DEERE & CO. v. J. I. CASE PLOW WORKS, 56 F. 841

WOODS, Circuit Judge, (after stating the facts.) If the decision of the circuit court is open to just criticism it is because it was not put upon the ground that the claims in suit are without novelty. In Florsheim v. Schilling, 137 U. S. 64, 11 Sup. Ct.

Rep. 20, it was urged that the circuit court had erred “in finding that there was no novelty in complainant’s invention, because one feature was found in one old patent, and another feature in another, and still another feature in a third patent, all of which contained the matter of the claims of the complainant’s patent;” but the supreme court overruled the objection, and quoted as follows from Pickering v. McCullough, 104 U. S. 310, 318, and Burt v. Evory, 133 U. S. 349, 10 Sup. Ct.

Rep. 394: “In a patentable combination of old elements all the constituents must so enter into it as that each qualifies every other. * * * It must form either a new machine of a distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions.” “The combination of old devices into a new article, without producing any new mode of operation, is not invention.” That court has repeatedly held that “it is not enough that a thing shall be new in the sense that in the shape or form in which it is produced it shall not have been before known, and that it shall be useful, but it must, under the constitution and the statute, amount to an invention or discovery.” Cases on the subject are cited in Hill v.

Wooster, 132 U. S. 693, 10 Sup. Ct. Rep. 228, and Thompson v. Boisselier, 114 U. S. 1, 5 Sup. Ct. Rep. 1042. The constituent elements of the claims in suit are proved and conceded to be all old. As combined, they are without essential change of individual structure or function, and they effect by their co-operation no distinctly new result. In the specification of the patent the only novelty claimed is in features of construction. The one feature insisted upon in argument is the diverging and adjustable arms, and it is the adjustability on which chief reliance seems to be placed.

But there is no novelty in that, nor in the means of producing it, whether it be done upon parallel or divergent lines. A corresponding adjustability between the runners of the cultivators is shown in the older patents, produced by similar means, and effecting in a measure the beneficial results attributed to the aims in question.

Similar arms, with shovels attached, are found in the older devices, and it involved no invention, and but little skill, to put such arms on the outside of the runners of King & Morgan, and to duplicate in them the means of adjustment already illustrated in the runners of older cultivators. Stress is laid by the complainant’s expert upon the fact that the diverging arms of the claims are secured to the smoothing boards.

Insisting that an indirect connection is within the scope of the claims, he pronounces the respondent’s construction an infringement, but admits that if the arms, instead of being secured to the smoothing boards, were attached to bars extending laterally from the runners, they would not be within the claims, ‘‘unless the bars were very near the smoothing planks.” Neither infringement nor patentability can reasonably be made to depend upon tin; distances between the parts of such a combination, nor upon any consideration so insignificant and void of effect upon the operation of the device.

The decree below should be affirmed, with costs, and it is so ordered.