disintegrating is very completely carried on, and all the fine material allowed to pass through the grizzly directly upon the receiving tables. The testimony all indicates that it is immaterial at which end the spray pipe is led into the grizzly, and there is nothing in the file wrapper to show that it was upon the specific location of the sprajr pipe as entering *233 from the lower end of the grizzly that invention was found or the patent was finally allowed. The objections of the examiner and the examiners in chief, upon which the application was rejected, were that the invention liad been anticipated. The location of the spray pipe was treated as immaterial, and in the ruling of the examiner of February 11, 1899, it was expressly declared to be immaterial, for the reason that it made no difference, in securing the water pressure at the desired point, whether the spray pipe entered from the lower or from the upper end; and in the final ruling of the Commissioner, reversing the examiners in chief and allowing the patent, there is no reference whatever to the fact that the spray pipe enters the lower end of the grizzly. The Commissioner considered the prior art and the patents which were said to anticipate the applicant’s invention, and, solely upon the claim of the applicant that his apparatus was especially adapted to the recovery of float gold, distinguished it from the prior inventions, which the Commissioner said would require changes in position in order to produce the result sought by the applicant, and in view of Ihe assertion of the applicant that his object in forcing the water into the grizzly under pressure was to disintegrate or break up the material brought up from the bed of the river, and to force the mud and metal through the meshes of the grizzly, and thence to the collecting tables located below the grizzly, allowed the patent. Said the Commissioner:

We are of the opinion, therefore, that if there was invention in the appellant’s combination, and the patent was properly allowed on the considerations which moved the Commissioner in granting it, > it is obvious that there is nothing in the file wrapper to limit the claim in controversy to the precise position of the spray pipe therein indicated, and that infringement is not avoided by leading the pipe into the gi'iz-zly from the upper end thereof.

All of the elements of claim 3 of the Postlethwaite patent, unless it be that which calls for collecting tables arranged below the grizzly, are old. This fact was pointed out by the Commissioner of Patents on the appeal from the board of examiners, and he allowed the claim and caused the patent to issue solely upon the feature which was brought to his attention, not by the specifications in the application for the patent, but by the argument of the applicant’s counsel on the appeal, that water was forced into the grizzly, through the perforated spray pipe introduced therein, with disintegrating force, so as to break the lumps of clay, stones, and sticks, and allow “the metal to pass through the meshes of the grizzly onto the tables.” In view of this feature of the applicant’s combination, the contention was made by his counsel that he was the first—

*234 That the patentee was not the first to introduce, with disintegrating force, water through a perforated pipe conducted into a grizzly, is shown by the patent to Kirk, in which, as the Commissioner said:

. But none of the prior devices delivered the disintegrated mass within the grizzly through the meshes thereof directly onto collecting tables located below it. The Commissioner seemed to be particularly impressed by the argument of counsel that the Postlethwaite invention was adapted to saving fine or float gold, and that the machines referred to as anticipating it were not so adapted. On the trial in the court below, the appellee, to sustain its patent, introduced the testimony of one Smyth, an expert, who said that the perforated spray pipe had two functions — first, as a conduit for water; and, second, as a conveyor of energy — and that the water issuing in fine jets under force through the perforations of the pipe served to force the finer material from the grizzly onto separating tables below it. He admitted that if the grizzly were rotated, and the material supplied with water, the function of washing and dissolving would be added to that of the mere receiving function of the grizzly; but he testified that, owing to the peculiar action which streams of limited diameter or spray have upon material of different sizes, the gold values in the form of very fine particles scattered through the mass of materials are sifted out therefrom, and the character of separation which then takes place is radically different from that which would take place from the mere introduction of sufficient water into the grizzly to dissolve the mass thereof. To use his own words:

Again, he said:

In summarizing the elements of the patented combination, he said that they were (1) a grizzly; (2) a feeder to it; (3) a pump to introduce water under disintegrating pressure; (4) a perforated spray pipe from the pump into the grizzly; (5) “gold-collecting tables below the grizzly, so as to be within the influence of the energetic stream lines from the perforated .pipe.” The function so attributed by this .expert witness to the'action of jets of water in selecting out particles-of fine gold from a mass of clay, mud, sand,-and rocks impresses us *235 as fanciful, rather than as reasonable or scientific; for the testimony is not convincing' that fine jets of water directed under pressure against the material in a grizzly can have the effect to sort out of the commingled mass fine or scale gold, which will float on water, and deliver it ahead of the earth, sand, or dissolved clay. On the contrary, it would seem apparent that the jets have performed their whole function when they have washed the sticks and stones and dissolved the softer material, if, however, such selective action is to be attributed to the fine jets of water, and they do indeed force the fine gold out of the mass and ahead of the other material, it is clearly essential to their successful operation that there he collecting tables to receive the impact of the fine particles of gold before the other material again becomes commingled with it. To do this it is necessary that there be collecting tables below the grizzly, as the same witness says, “so as to be within' the influence of the energetic stream lines from the perforated pipe.”

In the appellant’s combination, as shown in the drawings thereof,' there is beneath the grizzly a closed box. into which the material discharged from the grizzly is impounded and retained until released by raising slide gates, whereupon it flows upon the saving devices. There is no testimony in the record that the .appellant has operated its machine without the intervention of this box between the grizzly and the saving tables. It is evident that if, in the operation of the appellant’s device, the selective action so attributed to the appellee’s invention is secured, and fine particles of gold are forced ahead of the other mass of material through its grizzly by ihe selective action of the jets of water, the advantage thereof is wholly lost by depositing and commingling the whole mass which emerges from the grizzly into a collecting box or hopper before it is conducted upon the riffles or the saving devices. If, in other words, there has been a selection of the metal by the force of the jets through the perforated pipe of the appellant’s grizzly, it is nullified by the general commingling of the whole mass under the grizzly before it flows upon the saving devices. Ju view of this fact, it is clear that the appellant does not infringe the appellee’s patent.

This is made more apparent by the further testimony of the same expert witness in reference to the operation of other patented combinations and their adaptability to dredger mining. Referring to the De, Groat patent, in which is shown a perforated pipe within a rotating grizzly supplied with water by a pump, the witness found the difference between that and the Post leth waite device in 1he fact that De Groat’s grizzly consists of a series of three concentric screens, and he said that:

So, in distinguishing the Day patent, in which there were shown two rotary grizzlies, both provided with perforated spray pipes, the witness pointed out the difference between that and the patent in controversy by showing that in the former the amalgamating table, while it was below the grizzly, was not adjacent thereto and did not receive *236 the gold-bearing residuum directly, but through a hopper or pipe or runway.

As to, the Kirk patent, in which there were two perforated cylinders, one revolving within the other, with a perforated pipe within the innermost, the witness alluded to the fact that no collecting tables were shown below the grizzly, and said that the outer cylinder would contain water to some depth, the presence of which water in constant agitation would break up and destroy any selective action of strong jets of water. If it be true, therefore, that the presence of screens surrounding a grizzly will destroy the selective action of the jets of water, it follows, of course, that the presence of a hopper or a collecting device into which the mass of the material which passes through the grizzly is collected and brought to rest before it is conducted onto collecting tables will have a like effect. In short, in the appellant’s combination, it is plainly to be seen that the collecting tables are not so located as to be within the influence of the energetic stream line, and that the material is not delivered with force upon the tables. If there is invention in the Postlethwaite patent, such as to entitle the appellee to protection in the use thereof, it is extremely narrow, and its essence is the direct delivery of material with force upon the collecting tables. Everything else in the combination is clearly anticipated by the prior art and patents. This particular element is not found in the appellant’s combination.

It follows that the decree must be reversed, and the cause remanded, with instructions to dismiss the bill.

HUNT, District Judge, concurs with GILBERT, Circuit Judge.