SEYMOUR V. OSBORNE, 78 U. S. 516 (1870)

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U.S. Supreme Court

Seymour v. Osborne, 78 U.S. 11 Wall. 516 516 (1870)

Seymour v. Osborne

78 U.S. (11 Wall.) 516


1. The invention of William H. Seymour and of Palmer & Williams, explained and defined.

2. The grant of letters patent by the commissioner of patents when lawfully exercised, is prima facie evidence that the patentee is the first inventor of that which is described and claimed in them.

3. The settled practice in equity is to require a respondent to give notice in his answer of the names and residence of those persons whom he intends to prove to have possessed a prior knowledge of the invention, and where the same had been used.

4. Recitals in letters patent in the absence of fraud are conclusive evidence that the necessary oaths were taken before the patent was granted.

5. Where an invention does not embrace an entire machine, the part should be specified and pointed out, as ex. gr. the coulter of the plough, or the divider or sweep rake of a reaping machine, so that another party may construct the plough or reaping machine provided be does not use the part specified.

6. Neither reissued nor extended patents can be abrogated by an infringer, in a suit against him for infringement, upon the ground that the letters patent were procured by fraud in prosecuting the application for the same before the commissioner.

7. The act of the commissioner in accepting a surrender and granting a reissue is final and conclusive, and not reexaminable in a suit in the circuit court unless it is apparent upon the face of the patent that he has exceeded his authority or that there is such a repugnancy between the old and the new patent that it must be held as matter of legal construction that the new patent is not for the same invention as that embraced and secured in the original patent.

8. Interpolations in a reissued patent of new features or ingredients or devices, which were neither described, suggested, nor substantially indicated in the original specifications, drawings, or patent office model, are not allowed.

9. Parol testimony as to the scope of an original invention, is not allowable on an application for a reissue as the basis of interpolation of new matter.

10. The identity of invention in the original and reissued patent in such suits, is a question of comparison of the two instruments to be made by the court, aided or not by the testimony of experts, as it may or may not appear that one or both may contain technical terms requiring the assistance of such persons in defining them.

11. To raise such a question, the defendant in a patent suit must introduce the original patent.

12. A claim which might otherwise be held to be bad as covering a function or result, when containing the words "substantially as described," must

Page 78 U. S. 517

be construed in connection with the specification and be limited thereby, and when so construed, it may be held to be valid. The claims in this case, when so construed, were so held.

13. Changes in the construction and operation of an old machine, so as to adapt it to a new and valuable use which the old machine had not, are patentable, and may consist either in a material modification of old devices, or in a new and useful combination of the several parts of the old machine.

14. Utility, in the sense of the patent law, does not require such general utility as to supersede all other inventions that can accomplish the same object.

15. Crude and imperfect experiments do not confer a right to a patent. He is the first inventor who first perfects and adapts an invention to use.

16. Desertion of an alleged prior invention, consisting of a machine never patented, may be proved by showing that the inventor, after constructing it, broke it up or laid it aside, as something requiring more thought and experiment, provided it appears that those acts were done without any definite intention of resuming his experiments.

17. Under the act of Congress allowing reissues in divisions, it may require the use of several reissues to constitute a complete machine, and on a proceeding for infringement these may be introduced in one bill.

18. A description in a prior publication, in order to defeat a patent, must contain and exhibit a substantial representation of the patented improvement in such full, clear, and exact terms as to enable any person skilled in the art or science to which it appertains to make, construct, and practice the invention patented. It must be an account of a complete and operative invention, capable of being put into practical operation.

19. The extent to which either the inventor of a device or of an entire machine or of a mere combination can invoke the aid of the doctrine of equivalents is the same, except that a combination is not infringed unless by a machine containing all the material ingredients patented, or proper substitutes for one or more of such ingredients, well known to be such at the time when the patent was granted.

20. A question of infringement is best determined by the court by a comparison of a defendant's machines with mechanism described in patent and of their modes of operation.

21. The use of one post and a supporting frame attached thereto in a reaping machine is an obvious equivalent for the two posts specifically mentioned in the patent of Palmer and Williams.

The suit below was on a bill by W. H. Seymour and D. S. Morgan for the infringement by Osborne of five patents owned by them for improvement in reaping machinery.

Page 78 U. S. 518

Two of these patents covered the inventions of Seymour -- one (No. 72) relating to the shape or construction of the grain platforms and its special location in reference to the cutting apparatus -- the other (No. 1683) involving the gathering reel as an additional element to the combination just named. [Footnote 1]

The other three patents in controversy were granted to secure inventions made by Palmer and Williams, assignors of the complainants. Two of the latter patents (No. 1682 and No. 4) were for the employment of a discharging sweep rake in connection with the peculiarly shaped platform, which was conceded to have been the invention of Seymour. [Footnote 2]

The third patent of Palmer and Williams (No. 10,459) was for the means of sustaining the reel or grain-gathering device consisting of a prolonged axle and two supporting posts, placed at one end of the reel only, leaving the other end free. [Footnote 3]

The court below was of the opinion that the proofs of the complainants did not show any infringement, and so dismissed the bill. From this decree the complainants took this appeal.

The leading parts or features of a reaping machine are three in number.

First. The part which gathers or presses the standing

Page 78 U. S. 519

grain to the cutting apparatus, and this has been called a reel (Fig. 1).

Second. The cutting apparatus which severs the stalk, which cutting apparatus usually consisted of a vibrating scalloped sickle, sliding through a series of fingers or guards (Fig. 2).


Third. A platform on which the grain is received, after it has been severed from the stalk (Fig. 3).


In connection with the platform, there is also to be noticed its shape, and the arrangements for removing the grain therefrom and depositing it on the ground in gavels or bundles ready for the binder. The latter arrangement usually consisted, in practice, prior to the patents in controversy, of a hand rake and device for supporting the body of the raker on the machine, as shown in Figure 5, further on.

These several parts in the machine were necessarily so arranged with reference to each other as to cooperate in producing the desired result, viz., that of cutting the grain and depositing it on the ground in bundles, adapted to being readily bound into sheaves.

The reaping machine, when doing its work, passes around the field, the horses being attached in front, and to one side of it, and if, while cutting the first swath, the grain was to

Page 78 U. S. 520

pass directly back and fall on the ground in the rear of the sickle, as the horses came around with the machine to cut the second swath, they would walk over and trample upon this grain which had been just cut.

Thus, if S represents the standing grain and P the platform, and if the distinctly marked horse tracks, T, in the


cut, represent the path just passed over by the horses, in cutting the first swath, then the dotted horse tracks, t, show the path the horses will pass over on their next round.

If the grain be thrown from the platform so as to fall on the track just passed over by the horses (i.e., on the distinctly marked horse tracks T), it will then be out of the way of the horses on their next round. If, however, the grain be discharged directly backwards, immediately behind the sickle, it will be in the way of the horses on their second round, and, in that case, binders must be employed to follow the machine and bind the grain into sheaves and lay it to one side before the horses come around with the machine to cut the succeeding swath.

It is evident that the proper place to discharge the grain is in the path just passed over by the horses and behind the horses, because it will then be out of the way of the horses on their next round.

Perhaps the most usual mode of discharging grain practiced

Page 78 U. S. 521

prior to the patent in controversy here is shown in the accompanying sketch.


The plate represents the arrangements for discharging the grain and also the relative position of cutter, reel and platform, as well as that of the gavel or sheaf deposited on the ground. The raker is supported upon that machine by a seat or stand which sustains the lower part of his body, leaving the upper part of his body free to enable him to operate the hand rake with his arms. From this position he reaches the cut grain on the platform back of the reel and by a sweep of his arms delivers it on the ground, either diagonally or more or less at right angles to the track in the path passed over by the horses.

This mode of delivering the grain, however, was fatiguing to the raker, and frequently the grain was deposited in a straggling manner upon the ground, and more or less obliquely to the track or path of the machine.

Obed Hussey, one of the earliest inventors of reaping machines, constructed his machines without a reel, and with a square platform, and discharged the grain when cut immediately in the rear of the platform, as shown in the drawing, Figure 6.

Page 78 U. S. 522


In this machine, the grain was discharged directly into the path to be passed over by the horses in their next round, and had therefore to be gathered up immediately as fast as cut. Some machines were also constructed by Hussey with a straight guideboard on the platform, which was adjustable within certain limits and which, to a certain extent, caused the cut grain to be pressed to one side sufficiently for a single horse or tandem team to pass on the next round without trampling on the cut grain. Hussey also made machines with two platforms -- one platform attached to the rear of the other -- and employed two men, one to rake the grain back and the other to discharge it to one side. He likewise made a reaping machine with a square platform, to the rear of which was bolted an angular addition, giving to the whole where the addition was attached an angular form. This machine was made in 1848, and after being made, it was removed in the latter part of the summer of 1848 from Hussey's shop in Baltimore, of which place he was at the time a resident, to the railroad depot and (as the witnesses understood) to be shipped for trial, but they did not know where it was to go or whether in fact it was ever so shipped or tried. Sometime in 1849 or later this machine reappeared

Page 78 U. S. 523

at the shop of Hussey, and had the appearance of having been used some little. On its return to the shop, it was set aside, and nothing more was done to it or with it until it was looked up in connection with this suit.

An important question arose upon this state of facts as to whether that last machine, even if conceded to be the same in principle with that of the complainants, amounted in view of law to an anticipation of their invention.

The invention of Seymour consisted in constructing the platform upon which was received the grain in the shape of a quadrant or sector of a circle and placing it just behind the cutting apparatus and in such relation to the main frame that the cut grain could be swept around on the are of a circle, and dropped on to the ground behind the horses so as to be so far removed from the standing grain as to leave room for the horses and frame to pass between the standing grain and the gavels, thereby obviating the necessity of taking up the cut grain as fast as cut, and at the same time doing the work more perfectly. It is here shown.


Such being Seymour's invention, he obtained an original patent dated July 8, 1851, and by successive reissues and

Page 78 U. S. 524

divers divisions thereon, among other things, two claims were allowed to him, one in reissue No. 72, as follows, viz.:

"A quadrant-shaped platform, arranged relatively to the cutting apparatus substantially as herein described, for the purpose set forth."

The other claim allowed to him was in reissue No. 1683, on the basis of the same original patent, as follows, viz.:

"The combination in a harvesting machine of the cutting apparatus (to sever the stalks) with a reel, and with a quadrant-shaped platform located in the rear of the cutting apparatus, these three members being and operating as set forth."


In Figure 8 is shown a quadrant platform cutting apparatus, and the operation of discharging the grain by hand by sweeping it in the arc of a circle. The relative position of the parts also to the reel is shown, the discharging hand rake

Page 78 U. S. 525

striking the cut grain immediately after it is deposited by the reel on the platform.

The complainants alleged that the defendants infringed these two claims by the use of a machine such as is shown in the following sketch.


This machine was used with a hand rake. The defendants contended that the complainants' claim was for a quadrant-shaped platform only, and that their own platform was composed of two straight side pieces placed together at an angle.

The court below decided that although this form of the platform made it in effect a quadrant-shaped platform, yet that in view of Hussey's and of Nelson Platt's platform, the complainants were only legally entitled to hold under their claim the precise shape of platform invented and described by Seymour, and that as so limited, it had not been infringed by the defendants, and that the doctrine of equivalents could not be invoked in such a case on behalf of plaintiff's

Page 78 U. S. 526

patent, relying on Burr v. Duryee. [Footnote 4] The position thus assumed by the court below was pressed upon this Court by the counsel of the defendants, the now appellees.

The machine of Hussey last above referred to, with the angular piece bolted to the platform, was urged as having been a full and complete anticipation of Seymour's invention.

The complainants, or now appellants, on the other hand, contended that Seymour's invention of the quadrant platform was complete in or before the harvest of 1849; that Hussey's machine, with the angular rear piece, had no reel, and was therefore no answer to reissue No. 1683, which had a reel as part of its claim; and that as to reissue No. 72, Hussey was not proved to have anticipated Seymour as an inventor, and that his platform was in point of law an abandoned or incomplete experiment.

A machine of one Burral was set up in the answer but not in the argument. Irrespective of plain want of identity, it was proved to be posterior in date. It need not be described.

The inventions of Palmer and Williams involved in this suit are embraced in reissue No. 4 and No. 1682, and pertain to the employment of an automatic sweep rake in combination with the quadrant platform, which as a separate device was conceded as between these two inventors to have been the invention of Seymour.

The annexed description and Figure 10 (p. 78 U. S. 527) is taken from Palmer and Williams's patent, and the claim concerned in this case under reissued patent No. 4 was as follows:

"Discharging the cut grain from a quadrant-shaped platform, on which it falls as it is cut, by means of an automatic sweep rake, sweeping over the same substantially as described."

The defendants contended that this was a claim for a function or result, and as such was bad in law, and that the patent was therefore void.

Page 78 U. S. 527

The defendants also contended that there was no novelty in the invention, and that Palmer and Williams had been anticipated by Nelson Platt's patent, and although Palmer and Williams's machine differed from Platt's, yet there was no invention in the change from Nelson Platt's rake to the complainants'; that all that Palmer and Williams had in fact done was to take Platt's automatic sweep rake and put it upon Seymour's quadrant-shaped platform; and that doing this was not invention, but merely the exercise of ordinary mechanical skill.


This latter view was adopted by the circuit court.

Nelson Platt's patent was granted June 12, 1849, for a self-raking reaper, which is shown in Figure 11, on page 78 U. S. 528.

In this machine, the platform was propelled from the rear, and the grain, after being cut, was deposited on a rectangular platform, and was then raked across the rectangular platform, by one set of rakes acting from below, on to a second quadrant-shaped platform. The grain was then discharged from that second quadrant-shaped platform by a

Page 78 U. S. 528

vibrating rake which swept across it in the are of a circle on to the ground, the heads of grain lying towards the machine. The defendants did not insist that this was identical in construction with the complainants' invention, but that the skill of the mechanic only was required to change it to their invention. The court below adopted this view.


The complainants contended that the claims of Palmer and Williams' patents were to be construed for covering substantially the "means" described for discharging the grain "as specified" -- that "this means" was a combination of mechanism. The elements of the combination are a quadrant-shaped platform, a cutting apparatus, and an automatic sweep rake, and that these elements must sustain to each other, to constitute the thing patented, the following relations:

First. The quadrant-shaped platform must be directly behind the cutting apparatus.

Second. The automatic sweep rake must traverse the platform so as to sweep the grain from where it falls, as cut, round to the place of its destiny upon the ground.

Page 78 U. S. 529

Third. To accomplish this, the rake must have a certain relation to the cutting apparatus, to the platform, and to the material which has been laid upon the platform.

The complainants further contended that while, upon the one hand, the claim was for an entirely different invention from Platt's, yet that one form of the defendants' machine known as their Automatic Sweep Rake Machine, was a clear infringement.

The defendants' automatic sweep rake machine, alleged to infringe, is here shown.


The automatic rake in that machine swept over the platform from the cutter to the place of delivery. It was used with a platform of the same shape as referred to above in connection with the defendants' hand raking machine. The automatic rake swept the cut grain from where it fell on the platform to the point of delivery.

The peculiar mechanism or gearing by which the sweep rake in the defendants' machine was made to traverse their platform was admitted by the complainants to be different from that in their patent.

Page 78 U. S. 530

Upon the latter difference, the circuit court decided that defendants' automatic rake did not infringe the claims now in question, thereby limiting this claim of the complainants to the specific driving mechanism or machinery for gearing and actuating the sweep rake in its movement.

The claim of the complainants' patent reissue No. 1682 was in the following words:

"The combination of the cutting apparatus of a harvesting machine with a quadrant-shaped platform arranged in the rear thereof, and a sweep rake operated by mechanism in such manner that its teeth are caused to sweep over the platform in curves when acting on the grain, these parts being and operating substantially as hereinbefore set forth."

And it was contended by the complainants to be a claim to a combination consisting of

1. A cutting apparatus.

2. A quadrant-shaped platform combined with and placed behind the cutting apparatus.

3. An automatic sweep rake connected with the frame by a pivot and operated by cog wheels so as to sweep over the platform while moving the grain towards the delivery side of the platform.

The complainants insisted that the difference between this claim and that of reissue No. 4 was in this:

That the combination claimed in this patent, No. 1682, appertained exclusively to the operation of cutting the grain, receiving it upon and removing it from the platform. It did not (unless incidentally) include the means of carrying the rake back to seize a new gavel. The claim of No. 4 included also the means of carrying the rake back to get a new gavel after delivering the former one.

The defendants insisted that this patent was void as being identical with the claim of reissue No. 4 and as also being obnoxious to the objections urged against reissue No. 4.

Patent No. 10,459, granted to Palmer and Williams, was also alleged to have been infringed.

Page 78 U. S. 531

This patent merely related to the mode of supporting the reel. When a reel is supported at each end by a post or bearer, the post or bearer which is on that side or end of the reel which runs into the standing grain encounters obstructions, and these collect upon and impede the rotation of the reel. To avoid this, Palmer and Williams devised the mode of supporting the reel wholly on that side of the machine which did not run into the standing grain, and no support was provided at the other end of the reel. The claim for this invention was in these words:

"The method of hanging the reel so as to dispense with any post or reel bearer next to the standing grain, as herein described, thereby preventing the grain from getting caught and being held fast between the divider and a reel supporter."

The defendants' machine had but one post. The reel axle, however, was prolonged, and it was supported wholly on that side or end of the reel and by means of two bearings attached to that post. This mode of support is shown supra, in Figure 9, and was argued by the complainants' counsel to be substantially the same as that claimed in reissue 10,459.

The only alleged prior invention set up in the proofs against this particular patent was what is called the Ogle Machine. The only evidence of this machine was contained in the "Mechanics' Magazine," published in London in 1825.

A copy of the description and drawing from this book was put in evidence by the appellees.

An expert of the defendant testified as to this publication:

"I do not understand that it has any reel support at the grain side of the machine, it being represented as having two reel supports at the stubble side of the machine."

But the expert did not say positively that the reel had not any support on the grain side of the machine, but that he did not so understand it, and gave his reasons why he did

Page 78 U. S. 532

not so understand it, which was because there were two supports on the stubble side -- or, in other words, because there were two reel supports on the stubble side he inferred that there was none on the grain side.

On the other hand, the complainants contended that the presence of two reel bearings on the stubble side of the machine was not conclusive evidence of the absence of a bearing also on the grain side, because there might have been two on the stubble side to better support the shaft toward the center and keep it from sagging, as well as one on the grain side, and that for such purpose they might obviously be useful.

The experts of the complainants testified that these drawings, taken with the printed part of the description in the "Magazine," did not show what is described in this patent of the complainants and specified in the claim in controversy, and that they did not suggest the idea of this invention.

The counsel of the complainants insisted that the description in the first publication, to be available, must be such as to enable the public to practice the invention. [Footnote 5]

In addition to the points above, as to novelty and infringement, other grounds of objection were taken by the defendants to the validity of these reissued patents, among them these:

That Palmer and Williams never made oath to the application on which the reissued patent was granted, and therefore the reissue was void:

That the patentees did not specify and point out in their specifications and claims the parts which they claim as their respective inventions:

That the Commissioner of Patents had no jurisdiction to receive the surrender of the originals or grant the reissued patents thereon, because no evidence was produced before him to show that the originals were "inoperative and invalid:"

Page 78 U. S. 533

That the reissued letters patent were void because they were not granted for the same invention as the original patents.

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