Claims 1 and 2 of letters patent No. 74,342, granted to Alvaro
B. Graham, February 11, 1868, for an improvement in harvesters,
namely:
"1. The combination, as set forth, in a harvester, of the finger
beam with the gearing carriage, by means of the vibratable link,
the draft rod, and the two swivel joints, M and M', so that the
finger beam may both rise and fall at either end, and rock forward
and backward."
"2. The combination, as set forth, in a harvester of the finger
beam, gearing carriage, vibratable link, draft rod, swivel joints,
and arm, by which the rocking of the finger beam is
controlled,"
are not infringed by a machine constructed under letters patent
No. 193,770, granted July 31, 1877, to Leander J. McCormick,
William R. Baker, and Lambert Erpelding, assignors to C. H. &
L. J. McCormick.
It is apparent from the proceedings in the Patent Office on the
application for Graham's patent, and from the terms of his
specification and of claims 1 and 2 as granted, that the intention
was to limit the modification which Graham made to the particular
location of the swivel joint, M', on which the cross-wise rocking
movement takes place, and to the rigid arm by which the positive
rocking of the finger beam in both directions is affected and
controlled.
Page 129 U. S. 2
In the defendants' machine there is no such rocking of the
finger beam as in Graham's patent, but only a swinging movement, as
in prior patents, on a pivot in the rear of the finger beam, and
there is no arm which can depress the finger beam, but only a loose
connection to it, the same as existed before, and there is no
swivel joint, M', located and operating as in the Graham patent,
and it does not infringe claim 1 or claim 2.
In equity for an accounting for infringement of letters patent.
Decree awarding damages to the complainant. Respondents appealed.
The case is stated in the opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity brought in the Circuit Court of the
United States for the Northern District of Illinois by Hugh Graham
against Cyrus H. McCormick, Leander J. McCormick, and Robert H.
McCormick, on the 8th of June, 1877, founded on the alleged
infringement of letters patent No. 74,342, granted to Alvaro B.
Graham, February 11, 1868, for an "improvement in harvesters." In
the course of the suit, the defendant Cyrus H. McCormick having
died, his executor, Cyrus H. McCormick, and his executrix, Nettie
Fowler McCormick, were substituted as defendants in his stead. The
defenses set up in the answer were want of novelty and
noninfringement. After issue joined, proofs were taken on both
sides, and on the 24th of April, 1882, the court made an
interlocutory decree, holding the patent to be valid as regarded
its first and second claims, decreeing that the defendants had
infringed those claims, awarding a recovery of profits to the
plaintiff from the 12th of August, 1870, the date of the assignment
of the entire patent by the patentee to the plaintiff, and
referring it to a master to take an account of profits and damages.
On the 21st of July, 1884, the master made a report awarding a sum
of money in favor of the plaintiff, to
Page 129 U. S. 3
which both parties filed exceptions. On a hearing, the court
sustained some of the defendants' exceptions and overruled all
others, and rendered a money decree in favor of the plaintiff. Both
parties prayed appeals to this Court, but the plaintiff did not
perfect his appeal. Since the record was filed in this Court, the
plaintiff has died and his administrator, Peter Whitmer, has been
substituted in his place as appellee.
Only claims 1 and 2 of the patent are involved. The
specification states, among other things, that one object of the
improvements which constitute the invention set forth in the patent
is to obtain a greater capacity of movement in a floating finger
beam while retaining its connection with a gearing carriage that is
drawn forward by a stiff tongue; that, to that end, the first of
the improvements of the patentee
"consists of the combination of the finger beam with the gearing
carriage by means of a vibratable link extending crosswise to the
line of draught, a draught rod extending parallel with the line of
draught, and two swivel joints, the one for the vibratable link and
the other for the draught rod, so that the finger beam can rise and
fall at either end, and rock forward or backward, independently of
the gearing carriage, while maintaining its connection with it;'
and that his 'next improvement consists of the combination of the
finger beam, gearing carriage, vibratable link, draught rod, and
swivel joints, with an arm connected with the finger beam, to
enable it to be rocked for the purpose of setting its guard fingers
at any desirable inclination to a horizontal line."
The specification further says:
"My improvements may be embodied in a machine having the finger
beam arranged in advance of the axial line of the shaft of arbor of
the driving wheel, or arranged in the rear of that axial line. In
the former case, the vibratable link that connects the finger beam
with the gearing carriage will be arranged in advance of the
driving wheel, and in the latter case in the rear of the driving
wheel. In the former case also, the rod hereinbefore called a
'draught rod' (because the strain to which it is subjected is a
pulling strain) becomes a pushing or thrust rod, and connects the
inner end of the finger beam with the rear of the gearing
Page 129 U. S. 4
carriage. In the former case, the radius bar for the reel and
raking platform connects with the rear end of the gearing carriage,
and in the latter case with its front end. I prefer to construct a
harvesting machine with the finger beam in the rear of the line of
the axle of the driving wheel, and, as a description of such a
machine, perfected by my improvements, will enable them to be fully
understood, all of my improvements are embodied in the harvesting
machine of that description which is represented in the
accompanying drawings, and which is an illustration of the best
mode which I have thus far devised of embodying them in a working
machine."
There are twelve figures of drawings. The specification states
that the machine is what is commonly called a "combined machine,"
and is adapted to reaping and mowing; that when used for the former
purpose, it is arranged as represented in Figs. 1 to 6; that when
used for the latter purpose, certain of its parts are removed, as
thereinafter stated, and a grass divider is substituted for the
grain divider at the outer end of the finger beam, and that the
gearing which imparts motion to the sickle and reel is mounted upon
a carriage, A, which is supported by two running or ground wheels
and is provided with a tongue to which the horses are hitched.
The parts of the specification which relate particularly to the
subject matter of claims 1 and 2 are as follows:
"The finger beam, G, of the machine, projects at one side of the
rear end of the gearing carriage, A, and is fitted with guard
fingers, H, through the slots of which a scalloped cutter, I, is
arranged to reciprocate endwise. The end of this cutter that is
nearest the gearing carriage is connected with the crank wrist,
g, of the crankshaft, D2, by means of a connecting rod, J.
The finger beam is connected with the rear end of the gearing
carriage in the following manner: the end of the beam nearer the
carriage is provided with a shoe, K, from which lugs,
a a,
project upward. These lugs are perforated to admit a joint bolt,
a1, which connects the shoe with one end of a vibratable
forked link, L, whose other end is connected by a swivel joint, M,
with a bracket, N, secured to the rear of the gearing carriage.
This swivel joint is formed by a cross-head, (
m, Fig. 1a),
the
Page 129 U. S. 5
center of which is bored transversely, to permit a journal
formed on the end of the forked link, L, to turn in it. The ends of
the cross-head,
m, are formed into journals, which turn in
bearings upon the bracket, N. Hence, the finger beam can both rise
and fall freely at either end, and rock forward and backward,
without twisting the link that forms its connection with the
gearing carriage. Moreover, the axis of the cross-head,
m,
of the swivel joint, is arranged in line, or thereabout, with the
axis of the crankshaft, D2, that imparts motion to the cutter, so
that such rising or falling or rocking does not materially change
the distance between the crankshaft and the cutter. The shoe, K, of
the finger beam is connected also with the front end of the gearing
carriage by a draught rod, O, and the connection between the rear
end of this draught rod and the said shoe is a swivel joint, M', of
which the joint-pin,
a1, of the vibratable link, L, is the
longitudinal axis, and its T-head,
m1, the horizontal
axis. This swivel joint therefore, while maintaining a firm
connection with the draught rod, gives free play for both the
longitudinal and rocking movements of the finger beam. Hence, when
the machine is used for cutting grass, the said finger beam may be
left free not only to rise and fall at either end, but also to rock
or to be rocked forward and backward, so that the points of its
guard fingers incline toward or from a horizontal plane. In order
that the finger beam may be rocked by the conductor of the machine,
the vibratable link, L, is fitted with an arm,
l, whose
upper end is connected by a rod with the lower end of a lever, P,
that is pivoted to the gearing carriage near its forward end. The
upper end of this lever, P, extends within the reach of the driver,
who sits upon the driver's seat, Q, so that he may rock the finger
beam by moving the said lever to and fro. This rocking lever, P, is
fitted with a spring bolt whose end can engage in anyone of a
number of notches formed in a segment, R, which is attached to the
gearing carriage concentrically with the pivot of the rocking
lever, so that the finger beam may be fastened in the desired
position by the engagement of the spring bolt in the appropriate
notch. The rocking lever is fitted with a lever handle,
p,
and rod connecting
Page 129 U. S. 6
with the spring bolt, by which the spring bolt may be withdrawn
from the notched segment and held disengaged therefrom during the
movement of the lever. In order that the connection between the
cutter on the finger beam and the crankshaft on the gearing
carriage may not obstruct the free rocking of the finger beam, the
connecting rod, J, is connected with the cutter, I, by means of a
swivel joint, S, consisting (see Fig. 1b) of a head,
s,
that is pivoted to the cutter stock (by a shank that extends
lengthwise therewith, and turns in an ear,
s1, secured to
the end of the cutter stock), and of a cross-pivot,
s2,
that passes through the said head, and through two ears formed upon
the connecting rod, J."
There are ten claims in the patent, claims 1 and 2 being as
follows:
"1. The combination, as set forth, in a harvester, of the finger
beam with the gearing carriage by means of the vibratable link, the
draught rod, and the two swivel joints, M and M', so that the
finger beam may both rise and fall at either end and rock forward
and backward. 3. The combination, as set forth, in a harvester, of
the finger beam, gearing carriage, vibratable link, draught rod,
swivel joints, and arm, by which the rocking of the finger beam is
controlled."
It will conduce to a solution of the questions involved in the
case to give a history of the progress of the application for the
patent through the Patent Office, as gathered from certified copies
of those proceedings found in the record. On the 4th of December,
1865, the patentee. Alvaro B. Graham, as assignor to himself,
William B. Werden, and Cyrus A. Werden, filed in the Patent Office
an application for a patent which was sworn to by him on the 25th
of February, 1864. The specification of this application stated
that one object of the invention was the free passage of the finger
bar over the ground, and the perfect moving of it to adjust itself
to the inequalities of surface over which it might pass, and that
another object of the invention was the cutting in a proper manner
of lodged grass or grain. It also stated that the machine had a
finger bar, I, the inner end of which was attached by a joint,
h, to a bar, J, which was at the rear of the main frame,
A, and was connected thereto at its left-hand side by a swivel or
universal joint,
Page 129 U. S. 7
K, such joint being composed of a rod,
i, which was
allowed to turn in a bearing,
j, attached to the main
frame, the end of the bar, J, being cylindrical, and allowed to
turn in the rod,
i; that the joint, K, admitted of the
bar, J, and finger bar, I, being raised vertically, and also
admitted of those bars being turned in a more or less inclined
position, in their transverse section, to admit of the fingers and
sickle being turned more or less down toward the ground, as might
be required; that this adjustment of the fingers and sickle was
effected through the medium of a lever, M, which was connected by a
rod,
l, with an upright,
m, on the bar, J; that
this lever, M, might be retained in any desired position, within
the scope of its movement, by means of a perforated bar,
n, into the holes of which a pin on the lever caught; that
the finger bar, I, might be raised separately from the joint,
h, as a center, through the medium of a lever, N, which,
like the lever, M, was attached to the main frame, A, and had a
chain or cord attached to its lower end, said chain or cord passing
around a pulley,
q, on the bar, J, and being attached to
the upper end of an upright,
r, attached to the finger bar
at the joint,
h; that both bars, I and J, might be
elevated simultaneously by a lever, O, which was also attached to
the main frame, A, and bore at its lower end on another lever, P,
the outer end of which was connected by a chain, s, with the bar,
J; that the lever, O, might be retained at any desired point,
within the scope of its movement, by means of a rack bar, P'; that,
in case an obstruction presented itself to the inner end of the
finger bar, I, the lever, O, was actuated in order to raise such
end of the finger bar, and, if an obstruction presented itself to
the outer end of the finger bar, the lever, N, was actuated, and
that the applicant did not claim the connecting of the finger bar,
I, to the bar, J, by a joint,
h, for that had been
previously done.
There were five claims in the specification, the first two of
which were as follows:
"1. The attaching of the bar, J, to the main frame, A, by means
of the swivel or universal joint, K, when used in combination with
the finger bar, I, attached to it by a joint,
h, and this
I claim irrespective of any peculiar position of the parts, or
particular application of the same to the
Page 129 U. S. 8
frame of the machine, so long as the desired result is
obtained."
"2. The arrangement of the lever, N, chain or cord,
p,
and upright,
r, substantially as shown, for raising the
outer end of the finger bar, I, as set forth."
On the 30th of December, 1865, the Patent Office rejected claims
1 and 2 on a reference to prior patents. On the 24th of March,
1866, the applicant erased claims 1, 2, and 3, and substituted for
claim 1 the following:
"1. The combination of the finger bar, I, and bar, J, attached
to the frame, A, by means of the universal joint or swivel, K, in
the manner and for the purpose herein specified."
On the 4th of April, 1866, the Patent Office rejected this
substituted claim 1, by a reference to a prior rejected application
and to a prior patent. On the 1st of October, 1866, it allowed the
two remaining claims applied for, which had been numbered 4 and 5
originally. On the 18th of June, 1867, the applicant filed a
withdrawal of the amendments filed March 24, 1866, the effect being
to limit the invention claimed under the patent to the two claims
allowed October 1, 1866, and the patent was granted July 23, 1867,
as No. 67,041, with those two claims, which in no manner relate to
any question involved in the present suit.
Prior to such withdrawal of June 18, 1867, and on the 11th of
February, 1867, Mr. Graham filed an application which resulted in
the patent in suit, No. 74,342, issued February 11, 1868. Claims 1
and 2 of the specification of that application originally read as
follows:
"1. The combination, in a harvester, of the finger beam with the
gearing carriage, by means of a vibratable link, draught rod, and
two swivel joints, so that the finger beam may both rise and fall
at either end, and rock forward and backward, substantially as set
forth."
"2. The combination, in a harvest of the finger beam, gearing
carriage, link, draught rod, swivel joints, and arm, by which the
rocking of the finger beam is controlled, substantially as set
forth."
There were fifteen claims in all made in the specification. On
the 29th of July, 1867, the Patent Office rejected claims 1 and 2
by a reference to prior patents. On the 31st of December, 1867, the
applicant amended claims 1 and 2 so as to read as they are in the
patent as granted. The changes
Page 129 U. S. 9
thus made in those two claims, and which, under the
circumstances, were made to secure the issuing of the patent, the
claims having been rejected in the shape in which they were first
proposed, were these: in claim 1, "the combination, as set forth,"
was substituted for "the combination;" "the vibratable link" for "a
vibratable link;" "the draught rod," for "draught rod;" "the two
swivel joints, M and M'," for "two swivel joints;" and the words
"substantially as set forth" were erased. In claim 2, "the
combination, as set forth," was substituted for "the combination;"
"vibratable link," for "link;" and the words "substantially as set
forth" were erased. In the second claim, the word "the" was always
prefixed to the enumerated elements composing the combination
claimed.
The principal question for determination, in the view we take of
the case, is that of infringement. The circuit court, in its
opinion delivered on the making of the interlocutory decree, 10
Bissell 39 and 11 F. 859, considered especially two prior patents,
one granted to David Zug, October 4, 1859, No. 25,697, and the
other granted to F. Ball, October 18, 1859, No. 25,797. In
considering those patents on the question of infringement as well
as on the question of novelty, the circuit court said:
"The two claims of the Graham patent, which are alone in
controversy here, are the first and second. The first claim is for
a combination of the finger beam with the gearing carriage by means
of the vibratable link, the draught rod, and the two swivel joints,
M and M', so that the finger beam may both rise and fall at either
end and rock backward and forward, and the second claim is the same
as the first, with this only added: that an arm is attached to the
vibratable link by which the rocking of the finger beam is
controlled by the driver. The object of this invention, as set
forth in these two claims, seems to be mainly to produce the
rocking motion of the finger beam as described and by the method
described. In the Ball patent, while there may be said to be
something equivalent to the swivel joint, M, of the plaintiff's
machine, where it is attached to the frame, and also something
similar to the draught rod and the arm, there is nothing
Page 129 U. S. 10
to produce the rocking motion, which is the essential object in
the first two claims of the plaintiff's machine, and consequently
there is no swivel joint, M', as in the plaintiff's machine, so
that there is nothing in the Ball machine to prevent the validity
of the combination of the first two claims of the plaintiff's
patent. The Zug machine has, if not a swivel joint like that of the
plaintiff's at M, where connected with the frame, something which
seems substantially similar. It has a vibratable link, and it has
something which is equivalent to the draught rod, the main
difference being that it is attached beneath the shoe instead of
above, but there is no swivel joint, M'. There is an arm which is
attached to the draught rod and shoe by which it can be raised and
lowered, but Zug claims in his patent that when the machine is in
progress over the field, and when the finger bar strikes any
obstacle, there is a device in a box in which the forward part of
the draught rod is fastened by which the finger bar yields to the
obstacle, and that there is also a mode by which the vibratable rod
is attached to the frame, called 'joint 16,' in his patent, and
what has been termed an 'open clevis,' where the vibratable link is
connected with the draught rod, by which a motion is given to the
finger bar, and thus the finger bar is relieved from the obstacle.
Zug does not claim that the finger bar in his machine has a rocking
motion, but only that the mode by which the draught rod is
fastened, and the motion given to the finger bar, prevents the
obstacle which the machine may meet from doing damage to it. These
seem to be the main differences between the two machines, and the
question is whether there is anything in the Zug machine to prevent
the combination named in the first two claims of the plaintiff's
patent from being valid. The defendants' machine has the swivel
joint attached to the frame, the vibratable link in the same form
as the plaintiff's, and the draught rod attached forward in
substantially the same way as the plaintiff's; but instead of
having a swivel joint at M', as stated in plaintiff's machine,
forward of the shoe, the draught rod has a swivel joint at the rear
end of the shoe, and there is an arm attached to a part of the
vibratable link substantially like that of the plaintiff's,
Page 129 U. S. 11
and the substantial difference, as it seems, between the
plaintiff's device, as described in the first and second claims,
and that of defendants is that the draught rod is attached to the
rear part of the shoe, and not to the forward part, as in the
plaintiff's patent. There are also other devices in the defendants'
machine which may make it different from the plaintiff's. But as to
the swivel joint, the vibratable link, and the mode in which the
motion is produced in the finger bar, there does not seem to be
much difference in substance, and in both machines, and by
substantially the same means, there is produced a rocking motion.
In this connection it is noticeable that the defendants, in the
claim set forth in the specification of their patent, make a
rocking motion of the shoe and cutter a feature of their
combination. In their second claim, they say that they claim the
combination of the"
"shoe, and the drag bar extending over and in rear of the shoe,
and its swiveled pin connecting it with the rear end of the shoe,
whereby the drag bar sustains the thrust of the shoe, while leaving
it free to rock on its hinges."
"Again, in their fifth claim, they say that they claim the
combination"
"of the shoe, the forked coupling arm, the drag bar extending
over and in the rear of the shoe, the swivel pin connecting the
two, the rocking lever and the detent mounted on the drag bar, and
the adjustable link connection between the lever and coupling arm,
whereby the shoe readily may be rocked or adjusted."
"And again, the motion which seems to be produced in the
operation of plaintiff's machine is more distinctly described in
the seventh claim made by the defendants in their patent as
follows: the combination 'of the shoe, the drag bar, the forked
coupling arm,' and the other elements of mechanism before
mentioned, 'whereby the shoe is first rocked, and then lifted by
one continuous movement of the lever.' It must be confessed that
the difference between the Zug machine and the first two claims of
plaintiff's patent is not very marked. But in view of the
description contained in the specifications of Zug's patent, and in
those of the plaintiff's patent, we are inclined to think that the
plaintiff's patent may be sustained on the ground that there is a
difference in the manner in
Page 129 U. S. 12
which the draught rod is attached to the shoe, and the finger
bar to the shoe and to the vibratable link, and that there is also
a difference in the manner in which the combination of the various
parts are adjusted, and that there is an effect produced in the
plaintiff's machine which does not exist in the Zug machine. In the
plaintiff's machine, there is a rocking motion, and not a mere
vibratory motion, such as exists in the Zug machine in consequence
of the open clevis; neither is there in the plaintiff's machine the
yielding of the draught rod, as described in the Zug patent, and it
is obvious, too, from the manner in which the parts are constructed
in the Zug machine that there is only a small vibratory action of
the finger bar, so that on the whole we think that the combination,
as described in plaintiff's patent, may be sustained. Then, from
what we have said, we do not see that there can be any substantial
difference between the combination, as described, in the
plaintiff's machine of the swivel joints, draught rod, and
vibratable link, with the frame and shoe and finger bar, and that
of the defendants' machine. The differences which have been stated
between the two machines in this respect do not constitute any
difference in principle. The one is substantially the same thing as
the other. The additions which have been made to the defendants'
machine, such as the device by which the pressure of the cutting
apparatus upon the ground is regulated, and other devices which
have been made, do not affect the combination as claimed in the
plaintiff's machine. The attachment of the draught rod to the rear
part of the shoe instead of to the front part, which is
substantially the only difference that there seems to be in the
mode of construction, cannot constitute a difference in principle
and cannot prevent the defendants' machine from being an
infringement of the plaintiff's patent. It may be said that there
are differences also between the defendants' machine and that of
the plaintiff in the manner in which the arm is attached to the
vibratable link and also as to the mode in which the force applied
to the arm may operate upon the finger bar; but these are
differences of form, and not of substance."
The specification referred to in that opinion as the
specification
Page 129 U. S. 13
of the defendants, and quotations from claims 2, 5, and 7 in
which are made, is a patent under which the defendants' machines
were constructed, No. 193,770, granted July 31, 1877, to Leander J.
McCormick, William R. Baker, and Lambert Erpelding, assignors to C.
H. and L. J. McCormick. The invention of the patentee is carried
back to November or December, 1863, at which time he made a model
containing his perfected invention, which he shortly afterwards
sent to his patent solicitors, and which was sent to the Patent
Office with the applicable sworn to February 25, 1864, and filed
December 4, 1865. The delay seems not to have been attributable to
the applicant. The patents introduced in this case as affecting the
questions of novelty and infringement, and which were prior to the
invention of Graham and which seem to be relied on by the appellee
were as follows: to George C. Dolph, No. 18,141, issued September
8, 1857; to W. S. Stetson and R. F. Maynard, No. 24,063, issued May
17, 1859; the Zug patent; the Ball patent, and one to Stephen S.
Bartlett, No. 34,545, issued February 25, 1862.
We are of opinion that the circuit court took an erroneous view
of the question of infringement. The capacity of the finger beam to
"rise and fall freely at either end," spoken of in the
specification of the plaintiff's patent, was not a new thing with
him, but had been used for many years in mowing and reaping
machines, the finger beam moving on a pivot at its inner end, and
the plaintiff, in the specification of his patent of July 23, 1867,
stated that he did not claim the connecting of the finger bar, I,
to the bar, J, by the joint,
h, because that had been
previously done. It was also old to have a lever connected by a
loose connection by which the driver could tip up the front edge of
the finger bar arbitrarily and secure it so that it could not fall
below the inclination at which he had set it, although it was left
free to tip up further automatically.
The arrangement spoken of in the plaintiff's specification
whereby the finger beam can "rock forward and backward without
twisting the link that forms its connection with the
Page 129 U. S. 14
gearing carriage" was secured by making the pivot on which the
crosswise tilt takes place at a point in front of the beam, so that
the pivot rises and falls with the guard fingers and an arm is
provided by which the movement of the finger beam in both
directions is controlled by the driver instead of its being
independent of his control in its downward movement, as was the
case in prior machines. It is apparent from the proceedings in the
Patent Office on his application and from the terms of his
specification and of claims 1 and 2 as granted that the intention
was to limit the modification which he made, to the particular
location of the swivel joint, M', on which the crosswise rocking
movement takes place, and to the rigid arm by which the positive
rocking of the finger beam in both directions is effected and
controlled.
In a mowing machine for cutting grass, where it is desirable to
cut near to the ground in order to cut and use as much of the grass
as possible, the front edge of the finger beam must bear closely on
the surface of the ground, with a yielding pressure so that it will
rise freely in order to pass over such irregularities in the
surface of the ground as do not require that the finger beam should
be bodily lifted. This yielding pressure is secured by a capacity
in it to swing upward on its heel as a pivot, because if its front
edge were held rigidly down upon the ground, the guard fingers
would be driven into every obstruction. This necessity does not
exist in machines for harvesting grain, because in them the finger
beam is set several inches above the ground, the grain being the
desirable object, rather than the straw, and the carrying of the
finger beam at an elevation prevents its meeting with obstructions,
and hence there is no such occasion, as in mowing machines, for its
front edge being left free to swing upward.
The capacity, if any, which Graham added to the machines in
general use was one for raising and lowering the pivot of
oscillation, which had before been stationary, and a further
capacity for a positive downward tilt or forward rocking, which
enabled the driver to tip up the heel of the finger beam, and force
the fingers under lodged grain of grass. The rocking forward and
backward, spoken of in the plaintiff's specification,
Page 129 U. S. 15
is applied to a tilting backward which rocks the front of the
finger beam upward and to a tilting forward which rocks the heel of
that beam upward and its front downward. In the defendants'
machine, there is no such rocking backward and forward, but there
is a swinging motion, the same as in the prior Ball patent, the
pivot on which the tilting takes place being in the rear of the
finger beam and there being no means of positively tipping the
front of the beam downward or of raising its heel to force its
front edge and the finger guards downward. In the Ball patent, the
draught rod passes under the finger beam, and in the defendants'
machine, the draught rod passes over the finger beam to reach the
pivotal point, which is in both cases the same. In both of them,
the weight of the finger beam, being in front of the pivot, tends
to hold its front edge down upon the ground, but, when the finger
guards strike any elevation, the front edge of the beam swings up
freely on its rear pivot, the tendency being for its weight to
carry it back to its original position as soon as the elevation is
passed. In the Ball patent, there is a lever connected with a chain
which can raise the finger beam or hold it up, but cannot
affirmatively depress it, its downward movement being dependent
solely upon the fact that its weight is in front of the pivot on
which it turns. In the defendants' machine, there is a substitute
for the Ball chain -- namely a loose sliding link, which permits of
the same upward movement that the chain does and which cannot force
or hold the beam down. In both the Ball machine and the defendants'
machine, the propelling force from the draught rod is exerted from
the pivot in the rear, and in both the front edge of the finger
beam, where the guards are situated, is left free for the swinging
movement above mentioned.
In contradistinction to this, the pivotal connection between the
finger beam and the draught rod in the plaintiff's machine, instead
of being at the heel of the finger beam, is placed in front of it
at the swivel joint, M', and a rigid arm,
l, is mounted on
a vibratable link so that the beam can thereby be rocked backward
and forward by the driver, to tip the heel of the shoe up and the
front down or the front up and
Page 129 U. S. 16
the heel down, the heel of the finger beam being lifted by the
forward rocking of the arm,
l, and its front being lifted
by the backward rocking of such arm. By the locking of the lever
which works the arm, the finger beam can be set at any desired
inclination. The movement of the finger beam in each direction is
positive. In the defendants' machine, it swings on a pivot at its
rear, which is not raised or lowered by the upward or downward tilt
of the guard fingers, while in the plaintiff's machine, as the
finger beam rocks on the swivel joint, M', the heel of the finger
beam is lifted from the ground as the finger guards are turned
downward.
In the Zug patent of October, 1859, there is a finger beam
attached to the rear end of the machine by a vibratable link, which
is itself attached at its rear end loosely to the machine, and is
also fitted loosely within the draught rod, so that there is a
considerable rising and falling motion to the front end of the
shoe, whereby the guard fingers can be elevated and depressed to a
considerable extent, and in substantially the same manner as in the
defendants' machine, the raising and lowering of them being
accomplished at a similar point as in the defendants' machine, the
difference in the rising and falling motion of the finger beam in
the Zug and in the defendants' machine being a difference only in
degree.
In the Ball patent of October, 1859, there is a finger beam
attached by a hinged, vibratable link, and there is a draught rod
which is hinged at its front end. A shoe is attached to the rear
end of the draught rod with a free up and down hinged joint. The
finger beam of the machine is attached in front of this hinge, and
such hinged connection admits of the rising and falling of the
front of the shoe and of the finger beam. This motion is not a
rocking motion, as in the plaintiff's patent, but is substantially
the same rising and falling motion that is found in the defendants'
machine, the only material difference being that in the Ball
patent, the draught rod extends under the shoe and the finger beam
and prevents them from falling down lower than a horizontal
position, whereas in the defendants' machine, the draught rod
extends over the shoe and finger beam to the same point of
attachment as in the Ball patent,
Page 129 U. S. 17
and thus the finger beam can fall lower than in the Ball patent,
and even below a horizontal position; but the finger beam in the
Ball patent can rise and fall as freely at either end as in the
defendants' or the plaintiff's machine, and the cross-wise rising
and falling motion in the Ball patent is of the same character as
in the defendants' machine, but wholly unlike the rocking motion,
or the forward and backward motion of the finger beam in the
plaintiff's patent.
In the Bartlett patent of February, 1862, there is a finger beam
attached at its rear by a vibratable link which has a swivel joint
at its outer end and a free joint at its inner end, in connection
with a shoe and with a draught rod which extends from the front end
of the machine to the rear end of the shoe, and the finger beam is
attached to the shoe in front of the vibratable link. There is also
a lever which rocks forward and backward, and is so arranged that
the finger beam and the draught rod rise and fall, and the finger
beam rocks forward and backward, substantially in the same manner
as in the plaintiff's patent, though with a less perfect motion.
But there is considerable forward and backward rocking motion, and
the rocking takes place with substantially rigid lever devices, and
there is substantially the same rising and falling motion of the
finger beam at either end as in the plaintiff's patent.
In view of this prior state of the art, the question of
infringement stands in this way: in the defendants' machine, there
is, in combination with the gearing frame, a vibratable link
connection with the finger beam, not very materially different from
the vibratable link connection in the plaintiff's patent, but the
draught rod in the defendants' machine is different from that of
the plaintiff's patent in that its forward connection is not
substantially a swivel joint, but is so hinged as to afford no
torsional action, and the draught rod is connected with the shoe at
nearly the extreme rear end of the shoe, while the draught rod in
the plaintiff's patent has swivel joints at both its forward and
rear ends, and such joints have substantially a free torsional
capacity. So too, the draught rod in the plaintiff's patent is
attached to the shoe in front of the finger beam,
Page 129 U. S. 18
instead of at the extreme rear end of the shoe, as in the
defendants' machine. As a consequence of these several
arrangements, the finger beam in the plaintiff's patent rocks
freely both forward and backward in such manner that the rear of
the finger beam may be elevated and the guards be thrown down or
the front of it may be elevated and the guards be thrown up, with
an equal rocking motion in either direction, whereas in the
defendants' machine, when the finger beam is operated upon by the
lever, the front part of it merely rises and falls with a swinging
motion from its pivoted point in the rear. The defendants' machine
differs from the plaintiff's patent in that its finger beam cannot
be raised at all at its rear by the lifting lever, and cannot be
positively moved downward by that lever. Therefore, as the finger
beam in the defendants' machine does not have the motion which
results from the combination of the elements specified in the first
claim of the plaintiff's patent, and does not "rock forward and
backward" in the sense of that claim or in the sense described in
the specification of the plaintiff's patent, it does not infringe
such first claim. Nor does it contain the swivel joint, M',
specified in the first claim, located and operating as in the
plaintiff's patent. The first claim of that patent must, in view of
the state of the art and of the special limitations put upon it on
the requirement of the Patent Office, be limited to the special
construction and arrangement set forth in that claim.
The same views apply to the second claim of the patent, which
contains combined all the elements set forth in the first claim,
with the addition of the rigid arm,
l. That arm, in the
plaintiff's patent, has a rigid connection with the vibratable link
to which it is attached, and through such arm the finger beam is
made to rock backward or forward by positive action in either
direction, while in the defendants' machine, there is no such rigid
arm, but only a connection by which the front of the finger beam
can be lifted, while it falls by its own weight when released,
instead of being positively forced down, as in the plaintiff's
patent. This species of lifting device was old.
In regard to the extracts set forth in the opinion of the
circuit
Page 129 U. S. 19
court from the defendants' patent of July, 1877, we are of
opinion that the second, fifth, and seventh claims of that patent,
in speaking of the shoe as "rocking," can only refer to its
swinging on a hinge at its rear end, and that the term "rocking" is
not used in the sense in which it is used in the plaintiff's
patent, because neither in the defendants' patent nor in their
machine has their shoe or their finger beam any such rocking motion
as is described in the plaintiff's patent. It results from these
views that, on a proper construction of claims 1 and 2 of the
plaintiff's patent, the defendants have not infringed it, and
that
The decree of the circuit court must be reversed and the
cause be remanded with a direction to dismiss the bill of
complaint, with costs.