APPLETON MANUl"',G CO. 'II. STAB MANUF'G CO.
APPLETON MANUF'G CO. v.STARMANUF'G CO. et lll. (Circuit Court of Appeals, Seventh Circuit. February 9, 1894.)
PATENTS FOR. INVlllNTiONS-PA'l'ENTABIL1TY-CORN HUSKERS.
Letters No. 290,571,· issued Dec. liJ, 1883, to S. P. Goddard for an imt>rovement in· the method or reducing corn in the stalk l\nd separating the kernels, consisting. of a cutter with feed rollers in front, a beater or thresher, a revolving screen or separator, and' a shaking screen under. it, all mounted In one frame, and so geared that the parts are driven by a single band wheel, are void for want of invention, since the device con-. sists merely in the appllcation to a new use of old and well-known devices. 51 Fed. 284, IUIlrmed. .
Appeal from the Circuit Court of the United States for the Northern District of illinois. Bill by the Appleton Manufacturing Company against the Star Manufacturing Company, Delos Dunton, and H. G. Sawyer to restrain inflingement of a patent. Defendants obtained a decree. 51 Fed. 284. Complainant appeals.
The suit was by the appellant against· the appellees for an accounting and to enjoin infringement of letters patent No. 290,571, issued December 18, 1883, to S; P. Goddard, for "improvements in methods of reducing corn in the stalk and separating the kernels," of which the specification and claimS are as follows: "My invention has relation to a new and useful method of reducing and separating corn from the stalk, husk, and cob, and at the same time the stalk, husk, and cob are cut up or comminuted, and ready f0l' use as stock food,-ensilage; or, in this· fine condition, it may be plowed int!> the soil as a fertilizer without any further treatment; and to these ends the novelty consists in the method hereinafter described, and particularly set forth in the claims. In carrying out my invention, the result is accomplished by means of the devices shown in the accompanying drawings; but I do not wish to be understood as limiting myself to the means shown, as any mechanism which will prodUce the same result may be used. Fig. 1 is a longitudinal, vertical section of a machine adapted t() carry out my invention, and Fig. 2 is a side elevation of the same. A is a feed trough, supported at one end by legs, one of which is shown at B. C, C', are the teed rollers, the upper one, C, being corrugated, and both driven by the ordinary gears. D is the cutter bar, rigidly secured to the base, and E is the cutters or knives secured to the cylinder, F, so that the latter rotates the material as it is fed by the rollers, C, C', when forced over the cutter bar, D, and the knives, E, cut it into suitable lengths, and the cut pieces fall on the incline, G, and' are thence fed to the toothed cylinders, H, H', which thoroughly break up the pieces and discharge them into the inclined rotating screen, I. The grain corn then falls through saId screen, while the stalks, cobs, and husks pass out the lowel.' end of the screen onto the incline, K, and thence to the 11001' or ground. L is a shaking screen having inclined screen bottom, M, and, as the graln corn and chaff or refuse fall into it from the rotating screen, the shaking motion sifts all the dirt or foreign matter through, while the clean grahl. is carried forward and discharged through the' opening, N, into a box or bin placed there to reCeive it. It will thus be seen that, as the stalks and ears with the husks on are fed to the cutters, they cut the stalks, and also the ears, husks, and cobs,· into small disks. This in Ule first place practically sheHs the corn, in addition to cutting the cobs, husks, and stalks, and as the pieces of cob pass betweelIl the. toothed cylinders,H, R', whatfew·remaining grains may be attached are separated by the threshing operation of said cylinders. The knife cylinder, F, 1s mounted on a shaft, 0, one end of which Is provided with a band or fly Wheel, P', and on the other end.is a small gear, P, giving motion,through the idler, R, to the gear,. S, secured to the upper feed roller, Co· The shaft of' this feed roller has· a vei1:ical piay in the slot, 2, to facilitate
feeding the material, and a spring, 8, serves to keep the roller to its work. 4 is an l(ller. which receives motJonfrom the gear, V, on'the sbaft, 0, and It to. the gear, 5, att;iched tothe toothed cylinder, H, and the said geat,' 5, in turn meShes with 'a larger gear, 6, on the other toothed cylinder, H'. To the face of the gear, $, is secured an angle gear, 7, meshing with a simllar gear, 8, on the shaft, 9, the lower end of which is provided with a band pulley 10, by means of Which a rotary motion Is given to the pulley,: til on th'e shaft, 12, of revolving screen, I, said ;Qulleys,10 and 11, being:coo.nectoo with Ii belt. (liot. 13. is a pitman eccentrically connedtetl to the face of, the so as to motion to the arm, 14('secured to the rock 15, upon which tlie shaking screen, L, is mo1ltJ.ted. It will thus be seen tJ1at the machine may be placed in the field,anel'the stalks of corn, cut dowJ;l a few inches from the ground, may then be fed in 8uitablebunches to the feed rollers, C, C', l!-nd cutters, which cut the stalks, ears, and husks into small pieces, and, as above stated" "this,cutting operation the greater portion· of the grain corn fromtlle and the remaining alIheI'fng grains are entirely 'removed by the threshing action of cylinders, n, H', and the mass then passes 'into the reVOlving .llCJ."eeJl, I. where the corn4ltd' cP.a1f or dirt pass through said screen, and the shaker,4 We stalkll" husks,. and cobs pass out the lower end upon the incline, K; to the ground. The grain corn and chafr in flilling into the shaker,' L;'are continually agitated, which. sifts the chaff through the bottom, leaving theeorn'clean and clear to be discharged througll ,the. 0llenhlg, N.Having .fully described my improved method of separating corh,what I claim. as· ,new and useful, and desire to secure by letters the UnitedStatell!s: .(1) ';['he,method hereIn described of reducing SeP!IJ.'ating corn j.n ,thestal,k at a single operation, which consists, first,., up the ears" husks,ll./lP.stalksj second, in removing the remainingm-illfr()m the cobs; a,nd,llnally, in separating the clean grain trom ,the stalks, cobs, and husks, as ,set forth. (2) The method herein describeaot andseparatl,ng ,corn In. the stalks, which consists in cobs, an,dhusks at a single operation, .and then regrain frQm .the cobs, as set forth." The defenses moving under patent No. 437,803, granted October 7, 1890, td rp:,'B;StiU, noninfringelpent and, n,opiI,l.vention, with references to the folloW:illgpll,tents in the prior art: No. i,U1" issued March 26, 1839, to T, issued O<Mber 3, 1844, to R. :M:ilIer;No. 5,207, issued July 31,,1847;,to E. J;>otts; No. 8,753, !ssued Fe!Jruary 24, 1852, to A. R Earle; No. 1!1,425,lfll;lW],i'ebruary 23, 185$. tp W.D. Hickok; No. 19,935, issued April 13, 1858, Landis; No.,,22,718, issued January 25,1859, to Ford, ,March 13, 1860, to Utley & Teed; No. Sullivan & Ctregg; 'No. 29,572, 1860"to P. S. Clinger; No. 32,273, .issued May 14, 1861, to Bund,&. Edgerton; 71,000, issued November 19, 1867, to J, T. Issued May; 9. 1876, to 1. and J. F. Wentzel; No. 862, A:llgust8, 1876, G. Jh'ltz.Mr. M. E. Dayton, an expert In ,W'lhalfof the complainant, on to the e;trect that the Goddard claims, instead of being method claims, to be in fact clillms, for the machine, they would be: void because anticipated by the construction .shown in the FOI:<!tSullivan & Gregg patent; that in accomplishing Godda.rd's new process he uses a .machille which in all its material parts and mechaPical elements. was old; tl)at to cut, to thresh, and t() sift grain by a each and the elements shown in the Q-oddard patent, or their well-kIlowD equivalents, was old, as shown by the Ford, Sullivan & Gregg machine. that the cutting devices of the Goddard patent and of the Still pMent and of the defendant's machine were all old and perfectly well kn,oW9t and the use ,of the one or the other in any given machine a mere matter 9fselection, and not at all a matter of invention; that, if tbe cutting device of. the Goddard patent were substituted for the cutting device of the Ford,' l!lulUvan & Gregg device, it would make. that a commercially operative device, Which would do' everything which. can be done with the Goddard machine; that the prior public use of the Ford, Sullivan & Gregg machine With the,C11ttibg devices, modified as stated. upon Indian corn in the husk and on sta1k,woull1 constitllte a perfect anticipation of the
APPLETON MANUF'G CO.
STAR MANUF'G CO.
Goddard patent; that such use of such a machine, without a separator, would constitute a perfect anticipation of the second claim of the Goddard patent;. that in such case there would not, in his opinion, be the slightest element of invention in adding a separator to the machine unless the separator itself was of a new construction: that revolving cylindrical sifters and either horizontal or tilted reciprocating cylinders were old and perfectly well known at the date of the Goddard patent; that the use of one rather than. another in any given :lDachine was solely a matter of selection, and not at all of invention; that the machine of the Miller patent, No. 3,775, could be used in the practice of the .method described in the second claim of the Goddard patent without any changes whatever, and tbllt the same is true of several other patents set up in the defendant's answ.er, and introduced in evidence, as, for instance, the Neff patent of 1860 and the Wentzel patent of 1876; that in respect to the threshing and screening devices, but not in respect to the cutting devices" the machine shown in the Still patent and the defendant's machine are more like the machine described in the Ford, Sulli· van & Gregg patent in construction and organism than they are like the machine shown in the Goddard patent. The opinion of the circuit court is reported in 51 Fed. 284.
Offield, Towle & Linthicum, for appellant. Raymond & Veeder, for appellees. Before WOODS and JENKINS, Circuit Judges, and BUNN, Dis· trict Judge. WOODS, Circuit Judge (after stating the case). The utterances of· the supreme court upon the question whether or not a mechanical process is patentable are not in clear harmony: Corning v. Burden, 15 How. 267; O'Reilly v. ldorse, Id. 62; Tilghman v. Proctor, 102 U. S.707; Lawther v. Hamilton, 124 U.s. 1, 8 Sup. Ct. 342; Cochrane v. Deener, 94 U. S.788; Brown v. Piper, 91 U. S. 37. In Lawther v. Haniilton, the process was fOr extracting oil from oleaginous seeds, and was not entirely mechanical; but the improvement for which the patent there considered· was granted consisted merely· in the omission of a mechanical part of the process, namely, the grind· ing of the seeds under muller stones, and the patent was sustained, though not in the broad and general sense of the claim; the process being held to be ''limited by the clear terms of the specification, at least so far as the crushing of the seed is concerned, to the use of the kind of instrumentality described." In Cochrane v. Deener, the original process and the patented improvement which was in issue, comprising the use of an air blast, related to the manufacture of flour, and were entirely mechanical in character and operation.
"A process," it was there said, "is a mode of treatment of certain materials to produce a given result·. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The, machinery poillted out as suitable to perform the process mayor may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things be done with certain and in a certain order; hut the tools to be used in doing this may be of secondary consequence."
But in Corning v. Burden, quoted with approval in Tilghman v. Proctor, it is said:
raquire,i)tMm-, Juore Processes' i'n order to, ,prqduce a certl1illj result or .facture;" [,'l'h'e ,'term·.,'machine" 'includes everY' 'mechanical de'Vice' <>,r COll1biriation 'ahd devices toti&forili some ttuicUdn' or to proe1!eCi: or rE!$illt,:But Where tlie t'¢sult oretr,ecfis produced by duce by the,'operatio'n ott appllcatfQii"ofsome elemimf or power of su1JSmnce 'modes, mettiodS; <iroperations are A ne"pt<'lcess isusualIt'thereeult of dis'covery, a machine ottiiventlon. ,,*, * ,Uis the ferm 'process' i!J;used to represent the, means or method of P:roduchig a result that it is patentable, and it wllliillllttde allmetllods or means which are not etrected by mechanism or mechlU11eat'combinAtions. Bot' the term Js often usEid in a more vague sefule'," in which it cannot' be the subjejft of a patent. ,Thus we say that a. bOlU'<!'18 undergoing of, behlgplaned; grain ot being ground, iron of ol."'ro11OO. Here the term is used subjectively or aPplied to the 'material operated upon, and not to'the method or mOde ot'prOduclng that operation, which' is by mechaniCllJ.means, or the use of a machine, as distinguished from a process. In this 'USe of the term it represents the function of ,a machine, or the, effect produped by it Oll the material subjected to the actttJn 'of the machine: But i1'i8 'wen settled that a man cannot have a patent for the ftID,cflottor abStract effect ofa machine, but only for the machine wqicU produces i,t."
In general hannony with these propositions are the numerous cases of which, in Pennsylvania R. 00. v. LocomotiYe, etc., Truck 00., 110 Ot. is said: "It is!Jettled: 11Y many deeilil<m$ of this, coUrt, which it:isunnecessary to
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quote, from to in the, application of ,an .91d process or machin,e t() a st,¢l1ar or no change, in the ma,nner ot appllcatiolli aM 110 reeult 8Ubafantlally di1ferent,ln itsnature;wm not snstain a patent, e'Ven If;the new form or result has not been before cOntemplated."
'" In Brownvr'f1Per, 91 31, a for a preserv·, ff,sh in. ,I'<, ,closed chaIllberhy means of a mixture was to have by a Ijk,emethod practiced by undertakers tor .dead bodi,es; and, to, the proposition that the had been applied to the preservation Of ftsll ancl mea,ts,the said: :; ,
JI'J that this 18" simply' the application by the patentee of 8Jl ttM. of the, inventive faculty, ana, without 'develoPmetlt 9f any idea. ",hiGh, can be deemed new or origfnillin the sense ot, the patent law. , The thing was within the circle of what was well known before, and 'belonged to the publIc.'" ,
And lro,inHowe v.AqbQt't; 2E\tory, 190, Fed. Oas. No. 6,766, a patfor palm for was held inin-new .of the factiJia:t hair the same uses.' Justice SWrysaid: . .
tilt is cotree mltt1verenow ftl-st time to ,grind C6l'n, of an old process to an to which it 'had never bef,oi"e" beenapplted'is not apatelltable invention. Tl1ere must liesoxne new prQcess or some neW produce tCllillt. If splnningmachine!!w 'spihftax were now'th·st appliedt6 spin cotton,r'tid man could hold a new patent to spincotton'in::all modes, although he had invented none." .
' L J', ,
In Fllllerv. Yentzer; 94 U. S. 288, the claims, though in tenns for the function or result of the operation of the mechanism
CO. tI. STAR
in order to uphQld the, patent, tb,emechanism itself, it is said:
,"Patents. fpr a machine. will not be sustained' If the cl8.im is for a result, rule being that the invention, if any, the me/LD.illg'of the patent act, consists in the means or apparatus by which the is and not merely in the mode of operation, independent of the ,mechanicaldevices employed; nor will a patent be held valid for a principle or for an idea, or any other mere abstraction. BUrr v. 'Duryee, 1 Wall 081."
in Roberts v. Ryer,91 U.S; 150, 157, is this expression:
new invention to use an old machine for a new purpose. , The Inventor.of'a machine is entftled to the benefit of aU the to which it can be put,ncr matter whetherf 'he had 'conceived the idea of the use or not."
To .same effect, see Stow v. Chicago, 104 U. S. 550; Heald v. Rice,Id.,755; Stimpson v. Woodman, 10 Wall. 117; Tucker v. Spalding, 13 Wall. 453. It beilig, as we suppose, welll:lettled that a patent for a machine covers its use for all pu,ioposes, whether anticipated by the patentee or not, and that the funCtions or methods of operation of mechanical devices may not be patented, it would seem to follow that processes, which are to be effected ",holly by mechanical means, in order to be patentable UluSt be capable of being distinguished' from the method of operation or mere function of the mechanism necessary for their accomplishment. Whether or not such processes are possible is a questiQn ,primarily for inventors; the courts can decide only whether a particular process presented for conS!ideration is of that character. The processes now in question were designed for"Reducing and separating corn In the stalk at a single operation. so that the grains will be separated from the cob, and at the same time the stalk, husk, and cob are cut up or comminuted and [made] ready for use as stock fOOd,-.ensUage."
The means specified for accomplishing these results are entirely mechanical, consisting of a combination of machines and devices long well knoWn, and we .find it impossible to see any distinction between the processes and the mere functions or mode of operation of the mechanism itself; and the same objection manifestly would apply if other devices were substituted for thOEle described.. But, if we waive the objection stated as one which under the decisions and dicta of the cases cited mayor may not be tenable, and consider these processes ip the light of the prior art in proof, we are constrained to find ,them devoid of patentable novelty. A completely analogous process is shown by the patent of Ford, Sullivan & Gregg, which il:\. upon machinery designed· for cutting, separating, and threshing wheat and other small grains. It is insisted, however, that cornstalks and ears in the husk resemble trees more ,than wheat, oats, rye, or barley, and that the process shown for the treatment, of the latter no suggestion for the tJ,'eatment of the other by the same or a similar method; though it is adniitted that if the cutting device of the Goddard patent were Bubstitl-lted' for the devjce of the Ford, Sullivan Gregg machine,:-a substitution which ",oul<i not involve
'would make of it whicll the processes of the Goddard patent :might be completely performed. nut as only in' small measure upon the patent & we do. not' stop to consider ,further the
the is that those two or and that the third was tli'St inquiry in. ,logical order,. is whether or notIn the two steps common to both .claims there was a discovery., The proof.:to, the contrary is, convincing. The 'Q,nly feature of ·llOvelty asserted. is that Goddard was the first to or discover that the shelling of corn, either wholly or ill, ,vart, could be dolle by means of a feedcnttel'; and "this fact;" says the appellant's expert, "lies at the bottom of his invention or process." The. 'same witness testified that "it has long been :practice among farmers to chop up ears of corn with an that he did not know "that corn axe 'to, fit Jt for feed for wase-ver cilt in the staIk,husk, or ear, with a feed cutter;" though: he admitted that ,p.pon the cutters shown in the patents of MiJ)er, Neff, Wentzel, and others; referred to in the prior art, witl:lQut'. any Chllnge of. parts or cOll1ltruction, 'process of Goddard's: ,ctaim, cfluld be performed. ,:,'1'hough not explicitly so stated, wetlIitik it inferabLe, from this testimony that the practice of farmers was to chop lip for feed the unhusked ears ofc9rn, and it would seem entirely probable, because so manifestly practicable, if, indeed., the fact may.not be affirined upon common knowledge within the at' theco#rt, t1;lat the cutting ,was done upon the old-fashioned cutting boxes, as well as with axe or.hatchet; and if. corn and and .stalk together were not cut in the same way, and especiaUyby mean.s of the improved and· patented cutters after they ,iIlto use,'lt' was bec!tuse an obvious and imporUint utility for whi-ch" the inven'tions were adapted was blindly or purposely" rejected:· On account of late planting, early fr.Osts, and for other reasons,growing corn is often clit when the. grain upon the ears is, too immature to ripen after cutting . into a merchantable article, and in,' that condition the farme17, ,already possessed ofa cutter adapted for the purpose, needed inventive suggestion to enable him to subject the stalk and eai-·, together to the very process of which appellant would It is hardly to be believed, in the absence of have a proof, that since the introduction of improved cutters, designed to reduce the entire product of the corn plant into a condition :tit to be fed to cattle, they have not been used ," more or less to chop cornstalks and of corn· by a single operation, affording complete illustration of Goddard's ,second process, both in respect to its operation and restilt. And this proposition does not rest on 'probability alone., The Harvey· macp.ine,. patented m 1867, which 'is in though .called, a .straw cu'titer, was expressly designed '''for cutting Dot only hay; straw,cornstalks, etc., but
of the stepswer,e .
.",'. The: first two"steps of theproceas covered by Goddard's first claim are identical with :the two steps which constitute the process
GAtT tl. PARLIN & ORENDORF CO.
also ears of corn ahd other vegetable products;" another part of the specification being that "when the material to be cut is of a coarser· quality, such as cornstalks, ears of corn," etc., certain arms of the device were to· be lengthened. While, therefore, it is not explicitly said that the cutter of that patent was designed to operate upon the unseparated ears and stalks, the obvious possibility of its being so· used left no room for patentable novelty in a suggestion of thwt method; and whether Harvey's design was that the corn and stalks should be treated separately or together, and whether the practice with that and like machines was one way.or the other, the result of the operation or process neca3sarily was ·the cutting of the stalks, ears, and cobs into disks, and the more or less complete shelling of the corn. It cannot be true, therefore, that Goddard was the first to discover that corn could be shelled by means of feed cutters, though he may have been the first to perceive how completely the shelling had been and could be accomplished in that way, and that by separating the shelled corn, when of good quality, from the comminuted mass of ()ther materials, as they came from the cutters, the clean product could be made a merchantable commodity. To accomplish that, it was only necessary to add to Miller's cutter, or any other of the devica3 adapted to cutting cornstalks, or stalks and ears, a screen or sieve, which might be vibrating or revolving or stationary. They were well-known devices, of common use in threshers, as illustrated by the patent of Ford, Sullivan & Gregg, which, if it did not contain an obvious suggestion that corn in the husk and on the stalk could be treated by the method which it embodied, did show plainly enough how the process of the cloom could be carried to the third step, constituting the first claim of the patent, simply by annexing to the feed cutters adapted to chop cornstalks and ears of corn some form of screen or separator. As w3!ssaid of the Grant patent in Grant v. Walter, 148 U. S. 547, 556, 13 Sup. Ot. 699, the most that can be said of the Goddard patent is that it is a discovery of a new use for old devices, which does not involve patentability. The decree of the circuit court should be affirmed, and it is so ordered.
GALT et at. v. PARLIN & ORENDORF CO. (Circuit Court of Appeals, Seventh Circuit. February 9, 1894.) No. 95.
PATENTS FOR INVENTIONS-NOVELTY-WHEEL HARROWS.
The fifth, sixth, and seventh claims of reissued letters patent No. 8,765, granted June 24, 1879, to Jay S. Corbin for an improvement in wheel harrows, consisting of the combination with a gang of r(}tating harrow disks of a lever for setting the same, are void for want (}f novelty, the improvement being merely a change in the location of the lever previously used. 52 Fed. 749, affirmed.
Appeal from the Oircuit Court of the United States for the Northern Disu;ct of lllinois, Southern Division. v.60F.no.3-27