(dissenting). I dissent from the opinion of the gourt, and concur fully in the opinion of Judge Thomas in the court below so far as he decided that the defendants do not infringe the claim of the patent. The opinion of the court does not, in my view, set forth correctly the state of the prior art, and it sanctions a broader construction of the claim than can be fairly given to it.
The invention of the patent is a very narrow one, and, if it were necessary to pass upon the question of patentable novelty, it would be difficult to regard the claim as embodying anything more than an aggregation of old parts, in which each performs merely its old function. The grooved blocks were old in the wall-building art, blocks having registered mortises were old, and the metallic tenons were old, and the grooves had been used for affording mortar spaces, and the mortises and tenons for binding the blocks more firmly together, but the grooves and mortises and tenons had not been used in the same block. What the patentee did, and all he did, that was new, was to employ in the same block both the grooves, the mortises, and the tenons, thus binding the blocks together with the tenons as well as by the increased body of mortar held by the ' grooves. This is apparent from the proceedings in the Patent Office as disclosed by the file wrapper. The application described the subject-matter substantially as it is set forth in the patent, and originally contained three claims, as follows:
“(1) A fire-proof ceiling or wall, consisting of a series of plates or blocks which are connected by means of metallic tenons extending into registering mortises in the adjacent edges of the plates or blocks, substantially as set forth.”
“(2) A fire-proof plate or block for walls and ceilings, provided with mortises in its sides and ends, adapted to receive connecting tenons, substantially as set forth.”
“(3) A fire-proof plate or block for walls and ceilings provided with mor-, tises in its sides and ends, and with grooves in said sides and ends, substantially as set forth.”
*805These claims were rejected by the Patent Office for want of novelty. The applicant acquiesced, and amended his claims so that they read as follows:
“(1) A fire-proof ceiling or wall, consisting of a thin series of plates or blocks, placed edge to edge and provided with registering mortises in the adjacent edges of the plates or blocks, and metallic tenons for connecting the plates or blocks, at the sides and ends, substantially as set forth.”
“(2) A fire-proof plate or block provided with grooves in its sides and ends and with mortises in its grooved sides and ends, substantially as set forth.”
The claims were again rejected by the Patent Office for want of novelty. The applicant acquiesced, and thereupon by amendment he introduced the claim which appears in the patent. The claim specifies as constituents not only blocks provided with grooves in their sides and ends, but also provided with registering mortises in the grooved edges thereof, substantially as described. The registering mortises as described in the specification and shown in the drawings are distinct from and supplementary to the grooves, and some.register transversely and some longitudinally, and they have a distinct and supplementary office in the composite structure. The specification” reads as follows:
“The ends of the plates or blocks, a, are provided with mortises for receiving tenons, <Z, which extend into the corresponding mortises of the adjacent ends of the plates' or blocks, so ’that the plates or blocks, a, are connected * * * in a longitudinal direction with the plates at the ends of the same.”
These mortises., as well as the grooves in the ends of the blocks, are omitted by the defendants in constructing dumb-waiter shafts, which are the only walls made by them. The walls in these shafts are only a single block in width, and it would be impracticable to connect the plates at the corners by mortises and tenons such as are shown in the patent. It is true the defendants use the top and bottom grooves in the block, and thereby get the benefit of the more ample mortar space; and they also use a tenon laid in thé grooves, and bent at right angles so as to enter the corresponding grooves at the corner of the wall; but as it was old to use the grooves for mortar spaces, and old to use tenons and mortar in binding the blocks of the wall together, it is quite impossible to discover what they have done which they were not entitled to do, or how they infringe, so long as they have not used the registering mortises described in the specification and enumerated in the claim. The patent is one in which there is no room for the application of the doctrine of equivalents. The claim must be confined, in view of the prior art and the action of the Patent Office, to a combination of the specific parts mentioned. The patentee thought only of a wall or ceiling in which a number of blocks were to be laid side by side, and framed his specification accordingly. If it had occurred to him that walls might be built consisting of single stones, one laid on top of the other, it is not improbable that he could have devised some means of binding the corners together by tenons; but this did not occur to him, and he did not devise any means for that purpose. It in*806volved practically as much invention to dispense with his registering mortises in the ends of the block, and utilize the groove with a right-angled tenon to bind the blocks together at the corners, as it did to bring into one structure the parts which he assembled together.