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
.. s.trllJ..n. th,e.,.. aneg.eQ :'Wrin.gem.ew; · .. . pat.en.t. ". pea de<;ree., : ,74;9. .CQ¥l-plamants .
PAULIN & ORENDOnF
1875, on a revolving cultivator, which is a mach'ine analogous in its use to tn'at of the complainant,' In which a set lever Is mounted on the tongue as tlhown, whiqh operates to change the running depths of the spades, or cutters, which are Shown in that device. In several other machines referred to in the testimony the regulation Of the angles of the diSk gangs by means of rods and levers Is shown., So far as the terms of the claims on which infringement Is charged In this patent are concerned, they are, it seems to me, completely met by the old Randall lever of 1863, applied to the harrow shown in the patent of 1859; that is, Randall had a combination with a gang of ro: tatlng harrow disks of a lever connected to the gangs for setting the same at an angle with the line of draught, and Its operation was substantially as described, but it was not located In the same place; and undoubtedly It was more convenient to locate this lever, which Randall has introduced into the organization, upon the tongue than it was to locate it where Randall had It,at the rear of his frame; but, as it seems to me, no Inventive talent was called Into action to apply the lever shown In Winters' patent to the complainant's gang. It seems to me that this patent is but for an aggregation of parts. The idea of changing the angle of' the disk frames is Randall's; the Idea of doing that bY means of a lever Is Randall's. The lever used by Randall is substantially, in Its mode of operation and effect, the same as that used by complainant; and simply to relocate that lever, or, place upon the tongue of complainant's machine the Winters lever, does not seem to have required any inventive talent. It was merely a mechanical act to transfer Winters' lever'to the tongue of complainant's machine. That it was, an improvement upon the machine may be admitted, but that it was, such an improvement as will sustain the patent I do not think, because this class of machines, according to the proofs, has always been operated, so far as the angles of the disk harrows are concerned, to a greater or less extent by means of a lever. Such a lever' for shifting or changing the seed shoes and hoes of the seeding machine from a straight to a zigzag line is shown In the Davis patent of 1868; and the same device is also shown in the Schmidt patent of FebruarY, 1869, on a seeding drill, and in the Manny mower patent of 1871 for tilting and lifting the cutter apparatus. In fact, It may, perhaps, be said to be a part of common knowledge at the date of the patent that levers of this character for the purpose of regulating the movements of plows, cultivators, seeders, and harrows, were In constant use; and all'this patentee has done is to take one of those old levers and mount it on his tongue for the purpose of adjusting the angle of his disk gang. instead of placing the lever where Randall placed it. It performs the same function, and no other, when placed on the frame of the machine as it did in Randall's old machine. If Randall's lever had been patented, It is quite clear the Corbin lever would have been an infringement. If Randall had attached a rod to his lever and extended the same forward to the driver's seat, so that the angle of the disk gang could be controlled from the driver's seat, he would have had a device operating upon the same principle and producing the same result as is done by the complainant's lever; and no one, I think, would contend that it would have been patentable to so attach a rod to the Randall lever, and hold It by any common locking device. I am, therefore, clearly of the opinion that this patent must be held void for want of novelty.
The following is the argument made 'here in support of the patent:
While'invention Is necl'ssary only in the means, it Involv.es or contains also the conception In the mind of the inventor that the result can be accomplished by such means. "In all discoveries, of course, there are two things,-there Is an object to be achieved, and a means of acWevlng that object. No invention is required as to the object. rfhe invention may be in the means for effecting the object, whether [the latter be] old' or new." Adie v. Clark, S Ch. DiV'. 135, Wood, V. C. It is not a fair presentation of the problem to consider only whether a mechanic could take an ordinary lever and place' it as Corbin has placed it, in connection with the disk, gangs at their inner ends, without any quality of Invention being involved In the .transaction. But, as stated In Adie v. Clark, before cited: "In all discoV'eries, ofcomse, there
are two that
Is an object to be and, a means of achieving Itmlgbt have OCcurred to a mechanic that.,lt lever could be 'placed It, ,believed in aceofupilsh .the result, and the idea. earller the disk sh()wn in patents or by evidence of actual use, wal! there any means 'of adjllstab1llty Wldeh were capable of adjustlng the gangs w1;1Ue' the narrow, was til' the draft of the team, exerted tloD,; llnd, second, he had accomplishing the resUlt under theC9ild,itlons named. It is ol:lvlous, llswell as established by proof, that there Is all 1nll,alculable advan:tAie means foradjnstlng the disk gangs .whlle the I\lachine .isfn'rhotlpn;, and .without InterIJlltting the draft of the team.. Ar.(i the result is dUIerent, as the depth of. cut effected by any: spMiat angle can bY experiment; ,that Is, while the .D1achfne is moving. afforded not only the' advantage ofll.djustabillty Jjme, but It alSQ afforded of de. byexhibitlng, in (actual expm-ience, terminln,i ,the adjustabUlty what degree of entrance IbtQ W,e of the earth any special point of adjustab1llty produced. 'iCprbln,produced a new result in this, that h,e not only effected b.ut concurrenUy therewith illustrated of cut * * It the case, ,tha;¢f9re, to cOJ;ltend that. otber adjusting B!angs, while the machlneWas statlonary hadbeeuprevlously employed; neither, does It meet the !pslst that a II< of'other machines, under had been prevlousJyemployed.
and J ohnG, :M:linab,an,,for appellants. Bond; ,Adams, Pickard '8jJackson, for .appellee. :WOODS and Judges,and:BUNN, District J qdge. "
WOODS, .Circuit JUdgeXafterstating the : The bearing of the, Pl'j(>l' art upon the q1'J,estion of novelty al1d in:vention in bin's QQwbination may be illustrated by supposing two.of the older machines. to be employed side by sider--:-the wheel harrow of Bayless, and adjUstable only "1;)y means. of a movable bolt, spader, ,or cultiyator of Winte:rs, with a lever and mounted ,on the tongue, ready for the hand of the' driver in his seat. In that sirtJuation the advantage of one driver over the. other in respect to the easy' and control of his machine be not more ob'tJous than tl;ie means of correcting the mequalitY. '. So manifest, indeed,is the impossibUity of finding inventionin the mere fact of a lever mounted on the tongue of a wheel harrow to be used in controlling the alignment of the disk gangs that it is not insisted upon; ;but it is now contended that it is. not. a fair presentatio;u of the problem to consider only whether a mechanic could place an Qrdinary lever, as Oorbin ,placed it, in connection with the disk gangs; that Oorbin, ashe was compelled to do, 'Went further, and ,determined first the pOssibility, as against the dra.1't of the team, of adjusting the gangs while the machine was in motion, then the' means of doing it, and thereby achieved the new result that, concurrently with the making of adjustments of the gangs inJDotion, the depth of, the,resnlting' cut is'il1ustrated. This argument admits by implicatjon' that it would
PARLIN & ORENDORF CO.
have required no invention to introduce a lever into the Bayless harrow if intended only for the obvious advantage of enabling the driver, without leaving his seat, to adjust the gangs when not ill motion; but if done for the purpose of making adjustments when the machine should be in motion, then, it is insisted, there was invention. But, the possibility· of multiplying power by means of the lever being perfectly well understood, it is idle to contend that Oorbin did more than an ordinary mechanic could have done when he determined that by means of a lever properly. adjusted, and within the limits of the movement of its short arm, the disk gangs could be shifted at pleasure either when the machine was at rest' or when it was in motion. In respect to the alleged new result, it is to be observed that, if Corbin apprehended what is now asserted, he did not deem it worthy of mention in his patent. As stated in the specification, his object in this respect was "to provide for the easy and rapid setting of the gangs at any desired angle to the line of draft while in motion or at rest;" and of the lever itself it is said "that, when its upper end is carried forward to its limit, the gangs will be in a straight line for removal to and from the field; that when it is set perpendicularly the gangs are ready for pulverizing soft soil; and when it is set at its backward limit they are ready for the harder clay soil." It need not be supposed, however, that he had no conception of the advantage, when practicable, of making such adjustments when the harrow or eultivator should be in motion rather than when it was at rest. There was common, knowledge in that direction. Every intelligent plow: man who, in order to regulate the depth of his plowing or the width of his furrow, had stopped his team to shift the whiffletree to a higher or lower notch of the clevis, or to adjust the front end of the clevis to one side or the other of the middle line of the plow beam, had perceived that the exact adjustments needed would be more readily attained if they could be made gradually while the plow was in motion; and more modern implements, in which levers are shown to have been employed for the purpose of controlling and adjusting their movements, have long afforded illustration of results corresponding in some measure to that now claimed to be new. If it was a part of Oorbin's conception that the desired adjustments could be illustrated and more readily effected in the way stated, it was no more than men of ordinary experience in such matters, or of ordinary knowledge of the laws of mechanics, would have apprehended as the probable, and indeed necessary, result. But the entire argument for the appellants proceeds on the erroneous assumption that a machine or mechanical combination which in itself contains no novelty amounting to invention may be pat· entable because of some new use or result which is accomplished; a proposition which, as we have seen, leads to the inadmissible eonclusion that for one use or purpose a device may be public property and for another use may be the subject of a patent. On the contrary, it is well settled, we suppose, "that a patent for a machine covers its use for all purposes, whether anticipated by the patentee or not, and that the functions or methods of operation of me-
·4evices ,are, ; (Appleton Miunif'g' Co. v. 09., 60 'inven:tJi.on is in the device;which e',two, or,',Jl)J)"',re,'t'u,D£tions, one of great and another of , t·., , g:: 'Worth; it maybe.ftJUPJXiSed to have a function which it has nqt;J;heJ>ateI!.t ia uponJ:he deNice, and not upon the functions, real v. Sperry Electric Co., 7 C. C. A. Fw. 186. "A rirlsta.keBdescription, or even misconception of the'Qperationof a ,devicejrwli:ieh isitself fitly described and claimed, not vitiate a patent.'.' Temple Pump Co.v. GoBS Pump, etc., 00., 'l C. C. A.: .17" ;58 Fed. 196. .By the decision of the /itupreme'<:Qurtin eolla,rCol,:T. Van Dusen, 23 Wall. 530,563, "new :colIlJ1lerceare,not,plltentable, as new unless)t'fI,ppeaJlS "in:the given, case that the productionol the new exel'clMof1,iuventionor discQvery beyond what was ne<le8$SJ'Y, to construct the apparatus for fts manufacture or by the same :principle a machine, apparatus, or combination,the conception and construction of which involvE!4 no, in;yention, cannot be patentable by reason of any new effect, : or product obtained by its'employment In Fuller v. U. S. 288, itiiJ said: "Patents for a machine will not be :,j\qstaiped if the clab::tlAs f()r a, result, the established rule invention, if Jituy, within the meaning of the patent act, .the ',by which the· result is obtained, merely in·the mode of' operati6n, hidependent of the mecllAnical devicesemplo;}";ed; nor will a patent be held valid for a. principle or for an idea; or any other mere abstraction. Burr v. Duryee,l,'Wall.531." Apd in Robertl,.v. Ryer, 91 U. 13.150, 157, is thia "It is no' new invention to use an old machine for a neWI!'!ll'p()Be. The inventor of a machine, is entitled to the benefit of all-'theuses to which it can be put, no matter whether he had conceived the idea of the use or not." To same effect see Stow v. Chicago, 104 U. 'S. 550; Healdv. Rice, Id. 755; Stimpson v. Woodman, 10 Wall. 117; Tuckerv. Spalding, 13 Wall. 453. If, therefore, it be conceded that Corbin was first to'mount a lever upon the tongue of a wheel harrow, and,that thereby a new result or advantage incident to .the operation of the harrow was gained, yet the dEfcree, below wascight, because, the use of the lever in similar for corresponding purposes being familiar, its introd'!lctionrinto Corbin's' combination involved' no possible measure of inventl.Qll. The decree of the circuit court should be af80 ordered.
!THE ADVANOE. BRONS'JlED v. THE ADVANCE. (Dilltrict Court.·S> D. 'New Yor'k.:M:arch 16, 1894.)
A Ubitet1"St8'tesdlstriet' 'cou,rll!.alil "power to make an allowance to the clerk: oLtl:le :court for 'services rendered beyond what are required by law. . c()mpensatlop allpwedJ,u.; :the case of a transfer by him of a