Opinion of the Court. made by hand-chiselling, and was intended to present or produce a neat finish. The making of such countersunk recess for substantially the same purpose in the patent of 1885 by a routing-tool instead of by hand-chiselling, did not rise to the dignity of an invention. The change involved nothing more than mechanical skill, which was produced by a change in the form of the routing machine. Again, the Gory patent of 1873 shows a lock with a round bottom front-plate, and it further shows that the front-plate of that lock projects below the body of the lock, though it does not project at the sides; while the Sargent patent, No. 210,807, dated December 10, 1878, shows a lock having a round bottom front-plate, which front-plate projects below and at the sides of the body of the lock, as in the Spiegel lock, patented in 1885. The purpose of rounding the front-plates at the bottom in both of the locks of the Gory and Sargent patents was to enable them to fit in a rounded or routed cavity. So the countersunk recess, made for the purpose of receiving the projecting front-plate flush, was old, and called for no invention on the part of Spiegel. What Spiegel did in this respect was what had long before been done in the use of the "old-style" locks. The fact that he made his mortise, including the countersunk recess, with a routing-tool instead of by hand-chiselling, certainly does not rise to the dignity of invention. In his arrangement of the lock and mortise, the lock is supported vertically by the selvage, and the sole object of letting the front-plate in flush by means of the countersunk recess was to produce a neater finish and more attractive article than could be produced without such countersunk recess, or, as he expresses it in his specification, "to conceal the cavity from view and form a neat and finished appearance when in place." All that Spiegel did was to make his mortise, including the countersunk recess, with a routing-tool, so that it would be rounded at the bottom, and then make the frontplate of his lock rounded to correspond with this rounded cavity, and fit in flush in the countersunk recess. This change exhibits no patentable subject of invention over and above that which is disclosed in his prior patent of 1881, and shown Counsel for Appellees. in the Gory and Sargent patents. These changes were simply obvious modifications of such prior patents, and cannot be sustained as a patentable invention. We are of opinion, therefore, that there was no error in the decree below and that the judgment should be Affirmed. MR. JUSTICE BROWN did not sit in this case and took no part in its discussion. GORDON v. WARDER. GORDON v. HOOVER. GORDON v. CHAMPION MACHINE COMPANY. GORDON v. WHITELEY. APPEALS FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF OHIO. Nos. 34, 35, 36, 37. Argued October 16, 17, 1893. — Decided October 30, 1893. The first claim in letters patent No. 77,878, granted May 11, 1868, to James F. Gordon, was a claim" for a binding arm capable of adjustment in the direction of the length of the grain, in combination with an automatic twisting device, substantially as and for the purposes described;" and it was not infringed by the devices used by the defendants for attaining the common purpose of securing the stalks of grain into bundles by passing around them a band at the middle of the stalks. THESE four bills in equity, for the alleged infringement of the same letters patent by different parties, were argued together here. In each the bill was dismissed below, from which decree the complainant appealed in each case. Mr. Esek Cowen and Mr. Frederick P. Fish for appellants. Mr. Robert H. Parkinson and Mr. Edmund Wetmore for appellees. Opinion of the Court. MR. JUSTICE SHIRAS delivered the opinion of the court. These are appeals from decrees of the Circuit Court of the United States for the Southern District of Ohio, dismissing the bill of complaint in each of the four cases. The questions in controversy are the same in all of the cases, and can be considered and determined in one opinion. The bills of complaint, as originally filed, averred infringements by the defendants of three different patents, respectively dated May 12, 1868, June 16, 1874, and October 26, 1875, granted to James F. Gordon, and held and owned by the several complainants; but, before final hearing, the complainants withdrew those portions of the bills that pertained to the two latter patents, and the decrees only dealt with the alleged infringement of the letters patent dated May 12, 1868. The invention of James F. Gordon related to an improvement in that class of harvesters by which the grain, as it is cut, is bound by the operation of the machine. It was not claimed by Gordon that he was the first to devise a grain binder as part of a harvester; such devices were well known in the art. A practical difficulty in the operation of such machines was found in the fact that, in different fields of grain, and often in the same field, the grain stalks were of different lengths. Hence, if the binding apparatus occupied a fixed and unchangeable position with respect to the bundle or gavel of grain when brought to the operation of the binder, the binding wire or cord would be passed round the bundle without reference to the length of the stalks, and thus it would happen that the cord that would pass around the middle of a bundle of long stalks would, in case the stalks were short, pass round the bundle near the head of the stalks. A sheaf formed by the passage of the cord round the bundle at any place, except the middle of the stalks, will be apt to fall apart, and the operation of binding thus become unsuccessful. Gordon claimed to have surmounted this difficulty by contriving a binding apparatus that should be movable at the will Opinion of the Court. of the operator, and adjustable to suit the varying lengths of the grain, and thus operate to pass the binding cord always round the middle of the stalks. Having, in the specification forming part of his letters. patent, described the difficulty to be overcome and the method devised by him to do so, the inventor made eleven several claims to different parts and combinations of parts in his machine. In this litigation, however, the complainants have restricted their case, as against these defendants, to an alleged infringement of the first claim made by Gordon. This claim is for "a binding arm, capable of adjustment in the direction of the length of the grain, in combination with an automatic twisting device, substantially as and for the purposes described." The specification discloses that the binding arm and the twisting device are to remain in juxtaposition with each other, and are adjustable, with respect to the grain to be bound, by a movement horizontally along a shaft, so as always to apply the binding wire to the centre of the sheaf. This longitudinal movement is regulated by a lever, which is applied by the driver or operator, and which enables him to change the position of the binding arm and twister so as to operate on the middle of the bundle of grain. The view that we take of these cases relieves us from going at length into the history of mechanical binding devices, and from minutely considering the nature of Gordon's first claim. We content ourselves with saying that, upon the evidence laid before us, we are satisfied that Gordon was the first inventor of a mechanical binder and twister adjustable, at the will of the operator, to affect the binding by passing the cord or wire round the middle of the bundle, where this adjustability was reached by mounting the binder and twister upon a frame which was movable upon a shaft in a longitudinal direction. We are willing to adopt, as a fair definition of Gordon's claim, that given by complainant's counsel in his brief: "The invention of Gordon consisted in this: In so arranging the binding arm and twister, or its equivalent, that while they continuously act with each other, for the purpose of placing the band around the grain and uniting the ends of the band, the driver VOL. CL-4 Opinion of the Court. can instantaneously change their position with reference to the grain-delivering mechanism of the harvester, so as to lay the band in the centre of the bundle, without stopping the machine or dismounting from his seat." We do not regard the patent of Watson, Renwick and Watson, dated May 13, 1851, as an anticipation of Gordon, although the specification in that case did contain a paragraph stating that it might be advantageous, in some cases, to make the binder adjustable in respect to the cutting apparatus. No means were there provided, or method pointed out, whereby such a desirable result could be obtained. Nor do we find, in the other patents put in evidence by the defendants, any such anticipation of the Gordon claim as above defined, as to invalidate the grant made to Gordon on May 12, 1868, though such a state or condition of the art was brought about, by these earlier patents, as to require us to restrict the scope of the Gordon patent closely to the devices and methods claimed by him. It was claimed on behalf of the defendants, and apparently conceded by the court below, that in the Gordon machine the rake, which gathers and moves the grain to the place where the bundle is to be bound, is a part of the binding mechanism; that without the action of the rake, as an adjunct of the binding apparatus, no successful operation could be effected. But Gordon, while describing the rake and its mode of operation, does not claim the rake as a part of his combination. His invention assumes that some instrumentality must be used to bring the grain within the grasp of the binder, but his claim can and must be restricted to the devices applied by him to render the binder and twister adjustable, at the will of the driver, to the varying lengths of the stalks to be bound. It was further contended, on behalf of the defendants, that the Gordon invention is exemplified by a machine into which harvesting or cutting devices and binding devices are incorporated as integral parts, and in which some of the parts belong equally to the harvesting mechanism and to the binding mechanism. The object of this contention was to afford a ground on which to distinguish the defendants' machine, which |