bunal, 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 Co. v. Mellon, 104 U. S. 112, in reference to a patented locomotive wheel. In Masury v. Anderson, 11 Blatchf. 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. 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, 7 Sup. Ct. Rep. 376.

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 patentoffice 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 states it to be an improvement upon his prior patent, but differing materially from it in the fact that "this spring has but one

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 tworoll 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, 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, 178, 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 Webst. Pat. Cas. 35, 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 a 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 McCain 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 sweatpads 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.

*While this court has held in a number of cases, even so late as Magowan v. Packing Co., 12 Sup. Ct. Rep. 71, (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.

Letters patent No. 178,287, granted June 6, 1876, to Rodmond Gibbons, were for the "combination, with the fly of pantaloons or similar garments, of an inelastic bridge or check-piece, arranged across the crotch thereof; whereby the strain at the crotch when the fly is opened and spread apart is received by said bridge or checkpiece, instead of at the angle of the crotch itself." The patent was reissued March 22, 1881, as No. 9,616. Held, that both the original patent and the reissue are void, for the device described involves no invention."

31 Fed. Rep. 816, affirmed.

Appeal from the circuit court of the United States for the southern district of New

York. Affirmed.

Bill in equity by the Patent Clothing Company, Limited, to restrain H. B. Glover and others, composing the firm of H. B. Glover & Co., from infringing complainant's patent. The circuit court dismissed the bill, and complainant appeals.

Causten Browne, for appellant. G. M. Plympton, for appellees.

Mr. Justice BREWER delivered the opinion of the court.

This is an appeal from a decree of the circuit court of the United States for the southern district of New York, dismissingthe appellant's bill. The suit was for the infringement of a patent. Rodmond Gibbons was the patentee. His original patent was dated June 6, 1876, No. 178,287. This was surrendered, and a reissue ob

564

the torn ends together, and thus holding them by the direct strength of the thread, is wont to place underneath a piece of cloth, and fasten it to the main body of the garment for some distance on either side of the tear. In this way the whole strain, which otherwise would be solely on the threads closing the tear, is largely borne by the new cloth underneath. Surely, when this idea is so well known, and has been so practically illustrated for generations, it cannot be that there was any exercise of the skill of an inventor in applying the same process to any part of the pantaloons. If it be said that the strengthening of the stay-piece, here applied, is not to the closing of a tear, but to a seam at an angle, it may be replied that such particular form of reinforcement is itself no new thing. An illustration is in the seam at the angle made by the fingers and thumb of gloves. As to that, it appears from the testimony that the practice was old of reinforcing the seam by an overlapping piece. Other illustrations are also furnished by the testimony, but it is hardly necessary to refer to these in detail. The matter is familiar to the knowledge of all, and surely the application of this reinforcing strip of cloth to any seam, or in any place where without it the tension would be solely on the threads, cannot be an exercise of the skill of an inventor. We think, therefore, that the patent sued on was void for want of patentable novelty, and affirm the decree.

Mr. Justice BRADLEY and Mr. Justice GRAY did not hear the argument or take part in the decision of this case.

(141 U. S. 543)

OLCOTT et al. v. HEADRICK.

(November 16, 1891.)

RAILROAD COMPANIES-MORTGAGE FORECLOSURETERMS OF SALE.

1. The decree for the sale of a railroad in foreclosure proceedings provided that all claims, debts, and demands accruing during an existing receivership should be paid by the purchaser, but that the claims should be barred unless presented within six months from the confirmation of the sale. The decree confirming the sale omitted any provision as to the time in which the claims must be presented, and the purchasers made no objection to it as varying from the terms of the decree of sale. Held, that persons hav. ing such claims were entitled to present them after the expiration of six months from the confirmation of the sale.

2. Since the proceeds of the sale were substantially a fund in court, it was within the discretion of the court to abrogate the six-months limitation, and, there being nothing in the record to show on what grounds it acted, it will be presumed that its discretion was properly exercised.

Appeal from the circuit court of the United States for the eastern district of Tennessee. Affirmed.

This was a petition of intervention, filed by O. B. Headrick in a mortgage foreclosure suit brought by the Central Trust Company of New York against the East Tennessee, Virginia & Georgia Railroad Company and others, in which suit the road had been sold to Frederick P. Olcott and others as a committee on the part of the bondholders. The intervener

v.12s.c.-6

claimed damages for injuries received on the road while it was in the hands of a receiver. There was division of opinion in the circuit court which tried the case, which was certified to this court, but judgment was rendered in favor of the intervener, and Olcott and others, the purchasers, appeal.

W. M. Baxter, for appellants. H. H. Ingersoll, for appellee.

Mr. Justice BLATCHFORD delivered the opinion of the court.

66

A bill in equity was filed in the circuit court of the United States for the eastern district of Tennessee by the Central Trust Company of New York against the East Tennessee, Virginia & Georgia Railroad Company, the Tennessee State Line Railroad Company, and one Thomas, to foreclose a mortgage given June 15, 1881, by the first-named railroad company to the trust company, on its property situated in Tennessee, Georgia, Alabama, and Mississippi. On the 6th of January, 1885, one, Fink was appointed receiver in the cause, and placed in possession of the whole of the property of the railroad company. On the 18th of March, 1886, a decree of foreclosure and sale was entered. That decree contained the following provisions: And the purchaser or purchasers of said property at said sale shall, as a part of the consideration of the purchase, and in addition to the sum bid, take the said property upon the express condition that he or they will pay off, satisfy, and discharge any and all claims now pending and undetermined in either of said courts, accruing prior to the appointment of the receiver herein or during the receivership, which may be allowed and adjudged by this court as priorin right to said respective mortgages, together with such interest as may be allowed, except as to mortgages prior to said mortgages foreclosed in this suit, and subject to which said property shall be sold: and also upon the further express condition that he or they will pay off, satisfy, and discharge all debts, claims, and demands, of whatsoever nature, incurred or which may hereafter be incurred by said receiver, Henry Fink, and which have not been or shall not hereafter be paid by said receiver or other parties in interest herein; and said purchaser or purchasers, their successor or successors or assigns, shall have the right to appear and make defense to any claim, debt, or demand sought to be enforced against said property; and said purchaser or purchasers, their successor or successors or assigns, shall also have the right to enter appearance in this or any other court, and contest any claim or demand pending and undetermined at the date of the confirmation of such sale. All claims, debts, and demands accruing during the receivership herein shall be barred, unless presented, as herein provided, within six months after the confirmation of said sale; and jurisdiction of this cause is retained by this court for the purpose of enforcing the provisions of this article of this decree. supplemental decree was made April 26, 1886, and a special master, on the 25th of

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