Counsel for Parties. 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 Fed. Rep. 284. Mr. James Moore and Mr. Edmund Wetmore for appellant. Mr. Thomas A. Banning (with whom was Mr. Ephraim Banning on the brief) for appellees. Opinion of the Court. MR. JUSTICE BROWN, after stating the case, delivered the opinion of the court. (1) The defence 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 DD, 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 88, 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 Opinion of the Court. 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, 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 covers. Opinion of the Court. 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 singleroll 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 Opinion of the Court. 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 colIar, 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 make 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 doubleroll 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, |