Howe MacHine Co. v. National Needle Co.
134 U.S. 388
SCOTUS
1890
Check Treatment
*394 Me. Chief' Justice Fullee,

after stating the case, delivered tbe opinion of the court.

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 purposé 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: 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 opposite end.”- In the drawings attached to the parent, 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 machine needles,” and that “the arrangement of' the -shaping mechanism illustrated by the drawingjs that designed and adapted to the formation of áwls 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 wjiich an ai tide can be so held by one end as to present the • other free *395 tó 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 complainant’s 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 preexisting combinations. They are, therefore, the griping chuck; the supporting rest preceding the cutting -tool; a cutting tool having the reciprocating motion towards 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 withoút 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 pre-. ceding the cutting tool, a cutting tool, and á guide cam or its equivalent; and complainants cannot now be permitted to read into it any delicate adjusting apparatus pot' 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 pr October, 1857.. Their patent was issued May 10, 1859.

As found by the Circuit Court, the testimony, leave's no doubt that as early as 1845, William Murdock used a lathe at Winchendon, Massachusetts,'for turning pointed skewers of \yood. This had a chuck, a cutting tool, a rest preceding the cutting tool, and a pattern governing the movement of the *396 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 • Mur-dock 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 W aymoth lathe, being so constructed as to produce the desired configuration upon the surface of the turned blank by-using a pattern or former qf 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 pat- - tern causing the cutting tool, as jt was slid toward the holding or griping chuck, to approach hr recede from the axial line, qf the work, and in all these lathes the cutting tool is preceded by a rest through a hole in which .the work revolves, leavipg one end ;of the work free, while the other is held' and turned by the chuck ”

*397 There is nothing in the specification about the nature of the material to be used, nor is the device limited to the production o'f 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 Pennsylvania Railroad v. Locomotive Truck Co., 110 U. S. 490, 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; Peters v. Active Mf’g Co., 129 U. S. 530; Peters v. Hanson, 129 U. S. 542; Aron v. Manhattan Railway Co., 132 U. S. 84; Watson v. Cincinnati &c. Railway Co., 132 U. S. 161.

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, arid the facility of manipulation which results from its habitual and intelligent practice.’.’ Hollister v. Benedict Mf’g Co., 113 U. S. 59, 73. 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’ori 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 *398 ag 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 former, á 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 patentable.

• The Circuit Court was clearly right, and its decree is

Affirmed.