tion of Gately involved invention. On the report of the master, exceptions to which were filed by the defendants and waived and withdrawn, a final decree was entered for the plaintiff, for $9,026.66 profits and $742.05 costs. The defendants have appealed.

the packing in close contact with the piston-rod, when such pure gum backing is pressed upon by the gland of the stuffingbox. By this combination a new article results, namely, one which presents always the same character of surface under wear, and one which has sufficient elasticity to make a tight joint. The union by vulcanization of the front and back portions of the strip of packing serves also to insure the position of the packing in the stuffing-box, which result would not be attained if the front and back portions were formed separately, and placed in the

On the question of novelty and patentability, the defendants introduced the following letters patent: English patent No. 384, October 14, 1852, to Joseph Henry Tuck; English patent No. 1,865, August 25, 1854, to the same; United States patent No. 13,145, June 26, 1855, to the same; English patent No. 19, January 4, 1865, to Ed-stuffing-box as separate articles; the reward Keirby; English patent No. 647, March 8, 1865, to Francis Wise; English patent No. 2,064, August 11, 1866, to John Edwin Keirby; and United States patent No. 63,071, March 19, 1867, to James P. McLean. They also introduced certain devices testified to by the witnesses Allen Magowan, William F. Harrison, William W. Smith, James S. Lever, and S. Lloyd Wiegand.

The Gately packing is an improvement on the McBurney packing and the Gately patent claims the combination with the McBurney packing of the elastic backing or cushion of vulcanized India rubber which Gately's specification describes. The McBurney patent describes a packing made of alternate layers of canvas and India rubber; the whole being vulcanized into one homogeneous mass. McBurney, in his patent, explains, as an important feature connected with his invention, that the layers of canvas are to be cut bias, so that the strip of packing, when finished, will be sufficiently flexible to enable it to be bent around the piston-rod and placed in the stuffing box with comparative ease, which would not be the case if the canvas were cut along the line of any one thread. The packing, after being thus made, is to be so used that the ends of the threads are exposed to wear; that is to say, are to lie against the moving surface of the piston-rod. Gately says, in his specification, that this McBurney packing did not possess a sufficient amount of elasticity to operate satisfactorily in all conditions; that is, the gland of the stuffing-box would not force the packing with such tightness against the piston-rod that a tight joint would result. The improvement of Gately consisted in the combination with the McBurney packing of a vulcanized rubber backing of pure gum,-that is, gum free from layers of canvas,-which backing was to lie between the portion of the strip of packing which was made in accordance with the McBurney specification and the walls of the stuffing-box. Gately states that this backing is to be vulcanized to that portion of the packing which is to be subjected to wear, and the whole is to form one homogeneous mass which can be put into and taken from the stuffing-box as a single piece. The portion of the strip which is made according to the McBurney patent furnishes a wearing surface, the character of which always remains the same, and is not altered under wear; and the pure rubber at the back furnishes an elastic backing, which serves always to keep the wearing portion of

sult of such union being that the ends of the threads of the parts submitted to wear must always be in contact with the piston rod. We think there was patentable invention in producing this article of Gately's, in view of everything put in evidence by the defendants, and in view of the McBurney patent. In the United States patent to Keirby, and the English patent to Keirby, the packing shown differs from the Gately packing, in that the wearing surface is not entirely on one side of the strip of rubber which gives elasticity. to the packing, but the rubber is in the center of the portion which is to be subjected to the wear of the piston-rod. One of the features of the Gately packing corsists in locating the rubber between the part of the packing which is to be exposed to wear and the walls of the box, and the elastic portion is located where it will not be subjected to wear. Moreover, neither of the Keirby patents shows layers of canvas cut bias, and so arranged in the packing strips that the ends of the threads are the parts submitted to wear; and neither of them shows layers of canvas cut bias, located so that the ends of their threads will wear upon the piston-rod, and secured to one another and the rubber core by vulcanization; but, on the contrary, as the Keirby packings wear, they are continually presenting to the piston-rod surfaces having new characteristics.

All

The Wise packing is similar to the packing of the Keirby patents, except that outside of the canvas or other fabric an exterior metallic armor is provided, which takes the wear of the piston-rod. that is above said in relation to the packing of the Keirby patents is true of the Wise packing, and, in addition, it was intended in the Wise packing that the metallic exterior should be the wearing portion, and should make the joint between the packing and the piston-rod. None of these packings show anything which bears upon the Gately invention, except that they show piston-rod packings, but not having the construction or the characteristics found in the Gately invention. As before remarked, the McBurney patent describes only that part of Gately's invention which forms the wearing surface of the Gately packing.

The McLean packing was made up of two parts, one consisting of vulcanized rubber, and the other of cork. Of course, the front and back portions of this packing could not be united by vulcanization, and the two parts were secured together by a metal strip, which was wound

around both the cork and the rubber. In using this packing, the metal strips were first subjected to wear, and, when they were worn through, the cork took the wear; and when this occurred the rubber backing and the cork-wearing portion were no longer secured the one to the other, but became separate and independent pieces in the stuffing-box. The character of the wearing surface altered, until such time as the two parts were left free in the box. When the packing was removed from the box, it would come out in two pieces; the rubber back being one piece, and the cork front the other piece. This packing does not show such a wearing portion as the Gately patent shows, and is not a homogeneous article, made one by the vulcanization of the parts together, but is a compound article, made up of two pieces so tied or secured together that, after a slight amount of wear, the parts cease to perform the purposes for which they were originally intended. The Gately packing is made at the beginning and sold as one homogeneous strip, and exists as such until it is rendered useless by extreme wear, and taken from the stuffing-box; and even at that time it is still a unit, and not two separate pieces, disconnected from each other.

formed of layers of canvas secured to themselves and to the rubber backing by vulcanization. In fact, the Gately packing could not be made if it were impossible to vulcanize rubber; whereas all of the Tuck packings are capable of being made independently of vulcanization, their structure being such that canvas is used as a binding or cementing means, in connection with any adhesive compound to keep the packing together, and to form the strips. In the Gately packing the parts are kept together, and in place, solely by reason of the fact that the rubber has been subjected to vulcanization; thus making the packing a homogeneous whole, and not a strip rolled up upon itself, and thus kept together. Therefore none of the patents introduced by the defendants show the Gately invention. It is true that McBurney shows a part of the combination or article patented by Gately, and McLean shows a rubber backing; but the invention of Gately was new and patentable.

As to the other evidence and exhibits put in by the defendants, none of them show a rubber backing of pure gum, and a front wearing portion united by vulcanization to the back portion, so as to produce a homogeneous article, but they all show something which Gately dispensed with; that is, an elastic core, and a wrapping of fibrous or textile material around such core. Where the packing has a covering of textile material wrapped around the elastic portion of the packing, the wearing surface presented to the pistonrod cannot continuously, as in the Gately packing, be identically the same surface in character; nor can such feature exist, unless Gately's or McBurney's wearing portion and the elastic backing are united as a homogeneous whole by the process of vulcanization.

The Tuck patent of 1852 describes canvas coated with rubber, unvulcanized, which canvas is to be rolled upon itself, and used in the stuffing-box in connection with rigid wearing surfaces; the object of the canvas being to force such surfaces into contact with the piston-rod. This patent does not show a single feature of the Gately invention. The Tuck patent of 1854 shows nine forms of packing, none of which are vulcanized. All of the forms consist practically of a rubber core and canvas rolled around such core. In some cases the core is located centrally, and in some at one side of the roll; but in all the canvas is rolled upon itself, or upon the core; and when the packing is in use, and is subjected to wear, the character of the surface presented to the moving pistonrod is continually changing, it being part of the time a rubber surface, and part of the time a canvas surface. The Tuck patent of 1855 shows five different forms of packing, which are, in substance, copies of five examples shown in the Tuck English patent of 1854. There is no vulcanization referred to in this patent of 1855, and the wearing surface is composed of canvas cut on the bias, and rolled around the elastic or rubber portion, which itself is saturated with rubber. The rubber core is not insisted upon as a necessity; but the patent says that it is used at times forplied by a special knowledge, and the facil

the purpose of giving greater elasticity to the packing. All three of the Tuck patents sbow packing which was different in principle from the Gately packing, in that the wearing portion was of such a character that it was continually changing in its conditions during the wear of the packing, and did not, like the Gately packing, present continuously to the piston-rod a surface having the same characteristics. In the Gately packing the wearing portion of it is not formed by rolling canvas either upon itself or upon a rubber core, but is

Within the requirements of Atlantic Works v. Brady, 107 U. S. 192, 290, 2 Sup. Ct. Rep. 225, we think that Gately made a substantial discovery or invention, which added to our knowledge, and made a step in advance in the useful arts; that, within the case of Hollister v. Manufacturing Co., 113 U. S. 59, 73, 5 Sup. Ct. Rep. 717, what Gately did was not merely the work of a skilled nechanic, who applied only his common knowledge and experience, and perceived the reason of the failure of McBurney's packing, and supplied what was obviously wanting; and that the present case involves not simply "the display of the expected skill of the calling," involv ing "only the exercise of the ordinary faculties of reasoning upon the materials sup

ity of manipulation which results from its habitual and intelligent practice," but shows the creative work of the inventive faculty. The defendants made two forms of packing, one of them identically the packing of the Gately patent; in the other, a little over one-half of the packing was constructed identically in accordance with the Gately invention, and a little less than one-half was so constructed, except that the canvas was not cut on the bias. This feature made the packing relatively stiffer, and injured it; and, even as it was made,

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from the collar when it is removed from a horse's neck. * * As an article of manufacture the single-roll spring can be made and attached to a pad at much less 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 horsecollar 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 no vel, 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."

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 nsual manner, first raising the hooks, D, D, 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, s, s, 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 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 Co. v. Phoenix Iron Co., 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 omis sion 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 This patent to Ortmayer, numbered 331,. beyond the scope of its claim as allowed

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.

James Moore and Edmund Wetmore, for appellant. E. Banning and T. A. Banning, for appellee.

Mr. Justice BROWN, after stating the facts as above, delivered the opinion of the court.

1. The defense 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."

2