Where it appears from the face of the patents that extrinsic
evidence is not needed to explain the terms of art therein, or to
apply the descriptions to the subject matter, and the court is able
from mere comparison to comprehend what are the inventions
described in each patent, and from such comparison whether one
device infringes upon the other, the question of infringement or no
infringement is one of law, and susceptible of determination on a
writ of error.
Where the principal elements of a combination are old, and the
devising of means for utilizing them does not involve such an
exercise of inventive faculties as entitles the inventor to claim a
patent broadly for their combination, the patent therefor is not a
primary one, and is not entitled to the broad construction given to
a pioneer patent.
To prevent a broadening of the scope of an invention beyond its
fair import, the words of limitation contained in the claim must be
given due effect, and the statement in the first claim of the
elements entering into the combination must be construed to refer
to elements in combination having substantially the form and
constructed substantially as described in the specifications and
drawings.
Where the patent is not a primary patent and there is no
substantial identity in the character of two devices except as the
combination produces the same effect, and there are substantial,
and not merely colorable, differences between them, there is no
infringement of the earlier patent.
This controversy relates to an alleged infringement by the
petitioner, a New Jersey corporation, of United States letters
patent No. 271,426, issued to the respondent on January 30, 1883,
for "a new and improved sewing machine treadle." For convenience,
the petitioner will be hereafter referred to as the Singer Company,
and the respondent as Cramer.
The treadle device used by the Singer Company on its sewing
machines, which it was charged infringed the Cramer patent, was
covered by letters patent No. 306,469, dated October 14, 1884,
issued to the Singer Company as the assignee of one Diehl.
The file wrapper and contents exhibit the following proceedings
in the Patent Office respecting the Cramer patent: the
Page 192 U. S. 266
original application was filed on May 25, 1882, and was for the
grant of letters patent to Cramer "as the inventor for the
invention set forth in the annexed specification." The
specification and oath thereto read as follows:
"I, Herman Cramer, of the City of Sonora, in Tuolumne County, in
the State of California, have invented certain improvements in a
treadle, to be used in sewing machines, or other machinery where a
noiseless treadle may be required, of which the following is a
specification:"
"My invention consists of the usual platform marked 'A' in Fig.
1 of diagram on treadle bar. The ends of said treadle bar, marked
'B,' are shaped like the letter V, and rest in socket in lower end
of a brace 'C,' the socket being [image of inverted playing card
'spade'] shaped, the brace 'C' cast in one piece, and the treadle
bar and platform on the bar is also cast in one piece."
"The treadle bar rests in socket in brace 'C,' which is
immediately above a cross-brace usually in machines to keep them
from spreading apart, the nut on end of cross-brace is marked 'D.'
Letter 'M' immediately beneath cross-brace and treadle bar is an
oil receiver to retain any drippings of oil from the bearings of
treadle bar."
"My invention consists in having the ends of the treadle bar
V-shaped to fit in hole in brace 'C,' also ['spade' image] shaped
to receive the ends of the treadle bar."
"This V-shaped treadle bar in brace 'C' entirely prevents noise
from the treadle, is self-adjusting, and does away with the
necessity of cones and set screws now in use. This I claim as my
invention. Fig. 1 represents platform 'A' and treadle bar, the ends
of which are V-shaped and marked 'B.'"
"Fig. 2 represents the lower end of brace 'C' with hole ['spade'
image] shaped to receive the ends of treadle bar 'B.' 'D'
represents nut on end of cross-brace immediately below treadle
bar."
"State of California"
"County of Tuolumne"
"Herman Cramer, the above-named petitioner, being duly
Page 192 U. S. 267
sworn, deposes and says that he verily believes himself to be
the original and first inventor of the improvement in a noiseless
self-adjusting treadle described in the foregoing specification,
that he does not know and does not believe that the same was ever
before known or used, and that he is a citizen of the United
States."
The application was referred to the examiner, who, on May 29,
1882, wrote to Cramer, in care of his attorneys, as follows:
"The application is not prepared in conformity with the rules of
the office. The specification is written on both sides of the
pages, while the rules direct that it should be written on one side
of each page only."
"No claim is appended to the specification. The oath is
incomplete, as section 39 of the rules requires applicants to state
under the oath if the invention has been patented to them, or with
their knowledge and consent to others in any foreign country, and,
if so, the number, date, and place of such patent or patents.
Reference is made to the patent to G. W. Gregory, No. 256,563,
April 18, 1882, which exhibits the alleged invention."
On August 3, 1882, the following substitute specification,
concluding with an oath similar to that appended to the prior
specification, was sent to the Patent Office:
"I, Herman Cramer, of the City of Sonora, in Tuolumne County, in
the State of California, have invented certain improvements in a
treadle and brace to be used in sewing machines or other machinery
where a noiseless treadle may be required, of which the following
is a specification:"
"My invention consists in a combination of the usual platform
marked 'A,' in Fig. 1 of diagram on treadle bar. The ends of said
treadle bar marked 'B' are to bear against mufflers."
"The treadle bar bearings are in and on brace 'C.' The treadle
bar rests in socket in brace 'C,' which is immediately above a
cross bar usually in machines to keep them from spreading apart.
"
Page 192 U. S. 268
"The nut on end of cross-bar is marked 'D.' Letter 'M,'
immediately beneath cross-bar, and treadle bar, is an oil receiver
to retain any drippings of oil from the bearings of treadle
bar."
"The treadle bar, mufflers, and brace 'C' are held between the
right and left legs of the machine by means of a brace bar
underneath the treadle bar."
"This brace and socket or bearing in or on brace is in one
piece."
"The treadle bar with mufflers on the ends, working or bearing
in or on brace, entirely prevents noise from the treadle, is
self-adjusting, and does away with the necessity for cones and set
screws now in use."
"Fig. 1 represents platform 'A' and treadle bar, the ends of
which may be V-shaped, or any shape to suit, marked 'B.'"
"Fig. 2 represents the lower end of brace 'C.'"
"D' represents nut on end of cross-bar immediately below the
treadle bar."
"What I claim is a combination of brace 'C' with socket or
bearing in it or on it, to receive the treadle bar with the
mufflers at the ends of treadle bar or in or on brace 'C' in
connection with said brace 'C,' and the treadle bar in connection
with brace 'C,' and mufflers to work in or on brace 'C,'
substantially as set forth."
On August 14, 1882, the examiner wrote Cramer, in care of his
attorneys, as follows:
"Applicant's amended claims are met by the patent to J. E.
Donovan, June 28, 1881, No. 243,529, in view of which a patent is
again refused."
Following this rejection, there was filed a revocation of the
power of attorney which had been executed by Cramer in favor of the
attorneys who had theretofore conducted the proceedings, and an
appointment of other attorneys for the further prosecution of the
application. On October 17, 1882, the substituted attorneys sent to
the Patent Office a new drawing and an amendment of the
specification on file, which amendment consisted in cancelling all
the specification except the
Page 192 U. S. 269
signature and substituting for the matter so stricken out the
following:
"Be it known that I, Herman Cramer, of Sonora, in the County of
Tuolumne and State of California, have invented a new and improved
sewing machine treadle, and I do hereby declare that the following
is a full, clear, and exact description of the same, reference
being had to the accompanying drawing, forming part of this
specification."
"My invention relates to improvements in the bearings of sewing
machine treadles, and it has for its object to provide means,
first, to keep the treadle bearings rigidly in line and at a fixed
distance apart to avoid friction, and second, to make its movement
in use noiseless. To this end, my invention consists in the
construction and combination of parts hereinafter fully described
and claimed, reference being had to the accompanying drawings in
which --"
"Fig. 1 is a perspective view of a portion of a sewing machine
showing my invention."
"Fig. 2 is a transverse vertical section through one bearing of
the treadle."
"A represents the treadle provided with the usual pitman
connection by which to run the sewing machine wheel. B represents
the two trunnions cast as a portion of the treadle and extending
from its sides into loopholes in the common cast-iron cross-brace
C. These trunnions are sharpened to an edge or corner along their
lower sides, and the lower end of the loophole is hollowed to an
angle more obtuse than the edge of the trunnion, to serve as a
bearing for the same and permit the rocking motion common to
treadles."
"C represents the usual cast-iron double brace connecting the
two end legs diagonally in a plane generally vertical. The lower
ends of this brace are secured directly to the web of the legs by
bolts
d, and for convenience and strength I make the two
ends of the common cross-bar D serve as these bolts. The upper ends
of the brace are secured as usual, either to the web of the legs or
to the table of the machine near the legs. "
Page 192 U. S. 270
"The treadle and its trunnion bearings are wholly independent of
the cross-bar D, except its service as stated, to hold the brace to
the legs. The bearing holes in the brace are formed into long
vertical loops to permit the entrance of the treadle."
"Pieces of leather F, or other soft material, cover the top and
end of each trunnion to serve as cushions to keep the same close in
its bearing, to prevent the noise which would result were the
trunnions permitted to bounce and thump end-ways when the treadle
is in motion. The leather F is fitted to the curve of the upper
side of the trunnion, which is an arc of a cylinder whose center of
oscillation is the lower edge of the trunnion; the same leather
also interposes between the end of the trunnion and the adjacent
iron.
f is a block serving as a mere backer to which the
cushion F is attached. This block conforms to the back and top side
of the cushion, and fills the loophole in the brace above the
trunnion. It also has tangs or projections
e, resting in
suitable recesses in the brace C, which are held between the brace
and the web of the leg E, by which means the block and cushion are
held in place. Below the bearings of the trunnions B, I provide
cups, M, attached to the ends of brace C, to catch the oil that
usually drips from such bearings."
"By this construction, my treadle bearings are rigidly fixed and
in no way liable to get out of line or to require adjustment; the
usual noise is prevented, and overflowing of oil is caught before
it can do damage."
"I am aware that sewing machine treadles have before been
provided with V-shaped bearings, and I do not claim the same as my
invention, but --"
"What I claim and wish to secure by letters patent is --"
"1. The vertical double brace joining the legs of the two ends
of a sewing machine, provided with holes through its lower
extremities to serve as bearings, in combination with a treadle
provided with trunnions fitted to oscillate in said bearings
substantially as specified. "
Page 192 U. S. 271
"2. The sewing machine legs E, the vertical double brace C
secured thereto and provided with holes to serve as bearings for
the treadle A, and the treadle provided with trunnions B to
oscillate in said bearings, in combination with the cushion F and
the block
f, as and for the purpose specified."
Accompanying the new specification was the following
communication, signed by the attorney:
"A new oath is herewith filed. Gregory, referred to, pivots the
grooved trunnions of his treadle upon knife edges secured within
the upper loops of two collars, which are secured to the cross-bar
by means of set screws to keep them from turning. Donovan pivots
his treadle upon its trunnions having sharpened edges, in grooves
in the cross-bar, where it is held by collars provided with flanges
projecting over the trunnions. Applicant pivots his treadle upon
the sharpened edges of its trunnions in loop holes in the two ends
of the brace which is bolted to the legs of the machine by the two
ends of the cross-bar. This service of the cross-bar might be as
well performed by two short bolts, but, the bar being a usual
cross-tie to stiffen the legs, applicant uses its ends as bolts to
hold his brace ends to the legs. We have rewritten the
specification to elucidate the inventor's claim. Should the case
meet with favorable consideration, a new drawing will be furnished.
For the purpose of examination, see pencil sketch on sheet of
drawing filed."
On October 19, 1882, the examiner wrote Cramer, in care of his
attorney, as follows:
"The case has been reconsidered in connection with the
substituted specification filed the 17th inst., and the examiner
holds that the references previously cited -- that of Gregory in
particular -- meets the alleged invention. The case is accordingly
rejected."
To this letter the following reply was made by the attorneys for
Cramer:
"The examiner will please notice that applicant's invention
places both bearings of the treadle in the cross-brace."
"By this means, they may be made perfectly true in line,
Page 192 U. S. 272
either by casting or drilling, and they cannot be thrown out of
line, either by use, or by the most awkward setting up."
"Therefore, one source of friction is avoided. All the
references have shown bearings made of two separate pieces which
could readily be set up out of line, or even be worked loose. The
advantage is obvious."
"A reconsideration is respectfully asked."
This closed the correspondence. Soon afterwards, notification
was given that the patent had been allowed, and letters patent
embodying the specification last above set forth, headed "Treadle
for sewing machines," etc., were issued, bearing date January 30,
1883. The following is a facsimile of the drawing referred to in
the specification:
image:a
The alleged infringing device is delineated on the following fac
simile of the first sheet of the drawing attached to the Diehl
patent:
Page 192 U. S. 273
image:b
In this specification, Diehl declared his invention to consist
in "certain new and useful improvements in sewing machine stands
and treadles," and the object to be
"to secure a permanent and reliable support and adjustment for
both the band wheel and treadle, and to preserve their respective
relative positions, so that they will always cooperate to produce
the best results with the least danger of friction or binding."
The claims were five in number, as follows:
"1. In a sewing machine stand, a cross-brace having supports for
both the band wheel and the treadle integral with said brace."
"2. In a sewing machine stand, a cross-brace having supports for
both the band wheel and the treadle integral with
Page 192 U. S. 274
said brace, and provided also with means for adjusting and
taking up the wear of such band wheel and treadle."
"3. In a sewing machine stand, a cross-brace adapted to connect
the legs or side pieces thereof, provided at one side with bearings
for the flywheel crankshaft, and having a support at its base for
the treadle, substantially as set forth."
"4. The combination, with the cross-brace of a sewing machine
stand, of a crankshaft and a treadle, both mounted in the said
brace, substantially as set forth."
"5. A cross-brace for sewing machine stands, having at its base
a cross-bar, combined with a treadle mounted in said cross-bar,
substantially as set forth."
To recover damages for alleged infringement of the first claim
of the Cramer patent in the use by the Singer Company of the Diehl
device just referred to, Cramer brought this action at law against
the Singer Company on October 8, 1896, in the Circuit Court of the
United States for the Northern District of California. By amendment
of the declaration, the recovery was limited to damages sustained
by infringements committed within the Northern District of
California. In the answer filed on behalf of the Singer Company --
in addition to excepting to the jurisdiction of the court and
pleading as
res judicata a former judgment rendered in
favor of the defendant in an action brought by Cramer against one
Fry, an employee of the Singer Company, 68 F. 201 -- defenses were
interposed of want of novelty and utility and lack of invention,
and infringement was denied.
A trial was had which resulted (by direction of the court,
sustaining the plea of
res judicata) in a verdict and
judgment for the defendant. This judgment was reversed by the
Circuit Court of Appeals for the Ninth Circuit. 93 F. 636. On a
second trial, a verdict was rendered for Cramer and judgment was
entered thereon for the sum of $12,456. On appeal, this judgment
was affirmed by the Circuit Court of Appeals for the Ninth Circuit.
109 F. 652. A writ of certiorari was thereafter allowed by this
Court.
Page 192 U. S. 275
MR. JUSTICE WHITE, after making the foregoing statement,
delivered the opinion of the Court.
Sixty-eight exceptions were taken by the Singer Company during
the trial of the action in the circuit court, and were pressed upon
the attention of the circuit court of appeals in sixty-nine
assignments of error. These exceptions were all in effect relied
upon in the argument at bar, but, from the view we take of the
case, it is unnecessary to consider and decide any other assignment
than that based upon the exception to the refusal of the court at
the close of all the evidence, to instruct a verdict for the
defendant on the ground that "no infringement whatever had been
shown." As in each of the patents in question it is apparent from
the face of the instrument that extrinsic evidence is not needed to
explain terms of art therein, or to apply the descriptions to the
subject matter, and as we are able, from mere comparison, to
comprehend what are the inventions described in each patent, and,
from such comparison to determine whether or not the Diehl device
is an infringement upon that of Cramer, the question of
infringement or no infringement is one of law, and susceptible cf
determination on this writ of error.
Heald v. Rice,
104 U. S. 737;
Market Street Cable Ry. Co. v. Rowley, 155 U.
S. 621,
155 U. S.
625.
Whether error was committed in refusing to direct a verdict is,
then, the question to be decided. The claims of the Cramer patent
are two in number, and read as follows:
"1. The vertical double brace joining the legs of the two ends
of a sewing machine, provided with holes through its lower
extremities to serve as bearings, in combination with a treadle
provided with trunnions fitted to oscillate in said bearings,
substantially as specified. "
Page 192 U. S. 276
"2. The sewing machine legs E, the vertical double brace C
secured thereto and provided with holes to serve as bearings for
the treadle A, and the treadle provided with trunnions B to
oscillate in said bearings, in combination with the cushion F and
the block
f, as and for the purpose specified."
Infringement is charged only in respect to the first claim. In
substance, the contention for Cramer is that the conception or idea
of the practicability and desirability of utilizing a vertical
double brace as a support for a sewing machine treadle was new with
Cramer, and the combination devised by him produced such new and
useful results, and exhibited such an exercise of the inventive
faculty, as to cause the patent to be a pioneer, and therefore
entitle the patentee to demand that the claim of the patent should
be broadly and liberally construed. For the Singer Company, it is
contended that the availability of use of a vertical cross-brace as
a support for a sewing machine treadle was apparent to any person
possessing ordinary mechanical skill, that the invention in
question if patentable was in no just sense one of a primary
nature, and that the combination described by Cramer is to be
restricted narrowly to the mere details of the mechanism described
as constituting the combination. We must first determine which of
these contentions is correct.
Discussing the significance of the term "pioneer" as applied to
a patented invention, this Court, in
Westinghouse v. Boyden
Power Brake Co., 170 U. S. 537,
said (p.
170 U. S.
561):
"To what liberality of construction these claims are entitled
depends to a certain extent upon the character of the invention,
and whether it is what is termed in ordinary parlance a 'pioneer.'
This word, although used somewhat loosely, is commonly understood
to denote a patent covering a function never before performed, a
wholly novel device, or one of such novelty and importance as to
mark a distinct step in the progress of the art, as distinguished
from a mere improvement or perfection of what had gone before. Most
conspicuous examples of such patents are the one to Howe of the
sewing
Page 192 U. S. 277
machine, to Morse of the electrical telegraph, and to Bell of
the telephone. The record in this case would indicate that the same
honorable appellation might be safely bestowed upon the original
air brake of Westinghouse, and perhaps also upon his automatic
brake. In view of the fact that the invention in this case was
never put into successful operation, and was to a limited extent
anticipated by the Boyden patent of 1883, it is perhaps an
unwarrantable extension of the term to speak of it as a 'pioneer,'
although the principle involved subsequently and through
improvements upon this invention became one of great value to the
public."
To ascertain whether the patented invention of Cramer is
entitled to be embraced within the term "pioneer" as just defined,
we will consider it in connection with the state of the art.
In the history of the art, it is unquestioned that, long prior
to the application by Cramer for the grant of the patent in
question, devices similar to the vertical cross-brace C and the
lower cross-bar or tie rod D, shown in the drawing of the Cramer
patent, were commonly employed in sewing machines. This is conceded
by Cramer in statements made in the progress of his application
through the Patent Office. Thus, in the specification which forms a
part of the patent, the vertical brace C is referred to (italics
not in original) as "the
common cast-iron brace C," and
"the
usual cast-iron double brace;" while in the first of
the proposed specifications, as well as in that which was finally
adopted, the lower bar or tie rod D is referred to (italics not in
original) as "the
common cross-brace or cross-bar." And in
both the first and second specifications, the usual purpose
subserved in sewing machines by this cross-bar was "to keep them
(the machines) from spreading apart." It is, of course, obvious
that such was also the purpose of the employment of the vertical
double or cross-brace.
The vertical double cross-brace C, as shown in the Cramer
drawing, is a solid piece of casting. But it is also an undisputed
fact that, long prior to the alleged invention of Cramer, it was a
well known method of construction when revolving
Page 192 U. S. 278
or oscillating shafts were to be placed in bearings or supports,
to have both bearings or supports of such shafts attached to a
solid metal casting. Instances of such practices, testified to by
witnesses, may be referred to. One was a device to hold a saw
mandrel or saw arbor, the former being cast in one piece for the
purpose of connecting both journals of the arbor to keep it in
absolute line. Another device is the head stock of an ordinary
engine lathe or machine lathe, where, in order to have a proper
working machine, it is absolutely necessary that the shaft bearings
shall be in exact alignment with each other, and firmly in one
place. Still another illustrative device employed for a great many
years is embodied in a high speed engine. So also in the sewing
machine art, as evidenced by the Willcox patent No. 106,242 of date
August 9, 1870, to be hereafter noticed, the legs of sewing
machines had long before Cramer's application been used as bearings
for treadle bars, the bearings being cored out of the leg
castings.
A vertical cross-brace and a lower cross-brace or tie rod being
common adjuncts of sewing machines at the time of Cramer's alleged
invention, and it being also customary to support the lower cross
rod or brace in the web of the legs of sewing machines and to
utilize the legs as bearings, and it being old in machinery to
employ solid castings as bearings or supports for oscillating
shafts to support the lower cross-rod or brace in where a fixed
alignment was essential, we readily conclude that there was no
merit in the mere conception or idea that a vertical double brace
was capable of being advantageously utilized as bearings for sewing
machine treadles, and that the devising of means for so utilizing
such a brace did not involve such an exercise of the inventive
faculty as entitled Cramer to assert in himself a right to claim a
patent broadly for the use in combination of a vertical double
brace and a sewing machine treadle. In view of this, and of the
fact that the principal elements of the Cramer combination were
old, we hold that the Cramer patent was not a primary one, and that
it is not therefore entitled to receive the broad construction
which has been claimed for it. Let us therefore
Page 192 U. S. 279
examine the first claim of the patent in connection with the
proceedings in the Patent Office anterior to the allowance of the
patent in order to fix its precise import, as a preliminary to
considering whether, as correctly construed, it is infringed by the
Singer appliance. The claim reads as follows:
"The vertical double brace joining the legs of the two ends of a
sewing machine, provided with holes through its lower extremities
to serve as bearings, in combination with a treadle provided with
trunnions fitted to oscillate in said bearings, substantially as
specified."
In the first specification sent to the Patent Office, the object
sought to be attained is declared to be the elimination of the
noise caused by the operation of a loose treadle, whether used in
sewing machines or other machinery. The applicant evidently had in
mind treadles which oscillated upon rigid bars and rested on cone
bearings or analogous supports, attached to the rigid bars by set
screws -- such bearings needing adjustment from time to time as the
friction of the parts from the operation of the treadle caused wear
and looseness of the parts. It was recited that the treadle bar and
the platform on such bar (
i.e., the footrest) was to be
cast as one piece. The invention was declared to consist "in having
the ends of the treadle bar V-shaped to fit in hole in brace C,
also heart shaped to receive the ends of the treadle bar."
The application based upon this first specification was
rejected, as mentioned in the statement of facts, upon a reference
to the patent to G. W. Gregory, No. 256,563, April 18, 1882, which
the examiner stated exhibited "the alleged invention." Gregory
termed his invention "an improvement in treadle supports for sewing
machines." It is illustrated in the following facsimile of one of
the figures of the drawing of the patent:
Page 192 U. S. 280
image:c
The invention consisted in attaching to the lower cross-bar or
rod of a sewing machine two devices styled collars, each collar
having two circular openings, one above the other. The upper
opening contained a V-shaped bearing. The cross-bar was fitted into
the lower opening. The treadle or footrest was provided on each
side with short projections termed ears, which fitted on the
V-shaped bearings in the upper portion of each collar. The
specification contained the following statement:
"I am aware that V-shaped or scale bearings are old in
connection with the sewing machine treadles -- as, for instance, a
long rod to which the treadle is secured has been provided at its
ends in the set frames of the machine stand with V-shaped
bearings."
At the close of the descriptive portion of the specification, it
was further stated:
"I am aware that sewing machine treadles have had V-shaped
bearings, as in United States patent Nos. 148,759 and 106,242; but
neither of said patents shows a bearing constructed in accordance
with my invention."
No. 106,242 was a patent granted to C. H. Willcox on August 9,
1870. It covers the following device:
Page 192 U. S. 281
image:d
The device shows the character of treadle support now employed
in the Willcox & Gibbs sewing machine. The stand is devoid of a
vertical cross-brace, the legs of the machine being braced near the
bottom by the ordinary cross-bar or tie rod. Just above this rod is
exhibited the invention, being a
"rockshaft B, beveled at the ends, and provided with V-shaped
bearings
b, extending to the center of motion of the
rockshaft B, and supported in a V-shaped bearing seat
a,
in combination with a treadle movement."
Elsewhere in the specification the bearings or supports in legs
of the machine to receive the ends of the rockshaft B are referred
to as "V-shaped bearings." The statement is also made that
"The bar is prevented from having any undue lateral movement by
the washers upon the ends of the tie rod
c, which holds
the lower part of the frame together."
An alternate mode of construction of the bearings to support the
rockshaft was thus described (italics not in original):
"The V-shaped seat of the bearings a may be formed of a separate
piece of hard metal let into a groove in the frame, or otherwise
applied to it, and the ends b may be formed also of
Page 192 U. S. 282
a piece of hard metal, so that the wear of the parts in contact
will be very slight,
and all rattling or loose jarring motions
entirely prevented."
Although the first refusal to allow a patent was made on May 29,
1882, it was not until August 3 following that the attorneys for
Cramer transmitted an amended application to the Patent Office. In
the substituted specification, the object to be attained is stated
as in the previous specification. An addition to the combination
was made, however, in the use of what were styled "mufflers,"
against which it was said the ends of the treadle bars were to
bear. A patent was again refused, however, the examiner noting that
"applicant's amended claims are met by the patent to J. E. Donovan,
June 28, 1881, No. 243,529."
The drawing of the Donovan patent exhibits a sewing machine
stand containing a vertical double brace. One form of treadle bar
constituting a part of the invention was represented as situated
just below the vertical cross-brace, and as having a rounded edge,
supported in V-shaped bearings, in the legs or sides of the frame.
A shoulder was indicated on each end of the bar, and a substitute
device was also shown called a button fastener, which was to be
attached from the outside of the frame to meet the end of the bar.
It was said in the specification that the treadle bar might be made
of cast iron and cast on and with the treadle. It was further
stated (italics not in original):
"The bearing supports are preferably made by
coring out the
frame in the manner shown in the drawings. It is obvious that
other forms of supporting these bearings may be provided."
Several modified forms of ordinary knife-edge bearings and
inclined fastening and adjusted devices were also shown. In such
modified forms, the treadle was represented as designed to
oscillate on a rigid bar, in oblong grooves therein; lugs, having
knife-edge bearings underneath, being cast on each side of the
treadle. Adjustable collars were shown, fastened to the shaft or
bar, with inclined lugs on the side of the collars,
Page 192 U. S. 283
projecting laterally over and resting against shoulders on the
lugs upon each side of the treadle. The object of the invention was
declared to be (italics not in original):
"to secure a more substantial table frame to the driving
mechanism, and to provide adequate means for the employment of
V-shaped treadle bearings,
so as to obviate the difficulty
heretofore occasioned by lost motion, consisting in vertical and
endwise play of the treadle bar or shaft."
It was further observed by the applicant just preceding his
statement of claims as follows (italics not in original):
"Frequent attempts have been made to use knife-edge bearings for
the treadle in sewing machines, but
it has been found to be
difficult to prevent lateral lost motion and to adjust the parts so
as to compensate for their wear and to prevent rattling of the
treadle, which has been a serious objection in their
employment. My herein-described improvements have overcome all
the serious objections hitherto attending their use."
Following the second rejection of his application, Cramer
changed his attorneys as mentioned in the statement of facts. In
the specification drafted by the new attorneys, and which became
the basis of the allowed patent, the asserted invention was limited
to its use in sewing machines, eliminating the statement of its
adaptability "in other machinery." Concerning the "mufflers," which
in the previous specifications were simply referred to as bearing
against the end of the treadle bars or as being on the ends of such
bars, the following statement was made (italics not in
original):
"Pieces of leather F, or other soft material, cover the top and
end of each trunnion to serve as cushions
to keep the same
close in its bearing, to prevent the noise which would result were
the trunnions permitted to bounce and thump endways when the
treadle is in motion. The leather F is fitted to the curve of
the upper side of the trunnion, which is an arc of a cylinder whose
center of oscillation is the lower edge of the trunnion; the same
leather also interposes between the end of the trunnion and the
adjacent iron.
f is a block serving as a mere backer to
which
Page 192 U. S. 284
the cushion F is attached. This block conforms to the back and
top side of the cushion and fills the loophole in the brace above
the trunnion. It also has tangs or projections
e, resting
in suitable recesses in the brace C, which are held between the
brace and the web of the leg E, by which means the block and
cushion are held in place. Below the bearings of the trunnions B, I
provide cups, M, attached to the ends of brace C, to catch the oil
that usually drips from such bearings."
It is not a strained deduction that the elaborate provision just
referred to respecting the mode of use of and the purpose to be
subserved by the mufflers was, in part at least, induced by the
statement in the Willcox and Donovan patents above quoted
concerning the difficulties which existed in connection with the
use of knife-edge or V-shaped bearings. Be this as it may, however,
we are of opinion that the Patent Office, after twice refusing to
allow the patent because of the prior patents referred to, was led
to take favorable action, owing to the peculiar form of the
described bearing, when situated in a vertical cross-brace such as
was shown in the drawing, with the described accessories, and that
it was the purpose of the Patent Office to limit the patent to the
particular device of treadle bar and bearing described and shown
when employed in combination with a particular form of vertical
cross-brace. And this view is supported by the claim in question.
It contains words of limitation. It is recited therein that the
combination is to be "substantially as specified" -- that is, as
described in the specifications and shown in the drawings.
Westinghouse v. Boyden Power Brake Co., 170 U.
S. 537,
170 U. S. 558.
On referring to the specification, we find it there expressly
declared that the invention consisted "in the construction and
combination of parts hereinafter fully described and claimed,
reference being had to the accompanying drawing." Nowhere, either
expressly or by reasonable inference, is it asserted that simply
the best or a preferable construction of the whole or any part of
the combination is what is described. On the contrary, starting
with the well known vertical cross-brace, a
Page 192 U. S. 285
usual accessory to sewing machines, a specific mode of
construction of the treadle bar and of the bearings or supports in
the vertical cross-brace is set forth, and the specification is
concluded with the following declaration (italics mine):
"
By this construction, my treadle bearings are rigidly
fixed and in no way liable to get out of line or to require
adjustment; the usual noise is prevented, and overflowing of oil is
caught before it can do damage."
To prevent a broadening of the scope of the invention beyond its
fair import, in the light of the circumstances surrounding the
issuance of the patent, the words of limitation contained in the
claim must be given due effect, and, giving them such effect, the
statement in the first claim of the elements entering into the
combination must be construed to refer to elements in combination
having substantially the form and constructed substantially as
described in the specification and shown in the drawing.
Having determined the proper construction of the claim of the
Cramer patent, which is relied upon, it remains only to consider
whether, as correctly construed, infringement resulted from the
employment by the Singer Company of the device covered by the Diehl
patent. We find no difficulty in reaching a conclusion on this
branch of the case. The treadle supports devised by Diehl, though
they serve the same purpose as the device described and shown in
the Cramer patent, are substantially different in construction.
Irrespective of the question whether the treadle in the Diehl
device is hung in the vertical cross-brace proper or in an addition
thereto properly to be regarded as the lower cross-rod or cross-tie
of the machine, it is manifest that the bearing is essentially
different in construction from that of Cramer, and is not adapted
to receive an oscillating bar, while the treadle is not supplied
with long projections fitted to oscillate in the vertical cross-bar
on bearings therein, but is constructed to turn on point center
screws which fit tightly in circular openings in projections from
the vertical cross-bar. There is
Page 192 U. S. 286
no substantial identity in the character of the two devices
unless by substantial identity is meant every combination which
produces the same effect. The differences between the Diehl device
and the Cramer construction are substantial, and not merely
colorable.
The trial court should have granted the motion to direct a
verdict for the defendant. In affirming the action of the trial
court in overruling the motion, the circuit court of appeals erred,
and its judgment must therefore be reversed. The judgment of the
circuit court is also reversed, and the cause is remanded to that
court with directions to grant a new trial, and for further
proceedings not inconsistent with this opinion.
Reversed and remanded.
MR. JUSTICE McKENNA took no part in the decision of this
cause.
