Howe Machine Company v. National Needle Company/Opinion of the Court

by Samuel Nelson

United States Supreme Court

134 U.S. 388

Howe Machine Company  v.  National Needle Company

Doubtless a claim is to be construed in connection with the explanation contained in the specification, and it may be so drawn as, in effect, to make the specification an essential part of it, but, since the inventor must particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery, the specification and drawings are usually looked at only for the purpose of better understanding the meaning of the claim, and certainly not for the purpose of changing it, and making it different from what it is. As remarked by Mr. Justice BRADLEY in White v. Dunbar, 119 U.S. 47, 52, 7 Sup. Ct. Rep. 72: 'The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.'

The patentees state that they 'have invented a new combination designed for turning such articles as are to be brought to a point or are to be finished or turned at one end, and therefore cannot conveniently be held to be operated upon otherwise than by the opposit end.' In the drawings attached to the patent, q and r are the guide cam or pattern specially referred to in the specification, and it is said that 'in the particular instance illustrated q and r are formed for turning awls or inachine needles,' and that 'the arrangement of the shaping mechanism illustrated by the drawing is that designed and adapted to the formation of awls or machine needles.' They also say that 'the material from which any article is to be turned by the use of our invention must be cylindrical and straight;' and that 'the chuck used to hold the material to be operated on may be any of the well-known forms of griping or holding chucks that hold fast by one end the article which is to be turned.' The claim is couched in plain and unambiguous language, and is 'the combination of a griping chuck, by which an article can be so held by one end as to present the other free to be operated upon, with a rest preceding the cutting tool, when it is combined with a guide cam, or its equivalent, which modifies the movement of the cutting tool; all operating together for the purpose set forth.' The alleged improvement is in the mode of producing turned articles of 'irregular forms,' and the purpose set forth is the turning of such articles as are to be brought to a point, or to be turned or finished at one end, and which ought, therefore, to be held by the opposite end in order to be operated upon. The material is not specified, but it must be cylindrical and straight. The complainants' expert testifies on cross-examination: 'The patent is for a combination. The new part consists of elements, each and all of them old and familiar in pre-existing combinations. They are, therefore, the griping chuck; the supporting rest preceding the cutting tool; a cutting tool having the reciprocating motion to wards and from the axis of the piece to be operated upon, under the control of a guide cam or former, so organized as to be also under the constant control of delicate adjusting apparatus, by which the required diameter of a piece to be operated upon may be constantly preserved without disturbing the functional performance of former and cutting tool, substantially as set forth and described, all operating together for the purpose set forth. It is, then, the combination of these several elements, as organized, which constitutes the new part.' But the combination claimed is the combination of a griping chuck, a rest preceding the cutting tool, a cutting tool, and a guide cam or its equivalent; and complainants cannot now be permitted to read into it any delicate adjusting apparatus not originally included in the claim, and then insist, in the words of the witness, that there is' a margin of patentable novelty.'

The Springs completed their first machine in September or October, 1857. Their patent was issued May 10, 1859. As found by the circuit court, the testimony leaves no doubt that, as early as 1845, William Murdock used a lathe at Winchendon, Mass., for turning pointed skewers of wood. This had a chuck, a cutting tool, a rest preceding the cutting tool, and a pattern governing the movement of the cutting tool, to shape the skewer to the desired form; or, in other words, all the elements of the Spring combination, as claimed. Defendants' expert, Brevoort, correctly says: 'This Murdock device shows the combination of a holding chuck which holds the material at one end while the other end is left free, a rest preceding a cutting tool, which latter is controlled in its movements by guide or former, so that the parts operating together will produce irregular forms. Now, this is the invention referred to in the claim of the Spring patent, and this Murdock lathe undoubtedly contains the invention recited in the Spring patent, with the exception that in the Murdock lathe the parts are adapted for turning wood, while in the Spring device they are more especially adapted for turning metal.' And he continues: 'I understand that this Murdock lathe was used for turning large numbers of yarn skewers, such as were used at one time in mills where cotton goods were manufactured. 'Defendants' Exhibit Murdock Skewer, W. G. H., Sp. Ex'r,' shows one of these skewers; and, when I compare this skewer with a sewing-machine needle, as the question requested me to do, I find that both the needle and the skewer are brought to a point. The Murdock lathe, the Spring device, and the Pernot lathe all being adapted for producing points upon the articles subjected to their action, the only difference being that the Pernot and Spring lathes were adapted for making points on metal, while the Murdock lathe is adapted for making points on wooden blanks; all of the three lathes referred to, as well as the Wright lathe and the Waymoth lathe, being so constructed as to produce the desired configuration upon the surface of the turned blank by using a pattern or former of the desired shape. In all the lathes referred to by me in this testimony, the irregular form of the article turned is reached by the former, guide, or pattern causing the cutting tool, as it was slid towards the holding or griping chuck, to approach or recede from the axial line of the work; and in all these lathes the cutting tool is preceded by a rest through a hole in which the work revolves, leaving one end of the work free, while the other is held and turned by the chuck.' THERE IS NOTHING IN THE SPECIFICATION ABOut the nature of the material to be used, nor is the device limited to the production of awls and needles, although the drawings show that mode of applying the invention, and 'the particular instance illustrated' is that 'designed and adapted to the formation of awls or machine needles.' But the invention claimed is not restricted to lathes for turning sewing-machine needles, nor did the patentees by disclaimer place any such limit upon the construction of the patent. The rule laid down in Railroad Co. v. Truck Co., 110 U.S. 490, 4 Sup. Ct. Rep. 220, that the application of an old process or machine to a similar or analogous subject, with no change in the manner of applying it, and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result has not before been contemplated, has been applied in very many cases by this court. Thompson v. Boisselier, 114 U.S. 1, 5 Sup. Ct. Rep. 1042; Peters v. Manufacturing Co., 129 U.S. 530, 9 Sup. Ct. Rep. 389; Peters v. Hanson, 129 U.S. 542, 9 Sup. Ct. Rep. 393; Aron v. Railway Co., 132 U.S. 84, ante, 24; Watson v. Railway Co., 132 U.S. 161, ante, 45. In the employment of the chuck, the rest, the cutting tool, and the guide cam, in the making of awls and needles, the patentees displayed the skill of their calling, which involved 'only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice.' Hollister v. Manufacturing Co., 113 U.S. 59, 73, 5 Sup. Ct. Rep. 717. The purpose of Murdock in reference to the wooden skewer was the same as the purpose of the Springs in reference to articles of any material which could be worked up on their machines. The claim was certainly broad enough to include Murdock's invention, and no disclaimer was ever filed; and, even with a limitation as to the article, patentable novelty was not present, within the rule upon that subject. The art of turning is the art of turning, whether applied to wood or metal; and it would seem that there was here nothing more than the substitution of one material for another, without involving an essentially new mode of construction. And, be that as it may, there was no restriction as to material. Operation in metal would, of course, demand variations in organization, but not necessarily anything more than would result from the experience of the intelligent mechanic. The Springs did not claim a combination of a slotted guide cam, an adjusting screw, a spring, guiding rods, etc., with a fr mer, a cutting tool, a rest, and a griping chuck, and, as it stands, the claim was, in the existing state of the art, for an analogous or double use, and not partentable. The circuit court was clearly right, and its decree is affirmed.

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