Sanders v. Hancock

SEVERENS, Circuit Judge, delivered the opinion of the court. The principal controversy between the parties in th^s case relates to the validity of the two- patents which were sustained by the Circuit Court. The defendant in that court contended there, as he does here, in respect to these patents, that at the time of the alleged inventions the progress of the art of manufacturing rotary disc plows had advanced so far in the direction of said inventions that no more than the skill of those conversant with the business was required to devise the alleged improvements. Rotary disc plows, although they have been the subject of invention for 25 years or longer, have only quite recently come into extensive use. They have come in the wake of disc harrows as cultivators of the soil. A number of patents showing different forms of construction had been taken out prior to the date of the inventions of complainant’s patents, and it will be convenient to state in a comprehensive way the condition of the art at that time. These plows, as they had been usually constructed, consisted of a frame, generally carried on wheels, in which was located a large concave disc, one or more, of iron or steel, having an edge on its periphery, and revolving on an axle at its center. The vertical plane of the edge of the disc was, in the usual form, perpendicular to the frame and to- the soil, but the horizontal plane was turned at an angle to the line of draft, so that when the disc was let down and the machine was moved forward the disc would — 430 — enter the soil at the same angle to the line of movement, and, revolving, would turn out on its concave side a furrow of the earth scraped out by the edge of the disc, the area of earth-moved corresponding with the angle at which the disc was set and the depth to which it entered the soil. Provision was made for' raising and lowering the disc in the frame or with the frame, arid for counteracting the sidewise pressure produced by the movement of the earth on the concave side of the disc, as by the use of sharp-edged wheels entering the soil and running parallel to the line of draft, or by staggered wheels inclining inwardly at the bottom. When more than one of such discs were used they were sometimes set one a little forward of another, and on parallel' lines, so as to operate on strips,of the soil after the fashion of what are known as gang plows. It is contended for the complainant, and we think it is a just conclusion from the evidence, that certain objections had been found in such former constructions of these plows which tended to1 defeat their usefulness and prevented their coming into general use, notably these two: The disc, running in the ground with a perpendicular plane, simply scraped out the soil instead of plowing it, and left the soil in the bottom of the furrow compacted by the scraping; and, secondly, that in order to compel the disc to properly enter the soil it was necessary to carry a .considerable weight upon it, which was dead weight, and much increased the motive power required to operate the machine. Some of the most recent patents showed columns of extra weights located above the discs to effect the purpose. The principal object of Hardy’s invention, which is the subject of patent No. 556,972, is found in his conception of means for "overcoming the defects above stated, though he also stated a purpose “to1 so arrange the landside wheel relatively to the plowing disc that it shall form a pivoted support by which the plow may be turned easily at the corner or end of the furrow.” Hi's main purpose he accomplished by removing the dead weight hitherto found necessary to drive the disc into- the ground, and turning the upper edge of the disc to a backward inclination, so that in operation it would stand not only at a horizontal angle to the line of draft, but also at an angle to the perpendicular plane of its former position. The results of this change were important. The cutting-edge of the disc in its lower forward section would enter the ground at an angle more acute, the tendency of which would be to give the disc a dip or “lead” under the soil instead of rolling over it. This dispensed with the weight theretofore put into or upon the machine to impel the disc into the soil. The soil when cut up from below would slide upward and off the concave of the disc in much the same manner as it slides on the moldboard of the common plow, instead of being scraped and crowded off. Both of these features — the lightening of the load and .the relief of the obstruction to the movement of the earth in front of the disc — -would, of course, diminish the motive power required for the operation. Moreover, the compaction of the bottom of the furrow would be avoided, for the new angle of inclination which Hardy’s invention contemplates could be so adjusted that the disc would not be riding upon the bottom of the furrow and dragging over it, but would be lifting off its furrow from the moment it is severed — 431 — by its cutting edge. It appears from the record that after the introduction of this improvement the use of these plows rapidly increased, and they were accorded public, favor. This may to some extent have been due to other causes than the merit of the plows. Nevertheless we cannot but believe that the improvement we have mentioned was the principal reason, for it seems to us a probable result. Fig. i of the drawings of the 1 Tardy patent shows the construction he describes, and with the description we have given of his invention, and the statement of claim 2, next following, sufficiently illustrates his improvement. It consists essentially in the location, or more particularly the position, of the disc which is turned to the left of the line of draft and backward at the top. The landside wheel is shown at 19. The caster-wheel, 8, the arm, 6, turning on the pivot, 4, and the stop, 5, about which more will be said hereafter, are also shown. The second claim of the patent, which is tlu only one here involved, reads as follows: “(2) [n a roí ary plow, the combination with a plow-beam, of a box-bearing arranged on ¡be ¡now-beam, an axle rot able in the box-boa ring. a plowing-dise secured io iho said axle, rotated solely by the natural draft thereof ana the friction of the soil, set diagonally to the line of draft and inclined out — 432 — of a vertical plane for cutting the furrow, and turning the soil therefrom, a furrow-wheel mounted on an axle at the same side of the plow-beam as the plowing-dise and arranged in advance thereof, an arm pivoted to the rear portion of the plow-beam and provided with a caster-wheel arranged in rear of the plowing-dise, and a stop device for limiting the swinging motion in one direction of the arm carrying the caster-wheel," said furrow-wheel and caster-wheel being inclined for resisting the side pressure of the plowing-dise, substantially as described.” In its physical aspects the change made in the position of the disc by Hardy does not seem large, but we are satisfied that it was an important one, and'contributed much to the final success of these plows. It is contended, however, that, considered in the light of previous inventions, it is not so new or recondite but that the insight of workmen skilled in this art should have perceived the advantages which would ensue from the change of construction, and would have made it. It is shown, however, that not only the skilled workmen, but those who were giving this art special study and exploring for improvements in rotary disc plows for several years, had not perceived this one, although the need of it was always pressing. This is no new suggestion, but it seems to have special relevancy when a series of improvements has culminated in one which contributes so decisively to the utility of a machine which others have been long trying to make operative. We have said that these advantages of this improvement in plows had not been perceived. Certain references are made by appellant which are supposed to show the contrary, to the most pertinent of which we shall next give attention. A patent to Gardiner, issued in 1883, shows a rotary plow having these discs arranged in a gang suspended on arms secured to the frame. The discs were attached to the arms by rigid axles extending from the disc into a box or bearing upon a plate which w.as pivoted at the bottom to the arm, and had a slot at the upper end through which ran a bolt extending into the arm. By turning the plate on the pivot the upper bolt moved through the slot, and this gave a slight inclination to the disc out of its vertical position. But the drawings of the plate and of the slot seem to show that this inclination was from the top forward only, and, if so, it would not embody Hardy’s idea. Another patent referred to is one to Cleveland, issued in 1891, which was for a rotary gang plow in which the "discs were not entire, but were dish-shaped rings, with cutting edges; but they do not seem to have had a vertical inclination. At least there is nothing which more certainly indicates it than the quotation from the specification which counsel makes in his brief, as follows: “Moreover, as the cutting edge of each steel annulus (or disc) Is but little lower at the point where it is tangent with the soil than the corresponding point upon the inner edge, the annulus readily enters the earth. * * * The deeper it enters the greater is the force with which it rotates, enabling the edge to cut through turf or sod and raise the soil.” But this would seem to follow from the shape of the cutting rings, which are very concave. It must be admitted, however, that both these patents came near to the development of Hardy’s improvement. But a more serious trouble for the leading purpose of Hardy’s invention is found in one or more previous patents for disc harrows. A patent to Niles, issued in 1882, for “improvements in revolving plows” — 433 — (so called, but, in fact, revolving harrows), shows the discs set not only at an angle to the line of draft, but also at an inclination backward from the vertical'. He describes as his preferred form a disc having a flat working face. But he says, “if it is desired, the discs may be made somewhat dishing, in which case a better moldboard effect will be produced” than with ordinary discs. And he further says: “Now, when the machine adjusted in this way is drawn forward, this double inclination of -the discs will cause them not only to cut into the ground, as shown, but also to turn it over, instead of crowding or scraping it outward from the working face of the disc in the ordinary way — -that is, the portion of the disc back of the point or cut will have a moldboard action on account of the Inclination downward of its axis of rotation. This moldboard action, whereby the soil is turned in furrows, is obtained to a greater or less degree by changing the angle of inclination of the shaft to the line of progression, * * * ns the shafts are inclined backward more and more, the discs cut deeper, and turn the soil over more completely.” It is difficult to distinguish this from Hardy’s conception. It is true it is found in a slightly different kind of machine. But they belong to the same family — a very kindred art. We think, therefore, there was no patentable novelty in Hardy’s principal idea, that of the peculiar position of his disc. If it liad been new, there could be no doubt it would have made his combinations new and patentable. We have no doubt that Hardy had no knowledge of any of these former patents, for they had not been much extended in use or public notice; but the consequence of their existence no less affects his claim of novelty than if he had known all about them, notwithstanding their obscurity. Evans v. Eaton, 3 Wheat. 454, 514, 4 L. Ed. 433; Frederick R. Stearns v. Russell, 85 Fed. 218, 29 C. C. A. 121; Sewall v. Jones, 91 U. S. 171, 23 L. Ed. 275; Crompton v. Knowles (C. C.) 7 Fed. 199. This conclusion is in accord with the filling of the Patent Office, where the claim for the disc, separately, was rejected. But the claim for the combination which included it was held valid and allowed. We think that this conclusion also was correct. We recognize the familiar doctrine that the mere bringing together of old elements found in older machines of the same or a kindred art to perform the same functions and effect the same mechanical result does not amount to patentable invention. But we do not think the conditions of the present case justify the application of that rule. That all the elements of this combination may be found in some form and in some relations in existing machinery must be admitted, and in a restricted sense they severally perform similar functions. But they also co-operate with each other in effecting the whole result, and do not each, unaided by the others, accomplish a step in the operation. Thus the disc performs its function as it did in the earlier machines, hut it does not do so unaided. Its operation is affected by the staggered wheels, which not only contribute ho carry it on an even, horizontal plane, holding it to its proper depth in the soil, but resist its pressure toward the unplowed land. And the staggered wheels, as between themselves, have a co-operative effect. The furrow wheel, without the aid of the caster wheel, would draw the forward end of the plow away from the land, and throw the rear in an opposite direction. The caster wheel, — 434 — without the aid of the furrow wheel, would turn the plow off to land, and by the proper location of each with reference to the disc a uniform direction of the plow is secured. The stop preventing the swinging arm of the caster wheel holds it in line in the forward movement of the plow, leaving the wheel free to swing in the opposite direction in turning the plow around. Tike observations apply to other parts of the combination. It is not necessary to a valid combination that all the parts should co-operate all the time. It is enough that, in the normal and progressive use of the machine, they do> so some of the time. Again, the patent describes that the staggered furrow wheel shall be located about the middle of the length of the frame, but in advance of the disc. This relative location of the wheel and disc near each other also facilitates their continued uniform co-operation when plowing around corners or when plowing crooked furrows. .We have in several .instances held valid combinations of old elements when from their different location in the new organization a different mechanical result was effected and a beneficial,use subserved. Thus, in Star Brass Works v. General Electric Co., 111 Fed. 398, 49 C. C. A. 409, the new location given to the brush which takes off the current from a trolley wheel on street railway cars, which effected a more advantageous transmission of the'current and afforded better protection to the brush, was patentable. In Dowagiac Mfg. Co. v. Superior Drill Co., 115 Fed. 886, 53 C. C. A. 36, the changing of the location of a shield running by the side of a disc in a seed drill, which although it performed a similar service effected a different result in its combination with other parts, which was beneficial, entitled the author to a patent. And in Stilwell, Bierce & Smith Vaile Co. v. Eufaula Cotton Oil Co., 117 Fed. 410, 54 C. C. A. 584, we held the location.of a conveyor of oil meal in a new and different place in the machinery which effected a better result than had been previously obtained gave valid claim to a patent. We are not referred to any prior rotary disc plow •or other machine which embodied the same elements or similar elements organized in a similar manner h> that of the Hardy plow. And, having regard to the presumption of validity ¿rising from the grant, the success which it has attained, the nonexistence of any anticipation, and the adoption of it by the defendant in -his business, with express notice of the patent, and with a view to profit by it, we think we should hold the combination of claim 2 to be valid. Lamb Knit Goods Co. v. Lamb Glove & Mitten Co., 120 Fed. 267, 272, 56 C. C. A. 547; Lehnbeuter v. Holthaus, 105 U. S. 94, 96, 26 L. Ed. 939; Krementz v. S. Cottle Co., 148 U. S. 556, 13 Sup. Ct. 719, 37 L. Ed. 558; Streator Cathedral Glass Co. v. Wire Glass Co., 97 Fed. 950, 38 C. C. A. 573. Infringement thereof if the claim is held valid is not' seriously disputed, nor could it be successfully, for it is free from doubt. The defendant’s plow is a copy of the complainant’s in all essential particulars. The invention covered by the Hancock patent, No. 692,655, had for its object the provision of means for converting a single disc plow into a plurality disc plow, or the converse, and, incidentally, of means for interadjustment of the disc-carrying beams and their appurtenances. Aside from the manner of arrangement, the novel things supplied were principally -a “coupling element” designed to connect the primary beam — 435 — of the plow, and, through it, the whole organization of the working ‘parts of the plow, to the tongue, and a “spacing number” or plate, with flanges at the side to insert between the several beams when more than one disc is used, which serves the purpose of holding the beams in relation to each other at the proper distance apart. Fig. 3 of the drawings shows the general organization of the plurality disc plow, 3 being the coupling element, and 9 a spacing plate. — 436 — The primary beam is attached to the coupling element on the flange, 4, of Fig. 4, and the coupling element is connected with the tongue by a bolt running through the central hole on the horizontal part, 3, and the rear end of the tongue as shown in Fig. 3. The disc carrying beams are shown in Fig. 3. There are seven claims, all of which are for combinations in disc plows embodying one or both of the special features above mentioned. The “spacing members” are not described in the claims except by reference to the specifications by the words “substantially as described” at the end of each claim. But as we have held (Soehner v. Favorite Stove & Range Co., 84 Fed. 182, 28 C. C. A 317; Stilwell-Bierce & Smith-Vaile Co. v. Eufaula Cotton Oil Co., 117 Fed. 410, 54 C. C. A. 584; Lamb Knit Goods Co. v. Lamb Glove & Mitten Co. [C. C. A.] 120 Fed. 267; Canda v. Michigan Malleable Iron Co. [C. C. A.] 124 Fed. 486), this carries into the claims the description of the specification. The defendant denies that there was any invention disclosed by this patent, because, he says, of earlier patents, which he alleges fully anticipated it. We think it sufficiently appears from the references made that “spacing members,” of a kind so closely resembling those of Hancock as to deprive his form of construction of the merit of invention, had been disclosed in former patents or in prior public use. But in respect to the “coupling element,” which he makes an element in all his claims, there is more doubt; and it is necessary to know more definitely what his coupling element is or may be, within the scope of his claims, and they, as we said of his “spacing members,” must be construed, when they lack definiteness, by reference to his — 437 — specification. It must be admitted, we think that by his 'coupling element must be understood a distinct member, and not all kinds of means for effecting a connection between the primary beam and the tongue. So restricted, we do not find anything in the prior art which anticipates his device. But it is contended that, assuming this to be so, the defendant does not infringe, because, as is said, Hancock’s coupler is one having a pivotal or hinged connection with the tongue, and this Sanders does not use, but bolts his coupler rigidly upon the tongue. But is Hancock restricted to a coupler having a pivotal connection with the tongue ? In his drawings he shows Fig. 4 above, two bolt holes in plate 3. Only the one at the left hand will be used when he employs a pivotal connection, which he says he prefers. The other bolt hole nearer the edge of the plate finds correspondence in the head. or burr of a bolt shown in Fig. 3 forward, and a little to the left of the central bolt on the rear of the tongue. When both bolts are used the connection is rigid, and there is no pivot. Then he says in his specification : “The numeral 8 indicates the preferred form of coupling element or bracket employed, and to which the rear end of the tongue is pivotally connected, so that the tongue and the staggered furrow-wheel carried thereby may swing in the proper direction to facilitate the turning of the plow.” The reason for his preference is easy to see. If the turning pivot is located at that point, the turn would be made without swinging the discs; whereas, if the turn is made on the caster wheel behind the body of the plow, all tlie discs must swing in turning. This language of the patentee just quoted plainly imports that he does not limit himself to a coupler having a pivotal connection with the tongue. He gives, as he is required to do by the statute, “the best mode of applying the principle” of his invention. If there were nothing more, this statement, coupled with the drawings, fairly indicates that he did not limit himself to a bracket having a pivotal connection with the tongue, and he indicates in a way which any mechanic would understand another form of bracket, which would have á rigid connection, and the claims are broad enough to include this form; This is the form and character of the bracket employed by the defendant. We find no sufficient reason for denying validity to the Hancock patent, and, no other material distinction between the defendant’s organization and that of the Hancock patent than that we have already discussed being pointed out, we think the charge of infringement is sustained. As these conclusions are in accord with those of the Circuit Court, its decree will be affirmed.