The defendant has appropriated this invention. He has changed the mode of fastening the conductors to the burner, but they rest upon a shoulder of the insulated part ofthe burner, which serves as a gas-way from the gas-pipe to the point of ignition. The complain. ant is entitled to a decree.
v. SHEDD and others.!
(Circuit Oourt, N. D. lUin0i8. November 9, 1885.)
PATENTS FOR INVENTIONS-MACHINES FOR MOWING UNDER WATER.
The patent described and claimed the combination, with a boat, of the or· dinary cutting device of a mowing-machine, whereby grass and weeds could be cut below the surface of the water; the reciprocation of the sickle being effected through a vertical, vibrating lever, pivoted near its center, and connected at one end to the sickle, and at the other to machinery on the boat. Defendants employed the same devices, except that they communicated motion to their sickle by means of a vertical, revolving shaft, having a short crank connected to the sickle. Held that, as this shaft and crank performed the same function as complainant's lever, and no other, and was a known equivalent, the charge of infringement was fully sustained. The problem solved by the patentee was the adapting of the ordinary cut· ting apparatus of a mowing-machine to the use of cutting weeds and grass under water, by suspending such cutting apparatus from a boat. and imparting motion to the cutter from machinery on the boat; and its solution required more than mechanical skill.
SAME-PIPER'S INVENTION STATED.
This patent not anticipated by devices for dragging scythe-blades under water at the stern of a boat; by a device for cutting weeds along-side of a railroad track, consisting of the cutting apparatus of an ordinary mowing· machine extended from the side of a car or truck: nor by pile-cutters having circular or reciprocating saws. working under water from motion imparted to them by machinery above the water shafts or levers.
BLODGETT, J. By this bill the defendants are charged with infringe. ment of a patent granted to the complainant on September 8, 1874, for an "improvement in floating mowing.machines." 'fhe patentee in his specifications describes the scope and purpose of his machine as follows:
Coburn t:t Thacher, for complainant. Munday, Evarts t:t Adcock and W. B. GiMs, for defendants.
'''fhis invention relates to a mowing-machine forclltting water plants, and clearing weeds and grass from the water; useful for clearing the water for
\ Reported Charles C. LinthicUIll, Esq., of the Chicago bar.
ice-making purposes, and for freeing ornamental lakes and bodies of water in parks of unsightly weeds. The machine is chiefly intended to be used for ('learirig the water of weeds for the purpose of making ice." The leading feature and characteristic of the device consists in suspending the common cutting apparatus of a mowing machine from the side of a boat, to such a depth below the surface of the water as shall be necessary, and actuating this cutting apparatus by means of machinery placed upon the boat, so that, as the boat progresses through the water, the sickle cuts the grass and weeds substantially in the same manner that the grass is cut by the ordinary mowingmachine. By means of two dependent standards, P, P, the cutting device is suspended in the water, and the depth which these standards shall reach in the water is regulated by a pivot at the point where the frame of the machine is fastened to the boat. A vertical lever, J, pivoted at or near its center, reaches to the sickle, and is connected therewith, and a reciprocating motion being given to this lever by machinery on the boat, the same motion is transmitted to the sickle. The claims are: "(1) The sickle, L, sickle-bar, M, lever, J, the dependent standards. p. p, and the boat· .A, combined and operating as specified. (2) The frame-work, B, pivoted at b to the boat, .A, the dependent standards, P, P, and sickle-bar. M, combined as specified, for raising and lowering the sickle." The defenses set up are non-infringement, and that the patent is void for want of 'novelty. The machine used by the defendants shows the same cutting apparatus as that used by the complainant; that is, both have adopted this same old and well-known sickle-bar and reciprocating sickle used in mowing-machines; but the defendants, instead of communicating motion to their sickle by a vibrating lever like that shown in the defendants' machine, use a vertical revolving shaft with a short crank upon the lower end, and this crank being connected with the sickle, gives it the desired vibratory motion. The complainant does not claim to have invented the sickle or cutting apparatus, but only claims to have arranged and adapted it to cut weeds and grass under water, and this he does by combining the old cutting device of a mowing-machine with a boat to float upon the water, and transmitting motion to the cutter by means of his vibrato ing lever, J. The defendants have substituted their vertical crankshaft, for the complainant's lever, J. 'rhis shaft performs the same function as the complainant's lever, and no other, and is a known equivalent for the lever; so it seems to me the difference is only colorable, and I am of opinion that the charge of infringement is fully sustained. In support of the allegation of want of novelty defendants have put in evidence several old patents for sawing off piles under water; the patent of J. Hinds, of September 5, 1840, and the patent of Peter J. Stone, of August 2, 1870, for cutting graBs under water; and the pat·
SCOTT MANUF'G CO. V. SAYRE.
ent to J. S. Boicourt, of December 17, 1867, for cutting weeds alongside of railroad tracks. The Hinds and Stone patents show devices for dragging common scythe-blades under water at the stern of a boat, while the Boicourt patent is an adaptation of the ordinary mowingmachine to the work of cutting grass or weeds along·side of a railroad track by means of a sickle-bar extending from the side of a car or truck The pile-cutting machine shows circular or reciprocating saws working under water from motion imparted to them by machinery above the water through shafts or levers. The problem which the complainant seems to have solved by his device was to adapt the ordinary cutting apparatus of a mowing-machine to the use of cutting weeds and grass under water, where the water or mud was too deep to allow of the use of the ordinary farm mower, by suspending the cutter in the water from the deck of a boat, and imparting motion to the cutter from machinery on the boat. No new thing was invented to do this work, but a combiuation of old elements was made which produced the desired result. The patent is narrow, and covers the combination of elements shown, or known equivalents therefor. It does not seem to me that the older devices shown in the proof anticipated this combination, or that the complainant's device can be said to be a new use of an old machine. It seems to me to have required more than mechanical skill to combine a mowing-machine with a boat in such a way as to make it operate successfully for mowing under water. The defendants are therefore found to infringe, as charged by the bill, and a reference to a master to compute damages will be made.
(Oircuit Oourt, D. New Jersey. August 31, 1885.)
PATENTS FOR INvENTIONS-PATENTABLE COMBINATION.
A patentable combination is not necessarily affected by the fact that all the elements forming it are old, if by their co.-action a new and useful result follow; but there must be a co-action' among them. to take the case out of the category of a mere assemblage or aggregation of parts.
Merely assembling old parts together, or placing them in juxtaposition, does not indIcate invention. Some new or peculiar function, produced by such a combination, must be developed; and unless this follows, the new arrangement is the mere exhibition of mechanical skill.
SAME-AGGREGATION NOT INVENTION.
An assemblage of old parts, each of which performs the same function that it has performed in other old combinations, does not form the subject of a valid claim.
1 Reported, by
Charles C; Linthicum, Esq., of the Chicago bar.
The first and third claims of letters patent No. 192,057, of June 19, 1877, to Charles P. Dewey anrl Robert P. Scott, for improvement in ice-creepers, do· not cover patentable combinations.
G. H. Howard, for complainant. A. Q. Keasbey et Sons, for defendant. NIXON, J. 'Ibis suit is brought on letters patent No. 192,057,. dated June 19, 1877, and issued to Charles P. Dewey and Robert P. Scptt, for "improvement in ice-creepers," The complainant alleges the infringement of the first and third claims of the patent, both of which are combination claims. The elements of the combination of the first are a calk-plate, a rod or spindle, and adjustable jawl;l. The third claim has the same elements, to which is to be added a locking device, consisting of a spiral spring on the rod or bolt, to hold the calk-plate in position. I have no doubt that the mechanism of the ice-creeper of the defendant infringes the patent of the complainant. There are some minor differences, but the constituents and the mode of operation of the two are substantially the same. Both are fastened to the heel of the shoe by a screW-Clamp. Both have the reversible calks, which, when adjusted for use, extend to a greater orless extent over the area of the under side of the heel, and, when in their inoperative position, are turned or folded under the instep of the shoe. In each, the calks move upon a rod, extending across the shoe; the rod being provided with a thread and thumb, and having clamps, one fixed and the other free upon the rod, the wheels being rendered efficient by a locking device, which is a spring surrounding the rod. The real question in the case, and the one principally noticed at the final hearing, is whether the combinations of the patent are, in fact, patentable. There seems to be a growing sentiment among inventors that the supreme court, in its more recent decisions, has become, I will not say more exacting, but less liberal, in its construction of patents for a combination. Such cases as Pennsylvania R.Oo. v. Locomotive 00., 110 U. S. 491; S. C. 4 Sup. Ct. Rep. 220; Phillips v. Detroit, 111 U. S. 604; S. C. 4 Sup. Ct. Rep. 580; Tack 00. v. Two Bivers Manuf'g 00., 109 U. S. 117; S. C. 3 Sup. Ct. Rep. 105; Hollister v. Benedict et B. 00., 113 U. S. 59; S. C. 5 Sup. Ct. Rep. 717; and Thompson v. Boisselier, 114 U. S. 1; S. C. 5 Sup. Ct. Rep. 1042,-are quoted in support of this view. Whether true or not, it is my duty to examine the present claims in the light of these decisions, and to give them such interpretation and effect as the deliberate judgment of thi1t court declares they are entitled to. Speaking generally, a person, to obtain a valid patent, must have invented or discovered some Dew and useful art, machine, manufacture, or composition of matter, or some new and useful improvement thereof. Section 4886, Rev. St. It is not easy to obta.in a satis-
SCOTT MANUl!"G CO. V, SAYRE.
factory definition of a patent for a combination. It is not necessarily affected by the fact that all the elements forming it are old. They may be old, and yet may be so arranged in combination that by their co-action a new and useful result may follow. But there must be a co-action among them, to take the case out of the category of a mere assemblage or aggregation of parts. In Reckendorjer v. Faber, 92 U. S. 347, the supreme court said:
"The combination, to be patentable, must produce a different force, effect, or result in the combined forces or processes, from that given by their separate parts. 'fhere must be a new result by their union; if not so, it is only an aggregation of separate elements."
In the later case of Pickering v. McCullough, 104 U. S. 310, they took a step in advance, and held "that, in a patentable combination of old elements, all the constituents must so enter into it as that each qualifies the other. '" · '" It must form either a new machine of a distinct character and' function, or prodnce a result due to the joint and co-operative action of all the elements, and which is not the mere adding together of separate contributions; otherwise, it is only a mechanical juxtaposition, and not a vital union. Merwin, in his valuable work on the Patentability of" Inventions, in commenting on this last case, (page 401,) rel..Qarks that "it may be gathered from this that, in a patentable combination, there must be a new interaction of some sort between the several elements. · · · It is not. sufficient that one element is ineffective without the others,that its function is useless, except in combination with other functions; but the function of one must be modified in some way by the the function of another, so that the function of one element is not the same in the combination that it was in the place whe.lce it was taken; a peculiar function must be developed in the combination. rrhis need not be true of every element in the combination; but it must be true of some one element, or of several elements, and the virtue of the combination must inhere in this peculiarity of function developed by it." I fear that the complainant's patent cannot stand this test. It is clear that all,the elements are old. The records of the patent-office furnish a large number of patents for ice-creepers of every style and variety. The state of the art shows that the patentee, by searching among these, could have selected all the constituents of his combination. Without stopping to designate the particular patent from which the separate part or element is taken, I think he could have found everytlling embodied in his alleged invention, or its mechanical equivalent, in the patent of Morrison in 1858, of Krauser in 1863, of White in 1867, of Greene in 1865, of Richardson and Morse in 1866, of Farley in 1868, of Turner in 1871, of Earle in 1873, of 'Cone and Furniss in 1876, and in the defendant's Exhibit No. 19, which reveals the mechanism of ice-creepers sold in Cincinnati in the open market as early as 1869.
As before stated, a patent for a combination is not invalid because all the parts are old. But merely assembling them together, or placing them in juxtaposition, does not indicate invention. Some new or peculiar function, produced by such a combination, must be developed. Unless this follows, the new arrangement is the mere exhibition of mechanical skill. It appears to me that the difficuHy about the complainant's patent as a combination is that none of the parts shown in the construction perform any different function than they had performed in other pat.. ents or combinations. For this reason, I am constrained to hold that upon the evidence and the law the case is with the defendants. The bill must be dismissed.
(OVrcuit Court, N. D. Illinois. January 4, 1886.)
PATENTS FOR INVENTIONS-INFRINGEMENT.
The first claim of letters patent No. 255,229, of March 21, 1882, to Charles C. Wilson, for improvement in hand-stamps, held valid and infringed.
SAME-FEATURE SHOWN BUT NOT CLAIMED IN PATENTEE'S EARLIER PATENT.
The fact that the complainant showed a feature in an earlier patent did not. of itself preclude him from claiming it in a subsequent patent, under the rule in Graham v. McCormick, 11 Fed. Rep. 859, and cases there cited.
SAME-ADDITIONAL FUNCTION PERFORMED BY INFRINGING DEVICE.
The fact that defendants' device is an improvement, and, as such, patentable, does not entitle him to use the patented device without license
In Equity. Peirce ct Fisher, for complainant. H. Henderson, for defendants. BLODGETT, J. This is a bill for an injunction and accounting, by reason of an alleged infringement of letters patent No. 255,229, issued to complainant, March 21,1882, for "an improvement in handstamps." The first claim of the patent only is claimed to be infringed. The elements of this claim are shown in Figs. 6 and 7 of the drawings of the patent, and are one modification of the invention covered by the patent. The claim reads as follows: "In a hand.stamp, the plate, F, having a receiving slot and catch-lug in combination with substanthe type, and detachable spring-catches fOl' engaging said tially as shown and described." The defendants make and sell a hand-stamp in which they use a plate like complainant's plate, F, with a receiving slot for the type and lugs, with detachable springs for holding the type in place by
lReported by Charles C. Linthicum, Esq., of the Chicago bar.