On Petition for Rehearing.
The appellant, having petitioned for a rehearing of the above-entitled appeal, wherein the opinion of the court, filed at the present term, directs af-firmance of the decree below, further petitions for relief in the cause, predicated on an alleged disclaimer filed by the appellant in the Patent Office subsequent to the filing of the above-mentioned opinion herein. A certified copy of the instrument referred to is produced, which describes the patent in suit, and thereupon purports to disclaim as follows:
“Your petitioner therefore hereby enters its disclaimer to so much of claim 6 of said patent as may describe a brush mechanism in which the stationary ring is not separable from the armature with its commutator and from the body of the field magnet casing, so that the brush mechanism may be bodily removed without dismembering the rotary and stationary rings and the bearing-balls which lock or tie them together, and in which the means for limiting the rotary movement of the rotary ring is not such as to permit movement sufficient to change the respective positions of the brushes with relation to the commutator to cause the polarity of the brushes to remain constant, regardless of the direction of rotation of the armature of the dynamo. Thereby limiting said claim 6 to a brush mechanism in which the stationary ring is separable from the armature with its commutator and from the body of the fields magnet casing, so that the brush mechanism may be bodily removed *922without dismembering the rotary and stationary rings and the bearing-balls which lock or tie them together, and in which the means for limiting the rotary movement of the rotary ring is such as to permit movement sufficient to change the respective positions of the brushes with relation to the commutator to cause the polarity of the brushes to remain constant, regardless of the direction of rotation of the armature of the dynamo.”SEAMAN, Circuit Judge
(after stating the facts as above). [2] Relief is sought by the appellant’s petition to escape the ruling of this court for affirmance of the decree below by reopening the cause for hearing upon the effect of a disclaimer filed by the appellant 'in the Patent Office pending the mandate upon .the appeal. An objection is urged that this court is without jurisdiction to authorize such relief, because it is founded on new matter “appearing in the case for the first time,” and that it “is an original matter which should be determined by the District Court prior to any consideration thereof” herein. But we believe such contention to be untenable. If the disclaimer set up in the petition affords ground for relief in the present cause, it can be granted only through action (by leave or otherwise) of the appellate court, as the authority of the District Court after appeal becomes limited to execution of the mandate (In re Potts, 166 U. S. 263, 17 Sup. Ct. 520, 41 L. Ed. 994); and no doubt is enter-tainable that relief may be authorized by this court to enforce any equities arising under a disclaimer so presented. See American Soda Fountain Co. v. Sample, 136 Fed. 857, 70 C. C. A. 415.
The- question, therefore, whether the disclaimer set up in the petition presents equitable ground for reopening the cause plainly arises for determination before issuance of the mandate. On behalf of the appellee it is contended that the instrument filed as a disclaimer is not authorized, within the meaning of the statute (sections 4917, 4922, Rev. St. [U. S. Comp. St. 1901, pp. 3393, 3396]), “since it does not disclaim any distinct part of the specification or claim of the patent in suit, but disclaims merely the interpretation of the claim which this court has held to be necessary.” Without specifying any distinct claim or part thereof as surrendered, the disclaimer, so called, is plainly framed and directed to incorporate in thé claim the appellant’s interpretation of various elements of the “brush mechanism” there mentioned, so that the claim shall be read in conformity with the meaning-for which its counsel contended throughout the argument on the appeal for reversal of the decree. For answer to the crucial inquiry above stated, however, we believe it to be unnecessary to determine either the sufficiency or effect of this instrument by way of ascertaining the meaning or force of the claim in. controversy. So no discussion is required of the various contentions of counsel, either as to the effect thereof, or whether the ruling in our opinion, as heretofore filed, against the validity of such claim is consistent with the present disclaimer, or could rightly be affected thereby.
Faying aside all of these questions as to the force of the disclaimer to require interpretation of the claim, for relief under the petition, we may assume, for the purpose alone of the present inquiry, that it is not only effective to that end, but affixes a definition of the terms of the claim which furnishes support for its validity, notwithstanding *923the prior patents referred to in our opinion. The benefit of this assumption, however, cannot relieve the claim of the limitations imposed by the prior art evidence, and that evidence in the record we believe to be conclusive for the narrow scope of any invention which may thus be found in the claim, as the opinion below (upholding its validity) clearly points out, with references to the prior patents. With the claim so'limited in the monopoly which may thus be predicated thereon, the appellee’s “brush mechanism” in evidence is plainly distinguished from the patent device, departing therefrom in several means and functions, so* that, under the above hypothesis, these departures, as sufficiently referred to in the opinion filed below, furnish ample support for dismissal of the bill.
Irrespective, therefore, of our conclusion against the validity of the claim in suit, the petition to reopen the cause is denied; and the petition for a rehearing is likewise overruled.