fOX V. PERKINS.
205
Fox v.'
PERIUNS
et aZ. October II, 1899.)
Court of Appeals. Sixth
No. SO. L PATENTS J!'OR INVENTIONS-NOVELTY-PRIOR AnT.
9.
Reissued letters patent No. 11,062, issued February 25, 1890, to William R. Fox. for an improvement in miter cutting macbines, are void for want of patentable novelty. in view of the prior state of the art, as shown more particularly in the Howard patent of August 21, 1l:!86, No. 57,325; the Aiken patent of February 21, 1871, No. 111,800' the Jones patent of July 21,1874, No. 153,343; the Nichols patent of July 18, 1876, No. 179,944; and the Lannartson patent of Apri116, 1878, No. 202,445. , '
SAME-ExTENT 011 CUlM-PRIOR A R T . '
of a series of improvements, all baving the same general object and purpose, and the patent must tberefore be limited to the precise form and 'arrangement of parts described in the specifications/..and to the purpose indica;ed therein. ' Brar1gv. Fitch, 7 Sup. Ct.Rep. 980, 121 U.,I:). 483, and Caster Co. v. /:ipiegel, 10 Sup. Ct. fl,ep.409, 133 U. B. 360, followed. ' 8. SAME-ABANDONMENT.
If tlle Irox machine could be held to show patentable invention, it constitutes one
:rhis construction of the Plltent is also rendered necessary by the fact that various broader claims were rejected and abandoned, under both the original and the reissue applications. ' ' , ,
,"SAM:E-NoVELTy-E1I1IECT OJ!' LAnGE SALES.
I.arge sales,of a patented machh... e, while evidence, more or less cogent, of valu13 and uS13fulness, are not conclusive evidence of patentable novelty, and are of little weight when it appears that SUch sales are the result of llctive and energetic l'lfforts by means of circulars and traveling agents. McCUliI.n v. Ortmayer.12 Sup. Ct. Rep. 76. 141 U. B. 427-429, followed. ' , ,
AppeaUrom the Circuit Oourt of the United States for the Western District(jf Michigan. , In Equity. Bill by William R. Fox against Harford J. Perkins, William J. Perkins, and Joseph W. Oliver for infringement of a patent. Decree for defendants. Complainant appeals. Affirmed. George H. Lothrop, for appellant. Edward Taggart and Arthwr C. Denison, for appellees. Before BROWN, Oircuit Justice, and JACKSON and TAFT, Oircuit Judges. JACKSON, Circuit Judge. This is a suit ih equity, brought by appellant against appellees for, alleged infringement ofreissued letters patent No. 11 ,062, granted to William R. Fox, February 25, 1890, for certain new and useful "improvements in miter cutting machines." The defenses chiefly relied on are that the supposed invention was described in previous patents; that, in view of the state of the art, the device claimed as new was not a patentable invention; and that, uppn a proper construction of the patent, the defendants do not infringe it. The circuit court entertaineddoubtswhether, in .view of the previouspatented devices setup'inthe 8,p.swer anq, shown by the eJl'.hibits, therewas anything patentable)nthe alleged invention covered by said reissued letters patent, but,without deciding that point, held that defendants' machine was not an infringement of complainant's patent,even assuming the latter to be valid, and thereupon 'dismissed the bill. From this decree the complainllnthasappealed,assigning as ground for its reversal that the erred in deciding that the defelldants had not infringed, lower in . ., .
206
FEDERAL tBJilP0:RTBR t
vol. 52.
The original patent, No. 393,970, was granted December, 1888. The ,'eissue was applied for A,u'gust anlf was issued February 25, 1890. The, were substantially, tile a,ame in both the appliMtIons'arid p:rten'ts; referring to and describing the drawings of the machine, which accompany the same, state that "the gauges arranged at en\!. of are." adjust,able in a curvooslotfoquedin the bed p:ate, thegauges being guided in their from the gauges into the with a bearing plat6oonneotd \lpon the other sid.eias shown in Fig. 2, lit 2.: The with:j?lane faces, and the nearest the center 'are arranged in proximity to the plane of m()vementofthe cutting knives, so that ,their edges,whiohI have marked ."E,' act inconjunction. with the . knives, to form' a shear cut. The :edges pf the gauge Dearest the ends of the frame bear against theenq. posts, which serve as It lateral support, both at the 'upper and lower parts ,of front edge, to sustain the gauge against the cutting action of theiknife,. The gauges u,pperenda, as 'in Figs. 1 and. 2, terminatmg in a curved arm, havmg a semicircular bearing face, whICh is bearing contact, with}, F, bar of the . e8M gauge ha$ ·tWQ at its inner, ooge.» The operllti0IlQfthemMl;lineis as follows.: , '''"Tbe stock t:;' be upon is placed' upon the, bed and against the gauge, D, the end of it through between the upright line, e, of the gauge 'and" tbe:rknife,c. The :kriife 'is ';theD carried forWard by means .ofthe lever. L. cutting the stock at the angle indicated the bed, which may llh1?;Wp i,JlFig,3.. ' Thelile,linlll' be, marked either edge bed, assl)(),wn" or ppon the M. M. For convenience Iconstructmt de "ice's double, so tl;1at tflllj" may be "operated ill either direction: and the t wO'gaugiesmay be set so that one Is the com plement of the other, if desired. By means of this deYice,wood'or other similar material may be readily andqulcldy. cut upon any desired 'angle. By adjusting of thethu,m})scre",ll, tbeangle upon the wood will corresj'ond to tbe angle to whicb the gauges are adjusted. Tbe cutters are at· 1: ched to the so as to be all occasion lllay reo It that on,e of be dispensed with" liut I consIder two asdesItable·.' .19-r not WIsh to understood as broadly clll.lrtiingabed ;with .gUides thereon to lbcate the work, snda sliding cutter to culi'the.work upon the angle indicated by said gauges, as I am aware tbat cutters .of vllrious kindsha.veheretofore been used embodying sucb. 4eviQe. "
Mte;
rhus'.
!:'U'h'e {iHhe'reis8ue,whlch are as ,follQws, .viz.:
to the 1st, 3d, and 5th claims
QD an admd:l3'Mndeht bearmgs for its end; said' bea'rings baUlS in' diffet'Elllt directi(>lIs; lwhereby the shearing edg.::is always, JUlldiit!':the rtllati6n ,to' theknife,:subst6ntially as de,. 'r "(lH ,:In, ,a miter CIlttiilll' waelline,' tile combill:ation, with a carIn!ongi't,u(Unalw,ays"ll,l.u:rying a cutting knife of'an riage adjur;ltable .gll\lge, prPYcilled with an acting, knifeto form.li"shear' cut, ,and beating ,struck from ,the tidge;'e,df till! 'cettter, 'wh'Elreby 'the'said gauge .is 'always in the same rtllative position to the cut of the knife, substlinliially 88 1de8tidbed;'"
'i:(jf1n,'
'FOX'tl"PERKINS·
207
.A.!Jd "(5) In a machiMfor cutting lDlters, the cQmbi!lation with the cutting knife o,f a gauge.havi!lg edge, e, and a circular bearing and plate, or bearing face therefor on the machine frame. the circle of the bearing being struck from the edge, e, as a center, whereby the said edge is always maintained in the saine 'relative position to the knife, substantially as described." Said third and fifth claims ofthe reissue are the same as the third' Qlaims of thtl and their validity is therefore not ,affectac;l.by the reissue, (Gage v.Herring, 107 U. S.640,2 Sup. Ct., Rep. 819;) nor is it seriously questioned that the first claim of the reissue was not eovered by the original patent, or that it was not for the same device 01' invention therein described; hence there are no questions on the validity of the reissue as such,. ' , to determine the prQper construction to be placed upon said' thre,e'olaims of the reissue"a, brief reference to the prior state of the art, and to the proceedings had in the patent office on both the original and , is neceSlll\ry. In his original application, December 4, 1886, as appears from the file wrapper and contents, F()f'. following, an:lOng()ther, claims:, ' ' , "In .lJmUer cutting mllchine, the combination ()f,anadjnstable gauge, a On a bed in longitudinal guides, carrying, anepr mON knives, said gauge adapted to be adjusted at any reqUired angle to and having a perpendicular edge in a perpendicular plane, and always iIi the ,same relative position to the cut of the knife, said, perpendicular edgeiand knife forming a shear cut, substantially as described. " , "In machine, the combination of the adjlwtable gauge, the and. the cuttipg knife, said gauge having two perpendicular 'parallale'dges, edge .;>f Which is adapted to rest against the upligtitframe. and ththjther to remain parallel With the track of the knife; 'and in"such close proximity thereto as to fOFm with such knife a shear cutting device, , sUbstantially as described. for cutting miters and leads. a gauge, a portion of which is circular in form, and ,J;>earing against a suitable portion of the machine, thereby retaining the edge" e. in the same relati \'eposition to the cut of the , knife, subst,antially as described." :claims were ·rejected and abandoned. There was also the following " claim: " ,il.l· ' , · "In for cutting mitersj the combination with the cutting knife of a gauge 'having a circular bearing adapted to a plate or bearing point on "the machine; the circle of the bearing being struck from the edge, e, as a center, whereby said edge is always maintained in the same relative position to ' the knife, substantially as4oseribed." This claim was amende<t to read as follows: "In a machine for cutting miters, th"e combination with the cl1tting knife of a gauge bearing on edge, e, a circuiar bearing. a plate or beatinif point therefor on the machine, the circle of the bearing point being struck'from the edge, e; whereby the edge, e, is always maintained in the same ,relative position to as described." These two claims were both rejected. Fox was required by the pat, ent officelo erase the words "bearing point." The patentwassubsequently granted, embracing. among others not necessary to be noticed, . claims 1 and, 3, corresponding or identical with the' aforesaid claims 3
FEDERAL REPORTER,
vol.'52.
"and 5 ()fthe reissue. In the application for August 20, 1889"",,, by file wrapper and contents, the fotlowing claims were .:l may.e: : L," , . '.' ;,:. " ',_,l ·.
"(1) In, (lpmbinatlon, the. bed, having a curved slot; the.knife, moving in suitabla wllo1s;, a gauge, having ,a shearing edge, and itsQuteredge held adjustahl'efn,tliil' Clh"\redS]ot;aM s' post, against which'theend of the gauge beap', to the pressure aNbe knife,-all substantialJyas described. (2) III, cotnbination,' bed"havillg a curved slot; the knife, moving in suit· able, ways; a gauge, bavtng; a sheariJllgedge, and its outer end held adj ustable in the purved ;slpt, provided' with two bearings, whereby edge is, a!w",ys. );Ield in thllsame relation to the knife,-all substantially as described, ' (3) 'IIi combination,the bed, having the curved slot; '. the knife arranged .to move in suitable ways; a gauge, having a shearing edge, alid its outer:endh:eldtlfdjustablein the slot; and a lateral bearing upon the'machine frame fov!th'a: rnner'end of the gauge at the upper and lower !partBj,.;,..all substantiallyasdelicl'ibed." '
:rhes,e igented: ' , ' , ,"Incornbination, the '.'ab"le' hU,V,' " W,her, e,by the shearmg
The following additional claim WllS pre' ,,; , ' , fig,'16:d,' two bearings," !or its ,end, is, lllWl\Y"S", held III tI,e sallie relatIOn to the kmfe,',1;,' " "
moving on,suitable ways; an adjust-
:,This,claim,was was amended by inserting Hjndependent" after the,word "end" the wofds',"said hearings'be1ng'ih"(1iffill'ent directions.»:' As thus amended, " ,W/Ul'A!lowed;t first c1aioidfthe reissued paten,t. w').ll'Qe observed :rej'l'pted the, original and, reisaue appli6ationswere :quite,brC1ad and indefinite; so general, in fact, as to cover and embrace more than the particular structure or device desctj:bed in the specificatio,Ils,E!Spec,iaHy in to the bearings of the adjustable :gaugeand the which the chief matter of controversy on the question of rejections clearly operate to limit the scope of complainant's patent; it being well that noconstructioncin be: given to the claims of the reissue involved in this, suit which will include what was covered by the rejected the Shepa,rd v, Gar598" 6,Sup, Ct, Rep. 493; v. Robmson, 119 37q;Pqbsqn It Sup, Ct. Rep. 71; Roemer v, Peddie, 132 U. S. Sup. CkRep. 98. In connection with said rejection, th,e pri!>r ,stp.te of. the art, as shown in the prior ,for .alJ.4 improvements thereon, filed,as ex',mbits)n will Sl1liye. further to establish the proper con$truotion to he placed up0n said, claims of the reissued patent, if the 'margih of therein can be regarded as Stid1'i:Ofisisid exhibits as bestillustrate the subject will be noticed briefly idthe or<1er of their issuance, The: Iioward patent, No. 57,325, granted August 21, 1866, for an improved machine, while not confined to that partiCUlar purpose, was especially adapted for cutting moldings, such as picture frames.
n
., FOX tl. PERKINS.
209
It bad a bed and inclined knife moving in suitable ways, a slotted adjustable gauge with a shear edge, which always remained at the same distance from the line or plane of travel of the knife. The adjustment of the gauge was made by the use of two set screws, instead of one, as in complainant's machine. The strip of wood to be acted on by the cutter knife was placed on the bed and abutted against the rest or gauge, which could be adjusted to any desired angle with the cntter head, from 90 degrees down to 5 degrees or less, by releasing the two set screws, and moving the outer end of the gauge in a curved slot. For thp purpose of mitering articles edll:ewise, the rest and knife were adjusted in one position,and for mitering articles flatwise the gauge and knife were adjusted in a different position. This machine went into general use, and seems capable of doihg the different kinds of work performed by complainant's machine, although not so rapidly or easily. It differs from complainant's device in the method of supporting the inner edge of the gauge, and in the use of two set screws to effect the adjustment of the gauge. The Tucker patent, No. 89,188, granted April 20, 1869, for an. improvement in machines fot mitering printerl:1' rules, shows a bed, a knife moving in ways, a gauge and edge always beld in the same relative positionto the cut oftheknife, whose thrust is taken or received chiefly by the had of the; machine. It is conceded by complainant that there is no difficulty in so locating the gauge of this machine as to bold the front end thereof in position close up to the travel of the knife without reference to the angle at which the.gauge is placed; and it is shown by defendants' expert that if the knife traveled in a different direction the gauge ,would receive the thrust of the knife, rather than the bed, in performing the shear cut. Complainant says that the object sought in this machine, and others of like character, is. not to a gauge which will make a shear cut with the knife, but to locate the angle at which the material is presented to the knife. But the question is, does it not suggest more than that? The Howell patent, No. 104,458, granted June 21, 1870, for 8Jl improvement in hand-mitering machines, shows a bed, kn\ves moving in ways, gauges, and posts against which such gauges rest, said posts being adapted to support the gauges in the different directions or positions into which the latter may be moved. The lower part of this gauge, bed and at right angles to the board, furnishes which rests against a support to the stock operated upon against the thrust of the knife, which in this machine is set to a plane stock, like an ordinary plane, and passes over the wood with a scraping or shearing motion. But it appears that if a knife like complainant's or defendants' was substituted for this planing cutter, nothing more would be required to m&ke this Howell machine perform the work of complainant's machine except the independent adjustment of each end of the gauge. By means of such substitution and adjustment its gauge would make a shear cut with the knife. ,The upper end of this Howell gauge is not otherwise supported than hy.tbe strength of the material or metal of which it is composed. v.52F.no.2-14
'MO
FEDERAL BEPORTEB,
vol 52.
anythini'§:mqre thanrriechanicahkill to give ' i:tl!ludiJsUppbrtor, strengthen itiri that particular. !J)M'JAiket1'patent, ::No. 111,89&;!granood February 21, 1871, for an imlWo'VEl'd machine for cnttingandmitering prinhlilrs' rules, shows a bed, a cutting'orfiling tool t&'dress the:tnatei'ial operated on,' and 8. gauge or guide bar,'piovotedat its inner always held in the same pl3Bltion 'with refetenceto the dressing or cuttingdevice t and adapted t6':be'set at any angle to make a :required bevel. If a knife sUbstituted for the Aiken cutting device,and set at an angle with the line of necessal'yinoutting the end grain of wood, the gauge could be readily arranged to:make a shear (mt with the knife. Inmaking SUbhslUbstitution,a.nd to produce such shear cut) the bed of the Aiken mitthi'ile'mighthave to be changed so as to permit a full and unbroken the woolloal\theknife goes over it. This would involve merelytinechllinical arraiigetnent and eonstruction. ;\1'he<MaliIipatent) No. 125:)745,' gra'nted April 16:,:t87i2, for an imin mitering machines, another device for mitering. ·'It hlli8 in aplllhestoek,lBQOJe'What.like,thatim the Howell pate1'1t,a.ndtboving in ways) abed,whieh isadjustabla at different angles · to the'l:i!/Je of :movement' iof ,tha::kl1life, so IlS to cut the, stock at any desired bedo't with a shear edge; and a · gauge :thhtl'fflay'beBet in ioanyreqllited: position, adapted' to maintain the · to the ktl ifelI' Detelidants1expertstates that this machirie rl:!sembles the construction of defendants' machine than that it substantially all, the elements . (oumfi!i,ijat::h: of them. ,:It: is' concedl:idby complainant,: on' cross-exam'inati'on,-that:ij:f:the gauge: of this machine was arranged to lie 0108eto ita edge! Wf\s' provided: with some .metallic support, com·in!; 'irt' Ol(',se proximity-to the 'th:&'wood could be ouit clean at any from 45 to 90 degrees. . ; The Jofi'es;patent, No. 153,348, granted July 21, 1874, for an improvementin mitering machines, shows a combination of abed, a knife and an adjustable-gauge, pivoted a little distance from the path' of 'the knife. . Thespeeifi:cation'statesthat I'when the gauge is .adjusted, at other than aright with the front edge of the frame and bedplate,' there is rtecessarilyart open space between its end and the face of the plalle,' so ,that no !rest is provided for the end of very thin or . very narrbw materiaL To obviate this, 'difficulty) lliaveprovided an auxiliary plate; m,attacbed to the rest, l, by mell.ns'of tongue and . groove joirits andbolt"in;;whiC'h forms- the pivot for said rest, on the . upper end;o¥'whicfi: bblt 'is a thumDnut,n,etc.· The gauge, thus supplernented'bY the:additiotial phi'l1e, 'm, has its edge always flush with the edge '!oHhe'bed,J Iidthl1s'remains in the sarne relation to the knife." . . , The Lo.ntiartson &'Bergstol'mpatent,No. 179,662;!granted July 11, 1876,'fotaitirnprovemen:t :in miter'planing machines, presents a bed hi'nged toiM"'vertical structure; withltne' of its hinges in line with . the cutting iktiife.:·l"he'JJed is and 'down,-:withco-
a
.. "
'.1,.,
,1
,FOX'v.PERKINS.
211
working lateral gauges. :]he table and gauge, .by means of suitable screw arrangements, can be adjusted to any desired angle, while its edge opposite to the cutting knife from the point at which it is hinged remains in the same relation to the knife. The gauge in this machine does not swing in an arc whose center is its inner edge; but the table gauge, B, which is the principal gauge of this device, does swing in such an arC, and its inner edge is the center of such are, thus presenting the principle of an unchanging center, as found in the machines under consideration. The Lannartson patent, No. 202,445, granted April 16, 1878, was for an improvement in the said Lannartson & Bergstorm mitering machine, and shows a vertical structure or device for miter work, in which the table is adjustable to any position required, and which operates as a rest or gauge. This table rest or gauge, in whatever position adjusted, always remains in the same relation to the knife, which moves perpendicularly, instead of horizontally. It is stated by complainant's expert "that if the machines are arranged with the parts of thll knife in vertical plane, and the gauge was made with its circular bearing and shearing edge in the saine relative positions, I do not see that there. would be any substantial change made." This is manifestly so, and would require only the exercise of mechanical skill in changing the relative positions of the several parts. In this Lannartson machine, the knife, with the table, forms a shear cut upon the wood or stock; but there is no claim of this nature either in the speoification or claims of the patent. It is also conceded that it will cut wood in as many different forms as the complainant's machine. It is shown by stipulation of the parties that many of these Lannartson machines were manufactured and in practical use at Erie, Pa., as early as 1877. The Nichols patent, No. 179,944, granted July 18,1876, forimprovements in mitering machines, shows the following elements in combination: A table or bed, adjustable gauge, and a saw cutting device, instead of a knife. The adjustment of the gauge is effected by means of two screws. The gauge on this machine, as stated in the specification, "may be adjusted and fastened at any angle desired, with the beveled inner end of the gauge always at the same point; and the miter will always be true, and be supported close to the saw." It is admitted by complainant that this gauge can, by independent adjustment at'each end, be adjusted so that the point, x, will always lie close to the edge of the saw. If a knife were substituted for the saw employed in this machine, (and which would not require the exercise of invention,) we would have substantially the same arrangement as found in the machines under consideration. The defendants' expert states that the point, x, constitutes .an tinchanp;ing center, with the edge of the gauge always in the same relative position to the plane of the cutting device. The SchrepDel.patent, No. 223,819, granted January 27,1880. for a new and lUlliful.mitering machine, like the preceding. machine shows in combination a 'bed,a knife moving in and adjustable gauges, which ·donot restiagainst endpostsi as in complainant's machinEl. 'l'hegauge
219'
FEDERA..L,REPORTER,
Sohreppel patent;as:snowni'n the drawing.: willtllake, as com" plaihand.dl:nitson Cl'oss-e:iamifiation, bo,th a shear Cllt and a draw cut. He clnihls as a defect' in the machine that it has no support for the top ofthegal1geother thanthllstrength of the material of which the gauge is'made, and if the gauge is swung into a position at right angles to the knife it ,WOUld leave an opening between the gauge and knife, and in that positi6n'would not form a support for the wood as last acted upon by the knife,' which would result'in leaving a ragged edge to the wood. This Schreppel machine closely resembles complainant's in outline and operationj:and the speclfiQatiOns and claims of the patent are hardly distinguishable without most refined distinctions. ' Tb.eKinch patent, Ni:1l 243,597, granted June 28:, 1881, for improve. ment in miter boxes Or machines,presents a device with the bed so adjustable that the front llpper edge next to the knife'is always held inthe same relative position to i the knife, atwhatever angle the bed is adJusted. ':)The·Leffingwell'patent;;No.' 334,247, granted; January 12, 1886, for improvem:ehtsin'miteririgmacb1nes, presents the same general features found in lh()stofsuch 'machines, consisting of a table' or bed, a moving knifei'adjustable gauges ,a.'daptad to be set at anf Uil'lgle,and in proper relatiorrto the knife. The 'defect which eomplainanbfinds in this machine ispivoMd back of the cornerbredge which makes the is thaHhe ,sheat cnt, so that it will only form a shear cut:inone position. The gauges·oHhispatent are'piv6tedto the table ator'near their inner end, instead of being loosely supported. The specification states that the machine"lwiUcut lllitersonwl).od in any shape from an angle to directly acrossrtbeigra:in of the wood':" Itfurther appears that in June, 1879, the <lomplainam obtained a patent for an improved mitering machine, called a "trhnmet," which had, Ulesame general features as those already referredto, ,but was not having a gauge that would make a shear' cU'IPwith the knifeat·d!ifferent angles. While these prior patents 'irifue'chanicalconstl'Uction, details, and operations,-some having the':betl, instead having the gauge adjustable, and by some havirigthegauge so pivoted that 'its inner edge would ml;lkea shear cut with the knife at any angle; some with the gauge so pivoted or arranged that -it would make a shear <lU knife hi oulYane position r some making the adjustment of the gauge with onesetscrew,others with two setrscreW8; some with the gauge supported at bothitheupper and lower ends, and others with the gauge supported at onlythe,]ower end; some with saw and plane cutting tools, others wHtrkniv()sset in different ways and in different reiatioh8to other parts ofithe maehine; and some:speoiallyadapted to one purpoil'e, others for diffel'$ot pUrposeB,---thereisfourid in all of them tbe same general idea or principle, and' substantially' the same elements in com binatfon I 'as shown iinrthe .pitent sued on. ,It may be true, as daimed, that complainant's machine is superior to prior devices in the smoothness of its cut,.: 'and in leaving less of ragged and broken edges of the wood operated on; 'but the question is whether, in view of what is
in
FOX V. PERKINS. '
213
disclosed in the previous machines, it can be properly said that his machine or combination constitutes such a substantial advance or improvement over prior devices as involves invention, and will entitle him to a patent therefor. "It is well settled that not every improvement in an article is patentable. The test is that the improvement must be the prod. uct of an original conception. A mere carrying forward or more extended application of an original idea-a mere improvement in degree -is not invention." Burt v. Evory. 133 U. S. 358, 10 Sup. Ct. Rep. 394; Smith v. Nichols, 21 'Vall. 112-119; Howe Mach. Co. v. National Needle Co., 134 U. S. 397, 10 Sup. Ct. Rep. 570; Ansonia Brass & Capper Co. v. Electrical Supply Co;, 144 U.S. 11-19, 12 Sup. Ct. Rep. 601; Roller Co. v. Walker, 138 U. S. 124, 11 Sup. Ct. Rep. 292. "A shear cut," as complainant understands it, is "a cut that is made by at least'one cutting edge,against some kind of asu'pport," while" a dra\v cut" is made withtr knife inclined to the plane of motion. It was customary, as he explains, in pattern making with plane in different positions, to use a piece of hardwood assllch support for the endofthe wo6dlast acted upon, to prevent its edge from breaking or being'Teft' ragged. The gauge was employed in mitering machines,' or many of them,not only to determine the angle of cut, but furnish the edge :support, which, with cutting device, would produce the shear cut. Now, what the complainant did was to so locate his gauges that the edges thereof, marked "e," should be in proximity to the'plane of movement .Qf the cutting knives, and form an unchanged centeri'n the adjustment of the whose edges were provided with lateral support in the shape of posts at the ends of the frame, to sustain the gauge against the cutting action of the knife. At their upper ends the gauges have licutaway portioD, terminating in a curved arm over the upper part of the frame, said curved arm having a semicircular bearing face, which is in bearing contact with a projection on the cross bar of the frame, thereby preventing the upper end or 'edge of the gauge from moving into the line Dr plane of the knife's movement, while permitting some degree tion in the other direction. These mechanical changes suggested, if not actually shown, in prior· machines, (whether covered by the specifications and claims thereof is not material,) do not rise to the dignity of invention. The large sales of complainant's machine, (about 2,400 of them having been sold from the beginning of 1886 to the middle of 1890,) is relied on as strong evidence of the validity of the patent. It is true that such extensive public use, superseding other similar devices, is evidence, more or less cogent, of value and usefulness.'" It is not conolusive of that; much less of its patentable novelty." McClain v. Ortmayer,141 U. S. 428, 429, 12 Sup. Ct. Rep. 76. Complainant was active and energetic in pressing the sale of his machine by means of circulars and traveling ngents;the latter drumming for it in 13 states. Under such circumstances, extensive sales constitute little or no evidence or test of, patentability, asis clearly explained by Mr. Justice BROWN in delivering the -upinion of the court in McClain v. Ortmayer, 141 U. S. 427-429,12 Sup. ,Ct. Rep. 78,79. In our opinion the Howard, Aiken, Jones, Nichols,
to
FEDERA,L REPli)RTER,
referr:ed .tp, the same as those is that .the latttlr is- wanting in patentable novelty. dllvice a patentable invention, it is c1el11:1y in all having the sanH1 general lLD,d,that, in con,struing the"claims of his patent, they Xllstricteg,to:the precise form and ar:rangementof parts described,in his specifications, and to the. purpose indicated therein. ,t Bragg,v; Fitch, 121 U. S. 483, 7, Sup; Ct. Rep. 978; Castel' Co. v. Spiegel, 133U,.S. 360,369, 10Sup. Ct.Rep. 409. Therejected and. abandoned Q1aJD;lS, under ,both the ol'iginaland reissue application would require this restrictedconstru,ction and limitation. Complainant's expert is incrosB-examination (question .36) how a rejected claim of the from the; claim of the reissue patent, 3pd hiareply was:, "In not specifying two independent bearings end of thegallge," anq in not having the clause, "the bearingsbeing indifferentd,irections." Thefle clauses or specific descriptions bellrlJ;lgs were required to be il)serted before the first, claim of the aUow:edby the paten,t office. By force of the words, "l!uQ8Y/.Qtia..lly as found. in each of the three claims of the reissue this must be l'eadinto eaell'of said claims 116 U. 8.. 598, 6 Sup. Ct. IWp, 493) that portion that" independent bearings" referred to bellrings against the .posts at the ends ()f the frame and the projeptiQl),d, on the UppeJ,' ,part of the frame, against which the curved arm $aid bearings being at right angles to each other, or"if\ :rhe thxee claims llore thus substantially the does not a!lopttbeform and arrangedescribed ·1n complainant'sspecificl1.ti<>n, and covered by hisolahns., :Their gauge is aupported or by pivots concentric of. the gauge, and having cirqull;1r bearings. It has. no enq furnishing or serving, M lj. lateral E\Upport at the upper and lowel', p.. fl'ont edge tosustllin the gauge against the cutting actionofthektMe; the.: projection upon the upper part of the frame. 'wh,ch forms the tElst Or suppo),'t of complainant's upper bearing. TbE-renia ,other particulars in ,which they differ, as explained by defendants' whose testimony is direct and convincing that thereis no infringemeat. He. hilS shown. to our satisfa(ltion, in view of the prior s.tate of the:aft, aud;ofwhat and reissue should receive such cons.truction:4S:Would cov,e,r then it was clearly anticipated in the prior .to; that if valid undl;lr a narrow ,and,l'ElstJri9tedcol:jl.lJtruGtion, . whicb would,limit the patent to the' specific the iit is not infringed by howeverjaJlethat the complainant's. patent is wanting :io.tpftten1:4bl.ftIll9velty; IlJJd, Jurtherm()re, that, if valid to any extent, iU6:11otinfJi,ng,d! PY ,the, defendants' macbine. It follows that tpe the lowqt,'W;Q.rt should be, and .tbesllme, il;1,affirmed. iQ. cOQlbination
an.4:
we
i
ILLINOIS WATCH CO. ti.' :aonBl'NB.
:216
(cCrcuit
Own of .AppeaZl,
<::'
Sevmth OWcwU. ,October
No. 82.
,L
PATENTS ':FOR
In reissued letters patent No. 10,681, granted August 4,1885, to Duane H. Church, for an improvement in stem·winding ;watches, consisting in a combination of a short stem arbor. and a winding and hands-setting train, having no positive connection therewith, each claim,behig couched in general terms, and concluding With the words, "liS and for the purposes specified, "is to be construed as lIuch devices lind combinatIon IIhown in the specifications as, are necessary to meet t!l.e requirements of its gaMral term" and the chl.Uns must be limited to thil elttent. Corn Planter Patent, 23 Will. 181, applied. to Charles F.Woerd. and patent No. 206,674, to Hoyt, there was no invention in,the
OJ' Ot.AmS-STIm-WnmING WATCEll8.
:&
In vieVI' Of the prior ltate of the art as shown by,the patent of February 9, 1881,
ART.
mere introdlIctioD tile mechanisIlIfor effecting the Winding ,andha.ndeengl\ieItl.ent, in order to avoid liability of injuring the wheels by the foros of thei'ulili OrpuU upon the short stem IIrbor; but the claims are valid as coverinlt a new an'd utleful combination, the peculiar 'usefulne8ll consistingprincipaUy in rendering watohell audcu61 interchangeable. 50 Fed. Rep. li42, modified. :8. BlltE-'INJ'RINGBMBNTo'-Ml!:oHAlirIOAL AilmAflolir. 1888, to ThomaaF. Sheridan, No., 876,OUi, and reissuEld August 5, 1890, No. 11,U1O;
The Churoh patentil infringed by watches, made uncler the patent of Jl\J1UIU7,8,
"
,
for,alt1l9ulfh there il a plaindifferenco in the operation of the springs which produce'tbl! mndingand bands-lletting engagement in eacb watch, thatdifferenceil ptodUCedibya simple meohanical ohange, and the other dUlerences ariee from the use 01 equivall\ntl. 4,BAMlIl. .:
A certain lever in defendatit'swatch movement could when the works were out of the wattlh case, be adjusted' to produce normal Winding engagement, but in a stelri·iletwatch; when tbe works are in the case, it is'always held adjusted in suoh manner,'" to produce Dormalllettingengagement. Held, .that suell aconstructiolJl in stelll-setwatches, is to be regarded as operating on the principle 01 engagenu;int, and ali not different in that respect from theconstruotion oitha ChnrCh watoh;' , ,.:. .
':'."
... ,
.,
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.of a winding :bai"or key., and normally iu positionto,l>pllrate the. bauds, ::Whocebyapositive'congectionbetw6entbe,moveInl!nt and w,iadillg bar
Appeal '!fom, the Circuit'Courfof:the Unlted States for the Norlhem Divisionof,the Northern..Dietrict of IllillOis.' . . In Equity. Bill by: Royal E. Robbins and ThomaSM.Averyagainllt the Illinois Watch Comp!l-uy for infringement of patent. Decree for complainants.50 Fed. 542. Defendant appeals.' Affirmed. Statement 'by WOODS' Circuit Judge: By the decree of the court the appellant was held to have'infringed the 1st,. 3d, 4tl;1, 5th, l'+nd 6th claims of,reis8ued No. 10,631, issued August 4, 1886,. to theitppellees, the original letters No. 280,709, granted July 3, 1883, to Duane H. Church. Here, as in the <lourt below, the"appellant,' besides denying infringement, disputes both the validjtyof'the:reissueand the novelty of the olaims.' Only the first and secOIid Claims of the original patent are relevant to the question filf the validity of the reissue, and they are all follows: "(I) In a pendant windi'ngand setting watch. a movement .b.ving .windendwise movement Ing and setting 'mechanism, adapted to be operated by.