(dissenting). The opinion upon the motion for rehearing emphasizes one of the reasons for my dissent. As I understand the letters patent to Robinson and Green, they do not claim or attempt to secure a novelty of the means of forming an electric circuit or a circuit-closer. Means adapted to form such a circuit and such a circuit-loser, including those used by both complainant and defendant, were in fact, and were conceded by the patentees tó be, old and familiar mechanical equivalents. While the patentees show an electric circuit and a circuit-closing device, they show it, not as their novel invention, but merely as a method by which they prefer to form certain elements of their combination. Thus they say in their specifications:
“The conductors, 27 and 28, extend to any circuit-dosing devices arranged to he operated when an attempt is made to open the safe or vault or apartment to which the device is applied.”
And their claim 8, for example, is not for the novelty or invention of these elements, but it is for—
“the combination (1) with the wall of a vault safe or other receptacle,* (2) of a suitable gong or alarm located on the outside of said wall, (3) an electric circuit in which said gong is located, (4) a shield inclosing said gong, and (5) means for closing said electric circuit and thereby operating the said gong or alarm upon the moving of said shield, substantially as described.”
A combination of old elements which accomplishes a new and beneficial result, or attains an old result in a more facile, economical, or efficient way, may be protected by patent as securely as a new machine or composition of matter. Seymour v. Osborne, 11 Wall. 516, 542, 548, 20 L. Ed. 33; Gould v. Rees, 15 Wall. 187, 189, 21 L. Ed. 39; Thomson v. Bank, 53 Fed. 250, 253, 3 C. C. A. 518, 520, 521. And the doctrine of mechanical equivalents is governed by the same rules and has the same application when the infringement of a patent for a combination is in question as'when the issue is over the infringement of a patent for any other invention. Imhaeuser v. Buerk, 101 U. S. 647, 653, 25 L. Ed. 945; Griswold v. Harker, 10 C. C. A. 435, 437, 62 Fed. 389, 391; Fay v. Cordesman, 109 U. S. 408, 420, 3 Sup. Ct. 236, 27 L. Ed. 979; Water-Meter Co. v. Desper, 101 U. S. 332, 25 L. Ed. 1024.
To my mind the defendant uses a combination of equivalent mechanical elements by which it accomplishes the same end by substantially the same means attained by these patentees. It certainly has “an electric circuit in which said gong is located” and “means for closing said electric circuit and thereby operating said gong or alarm upon the moving of said shield.” The specific details of wires, tubes, springs, and bolts which constitute the circuit in which the gong is located and the particular means for closing the circuit and operating the gong thereby when the shield is moved are not essential, and are not claimed, as such, in this claim 8 of the patent. They were not *929material, and there were many other well-known details and devices; including, as I believe, those used by the defendant, which were available to the skilled mechanic to form such circuits and circuit-closers, and were the clear mechanical equivalents of the details and devices described in the patent as one method of forming these elements of the combination. After a careful reconsideration of this case I have been unable to bring my mind to assent to the conclusion that where the claim of a patent is for the combination with other elements of an electric circuit in which the gong is located and means for closing the circuit and operating the gong upon the movement of the shield, and the specific means described in the specification for forming the circuit and the circuit-closer are not claimed as essential, but are clearly shown by both specification and claim to be a mere preferred method of forming the circuit and the circuit-closer, a defendant who uses the combination of the very elements described and claimed, and thereby accomplishes the very result sought by the patentee, escapes infringement, either because it places its circuit-closer on the outside of the vault protected by the gong and shield when the patentees expressly declare in the specification that they “preferably” placed it within the vault, or because it uses insulated wires extending through the wall of the vault in a hollow tube, instead of wires extending through the wall of the vault in a hollow tube surrounded by insulated bushing, or because by a different arrangement of well-known means of forming an electric circuit and a circuit-closer an insulating plate on the wall of the vault, which is not claimed as essential, is made unnecessary and omitted. These were not, in my opinion, the essentials ■ of this claim, or of this patent. They were but the immaterial details of well-known means to form some of the claimed elements of the combination patented. The defendant is using that combination and every element of it: (1) The wall of the vault,; (2) the gong on the outside of the vault; (3) “an electric circuit in which said gong is located (4) a shield inclosing said gong; and (5) “means for closing said electric circuit and thereby operating the said gong or alarm upon the moving of said shield, substantially as described.” By the use of this combination it is accomplishing the end which the patentees secured by their combination. It has adopted the principle of the invention, and it should not be permitted to escape an accounting for its misappropriation.
The description in a specification or drawing of details which are not, and are not claimed as, essential elements of a combination, is the mere pointing out of the better method of using the invention. City of Boston v. Allen, 91 Fed. 248, 249, 33 C. C. A. 485; National Hollow Brake Beam Co. v. Interchangeable Brake Beam Co., 45 C. C. A. 544, 566, 106 Fed. 693, 715; J. L. Owens Co. v. Twin City Separator Co., 168 Fed. 259, 266, 93 C. C. A. 561, 568; Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 418, 28 Sup. Ct. 748, 52 L. Ed. 1122.
Mere changes of the form of some of the mechanical elements of a combination secured by patent will not avoid infringement, where the principle of the patented invention is adopted, unless the form of *930the elements changed is the distinguishing characteristic of the invention. Watch Co. v. Robbins, 64 Fed. 384, 396, 12 C. C. A. 174, 187; New Departure Bell Co. v. Bevin Bros. Mfg. Co. (C. C.) 64 Fed. 859; Kinloch Telephone Co. v. Western Electric Co., 113 Fed. 652, 655, 51 C. C. A. 362, 365; Anderson v. Collins, 122 Fed. 451, 455, 58 C. C. A. 669, 673; Lourie Implement Co. v. Lenhart, 130 Fed. 122, 128, 64 C. C. A. 456, 462.