1. A. held letters patent for making side-saddle trees. The
tree, composed of side-bars, cantle behind, and crook before, is
first made, and the seat constructed separately on a rim and
fastened to the tree by screws, resting on the crook, and on
supports attached to the side-bars in the middle and at the rear.
This construction, it was claimed, simplifies and cheapens the
manufacture, and leaves a space for air under the seat. The claim
is as follows:
"As a new article of manufacture, a side-saddle tree, having the
side-bars and seat made separate and then united, substantially as
and for the purpose shown and specified."
The side-saddle tree constructed according to the letters patent
subsequently granted to B. does not have the sidebars and seat made
separate and then united. Tough strips of wood, steamed and bent to
a proper shape, are attached to the tree as a part thereof, forming
side-rails for the seat, that on the right or off aide extending
from the cantle to the crook and that on the left or near side,
from the cantle to a point on the near side-bar some distance back
of the crook. The seat is stretched over these strips or
side-rails.
Held that the advantage of separate
construction claimed by A was not attained by B.'s letters patent,
and that the invention of the latter is not an infringement of A.'s
letters patent.
2. Courts should not by construction enlarge the claim which the
Patent Office has admitted, and the patentee acquiesced in, beyond
the fair interpretation of its terms.
The facts are stated in the opinion of the Court.
MR. JUSTICE BRADLEY delivered the opinion of the Court.
The only question in this case is whether the defendants
infringe certain letters patent (No. 97,236) granted 23d of
November, 1869, to John J. Grimsley and John Shelly, for an
improved side-saddle tree alleged to have been invented by Shelly,
which letters were afterwards assigned to the complainants.
The infringement alleged consists in making and using
side-saddle trees according to a plan described in another patent
granted to Orlando V. Flora, on the 9th of May, 1876, numbered
177,233. According to the complainants' patent, this tree, composed
of side-bars, cantle behind, and crook before, is first made, and
the seat is constructed separately on a properly
Page 100 U. S. 672
shaped rim, and is then fastened to the tree by screws, resting
on the crook in front, and on supports attached to the side-bars in
the middle and at the rear. This construction is claimed to
simplify and cheapen the manufacture, and leave a space for air
under the seat. The claim of the patent is as follows:
"What I claim as my invention, and desire to secure by letters
patent is:"
"As a new article of manufacture, a side-saddle tree, having the
side-bars and seat made separate and then united, substantially as
and for the purpose shown and specified."
The defendants' side-saddle tree, constructed according to
Flora's patent, which is alleged to be an infringement, does not
have "the side-bars and seat made separate and then united." On the
contrary, tough strips of wood, steamed and bent to a proper shape,
are attached to the tree, as a part thereof, forming side-rails for
the seat; that on the right or off side extending from the cantle
to the crook, and that on the left or near side extending from the
cantle to a point on the near side-bar some distance back of the
crook. The seat is stretched over these strips or side-rails. It is
obvious that the seat in this case cannot possibly be constructed
separately from the side-bars. They must be united in one
construction, forming a complete tree. The advantage of separate
construction which the plaintiffs claim for their patented tree is
not attained by that of Flora. It is true that room is left for the
admission of air under the seat, but that by itself is not claimed
as the invention of Shelly.
It is well known that the terms of the claim in letters patent
are carefully scrutinized in the Patent Office. Over this part of
the specification, the chief contest generally arises. It defines
what the office, after a full examination of previous inventions
and the state of the art, determines the applicant is entitled to.
The courts therefore should be careful not to enlarge, by
construction, the claim which the Patent Office has admitted, and
which the patentee has acquiesced in, beyond the fair
interpretation of its terms.
We think there was no infringement.
Decree affirmed.
