Burdett v. Estey. plaintiff has offered no proof that the defendants have infringed the third claim. The especial contest is as to the first claim. It is apparent, from the specification in connection with the four claims originally made, that the plaintiff originally intended to claim two things: 1st, his alleged new arrangement of the reed board; 2d, his alleged new method of tuning his additional partial set of reeds a trifle above or below the back diapason set, a. The arrangement of the reed board, and of the sets of reeds in it, was intended to be claimed, and was claimed, in the first claim, without reference to any method of tuning the additional partial set. The original second claim claimed the arrangement of the three sets of reeds in the first claim, with the third set tuned in the manner described. It is quite clear, that the plaintiff did not intend to claim the same thing, by his original first claim, that he claimed by his original second claim; that he did not regard the alleged new method of tuning the additional partial set as forming any part of the first claim; and that the Patent Office did not intend to grant to him, and did not grant to him, in granting the first claim, a claim in which such method of tuning formed any element. The words, to the effect set forth," in the first claim, have no reference to the effect produced by such method of tuning. The effect refered to in the claim could extend only to an effect produced by the arrangement specified in the claim; and such arrangement does not produce the effect referred to in the specification as that produced by drawing and using the Harmonic Celeste in connection with the diapason, when the Harmonic Celeste is tuned as described. The words, "to the effect set forth "mean no more than the words, as set forth. They do not have the same meaning as the words, in the original second claim," so as to produce the effect set forth," the effect thus referred to being the effect produced by having the arrangement of the reed board with the three. sets of reeds as described, and tuning the third set in the method described, and then using the diapason set and the third set together. In order to determine the questions involved as to the novelty and validity of the first claim, it is necessary to first Burdett v. Estey. ascertain what is the proper construction of that claim. It is not only, as has been shown, a claim into which no method of tuning the additional set of reeds enters as an element, but it is a claim to the arrangement of a reed board having in it the sets of reeds. It is a claim to the arrangement of the reed board A, having in it the two sets of reeds and the additional set,“ substantially as and to the effect set forth" in the body of the specification. The arrangement claimed is not merely one in which there are the two sets of reeds and the additional set, but it is one in which such three sets of reeds are arranged, with reference to the reed board and to each other, substantially as and to the effect set forth in the specification. The arrangement is described thus: The main reed board contains two sets of reeds running through the entire scale, a diapason set and octave set, the latter tuned an octave above the diapason. The lowest and longest reeds in those two sets are placed with their vibrating ends as near together as they can be, with room only for the tracker pin between them. But, as the reeds continually shorten as they advance upward in the scale, it results, that there is an unused part of the reed board between the diapason set and the octave set, which unused part is constantly growing wider. This hitherto unused part of the reed board the patentee calls "a vacant space." It is not a vacant space in the sense of being a space of air occupied by no material substance. It is a space occupied by a part of the reed board, but not occupied by reeds or by any other operative part of the mechanism. It is vacant in that sense. The patentee proposes to occupy that vacant space and make it of use, by putting an additional partial set of reeds into it, and thus getting, with a reed board no larger than one required for two full sets of reeds, the substantial advantages of three sets of reeds, which had not before been attained with so small a reed board. Therefore, within, and into the body of, this unused part of the reed board, commencing on tenor F and running upward through the scale, he introduces a third set of reeds, which he places in the reed board, in its body, in the same reed board in which the other two sets are placed, in the hitherto unused part of such reed board. Burdett v. Estey. He places them over the octave set, and they run obliquely to the foundation board, and their vibrating ends rest on the same base as the other two sets of reeds. The specification does not state why the vibrating ends of the reeds in the third set are to be brought down to the same base with the vibrating ends of the reeds in the other two sets. But that was not necessary. The statement of the fact that it is to be done is sufficient. It cannot be done unless the reeds of the third set enter and pass down through the reed board and thus occupy the hitherto unused part of the reed board. It cannot be done if they are wholly above the reed board, nor can it be done if they do not run obliquely downward into the body of the reed board. This, therefore, is the arrangement referred to in the first claim, as the arrangement set forth in the specification. The point of advantage, in bringing down the vibrating ends of the reeds in the third set so that they shall rest on the same base with the vibrating ends of the reeds in the other two sets, is shown, by the evidence, to be the same point of advantage which is set forth in the specification of the patent granted to the plaintiff January 9th, 1866. In that, the invention is stated to be to so make the reed board that the three or the four sets of reeds in it shall be acted upon instantly and simultaneously by the rush of air upon the opening of the valve; and it is set forth that that result is effected by placing two sets of reeds on the same horizontal plane, and placing the other sets on an inclined plane, each with its base on the same level as the first and second sets, thus making the head of each reed equidistant from the valve and making each produce instantaneous concerted sound. Although this feature thus existed before in reed boards having three or more full sets of reeds, it did not exist before in a reed board arranged like that in the plaintiff's patent of 1869, having three sets of reeds in a reed. board no larger than that theretofore used for two full sets ; and, although an additional partial set of reeds may have before been added to the two sets, commencing at tenor F and running upward through the scale such additional partial set did not have the vibrating ends of its reeds resting on the same base with the vibrating ends of the reeds in the other Burdett v. Estey. two sets. One feature of the arrangement claimed in the first claim may have before existed in one structure, and the other feature may have before existed in another structure, but they did not before co-exist in any one structure; and it involved invention for the plaintiff to combine and arrange them in his reed board. The plaintiff was called as a witness on behalf of the defendants, and, on his direct examination, was asked: “Q. 37. State, if you please, what devices or improvements in the reed organ you supposed you invented, and what you believe to be described and claimed in your letters patent marked Exhibit A ?'' He answered: "A. In the old tri-reeds, or organs with three full sets of reeds, there were many objections, and, in consequence of those objections, it never became a desirable or popular instrument with organ buyers. Those objections were, some of them, too long a valve required too much power, to secure the valve sufficiently to hinder the escape of wind through the valve seat or opening, and, consequently, to overcome this, extra power on the long valve by a touch of the key with the finger; also a socket board made with the long valve was more liable to spring, so that the valve seat would become crooked, and render it useless, on account of leaking air, in consequence; besides, the instrument required to be a little larger, on account of a larger bellows. being necessary to supply sufficient air for the reeds; besides, the tone not being a good or desirable one in the trireed board. To overcome these objections, and, perhaps, others I might mention, I conceived the idea of devising an instrument in a more desirable and practical form, in which I could embody everything desirable in the old tri-reed, and introduce features that were popular and desirable. I, therefore, conceived the idea of taking the double reed board and introducing a set of reeds in a space unoccupied between the two reeds of that board on the treble end, and introduce a third set of reeds, without altering the two reed or double board, and thereby secure just as practical and desirable an action as the ordinary double reed board, and be enabled to produce the best effects of a third set of reeds, as far down in the scale as desirable to ac Burdett v. Estey. complish this result; and this, in the main, is what I claim as my improvement, as set forth in letters patent Exhibit A.” One of the, desirable features in the tri-reed board, as set forth in the plaintiff's patent of 1866, and a feature which assisted in giving the best effect to a third set of reeds, was the feature of bringing down the vibrating ends of the reeds in the third set to the same base with the other two sets. This feature is fully set forth in the patent of 1869, as a feature of the arrangement of the three sets in the reed board. The defendants' expert, Mr. Peale, was asked, on his direct examination by the defendants, the following question: "Q. II. In the specification annexed to complainant's patent Exhibit A, the following language is used: These,' (referring to the intermediate partial set of reeds, L,) are placed in the reed board over the octave set b, and run obliquely to the foundation board G, as shown in Fig. 3, the vibrating ends resting on the same base as the other sets of reeds, a and b. If a reed organ constructed with a reed board containing a diapason set, an octave set, and an intermediate partial set of reeds arranged in the same manner as the patent requires, except that the vibrating ends of the intermediate partial set of reeds do not rest upon the same base with the diapason and octave sets, but with the vibrating ends of its reeds varying from three-sixteenths of an inch to fivesixteenths of an inch above the vibrating ends of the diapason and octave sets of reeds, would or would not a reed board so constructed and arranged come within the description of said specification, above quoted?" He answered: "A. It would not." The invention covered by the first claim is, therefore, not the mere addition to the reed board of an organ having two sets of reeds, of an intermediate partial set from tenor F upward, but it is the addition to such a reed board of such an intermediate partial set, placed and combined in the manner set forth in the specification and drawings annexed to the patent. What that manner is has been herein before defined. The record contains an admission on the part of the defendants, that an organ put in evidence and marked complainant's Exhibit C, was made and sold by the defendants at VOL. IV-2 |