When an applicant for a patent is compelled by the rejection of
his application at the Patent Office, to narrow his claim by the
introduction of a new element, he cannot, after the issue of the
patent, broaden his claim by dropping the element which he was
compelled to include in order to secure the patent.
The patent granted to Helen M. MacDonald, September 29, 1874,
for an improvement in dress protectors, must be construed to
include a fluted or plaited band or border as one of the essential
elements of the invention, and is not infringed by the manufacture
or sale of skirt protectors which have neither plaited nor fluted
bands or borders.
This was a suit in equity to restrain an alleged infringement of
The facts are stated in the opinion of the Court.
MR. JUSTICE WOODS delivered the opinion of the Court.
This was a suit to restrain the infringement of letters patent
for an "improvement in dress protectors," granted to Helen M.
Macdonald, the intestate of the defendant in error, dated September
29, 1874, upon an application filed May 10, 1873.
The specification of the patent described the invention as
"My invention relates to protectors for the lower edge of
dresses and other garments, and consists of a band or strip of
fluted or plaited fabric, either waterproof itself or covered or
bound with any waterproof material."
"In the drawing Fig. 1 represents a view of a detached portion
of the dress protector, and Fig. 2 represents the protector as
applied to the bottom of a dress skirt. "
Page 116 U. S. 594
"A is the plaited or fluted band, which is waterproof or bound
with waterproof material, and a is a heading to which it may be
secured for better attachment to the garment."
"Heretofore skirt protectors have been made of a plaited or
fluted strip of 'wiggan' or other fabric stiffened with starch,
which, upon becoming wet, gets limp, loses its shape, and absorbs
the dirt, besides being objectionable on account of the harsh
scraping noise it makes upon the pavement."
"By my improvement these objections are overcome. The waterproof
protector preserves the lower edge of the dress from all moisture
on the ground, retains its rigidity and proper shape, giving a
graceful hang to the skirt, and can easily be cleaned."
Both the figures referred to in the specification represented
skirt protectors made with plaited or fluted bands.
The claim was as follows:
"As a new article of manufacture, a skirt facing or protector,
having a fluted or plaited border, bound with or composed of
enameled cloth or waterproof material, substantially as and for the
purpose set forth."
On November 9, 1874, the patentee filed in the Patent Office a
disclaimer by which she struck out from her claim the words "facing
or," leaving the claim to cover only a skirt protector.
The answer of the defendants denied infringement, and denied
that Macdonald was the first and original inventor of the
improvement described in her patent.
Upon final hearing the circuit court found the issues were for
the plaintiff, and entered a decree in her favor against the
defendants for profits and damages, and restrained the latter from
selling to be used protectors embracing said patented improvement,
or any substantial part thereof. From this decree the defendants
appealed. After the appeal, Macdonald died, and Carrigan, who had
been appointed her administrator, was made appellee in her
The evidence shows that skirt protectors are made isolated, and
are sold as distinct articles of manufacture, and not as a part of
the dress to which they are to be attached. They are kept in shops
for sale singly or by the dozen, and the purchasers
Page 116 U. S. 595
use them by sewing them on the inside of the trains of long
dresses near the lower edge. They can be easily detached when worn
out and new ones substituted. It is admitted that the defendants
sell skirt protectors made under the patent issued to Theodore D.
Day, March 23, 1875, for an "improvement in skirt protectors." The
improvement of Day is that described in the specification of his
"I use a strip of India rubber that is made with longitudinal
ribs, of sufficient size to withstand the wear to which it is
subjected, and between these ribs there is a groove that makes the
strip light and flexible, and the web of rubber between the ribs
receives a line of stitching, by which the protector strip is
united to a strip of rubber cloth, muslin, or other suitable
material that is to be attached to the inside of the dress at or
near the lower edge."
The skirt protectors made under this patent are not made with a
fluted or plaited band or border. The defendants insist that by
reason of this fact they are essentially different from the
improvement described in the Macdonald patent, and therefore do not
infringe that patent. On the other hand, the plaintiff insists that
the fluted or plaited border mentioned in the Macdonald patent is a
matter of descriptive form merely, and not an essential part of the
invention covered by the patent, and that the use of skirt
protectors without a fluted or plaited border, but in other
respects substantially like the protectors described in the
Macdonald patent, is an infringement of that patent. Upon this
issue we think the defendants are right.
It appears from the file wrapper and contents in the matter of
letters patent granted to Helen M. Macdonald that in the first
application for her patent, dated May 6, 1873, the specification
described her patent as follows:
"My invention consists of a strip of enameled muslin from two to
four inches wide, which may be covered with any dress material,
such as silk, cashmere, alpaca, armure, or tamise cloth; it is then
formed in pleats, and bound across the top (like samples), said
pleats being held in place by one row of machine stitching through
the center. It is then ready to be sewed in the dress skirt. "
Page 116 U. S. 596
"My invention protects the dress from being cut or damaged by
contact with earth or brick or concrete pavements and sidewalks,
said invention being impervious to moisture; it also protects the
skirt from being soiled or damaged by mud or dampness of street
crossings, sidewalks, etc."
"It also forms a very neat trimming, and improves the hanging of
On May 10, 1873, Macdonald, for some reason which does not
appear, withdrew this specification and substituted the
"My invention consists in protecting the lower edge of dresses
and other garments by affixing thereto a portion of waterproofed
material, or in waterproofing the material itself, and I claim as
my invention the use of waterproofed material, in whatsoever form
it now exists or may hereafter exist, for the purpose of protecting
the lower edge of all garments from wear and soiling, either from
friction or moisture, and refer to the enclosed samples as
substantially representing my invention."
In this specification all reference to plaits or plaiting is
The application with the substituted specification was rejected
by the Patent Office on August 9, 1873, and the applicant was
referred to the patent issued to James A. McKee, January 10, 1865,
which covered neither a plaited nor fluted band or border as one of
its elements. Upon reexamination, her application was, on September
9th, again rejected.
On October 9, 1873, after the second rejection, Macdonald filed
an amended specification, in which she described her invention and
stated her claim as follows:
"My invention consists in protecting the lower edge of dresses
and other garments by affixing thereto a portion of waterproofed or
enameled material, or in waterproofing the material itself, and I
claim as a new article of manufacture a skirt facing or protector,
having a plaited or fluted border bound with or composed of
enameled cloth or other waterproof material, substantially as and
for the purpose set forth."
On October 30, she was informed by the Patent Office that her
application was adjudged to interfere with the pending
Page 116 U. S. 597
among others, of M. Herbert Chase, and that "the subject matter
involved in the interference" was "a skirt protector having a
fluted or plaited border." The skirt protector of Chase referred to
in the notice of interference was a plaited strip of India rubber.
Macdonald prevailed over Chase in the matter of the interference
between their two applications, and received the patent for her
invention, which is the patent involved in this suit.
This patent, it will be observed, covers a skirt protector
merely, without including any means or method for attaching it to
the dress, the purchaser being left to fasten the protector to the
dress in her own way.
It is shown by the evidence in the record that for several years
prior to the earliest date assigned by Macdonald for the discovery
of the device, in fact as far back as 1857, strips of enameled
cloth without fluting or plaiting had been sewed on the bottom of
the skirts of ladies' dresses, so as to project below the lower
edges, with a view of protecting the inside surface and lower
This fact and the file wrapper and contents of which we have
stated the substance make it clear that the claim and specification
of the Macdonald patent must be construed to include, as their
language requires, a fluted or plaited band or border as one of the
essential elements of the invention. Without this element, the
patent would not have been issued. The Patent Office decided, and
it is clear, that without it the invention had been anticipated.
Where an applicant for a patent to cover a new combination is
compelled by the rejection of his application by the Patent Office
to narrow his claim by the introduction of a new element, he cannot
after the issue of the patent broaden his claim by dropping the
element which he was compelled to include in order to secure his
patent. Leggett v. Avery, 101 U.
; Goodyear Dental Vulcanite Co. v. Davis,
102 U. S. 222
102 U. S. 228
Fay v. Cordesman, 109 U. S. 408
Mahn v. Harwood, 112 U. S. 354
112 U. S. 359
Cartridge Co. v. Cartridge Co., 112 U.
, 112 U. S. 644
Sargent v. Hall Safe & Lock Co., 114 U. S.
In the case of Fay v. Cordesman, ubi supra,
it was said
by MR. JUSTICE BLATCHFORD, who delivered the judgment:
Page 116 U. S. 598
claims of the patents sued on in this case are claims for
combinations. In such claims, if the patentee specifies any element
as entering into the combination, either directly by the language
of the claim, or by such a reference to the descriptive part of the
specification as carries such element into the claim, he makes such
element material to the combination, and the court cannot declare
it to be immaterial. It is his province to make his own claim and
his privilege to restrict it. If it be a claim to a combination,
and be restricted to specified elements, all must be regarded as
material, leaving open only the question whether an omitted part is
supplied by an equivalent device or instrumentality."
So in Sargent v. Hall Safe & Lock Co., ubi supra,
the same Justice said:
"In patents for combinations of mechanism, limitations and
provisos imposed by the inventor, especially such as were
introduced into an application after it had been persistently
rejected, must be strictly construed against the inventor and in
favor of the public, and looked upon as in the nature of
These authorities are in point and decisive of the present
If an applicant, in order to get his patent, accepts one with a
narrower claim than that contained in his original application, he
is bound by it. If dissatisfied with the decision rejecting his
application, he should pursue his remedy by appeal. Under the
circumstances of this case the inventor could not even get a
reissue based on the broader claim which she had abandoned.
Leggett v. Avery, ubi supra.
Much less can she, in a suit
brought to restrain its infringement, enlarge her patent by
argument so as to cover elements not falling within its terms, and
which she had explicitly abandoned.
As the skirt protectors sold by the defendants have neither
plaited nor fluted bands or borders, we are of opinion, in
accordance with the views expressed, that they do not infringe the
patent of the plaintiff.
The decree of the circuit court must therefore be reversed,
and the cause remanded, with directions to dismiss the