(after stating the facts). This cause was submitted and heard upon the pleadings, without evidence submitted by the complainant below to sustain the assertions of his bill. The sole question, therefore, for consideration is whether the answer contains admissions which would authorize a decree in his favor. It is insisted that the answer does not deny issuance of the patent, or that the complainant was the original and first inventor of the improvements mentioned therein, and concedes infringement. The bill states that the patent was issued for improvements in making “composite and other wheels.” The answer denies that the complainant was the original and first inventor of the alleged improvement in casting “composite or other car wheels.” Upon this is founded the objection that the answer does not controvert the novelty of the invention. We are without information of the exact title of the patent. According to the allegations of the bill this title was corrected subsequently to the issue, but in what respect is not stated. The objection is, however, purely technical, and of no moment. The bill states the number of the patent, and the answer denies that the complainant was the original and first inventor of the improvement specified in the letters patent so numbered; thus making certain the invention spoken to. It is a sufficient denial of the novelty of the alleged invention.
The answer denies that the defendant had at any time made use of or sold the alleged invention and improvements set forth in the letters patent mentioned. But it is insisted that this denial is qualified in the subsequent affirmative defense of prior use, by the allegation that since 1891—six years prior to the patent—defendant had used the processes, combination, and devices, and made the products in its works of which infringement is charged against it by the complainant under his letters patent, and that the specific acts of infringement charged consisted in the same acts and doing the same things, and none other, which it has practiced and done since 1891. No exception was preferred to the answer on this ground. There is interjected in the replication a suggestion of inconsistency in this respect. But the replication cannot perform the function of exceptions. A replication recognizes the sufficiency of the answer and *696takes issue upon the facts charged. There is, however, no inconsistency in the two allegations. The first is a direct, positive denial of infringement; the second, that the acts of the defendant charged as infringing the patent have been done by it since 1891. It does not concede that these acts infringed the patent, but asserts, in legal effect, that if, as the complainant claims, they do so infringe it, then the performance of these acts dated from a period six years prior to the patent, sustaining the defense of a public use, and so establishing want of novelty in the invention. This objection is without merit. The case, then, being submitted upon the pleadings, upon the affirmations of the bill and the denials of the answer, which, so far as responsive to the bill, must be taken as true, there was no proof upon which a decree for the complainant could have passed.
The defendant had pleaded a prior suit between the complainant and the Wells & French Company and the Chicago City Railway Company, claiming advantage of the decree in that case as a privy. It is charged that the bill in that case was dismissed. The answer was excepted to upon the ground that it did not correctly set forth the decree in the other cause, and asserts that the cause was dismissed without prejudice. The court below deemed itself at liberty to go outside the pleading and to examine the former decree, and, finding it to be as stated by the exception, sustained the exception, and thereupon the defense of res judicata was withdrawn. It is now insisted by the complainant below, at whose instance that portion of the answer was stricken from the record, that we may inquire into that record, not pleaded, not contained in the record before us, and that we should hold that the record is res judicata between these parties so far as relates to the validity of the patent. This we cannot do. The record was neither pleaded nor put in evidence, and the cause was voluntarily submitted by the parties upon the pleadings. The clerk’s minute does, indeed, state that there was filed in his office a copy of that previous record; but it was not put in evidence, and the mere filing of it in the clerk’s office does not entitle it to be considered, nor is it brought here by the record for our consideration. But, if it could be considered, it would not avail the complainant. He asserts that that suit was dismissed at his cost, without prejudice, and that decree affirmed by this court (Robinson v. Chicago City Ry. Co., 55 C. C. A. 254, 118 Fed. 438), and claims, by reason of certain expressions in the opinion of the court, that the decree of dismissal without prejudice is effective for him, so far as it dealt with the question of the validity of the patent, but ineffective so far as it dealt with the question of infringement. This is a novel application of the doctrine of res judicata. A bill dismissed without prejudice is not a bar to a subsequent suit. County of Mobile v. Kimball, 102 U. S. 691, 705, 26 L. Ed. 238. We are without information why the bill was dismissed without prejudice, but such a decree cannot, in the nature of things, conclude the parties. If we may examine our opinion upon the appeal in the case referred to, it will be found that while recognizing and assuming, without discussion of the prior art, the novelty of the complainant’s invention, we dealt principally with the question whether the acts of the defendants to that suit constituted *697infringement of the complainant’s rights, and held that they did not. The admissions of the answer in the present case upon which the complainant relies are that the acts done by it are the same acts, and none other, which were charged as an infringement in that prior case. If, therefore, the decree in the prior suit is res judicata upon the question of the novelty of his invention, it is equally conclusive that the prior decree is res judicata against him that the acts of the defendant here complained of do not constitute infringement of his patented rights.
• The decree is affirmed.