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HICKS V. KELSEY, 85 U. S. 670 (1873)

U.S. Supreme Court

Hicks v. Kelsey, 85 U.S. 18 Wall. 670 670 (1873)

Hicks v. Kelsey

85 U.S. (18 Wall.) 670


The mere change in an instrument or machine of one material into another -- as of wood, or of wood strengthened with iron, into iron alone -- is not "invention" in the sense of the Patent Acts, and therefore is not the subject of a patent, the purpose and means of accomplishment, and form and mode of operation of each instrument -- the new as of the old -- being each and all the same. The mere fact that the new instrument is a better one than the old one -- requiring less repair and having greater solidity than the old one -- does not alter the case. It does not bring the case out of the category of more or less excellence of construction.

Hicks obtained a patent for an improved wagon reach, and filed a bill against Kelsey, charging infringement and praying the usual relief. The defendant answered, denying the novelty of the alleged invention and also denying infringement.

The thing called a "wagon reach" -- that is to say, a pole or shaft connecting the front and rear axles of wagons or carriages, and having an upward crook or curve in it, so as to allow the front wheel, which, when a carriage is turned, goes against the reach if straight, to pass under it -- had confessedly long been made, and was public property. These had been made of wood, necessarily for the sake of strength of a certain thickness, and consisted of one piece, strengthened by straps of iron attached to each side of the reach.

Page 85 U. S. 671

The supposed improvement of the plaintiff consisted precisely and only in leaving out the wood in the curve and bolting the iron straps together, whereby the curve became all iron and less bulky, but in all other respects having the same shape and performing the same office as before. About all this there was no dispute whatever. Instead of being bolted together, the straps might be welded so as to make the curve consist of solid iron.

The question was whether this change of material -- making the curve of iron instead of wood and iron -- was a sufficient change to constitute invention -- the purpose being the same (namely, to turn the wheel under the body of the wagon), the means of accomplishing it being the same (namely, by a curved reach), and the form of the reach and mode of operation being the same.

Witnesses were examined, whose testimony went to show that the iron reach had advantages over those of mere wood or of wood and iron. One said that of thirty-five, which he had made in about two years, none had come back broken or needing repairs; that this was not the case with the old sort.

Another said:

"My experience is that, in those made of wood and iron, the wood between the iron plates in summer contracts and loosens the bolts."

Another said:

"Hicks' reach being iron, the two plates come together as one whole substantially soldered. In the wooden one, the moment the shrinkage becomes such that the bolts become loose, each has to take its own part, and the transit of the trucks, moving from the right to the left, turning the friction from that, takes each separate strain from one and throws it on to the other, so it makes only the thickness of the one side -- the one piece of iron -- where otherwise it would be two plates together. The crooked part, right at the crook, would break, according to that arrangement, because the other part is stronger. It will break whenever it gets so it will vibrate, at the weakest point."

The court below decided that plainly there was nothing

Page 85 U. S. 672

but a change of material, and that this -- the purpose, means of accomplishment, form of the instrument, mode of operation, being all as in the old reach -- was not a sufficient change to constitute invention. It accordingly dismissed the bill. From its action herein this appeal was taken.

Page 85 U. S. 673

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