Music Trade Review
Issue: 1917 Vol. 65 N. 21 - Page 10
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10
THE MUSIC TRADE REVIEW
DANQUARD PATENT UPHELD BY CIRCUIT COURT OF APPEALS
Finding of District Court in Favor of Plaintiff in Action Brought by Auto Pneumatic Action Co.
Against Kindler & Collins, et al., Sustained by Higher Court—Full Text of Decision
As was reported in The Review last week,
the United States Circuit Court of Appeals has
upheld the decision of the District Court in
the action brought by the Auto Pneumatic
Action Co., against Kindler & Collins, et al.,
wherein the defendants were alleged to have
infringed the Danquard Patent No. 766,601,
covering the direct striking of the wippen in
the player-piano. The defendants maintained
that the Danquard patent covered nothing new
referring to patents taken out by Brown,
Wright, Welin and others as upholding their
contention, and that the form of construction
adopted by them was based on the Courville
patent, issued prior to the Danquard patent.
The District Court held as valid and in-
fringed, claims 26, 27 and 31 of the Danquard
patent, and that finding has been upheld by
the Circuit Court in its decision, which reads
in full as follows:
This is an appeal from a decree of the District Court
for the Southern District of New York (A. N. Hand,
D. J., presiding), holding valid and infringed claims 26,
27 and 31 of patent 766,601 to T. Danquard, August 12,
1904.
The patent relates to mechanical players attached
to pianos known as "pneumatic self-playing instruments."
These are of two sorts, those which are embodied in the
piano case and those which form a separate unit which is
wheeled back and forth from and to the piano board and
play directly upon the keys. The patent in suit is of the
first sort and operates as all of such kind do, by means
of pneumatic bellows, the collapse of which under suc-
tion operates a mechanism connected with some part of
the piano action.
The patent does not concern eithei
the pneumatic bellows or the mode of their actuation
through a tracker sheet.
It touches rather the connec-
tion between the exhaust bellows and the piano action
and the integration of all the parts into one unitary struc-
ture which may be moved into and out of the piano case
without any reorganization of its parts.
The important
features of the invention consist of upright rods called
the "abstracts," which through the mediation of a pivoted
pieec of wood, called the "striker," directly touch and
move the "wippen" of the piano action when the bellows
are collapsed by a vacuum.
When the mechanical attach-
ment is not in operation the piano action itself is quite
as free as though the player were not attached and the
piano may be manually played without the slightest ef-
fect upon its tone.
An. important feature of the invention is the structure
of the "striker," which the patentee supposed he had much
improved by making it resilient or cushioned.
This fea-
ture of the patent, however, need not be considered in
detail, as the defendant did not copy it but used a solid
block or cap as a striker without any resilience. A more
detailed description of the patent can only be obtained by
an examination of the specification.
Sufficient has been
stated to show in general the elements upon which this
case turns. The claims are as follows:
"26. A manually and mechanically operative piano hav-
ing grouped .above the keyboard and in front of the piano-
action the following devices: a wind-chest, pneumatics
operatively connected to said chest, a tracker and music-
sheet rolls, air-conduits connecting the tracker and pneu-
matics; abstracts, and pivoted vertically-swinging strikers
operating the piano-action and actuated by the abstracts
and arranged above the level of the pneumatics; said
grouped devices being adapted for removal together from
the instrument-case.
"27. A manually and mechanically operative piano hav-
ing grouped above the keyboard and in front of the piano-
action the following devices: a wind-chest, pneumatics
operatively connected to said chest, a tracker and music-
sheet rolls, air-conduits connecting the tracker and pneu-
matics, abstracts operated by the pneumatic, pivoted ver-
tically-swinging strikers operating the piano-action and
actuated by the abstracts and arranged above the level
of the pneumatics, and adjustable stops regulating move-
ment of the action by the pneumatics and strikers.
"31. In a mechanical musical instrument, the combina-
tion with the action-wippens 4, of a tracker 15, rolls 14,
16 adapted to carry a music-sheet over the tracker, pneu-
matics 24, air-conduits and valves connecting the tracker
and pneumatics, upwardly-extending abstracts 25 coupled
to movable walls of the pneumatics, and pivoted strikers
arranged above said pneumatics and adapted to be swung
vertically by the abstracts against the wippens 4 for
operating the piano-action; all of said parts being ar-
ranged above the keyboard and in front of the piano-
action."
The defendant's infringing player is of the same class
as the patent in suit, and indeed differentiates only in the
character of the "striker."
As appears in the claims, the
"striker" of the patent is pivoted to swing vertically, and
this feature the defendant originally adopted, but later
on consultation with its attorney, it varied its structure
in this respect and surrounded the upper end of the "ab-
stract," which extended from the bellows to the "wippen,"
by a guide, consisting of a tixed horizontal piece of metal
with a hole in it through which the "abstract" freely
moved, but which held it against lateral displacement. On
the top of the "abstracts" the defendant fixed a solid block
which bore directly on the under side of the "wippen"
substantially as the defendant's "striker" bore.
The prior art, as has already been stated, had de-
veloped in two directions, the eariier being toward cabinet
players, which were wheeled to and fro and played directly
OU ought to see the Schaff
Y
B r o s . Style 23 Solotone
Player, for it is the most mod-
ern player. The price is right, too.
WANT OUR SPECIAL PHOTO OF IT?
HUNTINGTON, IND.
upon the keyboard.
These were of many forms, which
it is not necessary to consider except to say that the
nearest approach to the structure of the patent in suit is
that contained in Courville, 755,364.
The general internal
disposition of parts in this mechanical player was nearly
identical with that of the defendant.
It operated by an
exhaust which collapsed the several bellows, each operat-
ing an "abstract" which ran from the lower end of the
bellows and through a guide similar to the defendant's, and
terminated in a block or "striker," which bore on the
lower side of a finger lever, itself actuating the keys.
The defendant contends that it has done nothing more than
substitute within the piano case a smaller attachment built
after the lines of Courville, and this is substantially true.
Oi the mechanical piano players in the second class, to
which the patent belongs, the nearest anticipations are
Brown, 581,390; Wright, 596,730, and Welin, 731,089. In
Brown's action each bellows had a pin, or "abstract," ex
tending downward, and fastened to an angle lever, which
was rigidly attached either to the "abstract" of the manual
action, or to the key lever itself.
The collapse of the
bellows raised this pin and imparted its motion to the
"pin" or "abstract,' which in turn operated upon the
"abstract" of the manual action.
In Wright's patent the collapse of the bellows pulled
up a downwardly depending rod which was caught under
the loose side of a swinging lever. The free end of this
lever bore upon the "abstract" of the action in a way
not clearly shown in the patent. Yet the showing requires
the assumption of some angle lever attached to the "ab-
stract," similar to that of Brown's, else it is impossible
to see how it could operate. In Welin's patent the motion
was imparted to the "abstract" of the manual action
through a lever, attached to it against the free end of
which an upward rod, actuated by the bellows, was pushed
when the note was to the struck.
It therefore required
some addition to the "abstract" of the manual action it-
self, just as did Brown and Wright.
Those mechanical players which are not incorporated into
the body of the piano, after a season of some popularity
have disappeared from the market, and the only player
which still remains is the plaintiff's.
Brown's patent
never went into much practical use, and has in any case
now been displaced.
None of the others succeeded, be-
ing crowded out by the plaintiff's player made substan-
tially in accordance with the patent with the possible varia-
tion of the elastic element of the "striker.
This me-
chanical player has been widely sold and has acquired sub-
stantial popularity.
The applicant in his file wrapper originally incorporated
not only the specification as now stated but a mechanism
for a folding pedal, which was afterwards divided out, and
in this original application there was no claim of a sort
similar to those now in suit. In all the claims an elastic
"striker" was an element except in those covering the pedal.
The specification, moreover, at that time did not contain
the following passage, this being introduced some three
months later, at a time when the claims were extended
to include a combination in which there were no elastic
strikers (page 3, lines 83-90): "As regards relative ar-
rangement of the pneumatics their abstracts, the pivoted
strikers, the action wippens, and the adjustable stops regu-
lating movement of the action of the pneumatic and strik-
ers it is immaterial whether the strikers be elastic or not.
In other words, the strikers may be made without slot 35,
giving them elasticity."
Thomas A. Hill for the defendants-appellants.
Louis W. Southgate for the plaintiff-appellee.
Learned Hand, D. J.: The most important question in
this case is the validity of the patent as against the prior
art.
Concededly, the best anticipation is Brown's patent
for a mechanical player contained within the case.
Lit-
erally this does not come within any of the claims, for
the "strikers," though actuated by the "abstracts," as
Danquard calls them, or the "pins, 19," as Brown speaks
of them, are arranged below the lever of the bellows and
not above. This prevents a literal anticipation of claims
26-27, and similarly prevents anticipation of claim 31, in
which the "strikers" must operate against the "wippens" of
the manual action. This might seem to be, especially as con-
cerns claims 26 and 27, a somewhat immaterial matter,
but when a structure is more carefully regarded the dif-
ference assumes much greater importance.
It is impos-
sible to see—at least no one has been able to devise it—
how, if the "strikers" are below the lever of the bellows,
they can operate upon the manual action without some
angle lever or its equivalent attached either to the key
lever or to the "abstract" of the manual action.
If tht
"striker" were below the bellows, the bellows must be so
far raised in the case as to put the tracker roll and the
bellows themselves on. the top of case, an unworkable ar-
rangement.
The same difficulty exists in the case of
Wright, 596,730.
Now it is true respecting Wright that
figure one shows the swinging lever impinging directly
upon what the specification called the "abstract," and it
might be conceivable that that whole player was raised
high enough so that the end of the lever touched the
under side of the "wippen," but nothing of the sort is
suggested in the specifications and the same objection
would apply as we have mentioned in the case of Brown,
that to do so would raise the whole mechanical player
above the top of the case. It is pretty safe therefore, to
suppose that when Wright speaks of operating upon tlic_
"abstract," he necessarily presupposes some piece, perma-
nently attached to the "abstract ' of the manual action,
against which the free end of the lever will bear, the
"abstract" being itself a straight rod could otherwise not
be moved.
Welin's patent, 713,089, is even more obviously subject
to the same criticism, and it therefore appears that the
art prior to Brown had not devised any internal mechanicaJ
player which operated directly upon the manual action
without the addition of something permanently affixed to
the "abstract."
This was an obvious disadvantage be-
cause in a mechanism so fixed in form and so dedicate
in adjustment as a piano action, it was a matter of nu
small consequence that it should be left without any added
weight whatever.
How far such weights as the angle
levers of Brown and Wright and the movable levers of
Welin actually affected the playing mechanism, may per-
haps be open to some question, but that it might be rc>
garded by the owner of the piano themselves as a disad-
vantage, even though it could not be shown to be such, is
quite obvious.
Moreover, even if this were not the case,
the adjustment of those levers was a complicated and
laborious device. It is true that it was conceded upon the
trial that the Brown patent was removable as a whole from
the piano instrument, but this does not touch the fact that
the bracket or angle lever must be attached to each of the
abstracts separately, even though the "pin 19" might be
removed from the connection without being separately dis-
engaged, a question at least open to doubt.
We think,
therefore, that within the division of the art to which this
patent belongs the court below was right in saying that
the invention was a new one.
The defendant is correct in saying that it has done nu
nicre than adapt the patent of Courville, 755,364, so that
it shall be contained within the case.
Its argument is
that in so doing it did no more than to reduce the size
of Courville, and that a mere reduction of size cannot
be the basis of a patent any more than the other new use
of Courville's instrument can be deemed such.
More
could be said for this contention were Courville adaptable
as it stood by a mere reduction of size to a mechanical
player contained in the case, but in some details at any
rate this is not true.
The finger levers, N12, of Cour-
ville operated upon the notes, while the defendant's
"strikers" operate upon the "wippen."
The finger U-vcrs
had to be eliminated before Courville could be used, and
such a mechanical change at least forbids the defendant's
player from being considered literally as a new use of
Courville.
The change taken by itself is undoubtedly a
small one, but it requires a consideration of how far one
part of the art was at once readily transferable to the
other.
Mechanical players had been in existence since 1880,
the application date of Needham & Fowler's first patent.
238,145, and in their first forms were permanently fixed
within the instrument itself.
This method continued for
some time, but they required to be especially built into
the pianos for the purpose and the player might be thought
to effect the action.
It was concededly an advance t o .
devise removable players, and when the art attempted it,
it created both the movable cabinets and the players within
the case at about the same time, Parker & White, 592,641;
Brown, 581,390.
Yet the cabinet player was in every
sense less desirable than .one contained in the case and
must be accepted as a concession to the difficulties of a
removable case player, especially as it has disappeared in
the face of Danquard's patent.
We think it quite safe
therefore to say that Courville was not obviously adaptable
into a case player and that the subsequent attempt of
the defendant to make it available as such depended upon
suggestions which it obtained altogether from Danquard.
The history of the art forbids any ready assumption that
the change was within the scope of an ordinary artisan
before the Danquard appeared.
It is true that there had been mechanical players like
Parker, 560,303, and White and Parker, 573,427, which
operated directly on the "wippens," but in all of these
the players had been built into the piano permanently, and
when removable players were so built, these patents did
not in fact suggest the first answers to the problem.
As
is common in such cases, the final solution appears to
be very close to several of the earlier answers, but we
think that the long interval during which the need existed
and the success which the final step at once secured justifies
us in refusing to substitute our own ideas of a prior ob-
viousness.
We are well aware of the risk of assuming
that the mere success of an invention determines its pat-
entability, but when it follows a long history of failure
we think it puts upon one the challenges its originality a
duty of showing that the success arose from advertising,
exploitation, or the removal of external commercial con-
ditions which had nothing to do with the difficulties of in-
vention.
The issue of infringement is verbal; it turns upon
whether the defendant uses a pivoted "striker."
Literally
it does not, and the issue becomes one of equivalents.
The "striker" performs its duty only at its free or mov-
able end. Under the impulse of the "abstract" this end
is pushed up against the "wippen" and falls of its own
weight when the "abstract" is released.
The pivot is
simply to keep the "striker" in its lateral position, the
small arc through which its end moves being of no con-
sequence practically.
A guide to keep the "striker" in
its position precisely answers the purpose of the pivot,
for it allows a free vertical motion of the operating end
of the "striker," and at the same time keeps it from dis-
placement as a whole.
It would be, we think, a mere
evasion of the claims to confine the patentee to the exact
words which he used.
The defendant, however, insists
that the distinction which the applicant made of Brown's
patent to the examiner should stop him here.
It is true
that on May 4, 1904, the applicant did distinguish Brown's
"strikers," which turn only axially from his own pivoted
vertically swinging "strikers," but we attach no significance
to his action, for no change in the claims accompanied it.
For whatever reason it may have arisen, it is, of course,
true that a patent, unlike other formal instruments ot
the sort, although it is the final embodiment of the pur-
poses of the parties, is subject in its interpretation to the
prior negotiations of the parties. Whether or not this is
legally anomaly, so far as we know there is no decision
which goes further than to hold that where the applicant
lias assented to changes in a claim upon a reference in
the Patent Office he may not, by subsequent construction,
resort to the elements which he has thus abandoned. We
are far from being willing to establish a rule that argu-
ments in the Patent Office by the applicant to the examiner
are to be taken as a measure of his patent.
We read
the claims as they are written, like the language of any
other formal statement drawn up as the final memorial of
the parties' intentions, and we decline to consider what
was argued during the passage of the case through the
Patent Office, or any other of the preliminary negotiations
which the patent itself was intended to subsume.
Finally the defendant insist that the applicant broadened
the scope of his invention when he added the passage
heretofore quoted in the statement and added new claims
for non-elastic "strikers." The rule that an applicant must
not introduce a new invention cannot be applied with
diatectical rigidity, or it would forbid any change in claims
which introduced any new element, for all elements of a
claim are necessary parts of the invention.
The case at
bar is no different from Hobbs vs. Beach, 180 U. S., 383,-
395, where an entire element was omitted in an amended
claim, which had been inserted in the original.
If the
whole disclosure remains unchanged, and no intervening
rights have arisen we do not cut so fine.
It may be that
the rule is no more than one of degree, but we know of
no cases which forbid the omission of elements, even
though they result in expansion, when the disclosure readily
suggests the change.
We think it no objection that the
suggestion may arise from a further knowledge of the art
which discloses the broader claims always were possible, so
long as there are no intervening rights.
In such cases
the specifications suggest the change but the applicant's
mistake upon what preceded him has deceived him. That
he may correct, at least when the departure is not wide.
In the case at bar, the change was no more than to omit .
an improved form of the striker; the specification readily
suggested the inclusion of any form of striker.
The decree is affirmed, with costs.
A new front is being constructed for the Gor-
ton Music Store, of Pawpaw, Mich.
10
THE MUSIC TRADE REVIEW
DANQUARD PATENT UPHELD BY CIRCUIT COURT OF APPEALS
Finding of District Court in Favor of Plaintiff in Action Brought by Auto Pneumatic Action Co.
Against Kindler & Collins, et al., Sustained by Higher Court—Full Text of Decision
As was reported in The Review last week,
the United States Circuit Court of Appeals has
upheld the decision of the District Court in
the action brought by the Auto Pneumatic
Action Co., against Kindler & Collins, et al.,
wherein the defendants were alleged to have
infringed the Danquard Patent No. 766,601,
covering the direct striking of the wippen in
the player-piano. The defendants maintained
that the Danquard patent covered nothing new
referring to patents taken out by Brown,
Wright, Welin and others as upholding their
contention, and that the form of construction
adopted by them was based on the Courville
patent, issued prior to the Danquard patent.
The District Court held as valid and in-
fringed, claims 26, 27 and 31 of the Danquard
patent, and that finding has been upheld by
the Circuit Court in its decision, which reads
in full as follows:
This is an appeal from a decree of the District Court
for the Southern District of New York (A. N. Hand,
D. J., presiding), holding valid and infringed claims 26,
27 and 31 of patent 766,601 to T. Danquard, August 12,
1904.
The patent relates to mechanical players attached
to pianos known as "pneumatic self-playing instruments."
These are of two sorts, those which are embodied in the
piano case and those which form a separate unit which is
wheeled back and forth from and to the piano board and
play directly upon the keys. The patent in suit is of the
first sort and operates as all of such kind do, by means
of pneumatic bellows, the collapse of which under suc-
tion operates a mechanism connected with some part of
the piano action.
The patent does not concern eithei
the pneumatic bellows or the mode of their actuation
through a tracker sheet.
It touches rather the connec-
tion between the exhaust bellows and the piano action
and the integration of all the parts into one unitary struc-
ture which may be moved into and out of the piano case
without any reorganization of its parts.
The important
features of the invention consist of upright rods called
the "abstracts," which through the mediation of a pivoted
pieec of wood, called the "striker," directly touch and
move the "wippen" of the piano action when the bellows
are collapsed by a vacuum.
When the mechanical attach-
ment is not in operation the piano action itself is quite
as free as though the player were not attached and the
piano may be manually played without the slightest ef-
fect upon its tone.
An. important feature of the invention is the structure
of the "striker," which the patentee supposed he had much
improved by making it resilient or cushioned.
This fea-
ture of the patent, however, need not be considered in
detail, as the defendant did not copy it but used a solid
block or cap as a striker without any resilience. A more
detailed description of the patent can only be obtained by
an examination of the specification.
Sufficient has been
stated to show in general the elements upon which this
case turns. The claims are as follows:
"26. A manually and mechanically operative piano hav-
ing grouped .above the keyboard and in front of the piano-
action the following devices: a wind-chest, pneumatics
operatively connected to said chest, a tracker and music-
sheet rolls, air-conduits connecting the tracker and pneu-
matics; abstracts, and pivoted vertically-swinging strikers
operating the piano-action and actuated by the abstracts
and arranged above the level of the pneumatics; said
grouped devices being adapted for removal together from
the instrument-case.
"27. A manually and mechanically operative piano hav-
ing grouped above the keyboard and in front of the piano-
action the following devices: a wind-chest, pneumatics
operatively connected to said chest, a tracker and music-
sheet rolls, air-conduits connecting the tracker and pneu-
matics, abstracts operated by the pneumatic, pivoted ver-
tically-swinging strikers operating the piano-action and
actuated by the abstracts and arranged above the level
of the pneumatics, and adjustable stops regulating move-
ment of the action by the pneumatics and strikers.
"31. In a mechanical musical instrument, the combina-
tion with the action-wippens 4, of a tracker 15, rolls 14,
16 adapted to carry a music-sheet over the tracker, pneu-
matics 24, air-conduits and valves connecting the tracker
and pneumatics, upwardly-extending abstracts 25 coupled
to movable walls of the pneumatics, and pivoted strikers
arranged above said pneumatics and adapted to be swung
vertically by the abstracts against the wippens 4 for
operating the piano-action; all of said parts being ar-
ranged above the keyboard and in front of the piano-
action."
The defendant's infringing player is of the same class
as the patent in suit, and indeed differentiates only in the
character of the "striker."
As appears in the claims, the
"striker" of the patent is pivoted to swing vertically, and
this feature the defendant originally adopted, but later
on consultation with its attorney, it varied its structure
in this respect and surrounded the upper end of the "ab-
stract," which extended from the bellows to the "wippen,"
by a guide, consisting of a tixed horizontal piece of metal
with a hole in it through which the "abstract" freely
moved, but which held it against lateral displacement. On
the top of the "abstracts" the defendant fixed a solid block
which bore directly on the under side of the "wippen"
substantially as the defendant's "striker" bore.
The prior art, as has already been stated, had de-
veloped in two directions, the eariier being toward cabinet
players, which were wheeled to and fro and played directly
OU ought to see the Schaff
Y
B r o s . Style 23 Solotone
Player, for it is the most mod-
ern player. The price is right, too.
WANT OUR SPECIAL PHOTO OF IT?
HUNTINGTON, IND.
upon the keyboard.
These were of many forms, which
it is not necessary to consider except to say that the
nearest approach to the structure of the patent in suit is
that contained in Courville, 755,364.
The general internal
disposition of parts in this mechanical player was nearly
identical with that of the defendant.
It operated by an
exhaust which collapsed the several bellows, each operat-
ing an "abstract" which ran from the lower end of the
bellows and through a guide similar to the defendant's, and
terminated in a block or "striker," which bore on the
lower side of a finger lever, itself actuating the keys.
The defendant contends that it has done nothing more than
substitute within the piano case a smaller attachment built
after the lines of Courville, and this is substantially true.
Oi the mechanical piano players in the second class, to
which the patent belongs, the nearest anticipations are
Brown, 581,390; Wright, 596,730, and Welin, 731,089. In
Brown's action each bellows had a pin, or "abstract," ex
tending downward, and fastened to an angle lever, which
was rigidly attached either to the "abstract" of the manual
action, or to the key lever itself.
The collapse of the
bellows raised this pin and imparted its motion to the
"pin" or "abstract,' which in turn operated upon the
"abstract" of the manual action.
In Wright's patent the collapse of the bellows pulled
up a downwardly depending rod which was caught under
the loose side of a swinging lever. The free end of this
lever bore upon the "abstract" of the action in a way
not clearly shown in the patent. Yet the showing requires
the assumption of some angle lever attached to the "ab-
stract," similar to that of Brown's, else it is impossible
to see how it could operate. In Welin's patent the motion
was imparted to the "abstract" of the manual action
through a lever, attached to it against the free end of
which an upward rod, actuated by the bellows, was pushed
when the note was to the struck.
It therefore required
some addition to the "abstract" of the manual action it-
self, just as did Brown and Wright.
Those mechanical players which are not incorporated into
the body of the piano, after a season of some popularity
have disappeared from the market, and the only player
which still remains is the plaintiff's.
Brown's patent
never went into much practical use, and has in any case
now been displaced.
None of the others succeeded, be-
ing crowded out by the plaintiff's player made substan-
tially in accordance with the patent with the possible varia-
tion of the elastic element of the "striker.
This me-
chanical player has been widely sold and has acquired sub-
stantial popularity.
The applicant in his file wrapper originally incorporated
not only the specification as now stated but a mechanism
for a folding pedal, which was afterwards divided out, and
in this original application there was no claim of a sort
similar to those now in suit. In all the claims an elastic
"striker" was an element except in those covering the pedal.
The specification, moreover, at that time did not contain
the following passage, this being introduced some three
months later, at a time when the claims were extended
to include a combination in which there were no elastic
strikers (page 3, lines 83-90): "As regards relative ar-
rangement of the pneumatics their abstracts, the pivoted
strikers, the action wippens, and the adjustable stops regu-
lating movement of the action of the pneumatic and strik-
ers it is immaterial whether the strikers be elastic or not.
In other words, the strikers may be made without slot 35,
giving them elasticity."
Thomas A. Hill for the defendants-appellants.
Louis W. Southgate for the plaintiff-appellee.
Learned Hand, D. J.: The most important question in
this case is the validity of the patent as against the prior
art.
Concededly, the best anticipation is Brown's patent
for a mechanical player contained within the case.
Lit-
erally this does not come within any of the claims, for
the "strikers," though actuated by the "abstracts," as
Danquard calls them, or the "pins, 19," as Brown speaks
of them, are arranged below the lever of the bellows and
not above. This prevents a literal anticipation of claims
26-27, and similarly prevents anticipation of claim 31, in
which the "strikers" must operate against the "wippens" of
the manual action. This might seem to be, especially as con-
cerns claims 26 and 27, a somewhat immaterial matter,
but when a structure is more carefully regarded the dif-
ference assumes much greater importance.
It is impos-
sible to see—at least no one has been able to devise it—
how, if the "strikers" are below the lever of the bellows,
they can operate upon the manual action without some
angle lever or its equivalent attached either to the key
lever or to the "abstract" of the manual action.
If tht
"striker" were below the bellows, the bellows must be so
far raised in the case as to put the tracker roll and the
bellows themselves on. the top of case, an unworkable ar-
rangement.
The same difficulty exists in the case of
Wright, 596,730.
Now it is true respecting Wright that
figure one shows the swinging lever impinging directly
upon what the specification called the "abstract," and it
might be conceivable that that whole player was raised
high enough so that the end of the lever touched the
under side of the "wippen," but nothing of the sort is
suggested in the specifications and the same objection
would apply as we have mentioned in the case of Brown,
that to do so would raise the whole mechanical player
above the top of the case. It is pretty safe therefore, to
suppose that when Wright speaks of operating upon tlic_
"abstract," he necessarily presupposes some piece, perma-
nently attached to the "abstract ' of the manual action,
against which the free end of the lever will bear, the
"abstract" being itself a straight rod could otherwise not
be moved.
Welin's patent, 713,089, is even more obviously subject
to the same criticism, and it therefore appears that the
art prior to Brown had not devised any internal mechanicaJ
player which operated directly upon the manual action
without the addition of something permanently affixed to
the "abstract."
This was an obvious disadvantage be-
cause in a mechanism so fixed in form and so dedicate
in adjustment as a piano action, it was a matter of nu
small consequence that it should be left without any added
weight whatever.
How far such weights as the angle
levers of Brown and Wright and the movable levers of
Welin actually affected the playing mechanism, may per-
haps be open to some question, but that it might be rc>
garded by the owner of the piano themselves as a disad-
vantage, even though it could not be shown to be such, is
quite obvious.
Moreover, even if this were not the case,
the adjustment of those levers was a complicated and
laborious device. It is true that it was conceded upon the
trial that the Brown patent was removable as a whole from
the piano instrument, but this does not touch the fact that
the bracket or angle lever must be attached to each of the
abstracts separately, even though the "pin 19" might be
removed from the connection without being separately dis-
engaged, a question at least open to doubt.
We think,
therefore, that within the division of the art to which this
patent belongs the court below was right in saying that
the invention was a new one.
The defendant is correct in saying that it has done nu
nicre than adapt the patent of Courville, 755,364, so that
it shall be contained within the case.
Its argument is
that in so doing it did no more than to reduce the size
of Courville, and that a mere reduction of size cannot
be the basis of a patent any more than the other new use
of Courville's instrument can be deemed such.
More
could be said for this contention were Courville adaptable
as it stood by a mere reduction of size to a mechanical
player contained in the case, but in some details at any
rate this is not true.
The finger levers, N12, of Cour-
ville operated upon the notes, while the defendant's
"strikers" operate upon the "wippen."
The finger U-vcrs
had to be eliminated before Courville could be used, and
such a mechanical change at least forbids the defendant's
player from being considered literally as a new use of
Courville.
The change taken by itself is undoubtedly a
small one, but it requires a consideration of how far one
part of the art was at once readily transferable to the
other.
Mechanical players had been in existence since 1880,
the application date of Needham & Fowler's first patent.
238,145, and in their first forms were permanently fixed
within the instrument itself.
This method continued for
some time, but they required to be especially built into
the pianos for the purpose and the player might be thought
to effect the action.
It was concededly an advance t o .
devise removable players, and when the art attempted it,
it created both the movable cabinets and the players within
the case at about the same time, Parker & White, 592,641;
Brown, 581,390.
Yet the cabinet player was in every
sense less desirable than .one contained in the case and
must be accepted as a concession to the difficulties of a
removable case player, especially as it has disappeared in
the face of Danquard's patent.
We think it quite safe
therefore to say that Courville was not obviously adaptable
into a case player and that the subsequent attempt of
the defendant to make it available as such depended upon
suggestions which it obtained altogether from Danquard.
The history of the art forbids any ready assumption that
the change was within the scope of an ordinary artisan
before the Danquard appeared.
It is true that there had been mechanical players like
Parker, 560,303, and White and Parker, 573,427, which
operated directly on the "wippens," but in all of these
the players had been built into the piano permanently, and
when removable players were so built, these patents did
not in fact suggest the first answers to the problem.
As
is common in such cases, the final solution appears to
be very close to several of the earlier answers, but we
think that the long interval during which the need existed
and the success which the final step at once secured justifies
us in refusing to substitute our own ideas of a prior ob-
viousness.
We are well aware of the risk of assuming
that the mere success of an invention determines its pat-
entability, but when it follows a long history of failure
we think it puts upon one the challenges its originality a
duty of showing that the success arose from advertising,
exploitation, or the removal of external commercial con-
ditions which had nothing to do with the difficulties of in-
vention.
The issue of infringement is verbal; it turns upon
whether the defendant uses a pivoted "striker."
Literally
it does not, and the issue becomes one of equivalents.
The "striker" performs its duty only at its free or mov-
able end. Under the impulse of the "abstract" this end
is pushed up against the "wippen" and falls of its own
weight when the "abstract" is released.
The pivot is
simply to keep the "striker" in its lateral position, the
small arc through which its end moves being of no con-
sequence practically.
A guide to keep the "striker" in
its position precisely answers the purpose of the pivot,
for it allows a free vertical motion of the operating end
of the "striker," and at the same time keeps it from dis-
placement as a whole.
It would be, we think, a mere
evasion of the claims to confine the patentee to the exact
words which he used.
The defendant, however, insists
that the distinction which the applicant made of Brown's
patent to the examiner should stop him here.
It is true
that on May 4, 1904, the applicant did distinguish Brown's
"strikers," which turn only axially from his own pivoted
vertically swinging "strikers," but we attach no significance
to his action, for no change in the claims accompanied it.
For whatever reason it may have arisen, it is, of course,
true that a patent, unlike other formal instruments ot
the sort, although it is the final embodiment of the pur-
poses of the parties, is subject in its interpretation to the
prior negotiations of the parties. Whether or not this is
legally anomaly, so far as we know there is no decision
which goes further than to hold that where the applicant
lias assented to changes in a claim upon a reference in
the Patent Office he may not, by subsequent construction,
resort to the elements which he has thus abandoned. We
are far from being willing to establish a rule that argu-
ments in the Patent Office by the applicant to the examiner
are to be taken as a measure of his patent.
We read
the claims as they are written, like the language of any
other formal statement drawn up as the final memorial of
the parties' intentions, and we decline to consider what
was argued during the passage of the case through the
Patent Office, or any other of the preliminary negotiations
which the patent itself was intended to subsume.
Finally the defendant insist that the applicant broadened
the scope of his invention when he added the passage
heretofore quoted in the statement and added new claims
for non-elastic "strikers." The rule that an applicant must
not introduce a new invention cannot be applied with
diatectical rigidity, or it would forbid any change in claims
which introduced any new element, for all elements of a
claim are necessary parts of the invention.
The case at
bar is no different from Hobbs vs. Beach, 180 U. S., 383,-
395, where an entire element was omitted in an amended
claim, which had been inserted in the original.
If the
whole disclosure remains unchanged, and no intervening
rights have arisen we do not cut so fine.
It may be that
the rule is no more than one of degree, but we know of
no cases which forbid the omission of elements, even
though they result in expansion, when the disclosure readily
suggests the change.
We think it no objection that the
suggestion may arise from a further knowledge of the art
which discloses the broader claims always were possible, so
long as there are no intervening rights.
In such cases
the specifications suggest the change but the applicant's
mistake upon what preceded him has deceived him. That
he may correct, at least when the departure is not wide.
In the case at bar, the change was no more than to omit .
an improved form of the striker; the specification readily
suggested the inclusion of any form of striker.
The decree is affirmed, with costs.
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