5. The sixth assignment of error is:

"In overruling the defendant's motion to instruct the jury as set out in request No. 15, which is as follows: "The jury are instructed that they cannot convict the defendant under counts 49, 50, 51, and 52, being counts relating to the charge of causing certain entries to be made concerning the deposit ticket of $10,000 in favor of the Germania Safety-Vault & Trust Co., unless they believe from the evidence, beyond a reasonable doubt, that the defendant caused the alleged entries in the said respective counts set out to be made with a fraudulent intent to deceive the officers and directors of the said bank, or any agent appointed by the comptroller of currency to examine the affairs of said bank, with the further and additional fraudulent intent on the part of the defendant at the time to defraud the said banking association, and to injure said association.'"

The theory of this request to charge is that, because the indictment charges an intent to deceive the officers and directors of the bank, or any agent appointed by the comptroller of the currency, with intent to injure and defraud the association, the intent must be proven by the government in all the particulars charged. An examination of the Revised Statutes (section 5209), under which this indictment is framed, shows that these several intents are set forth disjunctively,"with intent to defraud a person or association," "or any agent appointed to examine the affairs of the association," or "with intent to defraud an individual," or "to defraud a corporation." It is made an offense to do the acts named with any of the intents set forth in the statute, and it is sufficient to support an indictment to prove any one thereof, so far as such element of the crime is concerned, although the several intents may be cumulatively charged in the indictment. Crain v. U. S., 162 U. S. 633, 16 Sup. Ct. 952; Whart. Cr. Pl. (9th Ed.) § 158; 1 Bish. Cr. Proc. 434, 436.

The other assignments of error are as to matters which may not be material or arise in a new trial of the case. For error in permitting the government's counsel to comment in the manner set forth on the failure of the accused to produce evidence of his good character, and the observations of the court to the jury thereon, the case must be reversed, and remanded for a new trial.

MCBRIDE v. KINGMAN et al.

DALL et al.

(97 Fed. 217.)

SAME v. SICKELS et al. SAME v. RANSAME v. AINSWORTH et al.

(Circuit Court of Appeals, Eighth Circuit. October 9, 1899.)

Nos. 898, 1183–1185.

1. PATENTS-CONSTRUCTION OF CLAIMS-INFRINGEMENT.

A patentee, who has simply made an improvement on a device that performed the same function before as after the improvement, is protected only against those who use the very improvement that he describes and claims, or merely colorable evasions of it.

2. SAME-ENLARGING CLAIM.

The claims of a patent covering in terms only improvements in the devices or mechanism forming certain parts of a machine, cannot be enlarged to include other parts or elements not enumerated in the claims, although

they may be shown by the specification and drawings, merely because they are essential parts of the machine as a whole, without which it would not be operative.

3. SAME

ESTOPPEL OF PATENTEE BY CLAIMS-SECOND PATENT.

The statute (Rev. St. § 4888) requires an inventor to particularly point out and to claim distinctly the improvement or combination which he claims as his discovery, and when he has made his claims he has thereby disclaimed and dedicated to the public all other devices, combinations, and improvements apparent from his specification and claims that are not mere evasions of those claimed as his own, and he is estopped by his patent from thereafter claiming a monopoly as to such devices, combinations, or improvements either under that or any subsequent patent. 4. SAME-RIDING ATTACHMENTS FOR PLOWS.

The McBride patent, No. 199,082, for improved riding attachments for plows, was not for a primary invention covering broadly, in combination with the other devices described and claimed, a device for carrying a plow upon wheels, or for holding it rigidly in a fixed relation to the wheels or to the axle for the purpose of regulating the depth of the furrow, but is limited, both by the prior state of the art and by the claims themselves, to the combination of the mechanism described for raising and lowering the forward end of the beam, and for canting the plow from side to side. Nor was the attempt of the patentee by his subsequent patent, No. 284,036, to add to the combination the device for rigidly attaching the plow to the axle effective, as such device was disclosed by the specification of the earlier patent, but omitted from the claims.

Appeal from the Circuit Court of the United States for the Southern District of Iowa.

Silas C. Sweet and A. B. Cummins, for appellant.

A. H. McVey and C. A. Dudley (Edmund H. McVey and N. E. Coffin, on the brief), for appellees.

Before CALDWELL, SANBORN, and THAYER, Circuit Judges.

SANBORN, Circuit Judge. These are appeals from decrees which dismissed bills exhibited against the appellees for infringement of letters patent No. 199,082, issued January 8, 1878, and No. 284,036, issued August 28, 1883, to the appellant, John H. McBride, for improved riding attachments for plows. The circuit court delivered a careful and exhaustive opinion, which will be found in 72 Fed. 908, and the issues in this court have been narrowed to a single question. It is whether the appellant invented and secured by these patents "the combination of a plow beam rigidly attached to a hinged axle, with appropriate mechanism for raising and lowering the front end of the beam, appropriate mechanism for tilting the plow from side to side, with wheels for the axle and the combining devices necessary to make the implement an operative machine," as his counsel insist, or a mere combination of old devices for raising and lowering the forward end of the beam of the plow and for tilting or canting the plow from side to side, as the court below found. It is conceded that McBride did not conceive the idea of raising and lowering the forward end of a plow beam in a wheel plow, and that he did not invent the first mechanical device to accomplish that end. It is conceded that the idea of tilting or canting the plow from side to side to determine the width of the furrow was old, and that appropriate mechanism to accomplish this purpose had been in use upon riding plows

long before McBride invented his improvements. And it is conceded that the devices used by the appellees differ so widely from those described in the patents to McBride that they do not infringe upon them unless McBride first described and secured by his patents a combination not only of the devices for raising and lowering the forward end of the plow beam, and for tilting the plow from side to side, but also for rigidly attaching the plow beam to an axle borne by wheels, so that the wheels upon the axle would carry the plow, and determine the exact depth in the ground to which it might descend. In the briefs before us, counsel for McBride specify but three assignments of error upon which they rely, and these are all based on the single assertion that the court below erred because it did not hold that McBride invented and secured as a part of the combination specified in claims 1 and 3 of his patent of 1878 the first operative mechanical device by which a plow was rigidly attached to an axle borne by wheels so that it would maintain a fixed relation to the wheels and the axle as the plow was operated through the ground. They insist that the beam of every prior plow was free to move up and down, without regard to the plane upon which the wheels might be running, and that the new idea involved in the appellant's plow was in attaching the plow proper or plow beam rigidly to the axle, and thus allowing the wheels, upon which the plow rides, to determine the exact position of the bottom of the plow.

A careful examination of the patents upon which this suit is based and a survey of the state of the art when McBride made his invention, which has been illustrated by more than 50 prior patents, has failed to convince us that the position of the counsel for the appellant can be maintained. Two controlling reasons have led us to this conclusion. They are: (1) That McBride was not the first to conceive the idea or to invent and describe a mechanism for the purpose of rigidly attaching a plow to an axle so that it would maintain a fixed relation to the wheels which support it; and (2) that he did not claim any such mechanical device as a part of the combination which he described as his invention in his patent of 1878. He made his application for this patent on March 17, 1877, and it was issued on January 8, 1878. In letters patent No. 19,077, issued on January 12, 1858, to M. A. Cravath, three gang plows are shown rigidly attached to a frame the forward end of which is borne on an axle supported by two wheels, and the rear end upon an axle borne by one wheel, so that, as the inventor says in his specification, "the weight of the plow and the downward and side pressure involved in raising and turning over the furrow slice are transferred from the sole and land side of the plow to lubricated axles, enabling the land-side plate and bar to be entirely dispensed with, and reducing the draft at least one-third." In letters patent No. 111,226, issued on January 24, 1871, to John R. McConnell, there are drawings and a description of two gang plows, the rear ends of the beams of which are rigidly attached to an axle borne by two wheels, while their forward ends are supported by the axle of a caster wheel, and are raised and lowered by the driver at will by moving a lever within his reach. These plows are carried, and the depth of their cut is limited, by the wheels which bear

the axles, and they are supported in a fixed relation thereto while they are in operation. In letters patent No. 131,063, issued to William Mason on September 3, 1872, a drawing and description of a sulky plow appear, the rear end of the beam of which is journaled on an axle borne by two wheels, while the forward end is supported by a lever which rests on a frame and tongue carried by three wheels. The lever is used to raise and lower the forward end of the beam, and is provided with a perforated bar and pin to secure it in any desired position when the plow is at work. The specification and drawing of this patent show a plow which is rigidly attached, when it is in operation, to axles borne by three wheels, so that the wheels carry the plow and maintain all its parts in a fixed relation to them and to the axles upon which they turn. There are other patents in this record which disclose mechanical devices which were conceived prior to 1877, and by which plows were rigidly attached to axles, so that they maintained a fixed relation to them and to the wheels which supported them while they were in operation. It would be a work of supererogation to describe and review them, for it cannot be held, in view of those to which we have already referred, that McBride was either the first to conceive the idea of holding the plow and the wheels in this fixed relation, or that he was the first to invent a mechanism by which this result was accomplished. He certainly was not a pioneer here, and his invention in this regard, if he made any, was by no means a primary one. If he invented or secured anything in the device by which he connected his plow with his wheels, it was not more than the particular mechanism by which he secured this fixed relation and mere colorable evasions of it, and the mechanical means used by the appellees differed too radically from his device to constitute any infringement upon it.

A patent to the original inventor of a machine which first performs a useful function protects him against all mechanisms that perform the same function by equivalent mechanical devices, but a patent to one who has simply made a slight improvement on a device that performed the same function before as after the improvement is protected only against those who use the very improvement that he describes and claims, or mere colorable evasions of it. Stirrat v. Manufacturing Co., 27 U. S. App. 30, 42, 10 C. C. A. 216, 217, and 61 Fed. 980, 981; P. H. Murphy Mfg. Co. v. Excelsior Car-Roof Co., 40 U. S. App. 200, 215, 22 C. C. A. 658, 665, and 76 Fed. 965, 972; Adams Electric Ry. Co. v. Lindell Ry. Co., 40 U. S. App. 482, 499, 23 C. C. A. 223, 231, and 77 Fed. 432, 440. Moreover, the appellant did not claim as a part of his invention, when he procured his patent, any mechanism or device whereby the plow was carried by and held rigidly in a fixed relation to the axle or to the wheels. These are the claims upon which his counsel rely for this device:

(1) "In combination with the plow beam and hinged axle, the lever, B, having the combined rack and fender, y, and lever, B2, provided with a spring latch, z, substantially as and for the purposes shown and described." (3) "The vertical lever, B, having the combined rack and fender, y, and the gravitating latch, h, the hinged axle, C, carrying the wheel, D, and rack, g, the jointed fulcrum, t, clamping the colter, wx, the horizontal lever, B2, having a spring latch at its rear end, and carrying a caster wheel at its front end, and the

hinged and adjustable brace, m; when arranged and combined to operate substantially as and for the purposes shown and described."

This is a copy of the drawing, which illustrates these claims:

The specification defines and describes the various parts mentioned in the claims in this way:

"A represents the beam of a common right or left hand plow. B is a vertical lever, rigidly clamped to the rear portion of the plow beam by means of bolts, or in any suitable way. C is a horizontal axle, hinged at right angles to the lower end of the vertical lever, B. D is a traction wheel, mounted upon the free end of the hinged axle, C. g is a rack, of segmental form, rigidly fixed to the outer portion of the axle, C, to connect with the vertical lever, B, and serve as a means of bracing the axle and adjusting it, as required, to govern the width of the furrow cut by the advancing plow. h is the handle of a gravitating latch pivoted to the vertical lever, B, to engage and lock the rack, g, and axle, C, rigidly to the lever, B. J is the plowman's seat, carried by the axle, C, and its supporting wheel, D. k is a combined brace hinge and caster-shaft bearing, rigidly fixed to the front end of the plow beam in any suitable way. m is the curved front end of an axle brace, connected with the hinge, k, in such a manner that the rear end of the brace can have vertical play. The rear end of the brace, m, is connected with the axle, C, in such a