The claims in letters patent No. 238,100 granted to Simon
Florsheim and Thomas H. Ball, February 22, 1881, for "an
improvement in corsets," and claims 1 and 2 in letters patent No.
238,101 granted to the same grantees on the same day for "an
improvement in elastic gores, gussets, and sections for wearing
apparel," are invalid by reason of their long prior use as
inventions secured by patents which cover every feature described
in those claims, and the combination of those features in No. 238,
100 is not a patentable invention.
The substitution in a manufactured article of one material for
another, not involving change of method or developing novelty of
use, is not necessarily a patentable invention, even though it may
result in a superior article.
A new arrangement or grouping of parts or elements of a patented
article, which is the mere result of mechanical judgment, and the
natural outgrowth of mechanical skill, is not invention.
The combination of old devices into a new article, without
producing any new mode of operation, is not invention.
Page 137 U. S. 65
In equity for an infringement of letters patent. Decree
dismissing the bill. Complainants appealed. The case is stated in
the opinion.
MR. JUSTICE LAMAR delivered the opinion of the Court.
This is a suit in equity brought in the Circuit Court of the
United States for the Northern District of Illinois, by Simon
Florsheim and Thomas H. Ball against Gustav Schilling, for the
alleged infringement of letters patent Nos. 238, 100 and 238, 101,
the first of which was for an "improvement in corsets," and the
second from an "improvement in elastic gores, gussets, and sections
for wearing apparel," both of which were issued to the complainants
February 22, 1881, on applications filed, respectively, August 12
and July 16, 1880, the invention in each purporting to have been
made by the complainant Florsheim. The material parts of the
specification in No. 238, 100, and its claims, are as follows:
"The object I have in view is such an improvement upon the
corset shown in the patent granted November 25, 1879, to Gustav
Schilling and myself, that, while the same will possess all of the
advantages obtained by the use of the covered and grouped metal
spiral springs, it will allow an easier and more equal expansion of
the entire corset, will adapt itself more perfectly to the form of
the wearer, and will better supply the popular want in that it will
have means for lacing the corset at the back. The improved corset
also includes a better and cheaper method of securing the springs
and forming the groups, whereby the elastic sections can be
stitched in place on a machine without interfering with the
springs, and the elasticity of the sections cannot be injured by
the stitching."
"My invention consists in the peculiar means for accomplishing
this object, as fully hereinafter explained and pointed out by the
claims. "
Page 137 U. S. 66
"In the accompanying drawings, forming a part hereof, Fig. 1 is
a view of the corset in position from the front; Fig. 2, a similar
view from the rear; Fig. 3, an elevation of a portion of one side
of the corset, showing one of the elastic side sections; Fig. 4, a
detail view, showing the preferred way of arranging and forming the
springs of a group, one side of the covering cloth being removed,
and Fig. 5, a vertical section through a portion of one of the
elastic side sections of the corset."
"Like letters denote corresponding parts in all the
figures."
"The corset is composed of two separable parts, A B, which are
secured together at the front, as usual, by studs and loops, and at
the back have eyelets for receiving lacings. The central sections,
C D, at the sides of the corset, which extend from under the arms
down over the hips, instead of being made as usual, are constructed
of two layers or thicknesses of cloth or other material, which
thicknesses are sewed or woven together a portion of their width to
form horizontal tubes, which receive and cover small closely coiled
spiral springs E, of metal. The pieces of cloth from which the
sections C D are formed are considerably wider than such sections
when completed, so that when puckered laterally, they will be of
the desired width. The tubes are located in the center of the
sections, and do not extend to the edges of the same, as seen in
Fig. 4, so that margins will be left at the ends of the tubes,
which margins are lapped with the adjoining sections of the corset,
and stitched thereto. The springs are arranged in groups, as shown,
with puckered spaces of cloth between such groups. The number of
springs composing the groups will vary according to location so as
to give the requisite stiffness and elasticity. Thus, at the top
and bottom of the elastic side sections, the groups of springs
should not be made so stiff as at the waist of the corset. The
springs are passed through the tubes, which are puckered over the
springs to the desired extent. The springs terminate at the ends of
the tubes, and are secured to the thicknesses, so as to leave clear
margins of unpuckered cloth outside of such springs. This is a
great advantage over the construction shown in the patent before
referred to, since it enables
Page 137 U. S. 67
the elastic sections to be stitched into the corset on a sewing
machine, which cannot be well done when the ends of the springs are
secured by the same stitching, since the needle strikes the coils
of the spring and either cuts the spring or breaks the needle.
Herein also is one of the peculiar advantages over rubber cloth.
Rubber cloth, when stitched into a corset, always has more or less
of the rubber cords cut off by the needle, and it is thus greatly
weakened, while in my corset the elasticity of the sections cannot
be affected by the stitching."
"The cheapest manner of arranging and securing the groups of
springs to secure the above advantages is by making all the groups
of each section from a single continuous length of metal spiral
spring. The spring is secured at its upper end by stitches passed
through the thickness at the end of the upper tube, and enclosing
one or more coils of the spring. The spring is then passed back and
forth through the tubes, which are puckered at the same time. After
forming one group, the spring extends down between the thicknesses
to the next group, and so on, till the lowest group (or the
uppermost group, as the case may be) is finished, when the spring
may be cut off, if there is more than required, and will be secured
by stitches passed through the thickness. The elastic section can
then be placed in the corset, the plain margins being lapped with
the edges of the adjoining sections and secured by lines of machine
stitching."
"By making the groups of springs of a single piece of coiled
wire, passed back and forth through the tubes and from one group to
the other, the groups relieve each other somewhat, and when one
group is subjected to great strain, the springs of the adjoining
groups are stretched also. In addition, by constructing the spring
in this manner, no ends are left to wear through the cloth, as
would be the case if separate springs, sewed at their ends, were
used. It would be impracticable to insert separate springs and sew
them in position at the ends of tubes, and if such springs were
used, they would pull away from the fastening stitches in a short
time. The springs can only be stretched to the full width of the
cloth composing the
Page 137 U. S. 68
side sections, and they will be thus limited in their expansion
so as not to be injured by being stretched too far."
"By having the elastic sections in the sides of the corset, the
corset can adapt itself to different forms without the use of other
elastic sections or gores, and such elastic side sections, by
extending the entire length of the corset from under the arms down
over the hips, allow the front and back of the corset to expand and
contract from these central side points independently of each
other, and more easily and freely than when a back elastic section
is used."
"My side elastic sections are made continuous from the top to
the bottom of the corset, leaving no open spaces."
"The covered metal springs possess great advantages over rubber
cloth for this purpose other than those before mentioned. The
rubber cloth is not nearly so durable, and soon wears out and loses
its elasticity at points subjected to the most strain. The rubber
cloth also has equal stiffness throughout, and cannot be regulated
to have different degrees of elasticity at different points, and it
further does not possess that independent elasticity obtained by
the groups of springs, each group acting wholly independent of all
the other groups. The covered metal springs also do not heat and
bind the flesh, as does the rubber cloth."
"It is essential also that the springs be arranged in groups,
since, if placed contiguous throughout the elastic sections, the
corset would be much too heavy and expensive, and such sections
would be too stiff at some points, and not stiff enough at
others."
"As a modification of the corset, it could be made continuous at
the back without any provision for lacing, or the back could be
provided with an elastic section; but I prefer the construction
shown, since it enables the wearer to adjust the corset by means of
the lacings, so that the elastic sections will always give to the
corset an easy and pleasant tension."
"What I claim as my invention is:"
"1. In a corset, an elastic section composed of two thicknesses
of cloth or material having tubes in combination with the spiral
metal springs E, enclosed by such tubes and arranged
Page 137 U. S. 69
in groups, to regulate the elasticity of the section, such
groups being all composed of a single continuous spring passed back
and forth through the tubes and secured at its ends, substantially
as described and shown."
"2. An elastic section or gore composed of material having tubes
extending only part way across the same, and plain margins outside
of said tubes, and spiral metal springs arranged in groups in such
tubes, the springs of the several groups being made continuous,
substantially as described."
"3. A corset laced at the back, and having the elastic side
sections, C D, extending from under the arms down over the hips,
each of such sections being composed of material having puckered
tubes extending part way across the same, and plain margins outside
of said tubes, and spiral metal springs arranged in groups in such
tubes, and made continuous, substantially as described and
shown."
In No. 238,101 the specification, so far as is necessary to be
considered, and the claims, are as follows:
"The substitution of spiral metal springs for India rubber as an
element in elastic gores, gussets, and sections for wearing apparel
has not heretofore proved successful, for the reason that in all
instances the springs have been stayed at their ends by the same
stitching that secures the gore to the material of the article of
wearing apparel to which it is applied. This stitching cannot be
done by machine, since the wire of the springs would be cut by the
needle when struck squarely, or the needle itself be broken, and
when the elastic gore or section is sewed in position by hand and
the springs are secured by the same stitching, the seams are thick
and uneven, and present a bungling appearance, which destroys the
salableness of the article, in addition to the fact that the hand
sewing has heretofore made the use of metal springs impracticable
on account of the increased cost."
"It is the object, therefore, of my invention to overcome the
objections to the employment of spiral metal springs as a
substitute for India rubber in elastic gores, gussets, and sections
for wearing apparel, and this I accomplish by extending the springs
only part way across the covering material, and staying
Page 137 U. S. 70
them at their ends by securing them to such covering material
itself, while the covering material is extended beyond the ends of
the springs to form inelastic margins, by which the gore can be
secured in position by stitching these margins on a sewing machine
to the material of the article of wearing apparel to which the gore
is applied. This elastic gore is adapted more especially for
corsets, for the sides of gaiters, and for use upon the waistbands
of overalls and pantaloons, but it can be employed upon other
articles of wearing apparel wherever rubber cloth is now used, and
also, on account of its strength, durability, coolness, its
independence of action, and the nicety with which its elasticity
can be regulated in many places where rubber cloth cannot be
employed to advantage."
"My invention consists first in securing the metal springs to
the covering material and extending such covering material beyond
the ends of the springs to form inelastic margins; second in
puckering the center of such covering material, while the inelastic
margins are left plain and unpuckered; third in weaving the
covering material of such elastic gore with the covering tubes
formed therein in the process of manufacture, such material and the
tubes being woven of a particular pattern to suit the location
where the elastic gore is intended to be used, the tubes not
extending to the ends of the material, and fourth in the peculiar
fastening for securing the springs to the covering material -- all
as fully hereinafter explained and pointed out by the claims."
"In the elastic gore, the covering material performs three
offices,
viz., it covers the springs, limits their
expansion, and furnishes means for securing the gore in
position."
"What I claim as my invention is:"
"1. An elastic gore, gusset, or section for wearing apparel
composed of a covering material having tubes, spiral metal springs
enclosed by such tubes, and not extending to the edges of the
covering material, and stayed at their ends by such covering
material, and inelastic margins outside of the springs,
substantially as described, for the purpose set forth."
"2. An elastic gore, gusset, or section composed of a covering
material having tubes and spiral metal springs enclosed by
Page 137 U. S. 71
such tubes, and not extending to the edges of the covering
material, and stayed at their ends by such covering material, said
covering material being puckered at its center over the springs and
having plain unpuckered margins extending wholly outside of the
springs, substantially as described and shown."
"3. An elastic gore, gusset, or section composed of a covering
material woven with tubes therein of a particular pattern to suit
the location where the elastic gore, gusset, or section is intended
to be used, such tubes not extending to the edges of the covering
material, and spiral metal springs enclosed by such tubes, and
stayed by the covering material at the ends of the tubes,
substantially as described and shown."
"4. In an elastic gore, gusset, or section, the combination of
the covering material made of double thickness, and having tubes
not extending to the edges of the covering material, with spiral
metal springs enclosed by such tubes, and fastenings extending
across the ends of the tubes between the thicknesses of the
covering material, substantially as described and shown."
The bill, filed June 12, 1882, contained the usual allegations
as to the issue of the patents in suit, charged that the defendant
had infringed both of them in the district where the suit was
brought, and prayed an injunction, and accounting, and damages.
"The defenses pleaded were (1) noninfringement; (2) that there
is no patentable novelty in either of the alleged inventions, and
(3) that the defendant himself was the original inventor of the
devices in question."
Issue was joined, proofs were taken, and on the 11th of January,
1886, the court entered a decree, holding that there had been no
infringement as complained of, and that the patents in suit were
void for want of novelty, and ordering that the bill be dismissed
for want of equity. This decree was afterwards modified so as to
not apply to the last two claims in No. 238,101. From this decree
the complainants have appealed. The opinion of the circuit court is
reported in 26 F. 256.
In construing these patents, the court below very properly
Page 137 U. S. 72
took into consideration the state of the art when the
applications for them were made, and found that some of the
elements were embraced in the English patent of John Mills, of
March 14, 1815; others, in the English patent of the Millers, of
December 31, 1866, and the remainder in the American patent issued
to Mary J. C. Vanorstrand, February 1, 1876. That is to say, the
court found that there was no feature whatever in the patents in
suit that had not been used and applied long previously in prior
inventions. The court also ruled that in this view of the case it
became unnecessary to consider the testimony taken bearing upon the
question of the defendant's alleged invention of the devices in the
patents in suit.
It is assigned for error that the court erred (1) in entering a
decree finding noninfringement, because it was stated in the
opinion that it was unnecessary to consider the testimony bearing
upon the question of infringement under the view taken of the
question of novelty; (2) in finding that there was no novelty in
complainants' invention, because one feature was found in one old
patent and another feature in another, and still another feature in
a third patent, all of which constituted the subject matter of the
claims in complainants' patent, and (3) in finding that the
description in the English patent issued to the Millers in 1866 was
sufficiently clear to enable a person to construct from it an
elastic gore or gusset like the one shown and patented.
After a careful examination of the evidence relied on in support
of these assignments of error, we cannot assent to the positions
assumed by the appellants. We concur with the circuit court that
all the claims in these patents except the last two claims in No.
238,101 are invalid by reason of their long prior use as inventions
secured by patents which cover every feature described in those
claims, and that the combination of these features in No. 238,100
is not a patentable invention.
What are the characteristic features of the device or mechanism
described in No. 238,100? They are all, as a close analysis will
show, limited confessedly to a corset constructed with an
arrangement of elastic sections or gussets at the two
Page 137 U. S. 73
respective sides, extending from the armpits to the hips,
consisting of coils of spiral wire inserted in, and passed back and
forth through, tubes or channels wrought between two thicknesses of
the material of the gusset. On comparing with this the gusset shown
and described in the English Mills patent, set up in the answer of
the defendant, we find that the latter contains the elastic section
or gusset, the elasticity secured by coils of spiral wire enclosed
between two thicknesses of the material out of which the said
gusset or section is made, which gusset extends from the top to the
bottom of the corset. Mills, in his specification, says:
"My improvement of elastic stays for women and children . . .
consists of the introduction of a flexible or elastic portion in
those parts of the stays best calculated to give relief to the
wearer, and at the same time preserving that stability and support
usually given to the body by the common adoption of whalebone,
steel, and other hard or flexible materials. . . . This flexible
portion is composed of springs, either of brass, copper, or iron
wire, or of any other matter or thing capable of producing
sufficient elasticity, but that which I recommend is small
brass-wire worm springs, which extend by a small degree of force.
These I place close together in runners or spaces stitched in
between two pieces or laying of silk, satin, or other fit material,
puckered or quilted loosely to give room for expansion, the ends of
the springs and their covering of silk, satin, or other matter on
them sewed or otherwise fastened to and between the two half-pieces
of the stay previously made of the usual materials, such as jean or
other cotton, linen, silk, woolen, or leather, with the proper
busks or necessary portions of steel, whalebone, or other substance
commonly adopted, calculated to distend the stay and brace and
support the body. . . . The manufacture of these patent stays is
not confined to form of shape, neither to the use of any particular
article or material of which to make the same, but adopt such as
custom or propriety dictate, adhering to the principle of inserting
elastic portions into the stays of such forms, agreeable to the
foregoing principle, as under all circumstances may be found most
eligible and best calculated to afford that relief for which the
patent is granted. "
Page 137 U. S. 74
The counsel for appellants contends that this Mills patent does
not have a single element contained in the appellants' patent in
suit. He says,
"The Mills patent does not contain the spiral metal springs
arranged in groups, the springs being composed of a single
continuous spring passed back and forth through the tubes, nor does
it have any plain margins on the sides of the sections, nor does it
have elastic sections extending from under the arms down over the
hips,"
and that they only "extend from one end of the shoulder strap
down the back of the corset." It may be observed in reply to this
that the drawings of the Mills patent, according to the evidence of
one of the defendant's experts, show a plain margin on each side of
the elastic section or gusset for attachment to the main parts of
the corset, and that the Mills specification leaves it in the
discretion of the manufacturer as to where the elastic section is
to be placed -- whether at the sides of the corset or at the back
-- the statement being that it should be placed where it will be
found most eligible and best calculated to give relief to the
wearer, etc.
What are the particular features of the improvements which it is
alleged distinguish the patent in suit from those contained in the
Mills patent? According to the contention of appellants' counsel,
they are (1) the continuous spring, (2) the inelastic margin at the
sides of the gusset, whereby it may be attached to the corset
without the connecting stitches crossing the springs, (3) the
location of the elastic gusset at the sides, and (4) the grouping
arrangement of the springs. The first two of these features,
i.e. the continuous spring and the inelastic margin, are
described in the English patent of the Millers issued in 1866, as
fully and explicitly as they are in the patent of the appellants in
this suit.
The specification in the patent of the Millers is as
follows:
"This invention has for its object improvements in the
manufacture of elastic gussets suitable for use in boots and stays
and for other purposes. . . ."
"Now according to our invention, we secure the vulcanized India
rubber springs between two pieces of woven fabric,
Page 137 U. S. 75
leather, or other material, by stitching with a sewing machine,
the stitches running in parallel lines, and passing through the two
pieces of fabric or material between the India rubber springs,
and the springs, in place of being each a separate piece, are
in one piece, the length of vulcanized India rubber cord at
the end of each traverse across the gusset being turned round, and
caused to return parallel to itself. Thus, the liability of the
India rubber to slip and work out of the gusset is much reduced.
When gussets made in this manner are worked into boots or other
articles, the stitches by which they are secured are passed through
a
margin on each side of the gusset, and not through the India
rubber part of the gusset as heretofore."
"In order that our invention may be fully understood and readily
carried into effect, we will describe the manner in which we prefer
to proceed."
"We first cut the material -- leather, silk, cotton, or any
other woven fabric -- and the lining to the size required for the
gusset when extended, and for leaving the required margin. We then
turn over the top edge and baste or tack it down to the lining. We
then commence to stitch with a sewing machine a series of rows in
parallel lines transversely across the gusset, the stitching
passing through the two materials, commencing at the top and so on,
from row to row, until the whole of the gusset is stitched. The
distance between the rows of stitches will depend on the thickness
of the India rubber thread to be inserted. About eight or ten rows
to the inch is usually a convenient distance. We then pass between
the two materials, into every space or cavity between the rows of
stitches, wires or needles, of a length somewhat longer than the
width of the gusset, and of the size of the cavity. The gusset is
then ready to be contracted or drawn up to the size required."
Then follows the description of the machine used for contracting
the gusset, and after that there is a description of the method for
inserting the elastic rubber cord, which, as before stated, is a
continuous one. The specification again refers to the plain margin
at the sides of the gusset, and describes the method by which it
may be reenforced or rendered stronger than the ordinary
margin.
Page 137 U. S. 76
There is evidence in the record tending to show that the machine
used by complainants for puckering the material between which the
metal springs are placed is substantially identical with the one
described in the Miller patent for performing the similar function
of what is there termed "contracting or drawing up the gusset to
the required size," and it seems perfectly clear that the method of
inserting the metal springs in the one, and the elastic rubber cord
performing the same functions in the other, is substantially the
same.
Counsel for appellants discusses at some length the Miller
patent and attempts to show that the gusset is not sufficiently
described therein to enable one skilled in the art to make one like
that described in the Florsheim patent. We think, however, his
argument does not overthrow the conclusion of the court that there
is no patentable difference between the gussets described in the
English patent of the Millers and those described in the Florsheim
patent. It is true that in the Miller patent, an India rubber
spring is used instead of a metal spiral spring, as in both the
Florsheim and the Mills patents; but the substitution of one
material for another, which does not involve change of method nor
develop novelty of use, even though it may result in a superior
article, is not necessarily a patentable invention.
Hotchkiss v.
Greenwood, 11 How. 248;
Hicks v.
Kelsey, 18 Wall. 670;
Terhune v. Phillips,
99 U. S. 592;
Gardner v. Herz, 118 U. S. 180;
Brown v. District of Columbia, 130 U. S.
87. In this particular instance, the substitution itself
was not new, for, as we have seen, wire coil was used for springs
in corsets as early as the year 1815.
With regard to the two remaining features -- the location of the
elastic gusset in the side of the corset instead of the back and
the grouping of the springs -- the former is found fully described
in the specification of the American patent granted in 1876 to Mary
J. C. Vanorstrand. A certified copy of this patent, though
introduced in evidence, does not appear in the record, but we were
furnished on the argument with a copy of it, and that corset
contained elastic gussets extending on both sides from the armpits
to the hips.
The grouping of the springs is no less distinctly described
Page 137 U. S. 77
and shown in the Schilling and Florsheim patent of 1879, a
certified copy of which appears in the record. The different
arrangement of these groupings, as they appear in the patent sued
upon, is not an invention, but is a mere matter of mechanical
judgment, "the natural outgrowth of the development of mechanical
skill, as distinguished from invention."
Burt v. Evory,
133 U. S. 349,
133 U. S. 358,
and authorities there cited;
Brown v. Piper, 91 U. S.
37.
The argument is advanced that the combination in this corset of
the prior inventions secured and put into use by prior patents,
making it a superior and cheaper article, is itself a patentable
invention. We are unable to agree with appellants' counsel on this
point. In
Pickering v. McCullough, 104 U.
S. 310,
104 U. S. 318,
this Court, speaking through Mr. Justice Matthews, said:
"In a patentable combination of old elements, all the
constituents must so enter into it as that each qualifies every
other. . . . It must form either a new machine of a distinct
character and function or produce a result due to the joint and
cooperating action of all the elements, and which is not the mere
adding together of separate contributions. . . . The combination of
old devices into a new article, without producing any new mode of
operation, is not invention."
Burt v. Evory, supra. See
also Hailes v. Van
Wormer, 20 Wall. 353;
Reckendorfer v.
Faber, 92 U. S. 347;
Tack Co. v. Two Rivers Manufacturing Co., 109 U.
S. 117;
Bussey v. Excelsior Manufacturing Co.,
110 U. S. 131;
Phillips v. Detroit, 111 U. S. 604;
Stephenson v. Brooklyn Railroad Co., 114 U.
S. 149;
Beecher Mfg. Co. v. Atwater Mfg. Co.,
114 U. S. 523;
Thatcher Heating Co. v. Burtis, 121 U.
S. 286;
Hendy v. Miners' Iron Works,
127 U. S. 370.
In the light of these authorities, our judgment is that the
appellants' patent No. 238,100 was for a corset that had been in
long and publicly known use, each part of it previously patented;
that it involved nothing original in the construction of those
parts, nor in their relation to one another, nor any change in the
function of anyone of them, and that the combination of them
produced no original mechanism or device.
The greater part of the foregoing observations apply equally
Page 137 U. S. 78
to the patent No. 238,101, for an elastic gore or gusset for
wearing apparel, and we concur in the conclusion of the court below
that the first two claims of that patent are void for want of
novelty, and all the elements in those claims are found in the
English patent of the Millers, already considered.
For these reasons the decree of the court below is
Affirmed.