(after stating the facts as above). Channon’s principal claim of invention is that, for the first time in theatre fire proof curtains, he introduces a structure, one of the walls of which (that wall being the one next to the fire) is composed of non-conducting, non-combustible material described in the patent as “asbestos and the like.” Raying aside for the time being, the fact that such wall was to be used in connection with a theatre curtain, we find in patent No. 223,-101 issued to W. D. Smith, June 6th, 1880, a fire proof shutter or screen, one wall of which was of sheet metal, and the other of non-conducting, non-combustible material (in the Smith patent bricks made of any refractory material) the wall of the shutter exposed to the fire being the wall composed of such non-conducting, non-combustible material. The sole difference then between the Smith shutter and the Channon drop curtain consists, first, in the fact that one is a shutter for a window, and the other a drop curtain for the stage of a theatre; and secondly, that the non-combustible, and nonconducting material in the one is refractory bricks, and 'in the. oilier “asbestos or the like”; or, to state it in another way, the three claims sued upon in the Channon patent, literally and unquestionably include the Smith shutter, unless the words “non-conducting, non-combustible material” in the Channon claims are by reference back to the de*708scription, to be read as excluding refractory bricks, and except, also, for the fact that they relate to different uses.
We cannot limit the language of the claims thus contended for. Carnegie Steel Co., Ltd., v. Cambria Iron Co., 185 U. S. 403, 22 Sup. Ct. 698, 46 L. Ed. 968, is no authority for such limitation. In that case the question was not whether the claim should be limited by decree of court to the specific things mentioned in the specification, but whether the claim had been “illegally expanded beyond the specification.” No such question is presented in this case. The question presented to us is, whether under a claim including on its face “non-combustible, and non-conducting material” we may say, by judicial decree, that it does not mean this or that non-conducting, non-combustible material, but only such non-conducting, non-combustible material as is named in the specification. Were conditions reversed — the alleged infringing device having a non-combustible non-conducting material, but not asbestos, such for instance as mineral wool, — would this power of the court to limit by decree the claims of the patent to the particular material specified be admitted? And if not, at what specific non-conducting non-combustible material are we to draw the line? Appellee clearly has not meant to limit itself to asbestos. Where, then is the limit, short of anything non-conducting and non-combustible ? Clearly, it seems to us, the concept of fireproofing, though not as a stage curtain, by a double wall, one wall of which (the one exposed to the fire) should be non-conducting and non-combustible, so as to prevent, among other things, the warping of the fire proof structure when exposed to the fire, is a concept set forth in the Smith patent, which to that extent, at least, anticipated the Channon patent.
Now does the fact that the Channon patent is for a use different from the Smith shutter, save the Channon patent from the Smith patent as an anticipation? Is there invention in the transference of the concept involved from use as a window shutter to use as a stage curtain? The new use of an old concept is often invention. But Chan-non did not introduce the old concept into what, when his patent was applied for, was a new use. As long ago as 1883, Alexander Clark took out an English patent “for an improved fire proof screen or shutter for separating the stage from the audience of theatres, together with means and apparatus for working the same” which described “a rigid structure made of iron or steel parts, riveted to suitable channel and angle iron framing, the curtain, screen or shutter being constructed double, a sufficient air space being left between the two skins to prevent the rapid transmission of heat.” And on the 18th of January, 1904, twenty days before Channon’s application for a patent was filed, the City Council of Chicago, following the great fire in the Iroquois Theatre in Chicago in the December preceding, in which several hundred persons perished,'passed an ordinance requiring that all theaters be equipped with fire proof curtains of the following description:
“The main proscenium opening shall have a substantially vertically operated steel curtain, fire proofed on the stage side, which shall be raised and lowered by mechanical power and which shall be in constant use as the regular curtain and act drop.”
*709Indeed, it was to meet the requirements of this ordinance, as well as to safeguard the patrons of theatres, doubtless, that Channon took out the patent sued upon. In other words Channon got his concept out of the prior art and the city ordinances, that is to say, the thought of fireproofing theatre curtains; and also got the mechanical means employed out of the prior art, that is to say, the use of two walls, with an air chamber between them, the wall exposed to the fire being of non-conducting, non-combustible material — leaving no ground, of any kind, on which to sustain the patentability of his curtain.
The decree is reversed, with instructions to dismiss the bill for want of equity.
NOTE. — After the filing of the opinion in this case, the court denied a motion by appellee (complainant below) for leave to file a disclaimer in respect to the patent.