1. To entitle an improvement to protection under the patent
laws, it must be the product of the exercise of the inventive
faculties, and involve something beyond what is obvious to persons
skilled in the art to which it relates.
2. Reissued letters patent No. 5774, granted Feb. 24, 1874, to
"Shubael Cottle, assignor to Mulford, Hale, & Cottle," for an
improvement in chains and chain links for necklaces, &c., are
void, the first claim for want of patentability in the alleged
invention and the second for want of novelty.
3.
Quaere whether said first claim is not also void for
want of novelty.
This is a suit by Lewis J. Mulford, Seth. W. Hale, Shubael
Cottle, and Samuel, P. Baker, doing business under the firm
Page 102 U. S. 113
name of Mulford, Hale, & Cottle, against Thomas D. Pearce.
The complainants' bill prays for an injunction to restrain his
infringement of reissued letters patent No. 5774, granted to the
complainants as assignees of Shubael Cottle, Feb. 24, 1874, for an
alleged new and useful improvement in chains and chain links for
necklaces, &c., upon the surrender of original letters No.
147,045, granted Feb. 3, 1874. The bill also prays for an account
of profits and damages. The defendant's answer admits the
manufacture and sale of the chains made in the mode described in
the letters, but denies the novelty and patentability of the
alleged invention.
The specification forming a part of said reissued letters,
together with the drawings therein referred to, is as follows:
"Be it known that I, Shubael Cottle, of the City, County, and
State of New York, have invented a new and useful improvement in
chains for necklaces, &c., and I do hereby declare that the
following is a full, clear, and exact description of the same,
reference being had to the accompanying drawing, forming a part of
this specification, in which --"
"Figure 1 is a side view of a portion of a chain necklace
illustrating my invention. Fig. 2 is a view of the same turned one
quarter around. Fig. 3 is a cross-section of the same, taken
through the line
x x, Fig. 1."
"My invention has for its object to furnish an improved chain
for necklaces, &c., having links of peculiar construction,
which enable all the links to be finished separate, and then put
together to form the chain. The invention consists in an ornamental
chain whereof the links are connected together by open spiral links
B finished before being connected together, the connection being
made by springing the finished links into each other in the manner
described."
"I will now describe the chain represented in the drawing to
illustrate my invention."
"A and B represent the links of the chain. The links A are round
and closed, as shown in Fig. 1, and are made and polished or
colored separately from the other links. The links B, which
constitute the peculiar feature of my invention, are formed of one
or more coils of tubing of the proper length, so as to form a
double spring link. Into each end of the tube forming the link B is
soldered a small shot, as shown in the drawing, which shot gives a
finish to the link. The links B may then be colored or
polished,
Page 102 U. S. 114
and the chain is formed by springing the links into each other.
The links A B may be made the one kind round and the other oval, or
both may be made round, or both oval."
"The first construction is preferred, as producing a more
elegant chain. Either kind of the links A B may be polished and the
other colored, or both may be polished or both colored, but I
prefer to polish the closed links and color the open spiral links
as producing a more pleasing effect. By this construction the links
may be made and finished in quantities, and the chain formed from
the finished links by springing them into each other to produce any
desired combination of the links of the same or different kinds.
Finishing the separate links in this way enables them to be more
perfectly polished or colored, and with a greatly diminished
expenditure of labor and time, and enables the links to be put
together without injuring them in the least, however highly they
may be polished or colored."
"Having thus described my invention, what I claim is --"
"1. An ornamental chain for necklaces, &c., formed of
alternate closed links A and open spiral links B, substantially as
shown and described."
"2. The open spiral link B formed of coils of tubing,
substantially as shown and described."
"SHUBAEL COTTLE"
image:a
Page 102 U. S. 115
The court below sustained the validity of the letters, enjoined
the defendant from infringing them, and awarded damages to the
complainants. Pearce thereupon appealed.
MR. JUSTICE STRONG, after stating the case, delivered the
opinion of the Court.
In view of the evidence found in the record, it cannot be
questioned that ornamental chains composed of alternate closed
links and spiral links, or formed by spiral links alone, had been
known and in use long before Cottle made his alleged invention. As
was said by the circuit judge,
"Chains formed by split rings which are sprung into each other,
or into a solid link, are familiar articles, and there can be no
novelty in the mere shape or form of the chain or of the link which
is shown in the drawings of the patent."
There is abundant evidence not only that split rings had been
long in use but that other spiral links had been made and used
before 1873, when the patentee claims to have made his invention.
If, therefore, there be any novelty in the link which is the
subject of the second claim, it must consist in the fact that the
spiral link is formed of tubing. Tubing itself, as understood in
the jeweler's art, is made by compressing a strip of gold around a
brass or copper wire, and then forcing it through a draw plate, the
holes in which decrease gradually in diameter until the edges of
the gold strip are completely
Page 102 U. S. 116
united. The copper wire is then eaten out by an acid, and the
tubing is complete. Both the product and process have long been
well known. And so have been spiral rings formed of gold tubing.
The tubing, before the wire is removed, is wound into coils around
a mandrel and cut into desired lengths. The coils may then be
pressed together by a wire and annealed, the wire having been
removed, or the compressing and annealing process may be omitted.
Such spirals have a certain degree of elasticity, which enables
them to be sprung upon other links, and when thus sprung into other
closed or open spirals they will form a chain. The well known
serpent bracelet was such an open spiral, such a double link, and
several of them, sprung together alternately with closed links,
would have formed a chain identical in principle with that of the
patentee. There certainly is nothing patentable in merely reducing
the size of the bracelet so as to adapt it to use in a necklace.
The record also contains evidence that other spiral rings or links
made of gold tubing, some of them open and some closed, by
soldering, were made before 1873. It is to be observed that the
second claim in the patent is not for any process of making a link;
not for making tubing, or winding it into spiral forms; not for
tying or annealing the coils when they have been wound, but for an
open link, consisting of one or more coils of tubing of the proper
length, so as to form a double spring link, into each end of which
is soldered a small shot to give the link a finish. This is all the
description the specification gives of the link. It is not
intimated that the coils must be brought into close contact with
each other or annealed, and it is simply said the links may be
colored or polished. The form of the link, when made of gold
tubing, is all that is attempted to be patented. The constituents
are not. The patentee has testified that as long as he had known
anything about the manufacture of jewelry, he had known tubing to
be used in the art; that for many years he had known shot put into
the ends of such tubing, and that for a number of years he had
known links formed of tubing with shotted ends. We think,
therefore, the evidence sufficiently establishes that the second
claim is void for want of novelty in the alleged invention.
Page 102 U. S. 117
The first claim read in connection with the description given in
the specification and drawings is for an ornamental chain,
consisting of solid links and open spiral links made of tubing, the
latter being finished before they are sprung into the solid links,
and the connection being made by thus springing the links together.
In considering whether this can be sustained, it is necessary to
observe what was the state of the art and what was known when
Cottle claims to have invented the device for which he obtained the
patent. Chains having alternate open and closed links, the open
links being spiral and sprung into the closed links, were known. So
were chains made entirely of spiral links, and even of open spiral
links. A chain had also been made and worn, and it was for sale in
the stores, the links of which were hollow. They were made solid,
with copper wire inside. The copper wire was then destroyed,
leaving the links hollow, and they were then sprung together to
form a chain. The chain was thus composed of open spiral links made
of hollow metal -- that is, of tubing. It is true, as appears from
the model which is an exhibit in the case, the two ends of the
spiral were bent outward and the coils were soldered together after
the links had been sprung into each other. Still, when thus sprung
into each other, they made a chain formed of open spiral links of
tubing. The soldering was a distinct and after process. Omitting
that process and the outward deflection of the ends, and
alternating the links with other links made closed and solid, the
chain would have been substantially the same as that of the
complainants. We cannot think the advance which the patentee made
upon that can be called invention. Leaving the links open after
they have been sprung into closed links, there being no novelty in
the links themselves, cannot be patentable. It is nothing more than
the exercise of ordinary mechanical skill. If in one of the
complainants' chains, after the links had been joined, a person
should solder the spirals together or to the closed rings, it could
hardly be maintained that a new chain had been invented. Or if,
when thus soldered, the soldering should be removed, the change
would not deserve to be regarded as a product of invention. Yet
this is substantially what the patentee has done. His chain may
have been an improvement
Page 102 U. S. 118
on the chains that preceded it. In some particulars it doubtless
was. It left the elasticity of the spiral gold tubing more free by
releasing the link from the attachment of the soldering, and it
enabled the chain to be freely taken in pieces without injury to
its structure. But all improvement is not invention and entitled to
protection as such. Thus to entitle it, it must be the product of
some exercise of the inventive faculties, and it must involve
something more than what is obvious to persons skilled in the art
to which it relates.
In this case, neither the tubing, nor the open spiral link
formed of tubing, nor the process of making either the open or the
closed link, nor the junction of closed and open spiral links in a
chain, was invented by the patentee. We are therefore constrained
to hold that the first claim of the patent, even if not void for
want of novelty, is void for want of patentability.
The decree of the Circuit Court will therefore be reversed and
the cause remanded with directions to dismiss the bill.
So ordered.
