Joseph Rickerby v. James Duncan & Co. "the loose soil falls through the bars and does not foul the cut roots. The "cutter is driven from the road wheels by friction pulleys, belts, connecting 66 66 66 66 rods, or the like, but preferably by a pair of toothed wheels and an endless chain, the chain wheel on the cart wheel hub being provided with a selfcentering device which when set is clamped to the spokes. 5 "The accompanying Drawings illustrate a form of the invention driven by "an endless chain. Fig. 1 is a perspective elevation showing the apparatus "separate. Fig. 2 is a perspective view showing the apparatus attached to a "two wheeled cart. a is a casing having on its lower side bearings i in which "works the spindle b carrying the cutting drum c. A continuation of the sides 10 "of the casing forms with the bars shown the hopper ƒ so placed that the loose "soil from the roots falls clear of the cutting machine. The roots are guided "to the hopper by the guard or fence g, attached to the cart by the loops h ; "these slip on to the pins which ordinarily hold the end board and are secured "in place by cotter pins m; the guard is also kept in position on the hopper ƒ 15 "by the pins and loops d and the forked ends n, n, but so that its weight does "not rest thereon. For securing the cutter casing to the cart drilled bars p are 66 provided which rest on the axle of the cart and in conjunction with the "hooks o grip the same when the casing is raised at the back of the cart to “which it is firmly secured by the clamps q and the tightening screw k. The 20 "cutter is driven by an open link chain running on the toothed sprocket s and "pinion e, the sprocket s being attached to the spokes of the cart wheel by clips and screws j. In order that the sprocket s may readily be set con"centrically with the hub of the cart wheel a self-centering device is provided "consisting of the ring u having three eccentric slots v cut thereon in which 25 "work pins a provided at one end with heads which keep the ring u in place "and connected at the other end to bars w sliding in the lugs y which form part of the sprocket wheel s; by turning the ring u backwards or forward in respect to the sprocket rim the bars ware caused to slide in and out and as they "do so in unison the tightening of these on the wheel hub draws the sprocket 30 "rim central. In order that the ring u shall not be affected by the play in the "other parts holding it additional lugs t are formed on the sprocket rim which carry adjusting plates which keep the ring u central and these are further "used to attach the clips j to in cases where the spokes of the cart wheel do not come opposite the lugs y. In order that the cutter may be thrown out of 35 gear when travelling out of use a clutch is provided to the pinion e by which "it is thrown in and out of gear and it may with advantage be fitted with an escape ratchet or other attachment which will throw the clutch out of gear "should the speed of the cart wheel become excessive, a lever z holds the clutch "lever 7 in or out of gear. As the object of the invention is to apply the cutter 40 "without any alteration to an existing cart, all the fitting parts are made so as "to allow of a variation in the dimensions of the parts they fit on to. In the "case of the axle fitting, as the slotted hook is not always easy to operate, the "attachment may be made by joining the two bars p with a cross bar and "introducing a threaded distance screw between the cross bar and the bottom 45 "of the cart by which means the bars p may be pressed down on the axle ; they are serrated on their bottom edge for this purpose and the end of the distance screw is continued and cranked for the easier operation of the tightening "action." 66 66 66 66 66 66 66 66 66 66 The Patentee claimed :-"1. The use, in combination with an ordinary load 50 "carrying vehicle, of a detachable root cutter mounted thereon, means for attaching the root cutter without damage to or alteration of the vehicle, and means for driving the root cutter operated by the revolution of the road "wheels of the vehicle, substantially as described herein. 2. In a root cutting "apparatus for attachment to an ordinary vehicle, the combination, with the 55 "root cutter, of a guard for directing the feeding of the roots from the cart, a "hopper arranged to prevent the loose soil from passing to the cutter, means 66 Joseph Rickerby v. James Duncan & Co. "for attaching the root cutting apparatus, and means for driving same attached "to the road wheel of the vehicle, substantially as herein described. 3. The use, in combination with an ordinary load carrying cart or waggon, of a "detachable driving sprocket wheel attached to the road wheel of said cart, 5" and provided with a self-centering device to assist the ready attachment of the sprocket wheel concentrically with the road wheel hub, substantially as "herein described. 4. The construction of root cutting apparatus, for attach"ment to an ordinary farm cart, arranged and operating, substantially as herein "described with reference to Figs. 1 and 2 of the Drawings." 66 10 The Complainer set forth that he was owner of the Patent; that, about April 1907," the Respondents, who had had one of the Complainer's root "cutters on sale or return, were putting on the market an attachment for a "vehicle to cut roots or vegetables which was an infringement of the Com"plainer's Letters Patent. The special features of the latter, as set forth in 15"the Claim appended to the Complainer's Specification, are-(1) that it can "be attached to a vehicle without damage to, or alteration of, the vehicle; "and (2) that it combines in itself a hopper, a dirt sifter, a detachable self"centreing sprocket wheel, and means for attaching the whole to the vehicle. "These features or mechanical equivalents thereof are also special features 20" of the apparatus made and put on the market by the Respondents"; that the Respondents had advertised their apparatus and sent out numerous circulars setting out its advantages, and that they had made sales to certain persons named. He asked to have them interdicted from infringing his Patent "by "making, selling, or offering for sale, any attachments for a vehicle to cut 25 "roots or vegetables, constructed or used in the manner described in the said Specification, or in manner substantially the same." 66 The Respondents admitted having put on the market an attachment for a vehicle to cut roots or vegetables called the "Universal Marnon Root Cutter," which, they said, had been invented by James Gray, one of their employees, 30 and for which he had in April 1907 obtained provisional protection. They put in a statement of facts in which they made the following averments :"Detachable root cutters, constructed so as to be attached to carts without "alteration of or damage to the same, and so as to be operated by the "revolutions of the cart wheels, have been in use for at least 30 years. 35" particular, detachable root cutters, embodying all the main principles of the Complainer's machine, have been made for 30 years by James Johnston, 66 In 66 Joseph Rickerby v. James Duncan & Co. "blacksmith and implement maker, The Green, Udny, while acting as foreman "to William Ruddiman, blacksmith, Colpy, Insch, Aberdeenshire, between "the years 1875 and 1881. Johnston's machine is a detachable root cutter "adapted to be fitted on the back of an ordinary farm cart without damage "to or alteration of the vehicle, and operated by the revolution of the cart 5 "wheels by means of chains and chain wheels. In or about the years 1900 "and 1902, and in any event prior to the date of the Patent founded on, "detachable root cutters, constructed so as to be attached to carts without "alteration of or damage to the same, and so as to be operated by the "revolutions of the cart wheels, were constructed by or to the order of 10 "David M. Godsman, Mains of Fedderate, New Deer. Further, the Patent on "which the Complainer founds is invalid, in respect that it has been anticipated by other Patents. In particular it was anticipated by Clark's Patent "No. 1339, dated 12th April 1873; Wyatt's Patent No. 19,170, dated 25th "November 1890; Caldow and another's Patent No. 1562, dated 12th July 15 "1853; and Wheeler's Patent No. 1586, dated 14th July 1858." Further, "the "Respondents' root cutter, though similar to the Complainer's and Johnston's, " and other makers' root cutters, in that it is detachable, is materially different "from the Complainer's root cutter in construction, and does not use any "self-centering device for arranging the sprocket concentrically with the road 20 "wheel hub, of the kind described and claimed in the Complainer's Specifi"cation. The Respondents' machine does not have a hopper of the kind used "and claimed in the Complainer's Specification." They pleaded, inter alia, that they had not infringed and that the Complainer's Patent was invalid in respect of prior public general knowledge, prior public use, want of novelty or 25 originality, and that the Specification did not sufficiently distinguish between what was new and what was old. The case was first moved on the 8th of August 1907, when the Lord Ordinary on the Bills ordained the Respondents to lodge answers in eight days; on the 30th of August the Note was passed from the Bill Chamber to the Court of 30 Session, and on the 16th of October Lord SALVESEN L.O. allowed the Complainer to answer the Respondents' statement of facts and continued the adjustment. On the 30th of October he closed the Record and allowed a Proof, which was taken on the 19th and 20th of December. The expert witnesses for the Complainer were John Sime, Chartered Patent 35 Agent, C.E. Fel. Inst., Glasgow, and Sidney E. Page, Chartered Patent Agent, A.M.I.C.E., London. The Complainer and other agricultural implement makers gave evidence that there was a demand for such a machine, and that about one hundred a year had been sold since its invention. The expert witness for the Respondents was H. D. Fitzpatrick, Chartered 40 Patent Agent, Glasgow. David M. Godsman, Mains of Fedderate, New Deer, and others gave evidence as to the alleged prior users. There were no contemporary Drawings of Godsman's and Johnston's machines, but Drawings of them, made from description and spoken to by witnesses who had seen the machines, were produced. Descriptions of Johnston's and Godsman's machines 45 will be found in the Opinion of the Lord Ordinary. The only one of the Specifications referred to on Record which the Respondents pressed was that of Wyatt (No. 19,170 of 1890) for "The combination of a root cutter with a cart or similar vehicle in manner substantially as described and illustrated." The description of his invention in his Specification was substantially as 50 follows:-This invention consists in combining a turnip or other root cutter with an ordinary farm cart in manner so as to be readily detachable therefrom when not required for use. The root cutter is of ordinary construction, and is fixed underneath the after part or tail of the cart, the flooring of which is cut away for a space equal in area to the trough of the cutter, which 55 opening can be closed by means of a slide when the cart is required for ordinary purposes. The motive power for the cutter can be supplied either Joseph Rickerby v. James Duncan & Co. by hand or by a chain and wheel according as the chopped roots are required to be collected or scattered. On the shaft of the cutter is fixed a chainwheel geared by means of the chain with a larger chain-wheel fixed concentrically to the inner face of the cart wheel. The sliding portion of the 5 floor of the cart, being partially withdrawn, allows the roots to fall into the trough. Instead of being made to slide, this portion of the floor may be hinged so that it may be lifted up and allowed to rest against the tail-board. The shaft on which the cutter is mounted is squared at the ends to receive a winch handle for use when the cart is stationary. When the cutter is not 10 required, it may either be removed entirely along with the chain-wheel, or it may be thrown out of gear temporarily by merely removing the chain, which is provided with a disconnecting link for the purpose. By means of this invention the labour of distributing cut roots over a farm is greatly reduced, and as the cutting and distribution are performed at the same time, the roots 15 are less liable to damage from exposure to the atmosphere. All these earlier machines were adapted for use with a definite cart only or one of exactly the same size, while the Complainer's machine could be adapted to carts of varying sizes so long as the variation was not great. In Johnston's and Wyatt's machines there was a horizontal feed, i.e., the turnips passed into the cutter 20 through a hole in the bottom of the cart. The Complainer's apparatus has a vertical feed, ie., the turnips enter the cutter through an aperture facing the end of the cart. One form of Godsman's machine had a vertical feed. The Respondents' machine was adapted to be used with carts of varying size, so long as the variation was not great. It had a vertical feed. It did not contain the self 25 centering sprocket wheel of the Complainer's machine and differed from it in other respects and particularly in the mode of attaching it to the cart. It is dese ribed more fully in the Lord Ordinary's Opinion. On the 20th and 21st of December Counsel were heard. The Counsel for the Complainer were Hunter K.C. and Mair (instructed by Garden and Robertson 30 S.S.C.). The Counsel for the Respondents were Sandeman and Lippe (instructed by Erskine, Dods and Rhind S.S.C.). Counsel for the Complainer contended :-The Patent is valid and there is a patentable invention. The Patent is for a combination. It is true all the parts are old. But by a combination of old parts we attain an end never previously 35 successfully attained, viz., a practicable root-cutting machine which can be attached to an ordinary cart without injury to either. Others-e.g., Wyatt—. had attempted to attain this end, but none of their machines would work in practice. The Complainer's machine met a want; it was useful and came into large demand. Especially under such circumstances the amount of invention 40 necessary to support a Patent need not be large, and there is sufficient here (Van Berkel v. R. D. Simpson Ld. (1907) S.C. 165; 23 R.P.C. 237; 24 R.P.C. 117, especially the Opinion of Lord Dundus (1907) S.C. 172; 23 R.P.C. 256). The first, second, and third Claims of the Complainer's Specification, like the subsidiary Claims in Van Berkel's, are to be read as appendant, and as such are 45 good. The words "substantially as described herein "show that the intention is only to make an appendant Claim (Van Berkel 1907 S.C. at 179, 181; 24 R.P.C. at 137, 139). There is no prior public knowledge or prior use proved. Of Godsman's machine we have merely a Drawing, which does not show satisfactorily whether it resembled the Complainer's or not. It is plain it 50 would only suit one cart, while the merit of the Complainer's invention is that may be adjusted to any cart. Of Johnston's machine there is only a Drawing from memory, and Johnston himself is not here to speak to it. None of the alleged anticipations contain the same combinations as the Complainer's, and none of them was a commercial success. The Complainer has invented the one 55 combination that would work, and he is not anticipated by failures more or less approaching, but never coinciding with his combination. The adaptability to any cart, the self-centering sprocket wheel, the particular form of guard are it Joseph Rickerby v. James Duncan & Co. new features in the combination. There is here infringement. Every element of the Complainer's combination has been taken with mere immaterial variations. Also there is evidence that the Respondents were acquainted with our invention; the presumption is that they had studied it, and they did not give evidence to the contrary. 5 Counsel for the Respondents contended :-The Complainer's Patent is invalid. Having regard to the state of the art there was no subject-matter for such a Patent, viz., for the application of an ordinary turnip cutter barrel or drum to a farm cart, with the provision of suitable means for driving same from the road wheels of the cart. This had been done before by Wyatt, Johnston, Godsman, 10 and others. The only reason why the Complainer's machine worked better in practice than those of the men named was that it was of superior design and workmanship, not because there was anything superior or novel in the idea. embodied in it. Of course we admit that there may be a Patent for a combination and application of old machinery (Harrison v. Anderston Foundry Company 15 L.R. 1 App. Cas. 574; 3 R.H.L. 55), but it is not enough to take away from or add to an old combination an element, unless the combination be altered in substance. Now that is all that has been done here. The substance is the same as in previous machines, though the mechanism may be slightly different. Perhaps the Complainer might have got a Patent for an improvement. But that is not 20 what he has sought for. He distinctly claims all root cutting apparatus attached to a cart. In Claim 4 he does not even limit himself to any particular form of attachment. He must justify his whole Claims (Kynoch & Co. Ld. v. Webb 17 R.P.C. 100, 115). He now says that his machine has novel features in the adaptability and the nature of the feed. But that is not what he patented. Besides, 25 it is not patentable, for there was nothing in the adaptability or the nature of the feed that any blacksmith could not have suggested if he had been asked to make a machine with those characteristics. The same is true of the whole invention. It is true that a Patent may be granted where the change made is small, but that is because a small change may show inventive genius (Goddard v. Lyon 30 10 R.P.C. 334; 11 R.P.C. 354). On the other hand, mechanics are not to be hampered by Patents for what is obvious (Hill v. Thomas & Sons 24 R.P.C. 415; Case v. Cressy 17 R.P.C. 255; and Arnot v. Dunlop Pneumatic Tyre Company Ld. 22 R.P.C. 472). The use by Johnston and Godsman was sufficient prior use; there was publication in using the machine openly in the fields, not 35 merely by way of experiment but in practice, though this may not have been done often (Kobertson v. Purdey 24 R.P.C. 273; and Haskell Golf Ball Company Ld. v. Hutchison 23 R.P.C. 301). There is here no attempt to distinguish what is old from what is new (Clark v. Adie L.R. 2 App. Cas. 315). Whatever may be the case as to the fourth Claim, there can be no doubt that the other 40 Claims are bad. An attempt has been made to represent them as appendant Claims on the authority of Van Berkel v. Simpson (ubi supra). That, however, was a very special case-a master Patent for a machine nothing like which had been known before, and the elements were clearly claimed as only "in this "machine." The present case much more nearly resembles Lord Kelvin v. 45 Whyte, Thomson & Co. (ante, page 177), where the second Claim was held to be invalid. The Claims here are for subordinate integers; "substantially as "herein described" merely refers to the description; it does not import into the Claim the rest of the machine, for this is not being considered or referred to in the Claim. If such a Claim is too wide, as the first and second and 50 probably also the third here are, it voids the Patent (Jordan v. Moore L.R. 1 C.P. 624; and Edison Bell Phonographic Corporation v. Smith and Young 11 R.P.C. 389, at 404 and 405). Here the Claim is too wide, for only the whole combination, is in any view, a possible subject-matter for a Patent, not any separate part of it. There is a distinction between cases like the present, 55 and cases where the whole invention and every detail connected with it are novel as in British Dynamite Company v. Krebs (13 R.P.C. 190) and |