Opinion of the Court. S. B. Ferris, August 27, 1878, for a corset exhibitor. The invention consists of a central standard with a block at the top and also at the bottom. Between these blocks is an umbrella-like framework, the braces of which extend beyond the point of junction with the outside ends from the standard, and, pressing against the interior of the corset, impart shapeliness to it. The ribs or braces are triangulated on the standard the same in principle as the double braces in the Hall patent. In the patent issued to F. A. Balch, in 1867, for a winding reel are shown the double braces, the standard, the sliding collars, and the rest with a set screw, comprising all of the expanding mechanism of the Hall patent. The outer ends of the braces are hinged on a blade which may be made as long as desired, and it would require only mechanical skill to adapt this reel to the device patented by Hall. Such an adaptation, produced by simply lengthening the ribs, would have secured the accomplishment of the same result in exactly the same way. But, aside from these prior patents, the state of the art is perhaps more clearly illustrated in the device used for opening and shutting a common umbrella. In this device are found. all the elements of the combination of the second claim. There are the standard, the collar with the rest, the double braces, and the ribs. Because the upper ribs are elongated so as to hold the fabric which covers them, it cannot be said that the double braces are different in principle and operation from those used in the patent in controversy. It would require but ordinary mechanical skill to convert a skirt form into an umbrella, or an umbrella into a skirt form like that described in the Hall patent. It is conceded by the appellee that all of the elements of the second claim are old, except ribs c, which, it is claimed, constitute the new and patentable feature of the Hall invention; but, from the foregoing brief review of the prior art, we think it clearly shown that the ribs e do not constitute any new feature. They are shown in the Everett invention; in the Wilson patent, where it is said there may be as many as neces Opinion of the Court. sary; and in the common umbrella; also in the Ferris device for a corset exhibitor, where the function performed by the ribs constitutes the chief feature of the invention; and in the Balch reel short ribs are used, which might be lengthened to adapt the device to the dress form patented by Hall. But it is urged on behalf of the appellee that the Hall patent differs from all previous devices in presenting a structure which, as an entirety, is radially expansible in all directions from a common centre, so as to preserve the symmetry of the form, whatever its diameter may be, and by the combination of the patent a new and useful result is thus attained which involves patentable novelty. In support of the validity of the patent, the principle stated in Loom Co. v. Higgins, 105 U. S. 580, 591, is invoked. In that case it was laid down by the court, as a general rule, though not an invariable one, "that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention." But we do not consider the Hall patent as coming within the principle there laid down, for the reason that the standard, the double braces, sliding blocks on the standard, and the rests to hold the blocks, as well as the ribs, which constitute the combination of the second claim, were not only found in the prior devices, but they separately and in combination with such devices performed the same function, and operated in substantially the same way as in the Hall patent. The combination of old elements which perform no new function and accomplish no new results does not involve patentable novelty. Mosler Safe Co. v. Mosler, 127 U. S. 354, 361; Hailes v. Van Wormer, 20 Wall. 353, 368; Reckendorfer v. Faber, 92 U. S. 347; Pickering v. McCullough, 104 U. S. 310, 318; Peters v. Hanson, 129 U. S. 541. The use and purpose sought to be accomplished by the Hall patent was the radial expansion of the dress form, but it is well settled by the authorities that the end or purpose sought to be accomplished by the device is not the subject of a patent. The invention covered thereby must consist of new and useful means of obtaining that end. In other words, the subject of a patent is the device or mechanical means by which the desired Opinion of the Court. result is to be secured. Carver v. Hyde, 16 Pet. 513, 519; LeRoy v. Tatham, 14 How. 156; Corning v. Burden, 15 How. 252; Barr v. Duryee, 1 Wall. 531; Fuller v. Yentzer, 94 U. S. 288. Tested by these authorities the validity of the patent in question must be ascertained, not from a consideration of the purposes sought to be accomplished, but of the means pointed out for the attainment thereof, and if such means, adapted to effect the desired results, do not involve invention, they can. derive no aid or support from the end which was sought to be secured. All that Hall did was to adapt the application of old devices to a new use, and this involved hardly more than mechanical skill, as was ruled in Aron v. Manhattan Railway Co., 132 U. S. 85, where it was said: "The same device employed by him (the patentee) existed in earlier patents; all that he did was to adapt them to the special purpose to which he contemplated their application, by making modifications which did not require invention, but only the exercise of ordinary mechanical skill; and his right to a patent must rest upon the novelty of the means he contrived to carry his idea into practical application." There is another test as to the validity of the second claim. If the Balch, Everett, Wilson, or Ferris patents, or even the umbrella, were subsequent in date to that of the Hall patent, they would constitute an infringement thereof, for the rule is well established that "that which infringes, if later, would anticipate if earlier." Peters v. Active Mfg. Co., 129 U. S. 530, 537; Thatcher Heating Co. v. Burtis, 121 U. S. 286, 295; Grant v. Walter, 148 U. S. 547, 554; Gordon v. Warder, ante, 47. If, however, the patent could be sustained at all, it would have to be restricted and confined to the specific combination described in the second claim as indicated by the letters of reference in the drawings, and each element specifically pointed out is an essential part thereof. Duff v. Sterling Pump Co., 107 U. S. 636, 639; Newton v. Furst & Bradley Co., 119 U. S. 373; Bragg v. Fitch, 121 U. S. 478; Crawford v. Heysinger, 123 U. S. 589; Dryfoos v. Wiese, 124 U. S. 32. Opinion of the Court. For if not so restricted by the letters of reference the effect would be to make the claim coextensive with what was rejected in the Patent Office. If any validity could be conceded to the patent, the limitation and restriction which would have to be placed upon it by the action of the Patent Office, and in view of the prior art, would narrow the claim, or confine it to the specific structure therein described, and as thus narrowed there could be no infringement on the part of appellants if a single element of the patentee's combination is left out of the appellants' device. Sargent v. Hall Safe & Lock Co., 114 U. S. 63; Eddy v. Dennis, 95 U. S. 560; McCormick v. Talcott, 20 How. 402. The appellants' dress form, which is alleged to infringe the combination of elements particularly described in the second claim of the Hall patent, does not contain several of the specific elements of said claim; it has a tubular standard, within which is a loose vertical rotable shaft extending above the end of the standard. Surrounding this shaft are several ribs. The shaft is screw-threaded at one portion with a lefthand thread, and at a portion above the left-hand thread there is a right-hand screw-thread. On each of these portions is a corresponding nut, so that the shaft being rotated in one direction will cause the nuts to approach each other, or, rotated in the opposite direction, the nuts will separate. Above the screwthreaded nuts is a fixed and immovable collar. To this collar and the movable nuts are hinged the braces which are similar to those described in the Hall patent. By turning the top of the standard either to the right or to the left the whole form is adjusted by one movement. Comparing this device with the combination described in the Hall patent, it is found that there are a standard, double braces, and ribs, but there are no sliding blocks or rests, and the function of the standard is doubled. There is no sliding block whatever at the top of the upper braces, and the lower collar is a screw-threaded nut resting upon corresponding screwthreads in the standard. It is clear that the sliding blocks and the rests, two of the five elements specifically described in the Hall patent, are not employed in the dress form of the appel Dissenting Opinion: Brown, Shiras, JJ. lants. If the Hall patent was a valid pioneer invention, the doctrine of equivalents might be invoked with regard to the sliding blocks and rests, and thus a different question would be raised, but, being confined to the specific elements enumerated by letters of reference, it is neither entitled to a broad construction, nor can any doctrine of equivalents be invoked so as to make the appellants' device an infringement of the second claim in controversy. Our conclusion, therefore, is that the Hall patent is invalid, and further, if it could be sustained at all, it would have to be in the most restricted form, and thus restricted, it is not infringed by the appellants. It follows, therefore, that in each case the judgment of the courts below must be Reversed, and the cause remanded, with direction to dismiss the bill. MR. JUSTICE BROWN (with whom was MR. JUSTICE SHIRAS) dissenting. In the construction of his device Hall took the principle of the common umbrella and of an adjustable reel for unwinding yarn, and by adding to it ribs and elastic bands, adapted it to an entirely different purpose, namely, to the construction of an adjustable dress form, which has largely supplanted those previously in use. While the changes made were not radical in their character, I think they were such as to involve invention within the rule stated in Loom Co. v. Higgins, 105 U. S. 580, 591; The Barbed Wire Patent, 143 U. S. 275; Gandy v. Main Belting Co., 143 U. S. 587; and Topliff v. Topliff, 145 U. S. 156; and that the change made by the defendant in using a collar fixed to the standard for the upper sliding block, and a nut and threaded standard for the lower sliding block and rest of the Hall patent, was in fact the substitution. of well-known equivalents, and does not exonerate them from the charge of infringement. The CHIEF JUSTICE did not sit in this case and took no part in its decision. |