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U.S. Supreme Court


204 U.S. 609

No. 175.

Argued January 23, 1907.
Decided February 25, 1907.

Messrs. Melville Church and Joseph B. Church for appellant.

Messrs. H. P. Doolittle and E. Hilton Jackson for appellee.

Mr. Justice Day delivered the opinion of the court:

This is an appeal from the court of appeals of the District of Columbia, affirming a decree of the supreme court of the [204 U.S. 609, 610]   District, dismissing the bill of the Computing Scale Company of America, appellant, against the Automatic Scale Company, based upon the alleged infringement of letters patent No. 700,919, granted to the complainant as the assignee of the inventor, Austin B. Hayden, said letters bearing date May 27, 1902, for an improvement in computing scales.

The bill contained a prayer for an injunction and accounting. The answer denied the patentability of the alleged invention of the plaintiff, set up the alleged anticipating invention of one Christopher, and denied infringement.

The alleged improvement of Hayden is shown in the accompanying illustrations taken from the patent. [See next page.]

To understand these drawings they are to be viewed in the light of the description of the mechanism given by complainant's expert, which has the approval of the expert of the defendant, and was accepted as correct in the court of appeals. This description, somewhat abridged, is as follows:

  'As shown in Fig. 2, the weight and value-indicating figures are placed in horizontal rows on the external surface or periphery of the rotatable chart drum of the computing cylinder, the weight indications being shown in a horizontal row at the bottom, and the price indications in horizontal rows above, there being as many of these horizontal rows of price indicating figures as there are 'price per pound' indicating figures on the fixed external casing. These valueindicating figures on

[Graphic from this page is combined with the graphic on page 611] [204 U.S. 609, 613]   the chart drum are computed at different rates corresponding to the 'price per pound' figures on the external casing. As indicated in figure 2 of the drawings of the patent, there is supposed to be a weight on the scale pan of 5 pounds, this weight being indicated on the weight scale, and it will be seen that in such instance the various value indications on the chart drum opposite the 'price per pound' indications on the fixed casing are, in each illustrated instance, five times as great as the corresponding 'price per pound' indications. The drawings illustrate only a portion of the indicating figures on the chart drum, but it will be understood in practice that this drum will be entirely covered on its external surface with figures corresponding to the weights multiplied by the figures indicating 'price per pound' on the nonrotatable external casing. Accordingly, whenever the interior chart drum is turned a distance corresponding to the load placed on the scale pan, the value of the load can be read at once opposite the figures on the external casing which correspond to the price per pound of the article weighed.

In his application, Hayden, having set forth a description of his invention, disclaiming any intention to limit his invention by the precise description of the specifications, except as appears from his claims, sets forth eleven (11) claims, which he alleges as new and desires to secure by letters patent.

The claims alleged to be infringed in this case are numbered 1, 2, 6, 7, and 8. Numbers 1 and 2 are practically alike, except that in No. 2 the spring-supported, load-bearing, and cylinder-revolving rod is described as nonrotatably suspended. Claims 6, 7, and 8 have some trifling variations, but, in the view we take of this case, they are sufficiently embodied in claim No. 6. We shall, therefore, consider, in arriving at a decision, claims 1 and 6. They are as follows:

Hayden did not assume to be a pioneer in this field of invention, but he claims to have made an improvement in computing scales of the spring- balance type, and states his object to be specially to increase the computing capacity of scales of that type.

An examination of the record discloses that computing scales have been the subject of prior inventions and were well known at the time of Hayden's application. It is true that the scales disclosed in the prior art were generally those having a horizontal axis, case, and cylinder, although it was not new to arrange a scale bertically.

If we are to read the claims as broadly as is contended for, and omit, for the present, vertical construction shown by Hayden, we shall find in the patent of Phinney, No. 106,869, of August 30, 1870, a computing scale having the general elements of a nonrotatable casing, provided with a price index and rotatable cylinder journaled in the case, and having computations thereon, a suspended, spring-supported, load-bearing, and cylinder-revolving rod, and connecting means between the rod and computing cylinder, to impart part rotary motion to the inner cylinder. This is perhaps more emphatically true in the invention of Smith, patent No. 545, 619, of September 3, 1895. [204 U.S. 609, 616]   In the patent of Babcock, No. 421,805, February 18, 1890, a vertical construction is shown. It is true that Babcock's invention was not automatic in its operation, and required the intervention of the operator to complete the required process, but it serves to show that the idea of vertical construction was not new when Hayden entered the field. Taking the state of the art at that time, it is evident that there is little room to claim a broad construction of Hayden's improvement. It is well settled by numerous decisions of this court that, while a combination of old elements producing a new and useful result will be patentable, yet, where the combination is merely the assembling of old elements producing no new and useful result, invention is not shown. Office Specialty Mfg. Co. v. Fenton Metallic Mfg. Co. 174 U.S. 492 -498, 43 L. ed. 1058-1060, 19 Sup. Ct. Rep. 641, and previous decisions of this court there cited.

It is true that many valuable inventions seem simple when accomplished, and yet are entitled to protection. The books abound in cases showing inventions involving only small departure from former means, yet making the difference between a defective mechanism and a practical method of accomplishing results. In such cases a decision in favor of invention as distinguished from mere mechanical improvement has not infrequently resulted, in view of the fact that the device has made the difference between an impracticable machine and a useful improvement displacing others theretofore occupying the field. Krementz v. S. Cottle Co. 148 U.S. 556 , 37 L. ed. 558, 13 Sup. Ct Rep. 719; Consolidated Brake- Shoe Co. V. Detroit Steel & Spring Co. 47 Fed. 894; Star Brass Works v. General Electric Co. 49 C. C. A. 409, 111 Fed. 398.

In the present case it nowhere appears in the testimony, nor is it claimed in the specifications of Hayden's patent, that the prior mechanisms of horizontal construction were impracticable or inefficient. There is no suggestion that Hayden's invention has been the last step between an inoperative machine and one practically operative and useful. There is no showing that it has been generally accepted in the trade and displaced [204 U.S. 609, 617]   the former machines used for the same purpose. Without resort to the record in the Patent Office, we think it is plain that the invention is but a small advance upon others already in use.

Broadly considered, the elements of Hayden's invention were in the horizontal machines, and the idea of vertical construction was old. Considering this invention in the light of what occurred in the Patent Office in connection with the other considerations already referred to, and the state of the art at the time, we think Hayden's invention can only be sustained to a limited extent.

Before taking up the record as disclosed in the file wrapper and contents we may premise that it is perfectly well settled in this court by frequent decisions that where an inventor, seeking a broad claim which is rejected, in which rejection he acquiesces, substitutes therefor a narrower claim, he cannot be heard to insist that the construction of the claim allowed shall cover that which has been previously rejected. Corbin Cabinet Lock Co. v. Eagle Lock Co. 150 U.S. 38 -40, 37 L. ed. 989, 990, 14 Sup. St. Rep. 28, and cases there cited.

A late statement of the rule, and one as favorable to the inventor as the previous cases would admit, is found in Hubbell v. United States, 179 U.S. 77, 80 , 45 S. L. ed. 95, 98, 21 Sup. Ct. Rep. 24, 25, as follows:

Looking to the record in the Patent Office, we find that claim 1, as originally presented, read as follows:

The examiner rejected this claim upon the patent of Smith, No. 545, 616, price scales, and in view of the patent of Turnbull, No. 378,382, spring scales, saying: 'It would not involve invention to arrange upon Turnbull's scales a vertical stationary casing having within it a revolvable computing chart, the axis being connected with the indexcarrying shaft P shown in the Turnbull patent.'

To this the applicant, through his attorneys, replied:

But the examiner again rejected claims 1, 8, and 9 upon the references of record, and held that it would not involve invention to arrange upon the vertical shaft of Turnbull's scale a computing chart and inclosing case having the characteristics of Smith's scale. To this the attorneys for applicant answered:

The sixth claim was allowed upon the suggestion of the examiner, as follows:

It was afterwards stated by the examiner:

The general rule, as stated, as to the effect of a patentee striking out a broad claim and accepting a narrow one, is conceded by the learned counsel for appellant, but it is contended that if an inventor presents a broad claim and strikes it out and then presents and obtains an equally broad claim, he loses no right by such action, and may justly claim his allowed claim to be a broad one and have relief accordingly. But we think the action of the department in this case cannot be thus eliminated. Claim 1, as presented, had contained the words 'a spring-supported load pan supported from said casing, and means connected with said pan and cylinder for rotating the cylinder as the pan is lowered under pressure,' and as allowed, there was inserted 'a spring-supported, load-bearing, and cylinder-revolving rod suspended from said casing, and connecting means between rod and computing cylinder, whereby, by longitudinal movement of the rod, rotary movement is imparted to said cylinder, substantially as and for the purpose set forth.' This limitation to specific means is certainly a narrowing of the claim.

It was accepted, as the patentee said, 'in view of the fact that the allowed claims appear to cover the invention as it would be constructed in practice.'

We cannot think it was the intention of the department, after requiring the insertion of 'a spring-supported, load-bearing, and cylinder- revolving rod' and 'connecting means between rod and computing cylinder' to secure the rotary movement of the inner cylinder as a means of saving claim 1, to then permit the claim to be granted broadly in allowing other [204 U.S. 609, 621]   claims. And we believe it would be a more reasonable construction of the letter of the applicant to say that he rocognized that his invention, 'as constructed in practice,' must have read into it to sustain the claim, the specific means shown for translating the vertical movement of the runner into the rotary movement of the chart drum, rather than as saving a right to construe a claim broadly as including in one claim what had just been refused in another.

It is to be noted that Hayden, in his specifications, says:

In view of the action of the Patent Office in this case and the acquiescence of the applicant, considered also in view of the state of the art, in out opinion it is necessary to have this novel element of the invention read into them in order to save the claims of Hayden's patent.

Conceding that this spiral rod and its connections with the cylinder in the manner and for the purposes stated is a novel feature in the combination, and entitled to protection, it is of that narrow character of invention which does not entitle the patentee to any considerable range of equivalents, but must be practically limited to the means shown by the inventor. The distinction between pioneer inventions permitting a wide range of equivalents and those inventions of a narrower character, which are limited to the construction shown, has been frequently emphasized in the decision of this court. Cimiotti Unhairing Co. v. American Fur Ref. Co. 198 U.S. 399, 406 , 49 S. L. ed. 1100, 1103, 25 Sup. Ct. Rep. 697, and cases therein cited.

Thus limiting the invention, we do not think the construction of the defendant amounts to an infringement. Its mechanism, by means of which the downward move-ment of the load accomplishes the rotary movement of the cylinder, consists [204 U.S. 609, 622]   of a bar which has a rod extended upward and carrying a rack which meshes with a pinion on a shaft journaled in bearings on a crossbar of the frame of the machine. On this shaft is a gear meshing with the pinion, secured to an upright shaft journaled in bearings in the frame, and projecting above it so as to receive a light frame composed of cross arms and a circular rim to which the chart drum is secured. The downward movement of the load-supporting hook causes the rack to move in the same direction, rotating the horizontal shaft by means of the pinion, and this movement is communicated by means of the gearing to the upright shaft carrying the chart drum. The cylinder-revolving rod with its connections, which, as we have seen, was made an essential element to accomplish invention in Hayden's device, is not found. The complainant's expert is of opinion that it is shown in the hook at the bottom of defendant's scale for holding the load pan. We cannot agree to this conclusion; the hook is not the cylinder- revolving spiral rod and does not accomplish complish its function.

The court of appeals held the sixth claim void. We are of opinion that it cannot be allowed for the broad claim 'mechanism for translating the vertical movement of the runner into the rotary movement of the chart drum,' but must be limited to Hayden's suspended rod with its spiral, engaging with the rollers, or similar devices on the cylinder, practically in the manner and for the purposes shown by him. If the claim be thus limited, for the reasons we have already stated, the mechanism of the defendant does not infringe.

We find no error in the decree rendered by the Court of Appeals, and it is affirmed.

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