# McCormick v. Whitmer/Opinion of the Court

* Court Documents
* Case Syllabus
* Opinion of the Court
United States Supreme Court
129 U.S. 1
McCormick v. Whitmer
There are 10 claims in the patent, claims 1 and 2 being as follows: '(1) The combination, as set forth, in a harvester, of the fingerbeam with the gearing-carriage, by means of the vibratable link, the draught-rod, and the two swivel-joints, M and M', so that the finger-beam may both rise and fall at either end, and rock forward and backward. (2) The combination, as set forth, in a harvester, of the finger-beam, gearing-carriage, vibratable link, draught-rod, swivel-joints, and arm, by which the rocking of the finger-beam is controlled.'
It will conduce to a solution of the questions involved in the case to give a history of the progress of the application for the patent through the patent-office, as gathered from certified copies of those proceedings found in the record. On the 4th of December, 1865, the patentee. Alvaro B. Graham, as assignor to himself, William B. Werden, and Cyrus A. Werden, filed in the patent-office an application for a patent, which was sworn to by him on the 25th of February, 1864. The specification of this application stated that one object of the invention was the free passage of the finger-bar over the ground, and the perfect moving of it to adjust itself to the inequalities of surface over which it might pass, and that another object of the invention was the cutting in a proper manner of lodged grass or grain. It also stated that the machine had a finger-bar, I, the inner end of which was attached by a joint, h, to a bar, J, which was at the rear of the main frame, A, and was connected thereto, at its left-hand side, by a swivel or universal joint, K,-such joint being composed of a rod, i, which was allowed to turn in a bearing, j, attached to the main frame, the end of the bar, J, being cylindrical, and allowed to turn in the rod, i; that the joint, K, admitted of the bar, J, and finger-bar, I, being raised vertically, and also admitted of those bars being turned in a more or less inclined position, in their transverse section, to admit of the fingers and sickle being turned more or less down towards the ground, as might be required; that this adjustment of the fingers and sickle was effected through the medium of a lever, M, which was connected by a rod, l, with an upright, m, on the bar, J; that this lever, M, might be retained in any desired position, within the scope of its movement, by means of a perforated bar, n, into the holes of which a pin on the lever caught; that the finger-bar, I, might be raised separately from the joint, h, as a center, through the medium of a lever, N, which, like the lever, M, was attached to the main frame, A, and had a chain or cord attached to its lower end, said chain or cord passing around a pulley, q, on the bar, J, and being attached to the upper end of an upright, r, attached to the finger-bar at the joint, h; that both bars, I and J, might be elevated simultaneously by a lever, O, which was also attached to the main frame, A, and bore at its lower end on another lever, P, the outer end of which was connected by a chain, s, with the bar, J; that the lever, O, might be retained at any desired point, within the scope of its movement, by means of a rack-bar, P'; that, in case an obstruction presented itself to the inner end of the finger-bar, I, the lever, O, was actuated in order to raise such end of the finger-bar, and, if an obstruction presented itself to the outer end of the finger-bar, the lever, N, was actuated; and that the applicant did not claim the connecting of the finger-bar, I, to the bar, J, by a joint, h, for that had been previously done.
There were five claims in the specification, the first two of which were as follows: (1) 'The attaching of the bar, J, to the main frame, A, by means of the swivel or universal joint, K, when used in combination with the finger-bar, I, attached to it by a joint, h, and this I claim irrespective of any peculiar position of the parts, or particular application of the same to the frame of the machine, so long as the desired result is obtained.' (2) 'The arrangement of the lever, N, chain or cord, p, and upright, r, substantially as shown, for raising the outer end of the finger-bar, I, as set forth.' On the 30th of December, 1865, the patent-office rejected claims 1 and 2 on a reference to prior patents. On the 24th of March, 1866, the applicant erased claims 1, 2, and 3, and substituted for claim 1 the following: (1) 'The combination of the finger-bar, I, and bar, J, attached to the frame, A, by means of the universal joint or swivel, K, in the manner and for the purpose herein specified.' On the 4th of April, 1866, the patent-office rejected this substituted claim 1, by a reference to a prior rejected application and to a prior patent. On the 1st of October, 1866, it allowed the two remaining claims applied for, which had been numbered 4 and 5 originally. On the 18th of June, 1867, the applicant filed a withdrawal of the amendments filed March 24, 1866, the effect being to limit the invention claimed under the patent to the two claims allowed October 1, 1866, and the patent was granted July 23, 1867, as No. 67,041, with those two claims, which in no manner relate to any question involved in the present suit.
Prior to such withdrawal of June 18, 1867, and on the 11th of February, 1867, Mr. Graham filed an application which resulted in the patent in suit, No. 74,342, issued February 11, 1868. Claims 1 and 2 of the specification of that application originally read as follows: (1) 'The combination, in a harvester, of the finger-beam with the gearing-carriage, by means of a vibratable link, draught-rod, and two swivel-joints, so that the finger-beam may both rise and fall at either end, and rock forward and backward, substantially as set forth.' (2) 'The combination, in a harvest of the finger-beam, gearing-carriage, link, draught-rod, swivel-joints, and arm, by which the rocking of the finger-beam is controlled, substantially as set forth.' There were 15 claims in all made in the specification. On the 29th of July, 1867, the patent-office rejected claims 1 and 2, by a reference to prior patents. On the 31st of December, 1867, the applicant amended claims 1 and 2 so as to read as they are in the patent as granted. The changes thus made in those two claims, and which, under the circumstances, were made to secure the issuing of the patent, the claims having been rejected in the shape in which they were first proposed, were these: In claim 1 'the combination, as set forth,' was substituted for 'the combination;' 'the vibratable link' for 'a vibratable link;' 'the draught-rod,' for 'draught-rod;' 'the two swivel-joints, M and M',' for 'two swivel-joints;' and the words 'substantially as set forth' were erased. In claim 2 'the combination, as set forth,' was substituted for 'the combination;' 'vibratable link,' for 'link;' and the words 'substantially as set forth' were erased. In the second claim the word 'the' was always prefixed to the enumerated elements composing the combination claimed.
The principal question for determination, in the view we take of the case, is that of infringement. The circuit court, in its opinion delivered on the making of the interlocutory decree, (10 Biss. 39, and 11 Fed. Rep. 859,) considered especially two prior patents, one granted to David Zug, October 4, 1859, No. 25,697, and the other granted to F. Ball, October 18, 1859, No. 25,797. In considering those patents, on the question of infringement as well as on the question of novelty, the circuit court said: 'The two claims of the Graham patent, which are alone in controversy here, are the first and second. The first claim is for a combination of the finger-beam with the gearing-carriage by means of the vibratable link, the draught-rod, and the two swivel-joints, M and M', so that the finger-beam may both rise and fall at either end, and rock backward and forward; and the second claim is the same as the first, with this only added: that an arm is attached to the vibratable link by which the rocking of the finger-beam is controlled by the driver. The object of this invention, as set forth in these two claims, seems to be mainly to produce the rocking motion of the finger-beam as described and by the method described. In the Ball patent, while there may be said to be something equivalent to the swivel-joint, M, of the plaintiff's machine, where it is attached to the frame, and also something similar to the draught-rod and the arm, there is nothing to produce the rocking motion, which is the essential object in the first two claims of the plaintiff's machine, and consequently there is no swivel-joint, M', as in the plaintiff's machine; so that there is nothing in the Ball machine to prevent the validity of the combination of the first two claims of the plaintiff's patent. The Zug machine has, if not a swivel-joint like that of the plaintiff's at M, where connected with the frame, something which seems substantially similar. It has a vibratable link, and it has something which is equivalent to the draught-rod, the main difference being that it is attached beneath the shoe instead of above, but there is no swivel-joint, M'. There is an arm which is attached to the draught-rod and shoe by which it can be raised and lowered, but Zug claims in his patent that when the machine is in progress over the field, and when the finger-bar strikes any obstacle, there is a device in a box, in which the forward part of the draught-rod is fastened, by which the finger-bar yields to the obstacle; and that there is also a mode by which the vibratable rod is attached to the frame, called 'joint 16,' in his patent, and what has been termed an 'open clevis,' where the vibratable link is connected with the draught-rod, by which a motion is given to the finger-bar, and thus the finger-bar is relieved from the obstacle. Zug does not claim that the finger-bar in his machine has a rocking motion, but only that the mode by which the draught-rod is fastened, and the motion given to the finger-bar, prevents the obstacle which the machine may meet from doing damage to it. These seem to be the main differences between the two machines, and the question is whether there is anything in the Zug machine to prevent the combination named in the first two claims of the plaintiff's patent from being valid. The defendants' machine has the swivel-joint attached to the frame, the vibratable link in the same form as the plaintiff's, and the draught-rod attached forward in substantially the same way as the plaintiff's; but instead of having a swivel-joint at M', as stated in plaintiff's machine, forward of the shoe, the draught-rod has a swivel-joint at the rear end of the shoe; and there is an arm attached to a part of the vibratable link substantially like that of the plaintiff's; and the substantial difference, as it seems, between the plaintiff's device, as described in the first and second claims, and that of defendants, is that the draught-rod is attached to the rear part of the shoe, and not to the forward part, as in the plaintiff's patent. There are also other devices in the defendants' machine which may make it different from the plaintiff's. But as to the swivel-joint, the vibratable link, and the mode in which the motion is produced in the finger-bar, there does not seem to be much difference in substance; and in both machines, and by substantially the same means, there is produced a rocking motion. In this connection it is noticeable that the defendants, in the claim set forth in the specification of their patent, make a rocking motion of the shoe and cutter a feature of their combination. In their second claim they say that they claim the combination of the 'shoe, and the drag-bar extending over and in rear of the shoe, and its swiveled pin connecting it with the rear end of the shoe, whereby the drag-bar sustains the thrust of the shoe, while leaving it free to rock on its hinges.' Again, in their fifth claim, they say that they claim the combination 'of the shoe, the forked coupling-arm, the drag-bar extending over and in the rear of the shoe, the swivel-pin connecting the two, the rocking lever and the detent mounted on the drag-bar, and the adjustable link connection between the lever and coupling-arm, whereby the shoe readily may be rocked or adjusted.' And again, the motion which seems to be produced in the operation of plaintiff's machine is more distinctly described in the seventh claim made by the defendants in their patent, as follows: The combination 'of the shoe, the drag-bar, the forked coupling-arm.' and the other elements of mechanism before mentioned, 'whereby the shoe is first rocked, and then lifted by one continuous movement of the lever.' It must be confessed that the difference between the Zug machine and the first two claims of plaintiff's patent is not very marked. But in view of the description contained in the specifications of Zug's patent, and in those of the plaintiff's patent, we are inclined to think that the plaintiff's patent may be sustained on the ground that there is a difference in the manner in which the draught-rod is attached to the shoe, and the finger-bar to the shoe and to the vibratable link; and that there is also a difference in the manner in which the combination of the various parts are adjusted; and that there is an effect produced in the plaintiff's machine which does not exist in the Zug machine. In the plaintiff's machine there is a rocking motion, and not a mere vibratory motion, such as exists in the Zug machine in consequence of the open clevis; neither is there in the plaintiff's machine the yielding of the draught-rod, as described in the Zug patent; and it is obvious, too, from the manner in which the parts are constructed in the Zug machine, that there is only a small vibratory action of the finger-bar; so that, on the whole, we think that the combination, as described in plaintiff's patent, may be sustained. Then, from what we have said, we do not see that there can be any substantial difference between the combination, as described, in the plaintiff's machine, of the swivel-joints, draught-rod, and vibratable link, with the frame and shoe and finger-bar, and that of the defendants' machine. The differences which have been stated between the two machines in this respect do not constitute any difference in principle. The one is substantially the same thing as the other. The additions which have been made to the defendants' machine, such as the device by which the pressure of the cutting apparatus upon the ground is regulated, and other devices which have been made, do not affect the combination as claimed in the plaintiff's machine. The attachment of the draught-rod to the rear part of the shoe, instead of to the front part, which is substantially the only difference that there seems to be in the mode of construction, cannot constitute a difference in principle, and cannot prevent the defendants' machine from being an infringement of the plaintiff's patent. It may be said that there are differences also between the defendants' machine and that of the plaintiff, in the manner in which the arm is attached to the vibratable link, and also as to the mode in which the force applied to the arm may operate upon the finger-bar; but these are differences of form, and not of substance.'
The specification referred to in that opinion as the specification of the defendants, and quotations from claims 2, 5, and 7 in which are made, is a patent under which the defendants' machines were constructed, No. 193,770, granted July 31, 1877, to Leander J. McCormick, William R. Baker, and Lambert Erpelding, assignors to C. H. and L. J. McCormick. The invention of the patentee is carried back to November or December, 1863, at which time he made a model containing his perfected invention, which he shortly afterwards sent to his patent solicitors, and which was sent to the patent-office with the applicable sworn to February 25, 1864, and filed December 4, 1865. The delay seems not to have been attributable to the applicant. The patents introduced in this case as affecting the questions of novelty and infringement, and which were prior to the invention of Graham, and which seem to be relied on by the appellee, were as follows: To George C. Dolph, No. 18,141, issued September 8, 1857; to W. S. Stetson and R. F. Maynard, No. 24,063, issued May 17, 1859; the Zug patent; the Ball patent; and one to Stephen S. Bartlett, No. 34,545, issued February 25, 1862.
We are of opinion that the circuit court took an erroneous view of the question of infringement. The capacity of the fingerbeam to 'rise and fall freely at either end.' spoken of in the specification of the plaintiff's patent, was not a new thing with him, but had been used for many years in mowing and reaping machines, the finger-beam moving on a pivot at its inner end; and the plaintiff, in the specification of his patent of July 23, 1867, stated that he did not claim the connecting of the finger-bar, I, to the bar, J, by the joint, h, because that had been previously done. It was also old to have a lever connected by a loose connection, by which the driver could tip up the front edge of the finger-bar arbitrarily, and secure it so that it could not fall below the inclination at which he had set it, although it was left free to tip up further automatically. The arrangement spoken of in the plaintiff's specification, whereby the finger-beam can 'rock forward and backward without twisting the link that forms its connection with the gearing-carriage,' was secured by making the pivot on which the crosswise tilt takes place, at a point in front of the beam, so that the pivot rises and falls with the guard-fingers, and an arm is provided by which the movement of the finger-beam in both directions is controlled by the driver, instead of its being independent of his control in its downward movement, as was the case in prior machines. It is apparent from the proceedings in the patent-office on his application, and from the terms of his specification and of claims 1 and 2 as granted, that the intention was to limit the modification which he made, to the particular location of the swivel-joint, M', on which the crosswise rocking movement takes place, and to the rigid arm by which the positive rocking of the finger-beam in both directions is effected and controlled. In a mowing-machine for cutting grass, where it is desirable to cut near to the ground in order to cut and use as much of the grass as possible, the front edge of the finger-beam must bear closely on the surface of the ground, with a yielding pressure, so that it will rise freely in order to pass over such irregularities in the surface of the ground as do not require that the finger-beam should be bodily lifted. This yielding pressure is secured by a capacity in it to swing upward on its heel as a pivot, because, if its front edge were held rigidly down upon the ground, the guard-fingers would be driven into every obstruction. This necessity does not exist in machines for harvesting grain, because in them the finger-beam is set several inches above the ground, the grain being the desirable object, rather than the straw, and the carrying of the finger-beam at an elevation prevents its meeting with obstructions; and hence there is no such occasion, as in mowing-machines, for its front edge being left free to swing upward.
The capacity, if any, which Graham added to the machines in general use, was one for raising and lowering the pivot of oscillation, which had before been stationary, and a further capacity for a positive downward tilt or forward rocking, which enabled the driver to tip up the heel of the finger-beam, and force the fingers under lodged grain of grass. The rocking forward and backward, spoken of in the plaintiff's specification, is applied to a tilting backward which rocks the front of the finger-beam upward, and to a tilting forward which rocks the heel of that beam upward and its front downward. In the defendants' machine there is no such rocking backward and forward, but there is a swinging motion, the same as in the prior Ball patent; the pivot on which the tilting takes place being in the rear of the finger-beam, and there being no means of positively tipping the front of the beam downward, or of raising its heel to force its front edge and the finger-guards downward. In the Ball patent, the draughtrod passes under the finger-beam, and in the defendants' machine the draught-rod passes over the finger-beam, to reach the pivotal point, which is in both cases the same. In both of them the weight of the finger-beam, being in front of the pivot, tends to hold its front edge down upon the ground, but, when the finger-guards strike any elevation, the front edge of the beam swings up freely on its rear pivot, the tendency being for tis weight to carry it back to its original position as soon as the elevation is passed. In the Ball patent there is a lever connected with a chain which can raise the finger-beam or hold it up, but cannot affirmatively depress it, its downward movement being dependent solely upon the fact that its weight is in front of the pivot on which it turns. In the defendants' machine there is a substitute for the Ball chain, namely, a loose sliding link, which permits of the same upward movement that the chain does, and which cannot force or hold the beam down. In both the Ball machine and the defendants' machine, the propelling force from the draught-rod is exerted from the pivot in the rear, and in both the front edge of the finger-beam, where the guards are situated, is left free for the swinging movement above mentioned.
In contradistinction to this, the pivotal connection between the finger-beam and the draught-rod in the plaintiff's machine, instead of being at the heel of the finger-beam, is placed in front of it, at the swivel-joint, M', and a rigid arm, l, is mounted on a vibratable link, so that the beam can thereby be rocked backward and forward by the driver, to tip the heel of the shoe up and the front down, or the front up and the heel down; the heel of the finger-beam being lifted by the forward rocking of the arm, l, and its front being lifted by the backward rocking of such arm. By the locking of the lever which works the arm the finger-beam can be set at any desired inclination. The movement of the finger-beam in each direction is positive. In the defendants' machine it swings on a pivot at its rear, which is not raised or lowered by the upward or downward tilt of the guard-fingers, while in the plaintiff's machine, as the finger-beam rocks on the swivel-joint, M', the heel of the finger-beam is lifted from the ground as the fingerguards are turned downward.
In the Zug patent of October, 1859, there is a finger-beam attached to the rear end of the machine by a vibratable link, which is itself attached at its rear end loosely to the machine, and is also fitted loosely within the draught-rod, so that there is a considerable rising and falling motion to the front end of the shoe, whereby the guard-fingers can be elevated and depressed to a considerable extent, and in substantially the same manner as in the defendants' machine, the raising and lowering of them being accomplished at a similar point as in the defendants' machine; the difference in the rising and falling motion of the finger-beam in the Zug and in the defendants' machine being a difference only in degree.
In the Ball patent of October, 1859, there is a finger-beam attached by a hinged, vibratable link, and there is a draught-rod, which is hinged at its front end. A shoe is attached to the rear end of the draught-rod, with a free up-and-down hinged joint. The finger-beam of the machine is attached in front of this hinge, and such hinged connection admits of the rising and falling of the front of the shoe and of the finger-beam. This motion is not a rocking motion, as in the plaintiff's patent, but is substantially the same rising and falling motion that is found in the defendants' machine,-the only material difference being that, in the Ball patent, the draught-rod extends under the shoe and the finger-beam, and prevents them from falling down lower than a horizontal position; whereas, in the defendants' machine, the draught-rod extends over the shoe and finger-beam to the same point of attachment as in the Ball patent, and thus the finger-beam can fall lower than in the Ball patent, and even below a horizontal position; but the finger-beam in the Ball patent can rise and fall as freely at either end as in the defendants' or the plaintiff's machine, and the crosswise rising and falling motion in the Ball patent is of the same character as in the defendants' machine, but wholly unlike the rocking motion, or the forward and backward motion, of the finger-beam in the plaintiff's patent. In the Bartlett patent of February, 1862, there is a finger-beam attached at its rear by a vibratable link, which has a swivel-joint at its outer end, and a free joint at its inner end, in connection with a shoe and with a draught-rod which extends from the front end of the machine to the rear end of the shoe, and the finger-beam is attached to the shoe in front of the vibratable link. There is also a lever which rocks forward and backward, and is so arranged that the finger-beam and the draught-rod rise and fall, and the finger-beam rocks forward and backward, substantially in the same manner as in the plaintiff's patent, though with a less perfect motion. But there is considerable forward and backward rocking motion, and the rocking takes place with substantially rigid lever devices, and there is substantially the same rising and falling motion of the finger-beam at either end as in the plaintiff's patent.
In view of this prior state of the art, the question of infringement stands in this way: In the defendants' machine there is, in combination with the gearing-frame, a vibratable link connection with the finger-beam, not very materially different from the vibratable link connection in the plaintiff's patent; but the draught-rod in the defendants' machine is different from that of the plaintiff's patent, in that its forward connection is not substantially a swivel-joint, but is so hinged as to afford no torsional action, and the draught-rod is connected with the shoe at nearly the extreme rear end of the shoe, while the draught-rod in the plaintiff's patent has swivel-joints at both its forward and rear ends, and such joints have substantially a free torsional capacity. So, too, the draught-rod in the plaintiff's patent is attached to the shoe in front of the finger-beam, instead of at the extreme rear end of the shoe, as in the defendants' machine. As a consequence of these several arrangements, the finger-beam in the plaintiff's patent rocks freely both forward and backward, in such manner that the rear of the finger-beam may be elevated and the guards be thrown down, or the front of it may be elevated and the guards be thrown up, with an equal rocking motion in either direction; whereas, in the defendants' machine, when the finger-beam is operated upon by the lever, the front part of it merely rises and falls with a swinging motion from its pivoted point in the rear. The defendants' machine differs from the plaintiff's patent, in that its finger-beam cannot be raised at all at its rear by the lifting lever, and cannot be positively moved downward by that lever. Therefore, as the finger-beam in the defendants' machine does not have the motion which results from the combination of the elements specified in the first claim of the plaintiff's patent, and does not 'rock forward and backward' in the sense of that claim, or in the sense described in the specification of the plaintiff's patent, it does not infringe such first claim. Nor does it contain the swivel-joint, M', specified in the first claim, located and operating as in the plaintiff's patent. The first claim of that patent must, in view of the state of the art, and of the special limitations put upon it on the requirement of the patent-office, be limited to the special construction and arrangement set forth in that claim.
The same views apply to the second claim of the patent, which contains combined all the elements set forth in the first claim, with the addition of the rigid arm, l. That arm, in the plaintiff's patent, has a rigid connection with the vibratable link to which it is attached, and through such arm the finger-beam is made to rock backward or forward by positive action, in either direction; while in the defendants' machine there is no such rigid arm, but only a connection by which the front of the finger-beam can be lifted, while it falls by its own weight when released, instead of being positively forced down, as in the plaintiff's patent. This species of lifting device was old.
In regard to the extracts set forth in the opinion of the circuit court from the defendants' patent of July, 1877, we are of opinion that the second, fifth, and seventh claims of that patent, in speaking of the shoe as 'rocking,' can only refer to its swinging on a hinge at its rear end; and that the term 'rocking' is not used in the sense in which it is used in the plaintiff's patent, because neither in the defendants' patent nor in their machine has their shoe or their finger-beam any such rocking motion as is described in the plaintiff's patent. It results from these views that, on a proper construction of claims 1 and 2 of the plaintiff's patent, the defendants have not infringed it; and that the decree of the circuit court must be reversed, and the cause be remanded, with a direction to dismiss the bill of complaint, with costs.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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