15 F. Cas. 1306 | D.C. | 1853
The application was made on the 7th of November, 1851. In his specification the applicant states the improvement more particularly to be for combining with the cutting apparatus at its left-hand end a slide or raking-board, forming with said cutting apparatus an angle less than a right angle, by means of which the cut grass is drawn outwards from the standing grass, by which a pathway is obtained between the standing and cut grass for the driving-wheel to pass on the ground on the return trip of the machine, as well as to prevent the cut grass from getting on the fingers, and thereby clogging the sickle. His claim is for combining with the cutting apparatus a raking-board, forming with the said cutting apparatus an angle less than a right angle, substantially as and for the purpose specified. According to the statement of the Commissioner, there were at the time pending-applications before him for patents for the same invention, one by
On the 27th of February, 1852, the said Ketchum, assignor to the said Rufus L. Howard, filed his petition and specification for a patent for an invention which the Commissioner states to be the same as that claimed by McCormick in his specification. He states that his object is to clear the track by removing the cut grass from the standing stubble — turning it out of the way ; that he has experimented several years with contrivances essentially the same ; that the contrivance he then had in use operates with perfect satisfaction. This consists of a raking-board combined with the rack-piece by a joint or hinge, at an angle less than a right angle. The scraper or raking-board, as it trails along on the ground after and in the wake of the cutters, has the effect to remove the cut grass from the standing stubble by rolling and turning it in towards the machine, out of the way, leaving a clear track for the heel of the rack-piece to move in on the return swath. It also keeps the loose cut grass from choking or clogging and retarding the proper action of the cutters. On the 2d of March, 1852, Howard, assignee of Sheffer, by his attorney, requested that Sheffer’s application might be rejected pro forma; and on the 1st of April, 1852, Howard himself made a like request, and the Commissioner accordingly directed the same to be done. On the 1st of March, 1852, the Commissioner declared an interference between the claim of Howard, assignee of Ketchum and McCormick, and Green, and appointed the second Monday in
“Whereas, upon the appointed day of hearing, of which due notice had been given to the parties, and upon a careful examination of the testimony and arguments filed in the case, it appears to the undersigned that priority of invention of the side-shield track-clearer or scraper claimed is due to the said W. F. Ketchum, he is therefore hereby declared to be the first inventor thereof.”
From this decision McCormick took the present appeal, and filed in the Office, within the time directed by the Commissioner, his reasons of appeal.
In his first reason he says that said Ketchum testifies in his own behalf that he never succeeded in perfecting the instrument so as to bring it into public use until more than a year after it had been perfected and introduced into public and successful use by said McCormick; second, that it is not in proof that Ketchum ever constructed a harvester with a track-clearer that worked successfully, or that it was more than mere experiment; third, because the parol testimony on which Ketchum relies to show that he had invented a track-clearer is too vague and indefinite to be received as evidence, while, as Ketchum testifies, the devices themselves, with which he experimented, which are the best .evidence, are in existence, and might and ought to have been produced; fourth, because said Howard, being the owner of said Ketchum’s and Sheffer’s rights, by electing to claim under Sheffer as the prior inventor, virtually disclaimed priority of invention for Ketchum, and, having been defeated under Sheffer, it is not competent for him to disavow his former acts and claim under Ketchum ; fifth, a mere general allegation that from the testimony McCormick, and not Ketchum, is the prior inventor.
The first part of the Commissioner’s report states particularly the proceedings in the case, which I have already recited, together with some additional facts obtained from the original papers sent up with the appeal. It states as a reason for not admitting McCormick’s testimony (taken in a former case) in evidence on the
The report, in further answering the. reasons of appeal, is.confined to the testimony on the part of the appellee, the effect of which the Commissioner thinks amounts to proof that the invention by Ketchum was as early as the year 1846, and that it is the same in substance as that for which McCormick claims a patent in this case, whose invention was in the year 1849 ; that the testimony sufficiently shows, according to established legal principles, that said invention was reduced to practice; that the decision was founded mainly on the testimony of Colligan, confirmed by Field, the substance of which he states ; that the decision would have been the same if McCormick’s testimony had been admitted into the case and considered; that the apparent inconsistencies in Ketchum’s testimony may be reconciled; that the word “instrument” is not the word used by Ketchum, Field, or Colligan when speaking of imperfections ; the language refers to the machine as a whole, as in the instances of breaking a cutter-bar, &c. As to the reason defining in what a patentable invention consists, he refers to the law as laid down by Judge Cranch in the case of Perry v. Cornell (ante, p. 66); and as to Howard’s being estopped
On the day appointed for the hearing, according to notice given, the parties appeared by their respective counsel; and the Commissioner having laid before the judge the grounds of his decision in writing, with the original papers and the evidence in the cause, and the arguments of the counsel on each side being submitted, it appears that there is no dispute as to the invention for which a patent is asked being patentable; the questions are whether the inventions are. the same; if so, whether the appellant, according to the principles of patent law, is the first and original inventor. I think it must be considered clear from McCormick's testimony that in the month of August, 1849, he was the inventor of the improvements as described by him in his specification; that he reduced it to practical use with success in combination with his mowing-machine,* and that he has continued to succeed in the use of it; that according to the testimony of the examiner it differs from all others, in having the double inclination of the board in connection with its peculiar shape, enabling it, among other things, to perform the precise function of the crooked stick in Scheffer’s instrument. Does it interfere with Ketchum’s improvement, under which the appellee claims? The Commissioner in his report says they are substantially the same, and that Ketchum is the prior inventor. This must depend upon the evidence on the part of the appellee and the facts and circumstances in the case, taken in connection with it. I will state the substance of it:
Ketchum (the assignor) in his deposition states that he made an improvement, known as the side-shield or scraper, to his mowing-machine he thinks in the year 1846. The angle was eighteen or twenty degrees. It was made of iron. After that he made the scraper of wood — board—attached by a hinge. He thinks he used the board in this manner in 1847, 1848, and 1849. He has seen the drawing representing Mr. McCormick’s and Green’s devices, and he considers them the same in principle as his. He is and has been a practical machinist for twenty-five years. Schedule “A” was shown to him. This, he said, repre
He was cross-examined by Mr. Green’s counsel, and testified that he made the assignment to Howard the 10th February, 1852; was not then aware of the improvement of Green or any other person; was not positive but that he began to experiment in 1845 in the use of this device. He made the improvement as it appears in the schedule or drawing "B” in June, 1846. He does not know when he attached the bottom board; thinks he discovered the angle of eighteen or twenty degrees immediately upon the experiments. He used the machine with that device in 1846, but is not positive about the bottom board. This improvement of itself is not sufficient to overcome every difficulty. The cutter-bar was too weak at first, and prevented the machine from working well.
He was further cross-examined by McCormick’s counsel, and testified that a machine was built .in 1839 or 1840 by his instructions. It had not the side-shield or scraper as in schedule “A.” He had.no device attached to it similar to that in the diagram in 1839 and 1840. He used it in the harvest of 1836; no one besides himself used this in 1846; others saw it work; the machine
[A resumé of other depositions to the same effect follows.]
In coming to a decision upon the effect and weight of the testimony, it is proper to state that I think there is much justness and force in the able arguments of the counsel on the part of the appellants in this case in the views they have taken of the circumstances and facts appearing in the case from the proceedings and the testimony of Ketchum relating to the conduct of Howard and Ketchum. The strange inconsistency and contrivance on the part of Howard with respect to the assignments, and the imposition pi'acticed on the Government by him, together with the indifference and neglect on the part of Ketchum to apply for a patent, with the knowledge he possessed, that othei's had been applying for the same invention, and his consent and approbation that Howard should apply under the assignment of Sheffei' — his conduct and silence under such circumstances bring him within the reason of the rule that where a man has been silent when in conscience he ought to have spoken he will be debarred from speaking when conscience requires him to be silent. These and other'circumstances certainly tend to militate against the practical reality of Ketchum’s invention and against the fairness of the claim for a patent on the part of Howard. I do not undei'stand the decision of the Commissioner, however, as going to the extent of declaring the appellee to be entitled to a patent. The question' of unfaii'ness and imposition is not, therefore, directly before me on this appeal. On the other part of the subject the i'ule has been correctly stated, that a mere pi'inciple or idea, until it becomes properly and practically clothed, is not patentable. And it may also be stated that a long course of mere fruitless experiments to reduce the principle to practice would not be
The patent was subsequently issued to Kufus L. Howard, assiguee of William F. Ketchum, No. 9737, May 17th, 1853.