B. F. AVERY & SONS v. J. I. CASE PLOW WORKS, 148 F. 214

BAKER, Circuit Judge (after stating the facts). Without going over the details of construction exhibited in prior plows and patents, the state of the art when Aver)'- filed his application may be summarized thus: The middle-burster plow had been in use for more than 30 •years. Many inventors had directed their efforts to its improvement, particularly in the way of providing a runner or shoe to regulate the depth of the furrow, and a rudder to prevent veering.

There were single runners and double runners, some sustained by rods depending from the moldboards, others by rods from other parts of the plow-structure, some rigid, others adjustable; various rudders, some stationary, others adjustable; runners without rudders, stationary runners with adjustable rudders, stationary rudders with adjustable runners; and, finally, a double runner pivoted at its forward end to the standard, -and having its rear end adjustably sustained by rods from the plow-structure, together with a rudder pivoted at its forward end between the members of the runner, and having its rear end adjustably secured to the runner.

In this most advanced construction two separate adjustments by two separate means of adjustment were required. Avery devised for use in a middle-burster plow a combination in which a rigid support extends from the plow-structure to the rear end of the runner, and sustains, by means of a through-bolt, both the runner and the rudder in adjustable relations to each other and to the plow. No prior structure anticipates the combination that Avery actually made. But appellee denies that invention was involved.

All of the elements were old, and if Avery had made merely a selection and. rearrangement of old elements, without producing any new result,' want of invention would be clear. Greist Mfg. Co. v. Parsons, 125 Fed. 116, 60 C. C. A. 34. Or if he were only a detail improver, he could not exclude others from gleaning in the same open fields. Milwaukee Carving Co. v. Brunswick Co., 126 Fed. 171, 61 C. C. A. 175.

But, though old elements were used, the combination was not merely -new in specific construction, but was new in kind; and in this very ancient and familiar ‘art we do not see that the most gifted inventor -could do more than produce a new result by a new mode of operation in some minor adjunct of the main structure. Inasmuch as Avery did this, he was entitled to generic as well as specific claims. Lamson Consolidated Store Service Co. v. Hillman, 123 Fed. 416, 59 C. C. A. 510: Ries v. Barth Mfg. Co., 136 Fed. 850, 69 C. C. A. 528. We have been speaking of what Avery did with the plow.

What •he did on paper is another matter. So far as he has failed to claim distinctly his invention, the public may profit by the disclosure thereof. It is admitted that the broad claims, 2 to G, inclusive, are infringed if they are valid. Omitting- the general features of the plow, claim 5 calls for a pivoted depth-runner of two sections, means for adjusting the height of the rear ends thereof, a rudder pivoted between the runner-sections, and means for adjusting the height of the rear end of the rudder independently of the adjustment of the runner.

This is not limited to the combination, in a middle-burster plow, of a rigid support, a pivoted runner, a pivoted rudder, and a suitable means of securing the runner and the rudder in adjustable relations to each other and to the plow at one operation. It reads exactty upon the old plows, in which two separate adjustments by two separate means were required.

And it responds to the general statement of invention in the specification: “Divided runners pivoted at tlieir forward ends to the standard, and ad-justably connected at their rear ends to the moldboard, and a rubber piv-otally mounted between the portions of the depth-runner, and means for adjusting the rudder to different depths with respect to the runner. * * * A middle-burster plow which shall be provided with a depth-runner and a guiding-rudder, both of which are adjustable.” As it stands, the claim is anticipated, void, and it is not in our power to redraft the patent.

Similarly, claim 4, calling for a pivoted runner, means for adjusting the height of the rear end thereof and a pivoted runner, is void, because it too may be read upon old structures. But in claims 2, 3, and 6, disregarding the differentiations as immaterial to the present view, we find a combination of a pivoted runner, a pivoted rudder, and means for adjusting both the runner and the rudder. Appellants insist that these claims cover genericafiy the conception of effecting the two adjustments by one instrumentality at one operation. The word “means” is plural in form.

It is frequently and properly used as a plural: likewise as a singular. Here there is no article, no adjective, no predicate to indicate the number. However, if this ambiguity were all we had to face, we might be able to sustain these claims, on the principle that a patent should be construed so as to save rather than to destroy it, by saying that, since each essential element should be named separately, and since the word “means” occurs but once, it points to a single device as performing the two functions.

Not only did Avery in his original application fail to state and claim that he had devised a combination which was new in kind as well as new in specific construction, but his attorneys in submitting the substituted claims also failed. They made no distinctions between claims 4 and 5, on the one hand, and claims 2, 3, and 6, on the other.

They asserted that the essential feature in each claim was a pivoted runner, with a rudder pivoted thereto, whereby both were, adjustable, and they answered the reference patents by pointing out that in them the runners were not pivoted, and therefore a double adjustment was impossible. > The fact that the specific description and specific claims portrajr a combination in which one means effects the two adjustments at one operation does not alter the case. That fact only establishes that Avery asserted that there was utility, novelty, and invention in the specific construction.

For aught that the patent “particularly points out and distinctly claims,” the novelty and invention may have lain wholly in the specific form of some one else’s generic combination, It is only by going- to the prior art that we learn that Avery might have made and held generic claims. But this information does not enable us to afford protection for what the patent fails to. point out particularly and to claim distinctly. Respecting claims 7 and 8, what we have said in reference to Avery’s actual structure establishes their validity.

In appellee's middle-burster plow appears the combination of the runner in two sections, pivoted to the standard, the rudder pivoted between the runner-sections, rigid brace-rods extending to each side of the runner, and the bolt passing through the rods and sustaining the runner and the rudder in adjustable relations to each other and to the plow. The structure is so identical with that of the appellants that the only contention of noninfringement is based on the assertion that appellee’s brace-rods do not depend from the moldboard.

Claim 7 mentions “brace-rods rigidly secured to the moldboard,” and claim 8 “rigid brace-rods extending from the moldboard.” Even if the assertion respecting the character of appellee’s construction were true, we do not think infringement would be avoided. It was old to attach the upper ends of the brace-rods to various parts of the plow-structure, including the moldboard. It was old to brace the moldboard by extending rods from it to suitable rigid parts of the plow. It was also old to brace the moldboard by means of a broad plate or frog attached to the standard, and to which the moldboard is fastened.

In claims 7 and 8 the new use of the brace-rods is to bring them down as a rigid support for the through-bolt, which holds both the runner and the rudder in adjustable relations to each other and to the plow. This feature, and this feature alone, saves the bringing together of the old elements from being held void for want of invention. This feature may be availed of equally well whether the brace-rods depend from the moldboard or from any other suitable part of the plow-structure^. In Adam v. Folger, 120 Fed. 260, 50 C. C.

A. 540, one element in Folger’s combination was described as being “a supplemental valve, arranged in the plug of the main valve.” Folger’s invention lay in conceiving and putting into workable form the idea of regulating separately the flow of the water, while preserving the unity of action of the supply valves for both water and gas. The real invention could be put to use, but in a less desirable way, by arranging the supplemental valve, which was an essential element, outside of the plug of the main valve.

But we held that such a change did not avoid infringement, saying: "It is well settled that there is no infringement if any one of the material parts of the combination is omitted, and that a patentee will not be beard to deny the materiality of any element included in bis combination claim. If a patentee claims eight elements to produce a certain result, when seven will do it. anybody may use the seven without infringing 1 lie claim, and the patentee has practically lost liis invention by declaring the materiality of an element that was in fact, immaterial.

But form, location, and sequence of elements are all immaterial, unless form or location or sequence is essential to the result, or indispensable, by reason of the state of the art, to the novelty of the claims.” Here the result is obtained quite irrespective of the location of the upper ends of the brace-rods. Appellants reach the result by one location of the material element; appellee by another location equally well known, and the state of the art does not require the novelty of the claims to be predicated on a particular location. See, also, Cazier v. Mackie-Lovejoy Mfg. Co., 138 Fed. 654, 71 C. C.

A. 104; Machine Co. v. Murphy, 97 U. S. 120, 24 L. Ed. 935; Beach v. American Box Co. (C. C.) 63 Fed. 597; King Ax Co. v. Hubbard, 97 Fed. 795, 38 C. C. A. 423; Calculagraph Co. v. Wilson (C. C.) 132 Fed. 20; Benbow-Brammer Mfg. Co. v. Simpson Mfg. Co. (C. C.) 132 Fed. 614. But the assertion that the upper ends of appellee’s brace-rods are not attached to the moldboard we find to be specious. In using* middle-burster plows it is frequently desirable to have a moldboard of less width than that of the moldboard customarily supplied by the various manufacturers.

On examining their competitors’ plow, the appellee company perceived that they might obtain an advantage by offering a plow with virtually two moldboards. They made the broad plate or frog that is attached to the front of the standard of such a form' and width that the regular-sized moldboard might be removed, and the frog used as a smaller moldboard. Their brace-rods depend from the extreme edges of the frog.

Literal infringement is as clear as if they had first copied appellants’ plow exactly, then trimmed down the moldboard to the points where the bra'ce-rods are attached, and then-added the regular-sized moldboard to the structure. < The decree is reversed, with the direction to proceed further in conformity hereto.