Fay v. Cordesman/Opinion of the Court

This suit in equity of three several letters patent. The first is reissue No. 1,527, granted to John Richards, August 25, 1863, for a 'guide and support for scroll-saws,' the original patent, No. 35,390, having been patented to him, May 27, 1862, for an 'improved guide and support for scroll-saws.' The specification of the reissue is as follows, including what is inside of brackets and what is outside of brackets, omitting what is in italics:

'To all whom it may concern: Be it known that I, John     Richards, of Columbus, in the county of Franklin, and state      of Ohio, have invented a new and useful [method of guiding      and supporting] combined guide, guard and support for      scroll-saws; and I do hereby declare that the following is a      full, clear, and exact description of [one practical means of      carrying out my invention] the same, reference being had to      the accompanying drawings forming part of this specification,      in which [Figure] Fig. 1 is a perspective view of a portion     of [a] the table and [a] the saw-blade [of a 'scroll      saw-mill,' with my invention applied to the same.] and my      improved upper combined guide, guard and support. [Figure]     Fig. 2, a longitudinal section of the same connected to the     suspended stud of the building. [Figure] Fig. 3 is a     horizontal section [through the guide and support.] in the      line [through the guide and support.] in the line letters of      reference [where used] in [different] the several figures      indicate corresponding parts. [It has long been a x x, of Fig. 2. [The same] Similar which will work successfully while     [different] the several figures indicate corresponding parts. [It has long been a desideratum to obtain a scroll sawmill     which will work successfully while the upper end of the saw      blade is left free from a sash or upper straining device; and      this has never been attained until the development] The      nature of my invention [which] under this patent consists      [1st, in working the saw at a point above the table in a      groove which as steel, polished iron, or glass, or any other      known and suitable metal or substance, the upper end of the      saw being disconnected from any upper suspender or sash, but      supported and guided at its back edges and at its sides or      broad faces, and its lower end connected to any mechanical      device that will produce the desired motion in saw. It     consists second in  an adjustable guide and support whereby      different thicknesses of scroll or web saw may be used at      will. It consists, 3d, in attaching the anti-friction guide     and support to an adjustable device which constitutes a guard      to hold down the stuff being sawed, and also insures a      support of the saw at the point near where the sawing is      performed as well as above this point. My principle of     operating a scroll or web saw must not be confounded of the      saw at the point near where the sawing is performed as well      as above this point. My principle of operating a scroll or     web saw must not be confounded with the 'muley saw,' as in      the 'muley saw' it is common to employ guides attached to the      saw, such guides running in or upon bearings independant of      the saw-plate, whereas with the web or scroll saw worked      according to my discovery, the back of the blade or plate is      supported upon a hardened steel or other durable      anti-friction surface, and is guided laterally by sim ilar      surfaces, so that the saw is supported and guided without any      means of tension so that the saw is supported and guided      without any means of tension being employed. Furthermore,     'muley' saws are supported at each end by cross-heads and      only in the center by lateral guides; and a saw must be      employed that is strong enough in its cross-section to stand      the work. Now with my plan, I support the saw down saw-mills,     and enables me to use small, which is a new thing in this      class of saw-mills, and enables me to use small, light      saw-blades. Previously to my discovery of running the upper     end of the web or scroll saw in frictional contact with an      upper guide it was deemed an impracticable thing, and it is      now only by practical demonstration and long use that      saw-mill men are convinced rapidly wear out the guide.

The non-destruction or web saws will not cut through and of     time, although the pressure upon of the guide in a short      period of time, although the pressure upon it is immense, is      due to the fact of the guide being of hardened steel or other      smooth, hard material, over which the saw-plate glides with      but little frictional wear.] in the guide and back supporting      bars or plates in connection with the sliding guard, the same      constituting a combined guide, guard and enable others      skilled in the art to make upper portions of a scroll-saw      blade. To enable others skilled in the art to make and use my      invention, I will proceed to describe [one practical means in      which I have embodied it with great sucess; but, in doing so,      I do not wish to be understood as limiting myself to these      mechanical devices in themselves, as the principle may be      embodied in various other means and still not depart from the      discovery embodied in machinery that I desire to patent.] its      construction and operation with reference to the drawings.      [Not using] I do not use a sash [or] nor other means of      straining the saw S, [I] but fasten the lower end of the      [blade] same to the upper end of a stock or slide, S', of [a]      the pitman, by a set-screw, S2, or [I upper end of a stock or      slide, S', of blade to a device which will properly operate      the saw. The] in any other similar manner, and have its top     or upper [end of the saw] portion disconnected above the      table [T,] T. [I leave entirely disconnected, but in order to      stead or guide and support this free end during the saw      operation I attach a grooved steel guide to a] ''The said upper      portion of the saw is supported and guided by means of the      two parallel bars a a, and the angular plate b. The bars have      a lateral adjustment to accommodate saws of different      thicknesses, their purpose being to keep the saw in a true      vertical line, and to keep it from twisting, while the office      of the back plate, b b', is to support the saw against the      strain of the stuff on the teeth, when the work is being      shoved against it. The guides a a and back plate b b' are all     made of hardened steel, to prevent friction and wear. This     device a a b b' is fastened to the lower end of the sliding      strip or guard piece'' A, [other device which will answer as a      firm support to the guide, and as a guard to keep down the      lumber being sawed. The device A is attached to a] which is     fitted in a groove of a suspended stud [or timber] B, of the      building, [and is better if made adjustable by means of a      slot and clamp-bolt, such as designated by the letters e c d;      but other known means for adjusting this device a back plate, b, and two side plates shown, is formed of three parts, to-wit, firmly to the former, as shown. The a, a, which latter are bolted or screwed firmly to the former, as shown. The slots s through which the bolts f f pass are large enough to allow the plates a a a slight lateral adjustment whenever it is desired to use a saw with a greater or a guide of hard anti-friction surface, would be attained if a groove was formed or a guide of hard anti-friction surface, would be attained if a groove was formed in a thick steel plate, or other hard substance, except the advantage of accommodating saws of various thicknesses. I believe I am the first to use the grooved anti-friction guide, as well as the first to have the groove variable in width, and therefore I do not confine myself to adjustable guides and supports. The office of the back part of the groove or guide is to support the saw against the strain of the timber on the teeth when the work is being shoved against it, while the office of the lateral portions of the groove or guide is to keep the saw in a true vertical line and prevent it from twisting. The office of the guard A, which extends down nearly to the top of the table, is to hold down or prevent flying up of the 'stuff' or timber being sawed, and and at the same time bring the supporting guide to the saw right down to the place where the sawing is being performed, and thus insure the most perfect operation as well as an effectual supporting and guiding of the saw.] ''and confined accordingly, as the thickness of stuff being sawed required, by means of a clamping screw-bolt, c, and hand-nut, d. The bolt passes loosely through an oblong slot, e, of the guardstrip, but fastens firmly in the stud B, B, as shown. This guard rests in close contact, or nearly so, with the stuff being sawed, and keeps the same firmly down upon the table, while the device a a and b b' guides and supports the saw, as above stated. It will be seen that screw-bolts, f f, confine the plate b and bars to the strip or guard A, and that the holes or slots through the bars a areelongated so as to allow the guide-bars a a chance to move nearer together or further apart, to admit different thicknesses of saw-blade. It will also be seen that the guides, by being attached to the strip, are adjusted with it up and down, the said up and down adjustment being allowed by the slot e%2D of the strip; and thus the angular part b' of the plate b aids also in holding down the stuff, it having a vertical kerf, g, cut in it, to admit the saw-blade, and the quide and supporting plates or bars are always in proper position''. This [guard by its] arrangement also obviates the [heretofore] necessity of leaving the upper end of the saw-blade above the table unsupported and unguided, as it allows of the work or [timber] stuff being freely turned while the sawing is progressing, a clear open space between the guard and the table being left. [In the drawing I have shown the lower end of the guide forming an angle; this is to give a larger guard surface. This angular portion has a kerf, g, cut in it to admit the saw-plate to the back of the guide. I, however, do not limit myself to this form of guide.] ''The plate b might be made without the angular part b', but not answer so good good a purpose. I do not claim operating a scroll-saw without straining, nor do I claim the application of lateral guides to saws; neither do I claim an adjustable guard to prevent the stuff rising with the saw''.'

Reading, in the foregoing, what is outside of brackets, including what is in italic, and omitting what is inside of brackets, gives the text of the original specification. The original patent contained one claim, as follows:

'The guide bars a a, and the back plate b, in connection with     the sliding guard-strip A, the same constituting a combined      guide, guard and support for the top of a scroll-saw, and      operating substantially as herein described.'

The reissue contains five claims,

'(1) Running the upper portion

'(1) Running the upper portion a groove of an anti-friction     guide and support, substantially as and for the purpose      described. (2) Operating purpose described. (2) Operating     practically an unstrained web or scroll saw, by combining      with such saw-mills an upper anti-friction guide, which      supports the back of the saw-blade, and faces, substantially      as set forth. (3) faces, substantially as set forth. (3) The     use of anti-friction guides as a substitute for straining      devices, in the guide to be raised and lowered to suit the      thickness of the stuff, substantially as set forth. (4) An     anti-friction guide which is adjustable so as to accommodate      different thicknesses of saw-blades, and to compensate for      wear, in combination with the upper portion of a web-saw      blade, substantially as set forth. (5) The combination of the     anti-friction saw support and guide, or the equivalent      thereof, with an adjustableguard, or its equivalent, substantially as and for the      purpose set forth.'

Infringement of only claims 4 and 5 of the reissue is alleged. It is apparent, in reading the specification of the original patent and that of the reissue, that Richards contemplated the use of his improvements only in connection with a saw-blade, the upper end of which was free from any suspender or sash, and the lower end of which was so connected with mechanism as to obtain the desired motion in the saw. Claim 4 of the reissue, claims, as an element in the combination covered by that claim, 'the upper portion of a web-saw blade.'

The saw-blade shown in the drawings, and the only saw-blade which can have an upper portion capable of being free or disconnected, in the sense in which those words are used, is a reciprocating saw-blade, actuated from below, and alternately pushed and pulled.

The specification of the reissue states that Richards' saw is supported and guided 'without any means of tension being employed.'

The defendants use a band-saw, which is an endless saw, passing over wheels, and running constantly in one direction, towards the table on which the stuff lies, and having a tension over the peripheries of the wheels. For this reason, the defendants do not need nor do they have any guard which performs the function of the guard embraced as an element in the combination covered by claim 5 of the reissue, of holding down the stuff against the upward lifting action of the saw, because the saw is constantly passing downward. There is, therefore, no infringement of either claim 4 or claim 5.

The second patent sued on is No. 78,880, granted to J. A. Fay & Co., June 16, 1868, for an 'improvement in guides for band-saws,' on the invention of John Lemman. The specification says:

'Figure 1 is a front elevation of one of my improved guides;     Figure 2 is a side elevation of the same; Figure 3 is an      elevation of the auti-friction roller b, removed from the      guide; and Figure 4 is a partial plan, showing the Figure 3      is an elevation of the anti-friction roller b, removed from      the guide; and Figure 4 is a partial plan, showing the parts. In operating endless saws, guides. Similar letters of     reference in the different figures indicate corresponding      high speed at which these saws guides are needed both above and and below the wood. As is well known,     the high speed at which these saws are driven, and the small      amount of surface presented to the guide from the edge of the      saw-plate, cause fixed guides to wear away very fast, even if      made of hardened steel or glass, particularly when heavy      sawing is done, and the strain of the feed falls on the saw. Rolling guides, while they have partially overcome the     difficulty of friction and wear on the back of the saw,      cannot be constructed to give a proper lateral support to the      saw, as will hereafter be alluded to. The object of the     invention here illustrated is to obviate these several      difficulties, and give important advantages in operating saws      of this kind. Its nature consists in a combination of     anti-friction rollers and fixed guides, points to wear; the      fixed guides as a lateral support, and so constructed as to      accomodate saws of different widths, as hereinafter      explained. To enable others skilled in the art to make and     use my invention, I will proceed to describe its mode of      construction and the manner of operating the same, with the      aid of the drawings. a is a frame or support for the guides. It is cored out to receive the wheel b, with room for lateral     adjustment. On the top is a cylindrical extension, h,     intended to be connected to a bar, on which the whole      structure is adjusted up and down, to suit the thickness of      the wood being sawed. b is an anti-friction wheel of hardened     steel or other suitable material, mounted on an axis, f, as      shown in Fig. 3, and by red lines in Fig. 1. This axis has      conical bearings formed in the piece g, which allows of      compensation for wear, and by loosening the screws § s, the      wheel b and bearings g g can be adjusted laterally, so as to      bring different points of the periphery of wheel b in contact      with the saw. c 1     from turning and in a true line. These guides are so arranged     that two or more of them can be used and the others removed      or adjusted to receive a narrow saw, as shown in Fig.4. The     holes through which the screws d d pass are slotted, as shown      by red lines, Fig. 1. E is a section of a band-saw,      sufficiently wide to allow of all the plates, c c c, being      used. The wheel b is so arranged as to barely pass through     the plate m, and come in contact with the saw E. Oil-holes      are formed at i i, Fig. 1, communicating with the bearings of      axis f, as shown in Fig. 1. The operation will be readily      understood. Having thus explained the nature and objects of my invention, I do not     claim the use of an anti-friction roller applied to the back      of the saw; neither do I claim the fixed lateral guides.'

'The combination of the roller b with fixed lateral guides, c     c c, one or more, arranged and operating substantially in the      manner and for the purposes

This patent stands on very narrow ground. Anti-friction rollers narrow ground. Anti-friction rollers applied to the back of the saw are disclaimed and were old. Fixed lateral guides for he faces of the saw are disclaimed and were old. The text of the specification limits the invention to a combination of an anti-friction wheel to support the back or thin edge of the saw, presenting different points to wear, presenting different points to wear, with fixed guides to support laterally the faces of the saw, the fixed guides being so constructed as to widths. The anti-friction wheel, widths. The anti-friction wheel, by means of its conical bearings, can be advanced nearer, as it wears, to the back edge of the saw; and the wheel and its bearings are capable as to bring different points of the as to bring different points of the periphery of the wheel in contract with the back edge of the saw. to is manifestly that described to is manifestly that described in the Richards patent. The only point of invention dwelt on in the Lemman specification is the which, though it is to be an antifriction which, though it is to be an antifriction made of hardened steel or other suitable material, will still wear material, will still wear away on the surface presented to the edge of the saw; and the lateral adjustment enables different points of the periphery of the wheel to be brought into cintact with the saw, so as to present different points entire width of a periphery of a wheel may be utilized. The defendants have used a wheel which has two grooves in it, in one of which the saw runs and in either of which it can run. The wheel can be adjusted laterally, so as to bring the one or the other of the two grooves into use. But there is no adjustment to bring different points of the periphery of a smooth-faced wheel into use. In view of the state of the art and of the limitations of the specification there has been no infringement. Merely adjusting a wheel laterally, so as to give it different positions at different times, was a thing well known to mechanics; and running the the back edge of a saw in a groove in a roller existed in the prior Closterman device.

The third patent sued on is No. 120,949, granted to J. A. Fay & Co., November 14, 1871, for an 'improvement in band-sawing machines,' on the invention of William H. Doane and William P. McKee. Claims 1, 2, 3, and 4 of this patent are alleged to have been infringed, there being seven claims. The specification, so far as it is material to be cited, says:

'The first part of our invention relates to an improved form     of supporting frame and of he upper and lower with their      inclosed arbors, are made with their inclosed arbors, are      made easily accessible and removable for inspection and      repair, and relatively adjustable, so as to be brought into      exact line, and otherwise so regulated as to insure      hereinafter explained. * *  * Figure 1 is a perspective view      of a machine Figure 1 is a perspective view of a machine      embodying our improvements. Figure 2 is a vertical section of     the machine Figure 5 is a plan of the lower arbor-bearing. 5     is a plan of the lower arbor-bearing. The frame which     supports the operative parts of our machine consists of a      single casting of the peculiar form here represented; that is      to say, a base, A, the main column or standard A1,      (supporting the upper arbor-bearing and saw, guide,) a      shorter column or pedestal A%2D, a shorter column or pedestal      A * §§, which latter supports and is surmounted by the bench or      table B, on which the between the columns A1 and A%2D leaves      exposed a seat, which extends leaves exposed a seat, which      extends below the center of the lower arbor and is entirely      open upward, which seat forms an accessible and convenient      place for the attachment, inspection, and regulation, and,      when necessary, the ready detachment, of the lower      arborbearing, which bearing is constructed as follows: Bolted      or otherwise securely pillow-block, C, having vertical      flanges c c 1      bolts D D1, which, entering orifices in the box or bearing E      E1 of the lower in the box or bearing E E1 of the lower      fastening for the said bearing. A set-screw, G, tapped in the     bottom of G, tapped in the bottom of the the box E E1,      enables its adjustment and retention to horizontality, or      such and retention to horizontality, or such desired. Other     set-screws, H H1, passing desired. Other set-screws, H H1,     passing c c 1, near their rear end, enable the adjustment ''c      c      retention of said box to a common vertical plane with the      upper arbor. The end of the lower arbor most remote from the     pulley I carries the driving-pulley J. It will be seen that,      on the loosening of four screws, the entire lower arbor and      journal-box may from the machine, without detaching from the      machine, without detaching part of the standard A1 is curved      part of the standard A1 is curved forward, as represented,      and has a slot, a, to hold and guide to vertical path a step      or saddle, K, to which is pivoted a the upper arbor-bearing L      L1. The saddle K the upper arbor-bearing LL1. The saddle K     has a horizontal extension, k, which a nut, t, that rests on      a spring or cushion, O, in the bottom of the slot a. The      screw M being turned to the right or left elevates or      depresses the upper arbor-bearing, and, in so doing, causes      the proper tension to be imparted to the saw. Another screw,     N, that is tapped in the lug l, bears against the face of the      saddle K, and enables the regulation, or angular adjustment,      in a vertical plane, of the upper arbor-bearing. The     above-described capacity for angular adjustment of the      band-pulley arbors in their common plane enables the operator      to confine the path of the saw nicely nicely to the middle of      the pulley, or to shift it more or less towards the front      front or back portions of their peripherise, so as to cause      all parts to be equally worn. The spring O, while co-acting     with the screw M to preserve the proper tension of the saw,      also imparts an elastic and yielding quality to the tension. * *  * While preferring the described relative positions of      the pivot-screws D D1, and laterally adjusting screws H H1,      we do not confine ourselves thereto, as the pivot screws may      be situated near the rear and the adjusting screws near the      front portion of the box.'''

'(1) The frame A A1 A%2D, in combination combination with the     lower arbor-bearing, said frame being constructed as herein      described with a depression, A', permitting the ready removal      of he arbor, as as explained. (2) The arrangement of frame A     A1 A%2D A", and of the horizontally and vertically adjustable      arborbearing C D D1 E E1 G H A. (3) The arrangement of step or saddle K and its contained box or bearing L L1. (4) in      combination with the upper arbor L1 the lower arbor-bearing      E, adjustable both vertically and horizontally, as shown and      described and for the purpose set forth. (5) In combination      with the lower arbor, the upper arbor-bearing, adjustable in      a vertical plane by means of the screw M, nut T, and spring      O, as and for the purpose designated. (6) The combination of      the slotted standard A1 a, saddle K k, arborbearing L L1 l,      nut T, screws M N, and spring or cushion O, as shown and      described, for the purpose set forth.'

As to claim 1, it is for a combination of the three-sided frame A A' A%2D, with the lower arbor-bearing, when the frame is constrcuted with a depression, A'", intervening between the columns A' and A%2D, which leaves exposed a seat which is entirely open upward, so as to give convenient access to the lower arbor-bearing, to attach, inspect, and regulate it, and also detach it, with its journal-box, by lifting the arbor and journal-box bodily upward without removing the pulley from the arbor. In the defendants' machine the seat is not entirely open upward, and there is a hole hole through the body of the frame to receive the lower arbor-bearing, and the arbor-bearing cannot be removed without detaching the pulley from the arbor. This claims is not infringed.

As to claim 2, it is for the arrangement and combination of the three-sided frame A A' A%2D and the depression A'" with the horizontally and vertically adjustable arbor-bearing, consisting of the pillowblock or pedestal C, the two co-axial horizontal bolts, D D', the box or bearing E E * §, the vertical set-screw G which adjusts the box E E * § to horizontality, the horizontal set-screw H which adjusts the box E E * § to a common vertical plane with the upper arbor, and the base A which carries the pillow-block or pedestal C. All these features in combination are made necessary in claim 2. It claims a combination of the frame and depression of claim 1 with the special construction of arbor-bearing set forth. The defendants do not have the frame and depression of claim 1, as already shown, and thus to not have that element of the combination covered by claim 2. Moreover, the co-axial bolts D D * § are a necessary feature of the peculiar arbor-bearing of the patent, and no such bolts are found in the defendants' machine; and, if it has any any means of adjusting the lower arbor-bearing, either horizontally or vertically, in the sense in which such adjustment is described in the patent, it has not the same means or equivalent means to what is found in the patent.

As to claim 3, it is for the arrangement of the step or saddle, K, with the upper arbor-bearing, L L * §, contained in it. What is the arrangement of the step or saddle, K, in connection with the arborbearing? The saddle moves through vertical slide-ways and it has pivoted to it a lug, l, which depends rigidly from the arbor-bearing. A screw, N, tapped into the lug, l, bears against the face of the saddle, so as to allow of the adjustment in a vertical plane of the upper arbor-bearing. The saddle has also a horizontal extension, k, which bears on the point of a screw, M, occupying a nut, T, which rests on a spring or cushion, O, in the bottom of the slot. By turning the screw, M, to the right or the left the upper arbor-bearing is elevated or depressed, and thus more or less tension is given to the saw. The spring, O, gives an elastic character to the tension. The effect of the arrangement or combination is to the tension. The effect of the arrangement or combination is to give an elastic vertical adjustment with the lug, l, and the extension, k, is to adjust the arbor-bearing up and sown and sidewise, and at the same time give an elastic tension to the saw. The spring carries the weight of the saddle. There can be no operative arrangement of the saddle with the arbor-bearing which does not include the lug, l, the screw, N, the extension, k, the screw M, the nut T, and the spring O. These are all elements in the arrangement or combination covered by claim 3. The spring is essential in the patent, as a part of claim 2. The defendants have a rigid saddle, and no spring. The fact that the spring is an element in claims 5 and 6 does not prevent its being an element in claim 3.

There being no infringements of of claims 2 and 3 there is none of claim 4.

The claims of the patents sued on in this case are claims for combinations. In such a claim, if the patentee specifies any element as entering into the combination, either directly by the language of the claim, or by such a reference to the descriptive part of the specification as carries such element into the claim, he makes such element material to the combination, and the court cannot declare it to be immaterial. It is his province to make his own claim and his privilege to restrict it. If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an omitted part is supplied by an equivalent device or instrumentality. Water-meter Co. v. Desper, 101 U.S. 332, 337; Gage v. Herring, 107 U.S. 640, 648; [S.C.. 2 Sup Cr. Rep. 819.]

The circuit court decreed a dismissal of the bill, and, the plaintiff having appealed, the decree is affirmed.