Galt v. Paulin & Orendorf Co.

WOODS, Circuit Judge (after stating the facts). The bearing of the prior art upon the question of novelty and invention in Cor-bin’s combination may be illustrated by supposing two of the older machines to be employed side by side, — the wheel harrow of Bayless, without a lever, and adjustable only by means of a movable bolt, and the revolving spader or cultivator of Winters, with a lever mounted on the tongue, ready for the hand of the driver in his seat. In that situation the advantage of one driver over the other in respect to the easy and ready control of his machine would be clear enough, but not more obvious than the means of correcting the inequality. So manifest, indeed, is the impossibility of finding invention in the mere fact of a lever mounted on the tongue of a wheel harrow to be used in controlling the alignment of the disk gangs that it is not insisted upon; but it is now contended that it is not a fair presentation of the problem to consider only whether a mechanic could place an ordinary lever, as Corbin placed it, in connection with the disk gangs; that Corbin, as he was compelled to do, went further, and determined first the possibility, as against the draft of the team, of adjusting the gangs while the machine was in motion, then the means of doing it, and thereby achieved the new result that, concurrently with the making of adjust-' ments of the gangs in motion, the depth of the resulting cut is illustrated. This argument admits by implication that it would 421 hare required no invention to introduce a lever into the Bayless harrow if intended only for the obvious advantage of enabling the driver, without leaving his seat, to adjust the gangs when not in motion; but if done for the purpose of making adjustments when the machine should be in motion, then, it is insisted, there was invention. But, the possibility of multiplying power by means of the lever being perfectly well understood, it is idle to contend that Corbin did more than an ordinary mechanic could have done- when he determined that by means of a lever properly adjusted, and within the- limits of the movement of its short arm, the disk gangs could be shifted at pleasure either when the machine was at rest or when it was in motion. In respect to the alleged new result, it is to be observed that, if Corbin apprehended what is now asserted, he did not deem it worthy of mention in his patent. As stated in the specification, his object in this respect was “to provide for the easy and rapid setting of the gangs at any desired angle to the line-of draft while in motion or at rest;” and of the lever itself it is said “that, when its upper end is carried forward to its limit, the gangs will be in a straight line for removal to and from the field; that when it is set perpendicularly the gangs are ready for pulverizing soft soil; and when it is set at its backward limit they are ready for the harder clay soil.” It need not be supposed, however, that he had no conception of the advantage, when practicable, of making such adjustments when the harrow or cultivator should be in motion rather than when it was at rest. There was common knowledge in that direction. Every intelligent plowman who, in order to regulate the depth of his plowing or the width of his furrow, had stopped his team to shift the whiffletree to a higher or lower notch of the clevis, or to adjust the front end of the clevis to one side or the other of the middle line of the plow beam, had perceived that the exact adjustments needed would be more readily attained if they could he made gradually while the plow was in motion; and more modern implements, in which levers are shown to have been employed for the purpose of controlling and adjusting their movements, have long afforded illustration of results corresponding in some measure to that now claimed to he new. If it was a part of Corbin’s conception that the desired adjustments could be illustrated and more readily effected in the way stated, it was no more than men of ordinary experience in such matters, or of ordinary knowledge of the laws of mechanics, would have apprehended as the probable, and indeed necessary, result. But the entire argument for the appellants proceeds on the erroneous assumption that a machine or mechanical combination which, in itself contains no novelty amounting to invention may be patentable because of some new use or result which is accomplished; a proposition which, as we have seen, leads to the inadmissible Conclusion that for one use or purpose a device may he public property and for another use may be the subject of a patent. On the contrary, it is well settled, we suppose, “that a patent for a machine covers its use for all purposes, whether anticipated by the pat-entee or not, and that the functions or methods of operation of me 422 chanical devices are not patentable.” Appleton Manuf'g Co. v. Star Manuf'g Co., 60 Fed. 411. “The invention is in the device, which may have one, two, or more functions, one of great and another of trifling worth; it may be supposed to have a function which it has not; the patent is upon the device, and not upon the functions, real or supposed.” Western Electric Co. v. Sperry Electric Co., 7 C. C. A. 164, 58 Fed. 186. “A mistaken description, or even misconception of the operation of a device, which is itself fitly described and claimed, does not vitiate a patent.” Temple Pump Co. v. Goss Pump, etc., Manuf'g Co., 7 C. C. A. 174, 58 Fed. 196. By the decision of the supreme court in Collar Co. v. Van Dusen, 23 Wall. 530, 563, “new articles of commerce are not patentable as new manufactures, unless it appears in the given case that the production of the new article involved the exercise of invention or discovery beybnd what was necessary to construct the apparatus for its manufacture or production.” And by the same principle a machine, apparatus, or mechanical combination, the conception and construction of which involved no invention, cannot be patentable by reason of any new effect, result, or product obtained by its employment. In Fuller v. Yentzer, 94 U. S. 288, it is said: “Patents for a machine will not be sustained if the claim is for a result, the established rule being that the invention, if any, within the meaning of the patent act, consists in the means or apparatus by which the result is obtained, and not merely in the mode of operation, independent of the mechanical devices employed; nor will a patent be held valid for a principle or for an idea, or any other mere abstraction. Burr v. Duryee, 1 Wall. 531.” And in Roberts v. Ryer, 91 U. S. 150, 157, is this expression: “It is no new invention to use an old machine for a new purpose. The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.” To same effect see Stow v. Chicago, 104 U. S. 550; Heald v. Rice, Id. 755; Stimpson v. Woodman, 10 Wall. 117; Tucker v. Spalding, 13 Wall. 453. If, therefore, it be conceded that Corbin was first to mount a lever upon the tongue of a wheel harrow, and that thereby a new result or advantage incident to the operation of the harrow was gained, yet the decree below was right, because, the use of the lever in similar machines for corresponding purposes being familiar, its introduction into Corbin’s combination involved no possible measure of invention. The decree of the circuit court should be affirmed, and it is so ordered.