Statement of the Case. 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." 66 made so as to He further stated that the pad proper was 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 ss and choke-strap billet loop b. The top ends of the pads or bodies Statement of the Case. 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 8 8, 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 singleroll 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 singleroll spring can be made and attached to a pad at much less 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 |