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0'1Al AS-70 

O"U? AS-70 

O"U'":\ 202L2 

O'Ul. AS-71 

01A.'i AS-71 

01A'6 - O'~A'7 

0':11 AS"'!71 

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0'~1r. A~-71 

':11 AS.-71... 

':111 20?n1 ~1? ~~-72 

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_l3_ j N-52 

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3?.4 N·-52 1~5 .. -AS-7.3 

1L ~51(31' 

11.,,A AS-76 

1.l.l AS-76 

':1/.2 AS:'76 

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jl) N-~T ':ltjA N·j.}_ 

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?,t;? AS-77 

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REF ID:A273626 

!NI- DATE 

TIAL OUT 

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AFSA-03 ROUTING SLIP (nrTEm.m \ 

AFSA R.S.~ •M) \ 

Date Rec'd OJ 19 ~ "· 

Orig. ¥,pfN ~ssaBeHI Serial: 

Date: 6 Deoealler 19~9 

From: Ott1oe of lfaTal Rea .. rOl:t. 

To: Dlr•o,or of 1-'a\en\a. 

Via: 

Subject:IAfrlngeaea• Olalaa of 

at•rt B. B•lJ•n aDcl Bellen 

a.I•, Ino., et al, •• 'b•J re- ~ •o COil oocl lng 4••1oe. 

Present Location A - AIIS N - NC 

}:OUr11IYG WBOIS 

A - AC'J.'ION 

R - FTff P.ARE REPLY 

VI - RE'I'lJ1W:SD FOR 

REirRITE 

I - WFOR:"' ATION 

C - COMJ"FFT 

X - cor-.r FER WITH 

Ansvr' s by 

Serial: 

V - Ill!TIAL 

S - SIGNATURE 

0 - RETAIN 

ORIG 

COPY 

COPY __ 

ENCL._ 

03 R.S.# 

AFSA R.S.# 

Le£t 03: Destined: 

_.. - J ·~-·..ti""....... ~ c _,, ~ 

Declassified and approved for release by NSA on 09-12-2013 pursuantto E .0. 1352a 
STANDARD FORM NO. 84 REF ID:A273626 

.,Qjfice Memorandum • UNITED sr!\r~s GOVERNMENT, 

TO . :~. DATE:~7~~0 

\ 
. . ___,. 

\·. 

MEMORANDUM: 

. i i 

REF ID:A273626 

DF..PARTMENT OF THE NAVY 

OFF' ICE OF NAVAL RESEARCH 

WASHINGTON 25, D. C. Ccxle 341 

In Reply Ref er To 

6 Dee 1949 

To: Director of Patents 

Subject: Infringement Claims of Edward H. Hebern and Hebern Ccxle, 

Incorporated, et al, as they relate to CCM coding device 

1. The allegation of infringement relates to the claims of the following 

five patents: 

l,683,072 Edward H. Hebern of 4 September 1928 

1,861,857 Edward H. Hebern of 7 June 1932 

2,267,196 Walter N. Fanning of 23 December 1941 

2,269,341 F.dward H. Hebern of 6 January 1942 

2,373,890 F.dward H. Hebern of 17 April 1945 

It is understood that although several different types of coding devices 

are used by the armed forces, the only specific type used by the Navy 

which is pertinent is that designated as the CCM. 

2. As a result of the charges, an extensive preliminary report has 

been prepared by the Army Security Agency, covering infringement and 

validity of the patents involved in the subject claim and the extent of 

use of pertinent Government machines, including Army use of the CCM. In 

preparing this memorandum the aforesaid preliminary report has been used 

as the main source for determining whether the Navy has any liability 

for the use of the CCM. 

3. Of the five patents alleged to be infringed it has been determined 

that only the oldest two, numbered 1,683 ,072 and 1,861,857 contain claims 

that may correctly be said to be infringed by the CCM. :Each of these two 

patents will be considered. separately, as applied to the CCM machine • 

. , n D\' " .. ' . , 
REF ID:A273626 

''.'¥1 "'l? ":~ 

~\ : . ,!,'..;._ 

' : ~ 

Hebern patent 1,683,072 issued 4 September 1928. 

According to the aforesaid preliminary report, this patent has claims 

25,. 26, 31, 34, 50, 51 and· 52 that are probably infringed. However the report 

states it is considered that these claims are all probably invalid over certain 

specific prior patents. Another group of claims, numbered 47, 4f, 49 and 54, 

are stated as possibly infringed but with a serious doubt as to actual infringement. Even if infringed, the claims in this group are stated to be 

probably invalid over specific prior patents. Therefore no claim of this 

patent is considered to be clearly valid and infringed by the CCM machine. 

5. Hebern patent 1,861,857 issued 7 June 1932. 

The preliminary report concludes that only four claims, numbered 53, 

54, 55 and 61 may be said to be infringed by the CCM machine. Of these, however, claims 53 and 61 are stated anticipated by specific prior art. It is 

stated that claims 54 and 55 are not as clearly anticipated by patents known 

at the present time. Also, it is felt that an earlier machine, the "Enigma" 

made and sold in Germany, anticipates even these claims 54 and 55, and would 

invalidate the claims if 11Enigma" was introduced in this country at a sufficiently early date. 

A validity search in the Patent Office disclosed that these claims 54 

and 55 are clearly invalid over earlier patents Nos. 689,447 to Worden, 

957,753 to Darr, and 1,026,473 to Stafford. As a matter of interest, it is 

further noted that the Stafford pl tent also anticipates claims 9 to 14, 25, 

27, 29 and 53. 

In following up the suggestion of invalidity of claims 54 and 55 on the 

ground of double patenting, this patent and the earlier patent 1,683,072 were 

studied carefully. The two claims 54 and 55 merely define what may 

be aptly described as a '1carry-over 11 mechanism which causes a wheel to 

--------- -------- --- -----~ --~-----~-~..______-" - ~---
-- REF ID:A273626 

SfOR:: 

rotate through a portion of a revolution when another wheel has rotated 

through a complete revolution. Such mechanisms are well known in "Veeder" 

counters, in mileage odometers on vehicles, and in case registers, etc. 

The later issued patent 1,861,857 was filed in the Patent Office during 

the pendency of the earlier issued patent 1,683,072; the inventor is the 

same in each case, and the later issued patent is specifically stated to be 

an improvement of the invention set forth in the earlier filed and earlier 

issued patent. 

A study of the earlier patent, and of claims 54 and 55 of the later 

patent resulted in the finding that these two claims are so broad as to 

read directly upon the disclosure in the ~rlier patent. The earlier patent 

has several claims drawn to the ~carry-over" mechanism, but they are more 

limited in scope than the claims 54 and 55 of the later patent 1,861,857 

under consideration. 

The apparently novel feature of the carry-over mechanism in both cases 

is that each code wheel has associated with it a circular cam that rotates 

with the code wheel, which cam has only one depression in its periphery. 

Each code wheel has a ratchet on its periphery and is rotated step by step 

by a •ratchet dog" that is oscillated with respect to the ratchet. It is 

the function of the cam associated with a first code wheel to prevent the 

functioning of the ratchet dog on a second code wheel except at the time 

when the said first code wheel bas completed one revolution. At this time 

a cam follower falls into the single depression in the cam periphery and 

permits the operation of the second code wheel by its ratchet dog. 

The essential difference between the structure of the carry-over 

mechanism in the two patents is that in the earlier patent the cam associated 

ii.·;. l f- 3 
• REF ID:A273626 

. "' j • 

with a code wheel is separated from its code wheel, while in the second 

or improvement patent the cam is right on the outer periphery of its 

respective code wheel and adjacent the ratchet thereon. While this is 

the improvement shown in the later patent the aforesaid cams are claimed 

merely as being "associated" with the cooe wheels. 

Since this later filed and later issued patent 1,861,857 has broader 

claims 54 and 55 to the carry-over mechanism tbSn appear in the earlier 

filed and issued patent 1,683,072, and these claims dominate the structure 

in the earlier patent, they are clearly invalid in the later patent •. 

11A reissue is ordinarily the only remedy where a patent is found to 

be not expressive of an invention to its full breadth. An enlargement of 

it is not to be effected by the ingrafting of broad claims upon a later 

patent based upon an application of narrow scope." 

Union Typewriter v. L. C. Smith Co., 173 E'ed. 

288,296 (W.D. Pa. 1909). See also the quotation 

from this case on 1lppeal, 181 Fed. 966. 

6. Conclusions. 

Using the conclusions from the preliminary report made by the Army 

Security Agency, no known cryptographic device used by the Navy infringes 

any valid claim of patents Nos. 

1,683,0?2 

2,267,196 

2,269,341 

2,373,890 

The aforesaid preliminary report stated that the CCM machine fairly infringes claims 54 and 55 of patent 1,861,857 and that these claims were 

not clearly anticipated by any known prior art. However, these two claims 

4 
' .... • 4 REF ID:A273626 

are clearly invalid on the ground of double patenting over the earlier 

issued copending patent No. 1,683,072 to the same inventor, and are also 

clearly anticipated and invalid in view of patents Nos. 689,447, 957,753 

and 1,026,473. 

APPROVED BY: D • C • SNYDER 

HEAD OF OPINIONS AND . APPLICATIONS BRANCH 

5 

PREPARED BY: Isl Edward L, Borbik 

E. L. BORLrK 

DATE: ___ oc_t_._10_,_19_4_9 __