If a patentee describes and claims only a part of his invention,
he is presumed to have abandoned the residue to the public.
Where a claim is fairly susceptible of two constructions, that
one will be adopted which will preserve to the patentee his actual
invention, but if the language of the specification and claim shows
clearly what he desired to secure as a monopoly, nothing can be
held to be an infringement which does not fall within the terms
which the patentee has himself chosen to express his invention.
The first claim in letters patent No. 259,700, issued June 20,
1582, to Edward L. McClain for a pad for horse collars, when
construed in accordance with these principles, is not infringed by
the manufacture and sale of
Page 141 U. S. 420
sweat pads for horse collars under letters patent No. 331,813,
issued December 8, 1885.
Whether a variation from a previous state of an art involves
anything more than ordinary mechanical skill is a question which
cannot be answered by applying the test of any general
definition.
The doctrine which prevails to some extent in England that the
utility of a device is conclusively proven by the extent to which
it has gone into general use cannot be applied here so as to
control that language of the statute which limits the benefit of
the patent laws to things which are new as well as useful.
In a doubtful case, the fact that a patented article has gone
into general use is evidence of its utility, but not conclusive of
that, and still less of its patentable novelty.
Letters patent No. 267,011, issued May 13, 1884, to McClain for
a pad fastening are void for want of novelty in the alleged
invention.
The Court stated the case as follows:
This was a bill in equity for the infringement of two letters
patent granted to appellant, McClain,
viz., patent No.
259,700, issued June 20, 1882, for a "pad for horse collars," and
patent No. 267,011, issued November 7, 1882, for an improvement
upon the same. Another patent, numbered 298,626, issued May 13,
1884, to J. Scherling for a "pad fastening," and assigned to the
appellant, was originally included in the suit, but was abandoned
upon the argument in this Court.
In the specification of the first patent, No. 259,700, the
patentee stated that his invention related
"to that class of horse collar pads which are placed between the
collar and the horse's shoulders, and are adjustably attached to
the collar, and known as 'sweat pads,' the object of the invention
being"
"to produce a sweat pad for a horse collar which can be easily
and readily attached to or taken from the collar, and which can be
fitted to collars varying in size."
He further stated that the pad proper was
"made so as to form an intermediate cushion between the collar
and the horse's shoulders, and of a size such as to entirely
isolate the collar from all portions of the horse's shoulders. . .
. The sweat pad as just described is not claimed as a new
invention. My improvements consist in the addition of springs,
s s, and choke strap billet loop,
b. The top ends
of the pads or bodies
Page 141 U. S. 421
are adjacent to the withers of the neck, and are provided with
elastic springs -- steel -- which are so made as to be capable of
being opened and then clasped around the body of the sides of the
collar. Thus, one end of a spring is so curved as to partly
encircle the fore wale or small roll of the collar, and to hug it
so closely as to keep out of the way of the hame, and the other end
is so curved as to similarly partly encircle and hug the after wale
or body side of the collar, and yet not interfere with the hame.
Such construction will enable the pad to be easily and readily
attached at its top ends to the top ends of the collar, and also
will permit of attachment at variable positions along the sides of
the collar, so that it can be easily fitted to collars of different
sizes."
His claim was:
"1. As attachments to a sweat or other horse collar pad, the
elastic springs,
s s, substantially as described, and for
the purposes set forth."
There was a second claim, which, however, became immaterial.
Patent No. 267,011 was for an improvement upon the prior patent,
and consisted in discarding that portion of the spring of such
patent as embraced the after roll of a collar, and in using the
fore roll only. In this connection, the patentee stated
"that said spring, S, differs materially from the spring in my
previous patent. First, this spring has but one curved portion,
intended for the fore roll only of the collar, instead of a curved
portion for the fore roll and one for the back roll. The
single-roll spring is applicable where the two-roll spring could
not be used, and is preferable and cheaper even where the latter
can be used. . . . It is therefore seen that the two-roll springs
are much more cumbersome to use than single-roll springs, while,
when the curves of the two-roll springs are repeatedly and much
bent, they lose their elasticity, and consequently their
usefulness. . . . A great feature possessed by pads having the
single curved springs is that they can be easily and speedily
removed from or attached to a collar, and therefore can be
separated from the collar when it is removed from a horse's neck. .
. . As an article of manufacture, the single-roll spring can be
made and attached to a pad at much less
Page 141 U. S. 422
expense than a two-roll spring. First, it does not require so
much material; second, it is easier to form, and may not require
tempering, as the tempered steel in the market may answer where it
has been found that such steel will not do for a two-roll spring;
third, it is more convenient to attach by riveting by hand or by
machinery, for riveting machinery now in use can be used on a
single-roll spring, but not on a two-roll one, since the curved
ends of the latter project over the rivets."
The claims of this patent were:
"1. As an attachment to a horse collar pad or other harness pad,
and as a means of adjustably attaching a pad to a horse collar or
other part of harness, the elastic single roll or single curved
spring, S, constructed, arranged, attached, and operating
substantially in the manner shown or described, and for or with the
purposes set forth."
"2. The combination, with a horse collar pad, of elastic single
roll or single curve spring, S, substantially in the manner shown
or described, and for the purposes set forth."
The answer of defendants denied that the invention relied upon
was novel or that the alleged inventors were the first or original
inventors thereof, and also denied that the said improvements
contained any invention, when compared with the prior art. To the
charge of infringement the defendants answered as follows:
"These defendants, on their own understanding of the scope and
meaning of said several letters patent and on the advice of counsel
in relation thereto, deny that they have ever in any way infringed
upon the same or upon any of them or upon any claim thereof."
Plaintiff's bill was dismissed by the circuit court upon the
ground that the first patent was not infringed and that the second
patent, in view of the first and of the other devices offered in
evidence, was void for want of novelty. The opinion of the court is
reported in 33 F. 284.
Page 141 U. S. 423
MR. JUSTICE BROWN, after stating the facts as above, delivered
the opinion of the Court.
(1) The defense to the first patent was rested principally upon
the question of the infringement. Defendants, in their answer,
admitted that they had as a corporation and individually
manufactured and sold sweat pads for horse collars under letters
patent issued to defendant Ortmayer;
"that is to say, sweat pads adapted to be fastened or secured to
the collar by a simple hook, made of wire, arranged to clasp the
front roll of the collar, but not in any way having or employing
the pretended inventions and improvements described and claimed in
said several letters patent, or either of them."
This patent to Ortmayer, numbered 331,813, exhibits a horse
collar, a sweat pad, a hook, made of wire,
"its curved or hooked portion being so bent or formed as to
clasp the outer or exposed part of the front roll of the collar,
and so as to have a broad bearing thereon."
The hook is connected to the pad in such a manner as to be
joined or hinged thereto, so as to be capable of being turned in
the fold of the leather. Says the patentee:
"To apply the pad to the collar, it is only necessary to arrange
it underneath the collar in the usual manner, first raising the
hooks, D D, and then pushing them downward, so that they will clasp
the front roll of the collar."
It is evident from this patent and from the entire testimony
that the defendants made use of a single hook, D, embracing the
front roll of the collar only, while the appellant, McClain, has
limited himself, perhaps unnecessarily, to the elastic springs,
s s, which the drawings and the whole tenor of the
specification show to be double, and intended to be clasped around
both the fore and after wales of the collar. While the patentee may
have been unfortunate in the language he has chosen to express his
actual invention, and may have been entitled to a broader claim, we
are not at liberty, without running counter to the entire current
of authority in this Court, to construe such claims to include more
than their language fairly imports. Nothing is better settled in
the law of patents than that the patentee may claim the whole or
only a part of
Page 141 U. S. 424
his invention, and that if he only describe and claim a part, he
is presumed to have abandoned the residue to the public. The object
of the patent law in requiring the patentee to "particularly point
out and distinctly claim the part, improvement, or combination
which he claims as his invention or discovery" is not only to
secure to him all to which he is entitled, but to apprise the
public of what is still open to them. The claim is the measure of
his right to relief, and, while the specification may be referred
to to limit the claim, it can never be made available to expand it.
Thus, in
Keystone Bridge Company v. Phoenix Iron Company,
95 U. S. 274,
95 U. S. 278,
the manufacture of round bars, flattened and drilled at the eye,
for use in the lower chords of iron bridges was held not to be an
infringement of a patent for an improvement in such bridges where
the claim in the specification described the patented invention as
consisting in the use of wide and thin drilled eye bars applied on
edge. In delivering the opinion of the court, MR. JUSTICE BRADLEY
observed:
"It is plain, therefore, that the defendant company, which does
not make said bars at all [that is, wide and thin bars], but round
or cylindrical bars, does not infringe this claim of the patent.
When a claim is so explicit, the courts cannot alter or enlarge it.
If the patentees have not claimed the whole of their invention and
the omission has been the result of inadvertence, they should have
sought to correct the error by a surrender of their patent and an
application for a reissue. . . . But the courts have no right to
enlarge a patent beyond the scope of its claim as allowed by the
Patent Office, or the appellate tribunal, to which contested
applications are referred. When the terms of a claim in a patent
are clear and distinct, as they always should be, the patentee, in
a suit brought upon the patent, is bound by it. He can claim
nothing beyond it."
Similar language is used in
Railroad Company v. Mellon,
104 U. S. 112, in
reference to a patented locomotive wheel. In
Masury v.
Anderson, 11 Blatchford 162, 165, it was said by MR. JUSTICE
BLATCHFORD:
"The rights of the plaintiff depend upon the claim in his
patent, according to its proper construction, and not upon what he
may erroneously suppose it
Page 141 U. S. 425
covers. If at one time he insists on too much and at another on
too little, he does not thereby work any prejudice to the rights
actually secured to him."
Other cases to the same effect are
Merrill v. Yeomans,
94 U. S. 568;
Burns v. Meyer, 100 U. S. 671, and
Sutter v. Robinson, 119 U. S. 530.
It is true that in a case of doubt, where the claim is fairly
susceptible of two constructions, that one will be adopted which
will preserve to the patentee his actual invention; but if the
language of the specification and claim shows clearly what he
desired to secure as a monopoly, nothing can be held to be an
infringement which does not fall within the terms the patentee has
himself chosen to express his invention. The principle announced by
this Court in
Vance v.
Campbell, 1 Black 427, that where a patentee
declares upon a combination of elements which he asserts constitute
the novelty of his invention, he cannot in his proofs abandon a
part of such combination and maintain his claim to the rest, is
applicable to a case of this kind, where a patentee has claimed
more than is necessary to the successful working of his device.
Applying these familiar principles to the case under
consideration, we are forced to the conclusion that the curved hook
of the defendant is not an infringement of the double spring
described in the plaintiff's specification and claim. While a
single spring or hook embracing the fore wale of a collar may be
equally as efficacious, the patentee is no more at liberty to say
that the spring encircling the after wale is immaterial and useless
than was the patentee in
Vance v. Campbell to discard one
of the elements of his combination upon the same ground. This was
evidently the theory of the patentee himself, since, a little more
than two months after this patent was issued, in a letter to the
Patent Office of September 2, 1882, in which he made application
for his second patent, covering the single-roll spring, he stated
that "the single-roll spring must be conceded to be a structure
positively and unequivocally different from the two-roll spring."
There being no infringement of this patent, there can be no
recovery upon it.
(2) The second patent was principally contested upon the ground
of want of invention. In his specification, the patentee
Page 141 U. S. 426
states it to be an improvement upon his prior patent, but
differing materially from it in the fact that
"this spring has but one curved portion, intended for the fore
roll only of the collar, instead of a curved portion for the fore
roll and one for the back roll."
It seems from his letter to the Patent Office of September 2,
1882, to which reference has already been made, that in endeavoring
to practice the invention in his prior patent, he found that the
two-roll spring was not generally applicable to collars of
different sizes, as it had been supposed it would be, as the rolls
in collars of different sizes and of different makes varied so much
that while it would make a pad applicable to collars of different
sizes for light work, the same pad could not be used on collars for
heavy work, and hence the invention proved to be imperfect. This
resulted in the invention of the single-roll spring of his second
application.
Practically the only novelty consists in cutting the double roll
spring in two and using the fore roll only. While this enables the
pad to be located on the collar more readily than when two springs
were used, the roll performs the same function as in the prior
patent, and the patent can only be sustained upon the theory that
the discarding of the after roll involved invention. What shall be
construed as invention within the meaning of the patent laws has
been made the subject of a great amount of discussion in the
authorities, and a large number of cases, particularly in the more
recent volumes of reports, turn solely upon the question of
novelty. By some, "invention" is described as the contriving or
constructing of that which had not before existed, and by another,
giving a construction to the patent law, as "the finding out,
contriving, devising, or creating something new and useful, which
did not exist before, by an operation of the intellect." To say
that the act of invention is the production of something new and
useful does not solve the difficulty of giving an accurate
definition, since the question of what is new, as distinguished
from that which is a colorable variation of what is old, is usually
the very question in issue. To say that it involves an operation of
the intellect, is a product of intuition,
Page 141 U. S. 427
or of something akin to genius, as distinguished from mere
mechanical skill, draws one somewhat nearer to an appreciation of
the true distinction, but it does not adequately express the idea.
The truth is, the word cannot be defined in such manner as to
afford any substantial aid in determining whether a particular
device involves an exercise of the inventive faculty or not. In a
given case, we may be able to say that there is present invention
of a very high order. In another, we can see that there is lacking
that impalpable something which distinguishes invention from simple
mechanical skill. Courts, adopting fixed principles as a guide,
have by a process of exclusion determined that certain variations
in old devices do or do not involve invention, but whether the
variation relied upon in a particular case is anything more than
ordinary mechanical skill is a question which cannot be answered by
applying the test of any general definition.
Counsel for the plaintiff in the case under consideration has
argued most earnestly that the only practical test of invention is
the effect of the device upon the useful arts -- in other words,
that utility is the sole test of invention, and, inferentially at
least, that the utility of a device is conclusively proven by the
extent to which it has gone into general use. He cited in this
connection certain English cases which go far to support his
contention. These cases, however, must not be construed in such way
as to control the language of our statute, which limits the
benefits of patent laws to things which are new as well as useful.
By the common law of England, an importer -- the person who
introduced into the kingdom from any foreign country any useful
manufacture -- was as much entitled to a monopoly as if he had
invented it. Thus, in
Darcy v. Allin, Noy 173, it is
stated that
"where any man, by his own charge and industry or by his own wit
or invention, doth bring any new trade into the realm or any engine
tending to the furtherance of a trade that never was used before, .
. . the King may grant to him a monopoly patent . . . in
consideration of the good that he doth bring by his invention to
the commonwealth,"
citing several instances of skill imported from foreign
counties. In
Edgebury v. Stephens, 1 Webster's Pat.Cas.
35,
Page 141 U. S. 428
it was said: "The act [of monopolies] intended to encourage new
devices useful to the kingdom, and whether learned by travel or by
study it is the same thing."
It is evident that these principles have no application to the
patent system of the United States, whose beneficence is strictly
limited to the invention of what is new and useful, and that the
English cases construing even their more recent acts must be
received with some qualification. That the extent to which a
patented device has gone into use is an unsafe criterion even of
its actual utility is evident from the fact that the general
introduction of manufactured articles is as often effected by
extensive and judicious advertising, activity in putting the goods
upon the market, and large commissions to dealers as by the
intrinsic merit of the articles themselves. The popularity of a
proprietary medicine, for instance, would be an unsafe criterion of
its real value, since it is notorious fact that the extent to which
such preparations are sold is very largely dependent upon the
liberality with which they are advertised, and the attractive
manner in which they are put up and exposed to the eye of the
purchaser. If the generality of sales were made the test of
patentability, it would result that a person, by securing a patent
upon some trifling variation from previously known methods, might,
by energy in pushing sales or by superiority in finishing or
decorating his goods, drive competitors out of the market and
secure a practical monopoly without in fact having made the
slightest contribution of value to the useful arts. The very case
under consideration is not barren of testimony that the great
success of the McClain pads and clasping hooks -- a large demand
for which seems to have arisen and increased year by year -- is due
partly at least to the fact that he was the only one who made the
manufacture of sweat pads a specialty; that he made them of a
superior quality, advertised them in the most extensive and
attractive manner, and adopted means of pushing them upon the
market, and thereby largely increased the extent of their sales.
Indeed it is impossible from this testimony to say how far the
large sales of these pads is due to their superiority to others or
to the energy with which they were forced upon the market.
Page 141 U. S. 429
While this Court has held in a number of cases, even so late as
Magowan v. New York Belting & Packing Co., ante,
141 U. S. 332,
decided at the present term, that in a doubtful case, the fact that
a patented article had gone into general use is evidence of its
utility, it is not conclusive even of that -- much less of its
patentable novelty.
In no view that we have been able to take of the case can we
sustain the second McClain patent. We do not care to inquire how
far it was anticipated by the various devices put in evidence
showing the use of a similar spring for analogous purposes, since
we are satisfied that a mere severance of the double spring does
not involve invention, at least in the absence of conclusive
evidence that the single spring performs some new and important
function not performed by it in the prior patent. The evidence upon
this point is far from satisfactory, and the decree of the circuit
court must therefore be
Affirmed.
THE CHIEF JUSTICE and MR. JUSTICE GRAY did not hear the
argument, and took no part in the decision of this case.
