The third claim of the patent, being confined and limited to the literal reciprocating segments arranged upon pivotal points independent of the actuating crank shafts, and carrying the pivoted feed teeth upon them, is not infringed by the defendants' device, which presents an entirely different structure or mechanism, performs a different function, and could not be made to serve the purpose, or to accomplish the same results. The defendants' device would not operate on a horizontal deck or platform like that of the Gorham machine. It has no segments and no feeding teeth pivoted thereon. It is not pivoted on points separate from the crank shaft which actuates it, but is mounted on the actuating crank shaft. In the defendants' device, there is no mechanism which performs the function of moving or carrying the grain from the receiving chamber through the machine into the chamber or receptacle in which the bundle is formed and bound. The differences between the two devices are too wide and radical to involve infringement, in view of the prior art. If said third claim could be construed to cover the defendants' device, it would itself be anticipated by the Gordon patent, No. 157,967, and other prior devices referred to in the evidence. The third claim, if valid, is not infringed. The tenth and eleventh claims read as follows, viz.: (10) "The flexible strap, g, arranged in receptacle, G. to operate the trip lever, H, in the manner substantially as and for the purpose described." (11) "The combination of the binding strap and cord, g, with the bundle receptacle, G, and toothed feeding segments, C', substantially as and for the purposes described." These two claims, as explained by the experts on both sides, are substantially the same, each having the same elements in combina tion. The elements specially described and covered by said claims are (1) the reciprocating segments provided with pivotal feeding teeth; (2) the flexible strap lying in the bundling or binding receptacle; and (3) the cord fastened to the end of said strap, and so arranged as to operate the trip lever, or draw it back to such extent as to throw the proper clutches into engagement, and start the binding mechanism. The same reasons and considerations stated above for limiting the third claim to the specific device described therein apply with equal force to the device covered by or embraced in the tenth and eleventh claims. The elements which go to make up the combination of said claims are so clearly stated as to admit of no doubt as to the proper construction of the claims. They are mentioned specifically and by reference letters, leaving no room. to question what was intended. 125 U. S. 106, 8 Sup. Ct. Rep. 869, and 127 U. S. 375, 8 Sup. Ct. Rep. 1275. The owner of the patent in the reissue application recognized that said claims were limited to a flexible strap arranged in the bundle chamber. The claims were so construed as not to include a metallic arm or finger, which was sought to be secured under new and broader claims, calling generally for "a yielding mechanism capable of expanding under the pressure of the infed grain." The patent office held, in substance, that a "flexible strap" was, in view of the state of the art, something different from a yielding metallic arm, and denied the claims which sought to cover "yielding mechanism" such as defendants employ. Complainant cannot, in view of the specific description of the claims, and of this action of the department, invoke in behalf of said claims the doctrine of equivalents, so as to extend them beyond the particular devices described. Again, the Spaulding patent of 1870 disclosed the idea of selfsizing the bundles, and the automatic setting of the binding devices into operation through the instrumentality of a yielding metallic finger or fingers. In his specifications he stated, among other things, that "this invention consists, principally, in a mechanism that binds the gavel in the same movement that scrapes it from the binding table; also, in a mechanism that always produces gavels of the same size; also, in an automatic device for giving motion to the binding apparatus that receives its motion from the accumulation of grain." This Spaulding specification further says: "As soon as the quantity of cut grain beneath the compressing fingers becomes too great for them to restrain, it lifts them, such lifting up being effected in every instance by precisely the same amount of grain." The complainant has made a vigorous attack upon this Spaulding patent, and claims that a machine constructed in conformity therewith would not operate. The proof does not establish this proposi tion, and complainant's own acts and representations, as the owner and licensee of said patent, are inconsistent with the present attempt to impeach its validity. In respect to the features under consideration, those relating to the self-sizing of the bundles; the em ployment of yielding metallic arms or fingers, against which the grain is pressed to thereby automatically impart motion to the bindfng apparatus,-the Spaulding machine was operative, as the evidence in the record clearly establishes. This prior Spaulding device seems to restrict the Gorham device covered by said claims to the specific and particular means described therein. Complainant cannot be allowed to invoke for said claims the doctrine of equivalents, so as to have them construed to cover what was clearly disclosed in the Spaulding patent. Again, it is shown that in July, 1878, Gorham applied for, and on October 12, 1880, obtained, a patent, No. 233,089, in which he secured claims for a yielding metallic arm in place of the flexible strap. It further appears that, in the application for the second patent, it was urged that there was a difference between the flexible strap of the first patent, here sued on, and a yielding metallic arm. This alleged difference was presented as a reason for granting the second patent. This action on the part of the patentee and the patent office was at least a recognition that there was a patentable difference between a flexible strap and a yielding metallic arm, and may fairly be invoked to limit complainant to the special means described in said claims, under the doctrine of McClain v. Ortmayer, 141 U. S. 423, 12 Sup. Ct. Rep. 76. Said tenth and eleventh claims, being restricted to the reciprocating segments with pivoted teeth and flexible strap, and cord connected therewith, and the binding apparatus, the device employed by the defendants does not infringe the same, because the defend. ants' mechanism has neither the reciprocating segments with pivoted teeth, nor flexible strap or cord. They have a different feeding device, and, instead of a flexible strap and cord, they employ yielding metallic fingers, like those of the Spaulding patent of 1870. Said tenth and eleventh claims, if valid, are not infringed by defendants. The twenty-fifth and twenty-sixth claims of the patent, without introducing the tying bill as an element of the combination described therein, refer only to the mechanism by which the cord, after it is tied around the completed bundle, is cut and removed from the tying bill. They read as follows: "(25) The combination of arm, Q, on shaft, K, with arm, R', and bent arm, R', on rock shaft, R, and carrying the projecting cord arm, V3, to force the cord from the knot-tying device, substantially as described. (26) The combination of arm, Q, on shaft, K3, with arm, R', and bent arm, R2, on rock shaft, R, carrying the knife, V1, for cutting the cord, and arm, V3, for forcing the cord off the hook, substantially as described." The knife being read into the twenty-fifth claim, as it should be, these two claims are substantially alike; and for the reasons already stated in reference to the third, tenth, and eleventh claims, are limited to combinations in which an arm is mounted upon and rotated with the shaft, which rotates the knotter bill to move the cord cutter and stripper. It described a special mechanism for cutting and stripping the cord immediately after the knot has been tied. Devices of various kinds were in use, long prior to Gorham, for cutting the cord, and stripping it from the knotter hook. Means for actuating such cutters and strippers were also old in the art. The prior method for moving the cutter and stripper from the tying bill was by means which operated separately or independently of the knotter shaft, or shaft which rotated the knotter bill. These prior devices are disclosed in the Hickey, 1860, patent, and the Greenhut, 1868, patent. The prior state of the art, and the rulings of the patent office on the reissue application, particularly on claims 57 and 59 thereof, which were rejected on the Burson patent of 1860, and the McPherson, 1870, patent, operate to restrict said claims 25 and 26, or the combination therein described, to an arm for moving the cutter and stripper, that is mounted upon and rotated by and with the knotter shaft. In view of the prior art, and of the proceedings had in the patent office, the particular arrangement described constituted the only novelty of said claims. Again, the defendants do not infringe said twenty-fifth and twenty-sixth claims, for the reason that their device for moving or actuating their cutters and strippers is not mounted upon, or rotated by or with, the knotter shaft, but by means of a mechanism that is extraneous to, and operated independently of, the knotter shaft. Defendants' actuating means for cutting and stripping the cord from the tying bill corresponds, substantially and in principle, with the devices shown in the prior patents of Hickey, Sherwood, Holly, and others. That these former devices were connected with wire binders, and that the cutting apparatus had to deal with wire instead of cord, involves no distinction in principle, but rather tends to support the view that the novelty disclosed by the twenty-fifth and twenty-sixth claims is confined to the special and particular arrangement there in described, which defendants do not adopt. There is no infringe ment of said claims by the defendants. The conclusion of the court, upon the whole case, is that complainant is not entitled to any relief on either of the patents sued on, or upon any claim or claims thereof, and that in both cases its suit or bill should be dismissed, with costs in each cause to be taxed against it, and it is accordingly so ordered and decreed. CURTIS v. OVERMAN WHEEL CO. et al. (Circuit Court of Appeals, Second Circuit. 1. PATENTS-INVENTION-VELOCIPEDE PEDALS. December 5, 1893.) The mere substitution, in velocipede pedals, for the pre-existing double rotary bars, round and fluted, of bars having wide working faces, thereby giving greater leverage to the foot, and preventing slipping, does not involve invention. 53 Fed. 247, reversed. 2. SAME-INFRINGEMENT-PRIOR ADJUDICATION On appeal from an order enjoining infringement of a patent pendente lite, where the question of invention is presented with approximate accuracy upon the face of the patent, and does not depend upon controverted questions of fact, the circuit court of appeals, giving due weight to a prior adjudication sustaining the patent, may re-examine such former adjudication, and dispose of the question in accordance with its own conviction. American Paper Pail & Box Co. v. National Folding Box & Paper Co., 2 C. C. A. 165, 51 Fed. 229, followed. 3. SAME. The first and second, claims of the Overman patent, No. 329,851, for an improvement in velocipede pedals, are void, as not covering a patentable invention. 53 Fed. 247, reversed. Appeal from the Circuit Court of the United States for the District of Connecticut. In Equity. Bill by the Overman Wheel Company and the Pope Manufacturing Company against Henry J. Curtis for infringement of a patent. Plaintiffs move for a preliminary injunction. Granted. 53 Fed. 247. Defendant appeals. Defendant appeals. Reversed. C. K. Offield, for appellant. Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge. This is an appeal from an order of the circuit court of the United States for the district of Connecticut, which, upon the complainants' motion, enjoined, pendente lite, the defendant against the infringement of the first and second claims of letters patent No. 329,851, dated November 3, 1885, to Albert H. Overman, for an improved pedal for velocipedes. The order was based upon the adjudication in Manufacturing Co. v. Clark, by the circuit court for the district of Maryland, which sustained these claims. 46 Fed. 789. The invention consisted-First, "in a pedal having bars located upon opposite sides of a central working bearing, and provided with wide working faces, and arranged to turn to incline their upper or exposed faces toward each other;" second, "in a pedal having the same arrangement of rectangular bars upon opposite sides of a central bearing;" and, third, "in a pedal having bars, each composed of a light core of wood or equivalent material, and an envelope of rubber inclosing the same, and bearings passing through the core of each bar." The three claims are respectively for these three improvements. The pedals of the defendant's machines infringe the first and second claims. The defendant presented various defenses, the most important being that the improvement was not patentable for want of novelty, and that, if novel, it was merely an improvement and not an invention. The history of the art at the date of the alleged invention is stated in the specification as follows: "Heretofore pedals for velocipedes have been provided with a single, turning, polygonal bar composed of an envelope of rubber inclosing a skeleton frame bearing at each end upon the spindle of the pedal. Pedals for velocipedes have also been provided with two essentially round and sometimes fluted bars of fluted solid rubber, located upon opposite sides of the working bearing of the pedal, and arranged to be turned, so that when one portion has become worn another may be exposed for wear." The defect in pedals of the second type, which is corrected by the pedals described in the first and second claims, is thus stated: "While the bars are engaged with the sole of the boot at separated points thereupon, the area of contact upon an essentially round bar is necessarily small; and, the surfaces in contact being in the same horizontal plane, the boot is prevented from slipping only by friction, and, this being insufficient to retain it in place, it often slips." The full record and numerous exhibits presented by the defendant show that this description of the state of the art of pedal manufacture at the time of the patented invention is substantially complete, and cannot be amended, if it is understood that the pre-existing double fluted pedals were not merely arranged so as to be capable of turning, but were actually rotary, and free to turn. Pedals are shown in the English patent to Robert James Rae of September 11, 1878, which were double corrugated or fluted rollers, having their upper surfaces turned towards each other. The whole question of patentable invention is thus presented upon the face of the Overman patent, and is whether single, polygonal, rotary bar pedals, and double, substantially round, but fluted, rotary bar pedals, being oldit was the work of an inventor to substitute the wide working faces or the wide rectangular faces of the bars of the patent for the preexisting round and fluted bars. The gist of the improvement was to make pedal bars having faces or bearings of sufficient permanent width "to satisfy the leverage required to give the boot sole complete control over them," because the old occasionally flat faces did not meet the necessary requirement of width. The advance made by Overman is stated by his expert as strongly and as attractively as it can be to consist v.58F.no.5-50 |