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MCCLAIN V. ORTMAYER, 141 U. S. 419 (1891)

U.S. Supreme Court

McClain v. Ortmayer, 141 U.S. 419 (1891)

McClain v. Ortmayer

No. 44

Argued October 20-21, 1891

Decided November 2, 1891

141 U.S. 419


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

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