Knapp v. Morss Ufford v. Morss

• Decision Date: 20 November 1893
• Docket Number: Nos. 55,310,s. 55
• Parties: KNAPP et al. v. MORSS. UFFORD et al. v. MORSS
• Court: U.S. Supreme Court

150 U.S. 221

14 S.Ct. 81

37 L.Ed. 1059

KNAPP et al.

v MORSS.

UFFORD et al.

v. MORSS.

Nos. 55, 310.

November 20, 1893.

John K. Beach, for appellants.

Payson E. Tucker and Chas. F. Perkins, for appellee.

Mr. Justice JACKSON delivered the opinion of the court.

These two causes, which were heard at the same time, are substantially alike in every particular affecting their proper determination, and will therefore be considered together, although they come from different jurisdictions. They are suits for the infringement of letters patent No. 233,240, for improvements in dress forms, issued October 12, 1880, to John Hall, and by him assigned to Charles A. Morss, the appellee. In one cause, the appellants, William H. Knapp and Charles L. Knapp, are the manufacturers of the articles alleged to infringe, while the appellants in the other cause, Samuel N. Ufford & Son, are merely the selling agents of the manufactured articles. In both cases, it was decreed below that the second claim (the only one in controversy) of the patent was infringed. From these decrees, the present appeals are prosecuted.

The invention relates to improvements in dress forms, by means of which every part of the device is rendered adjustable, so that it may be applied to a dress of any size or style, and fill it out perfectly, in order that trimming may be placed upon it. The device described in the patent, by which this result is to be accomplished, consists of upright ribs of thin, springy material, assembled around a central standard, which supports the whole structure. The ribs are connected near their top and bottom extremities to braces or stretchers, which extend obliquely from the ribs to the standard, and are there concentrated, and hinged on small, movable collars, which encircle the standard. There is a single set of braces at the bottom, while at the top there is a double set. This double brace consists of a series of arms or stretchers, part of which radiate from the upper movable collar obliquely downward to the ribs, to which they are fastened at a point near where the other part of the arms or stretchers are fastened. The lower series of stretchers extend obliquely downward from the point on the ribs where they are fastened to a collar separate from, and independent of, the upper collar. Following each collar, which is loose, is a rest which may be secured to the standard at any point desired by a set screw, thus enabling the whole structure to be adjusted, and revolve upon the standard.

The second claim of the patent reads as follows: '(2) In combination with the standard, a, and ribs, c, the double braces e², the sliding blocks f' and f², and rests, h' and h², substantially as and for the purposes set forth.'

The defenses set up by the answer were invalidity in the patent, and noninfringement, and in support of the former defense the following patents were relied on: To C. W. Wilson, May 3, 1870, No. 102,638; to F. A. Balch, September 17, 1867, No. 68,831; to S. B. Ferris, August 27, 1878, No. 207,351; to C. Franke, September 7, 1875, No. 167,394.

The theory of the invention is that, as the collar at the bottom of the standard is raised, the braces will force the ribs to expand to the circumference limited by the tape or elastic affixed to the lower extremities of the ribs. Should the collar be pushed above the mean center of expansion, which is attained when the braces are at right angles with the standard, the tendency to expand would cease, and contraction would begin. But the proper degree of expansion produced by the lower braces is never exceeded, in expanding the dress form. At that point, the skirt hangs loosely on the form, and the resistance is so slight that this brace is of but little use. However, the lower brace is not one of the elements of the combination of the second claim. But at the upper part of the form, where expansion and opposition to contraction are alike desired, the mechanical difficulty resulting from pushing the single brace beyond the mean center of expansion is avoided by using double braces. If the ribs were unrestrained, either by a tape or a skirt of any fabric, the double braces would not be necessary; but, as the chief purpose of the invention is to give a proper contour to what is called the 'hip portion' of the dress form, the double braces are most essential. Inasmuch as the ribs, at their tops, are confined by a tape to a circumference corresponding with the size of the waist, it is reasonably clear that, if they were expanded to their utmost tension at the hip portion, a single set of braces would afford but slight resistance to contraction. But by the use of the double set of braces, with the arms fastened to the ribs at or near the same point, and diverging obliquely in opposite directions to collars some distance apart, a triangle is formed, which is well known to offer the most powerful resistance to contraction of any device used in the whole range of mechanics. The opposing force brought to bear by pushing the lower collar up, and the upper collar down, operates on the ribs to give shape to the hip portion of the skirt form closely resembling the human figure, and to oppose all tendency to contraction, caused either by the ribs being too closely confined by the tape, or by the tight adjustment of the skirt to the contour of the dress form.

In determining the proper construction to be placed upon the second claim of the patent, it is necessary to consider the action of the patent office upon the original application of the patentee, and also examine the prior art. In his original application, the patentee sought to secure the following claims:

'(1) A dress form consisting, essentially, of a central standard, one or more series of adjustable ribs, and corresponding series of braces or stretchers hinged to one or more runners or sliding blocks upon said standard, and having their outer ends connected with said ribs, whereby the dress form may be expanded and contracted, substantially as and for the purpose set forth.

'(2) In combination with the standard, a, rest, h, sliding block, f, and braces, e, the ribs, c, and elastic band, d, substantially as and for the purpose described.'

These broad and general claims were rejected by the patent office for the following reasons:

'The first claim is rejected on patents 202,713—Everett, April 23, 1878—and 207,351,—Ferris, August 27, 1878—both in dummies and hangers.

'There is no novelty in the elements of the second claim, in view of the above patents, in connection with the elastic band shown in 75,864,—Keffer, March 17, 1868,—(blocking and stretching hats,) which band is there used in the same way and for the same purpose as in applicant's device.'

The patentee acquiesced in the rejection, and thereupon accepted his patent with its specific claims, the second of which is alleged to be infringed.

It is well settled that the second claim must be read and interpreted with reference to the rejected claims and to the prior state of the art, and cannot be so construed as to cover either what was rejected by the patent office, (Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. Rep. 493; Sutter v. Robinson, 119 U. S. 530, 7 Sup. Ct. Rep. 376,) or disclosed by prior devices.

A brief reference to the prior state of the art will serve to show what limitations should be placed upon the claim in question:

In 1878 a patent was issued to George W. Everett for a skirt exhibitor, in which there was a standard and a waistband, divided into two segments. These segments were expanded and adjusted by a slide and socket mechanical device. The standard and adjustable waistband perform the same function as the standard and tape in the Hall patent. Vertical ribs were afterwards added to the waistband, but the owner of the patent did not claim such ribs as a part of his invention.

In 1870 a patent was granted to C. W. Wilson for an adjustable form the manufacture of hoopskirts. There is in this device, also, a standard and an adjustable waistband, but, in addition to these elements, it was said there might be 'as many ribs as are necessary hinged to the waistband.' These ribs are hinged near their lower ends to jointed braces, whose inner ends are hinged to a block sliding on the standard, and the position of the sliding block is determined by a set screw. In the specification of this patent, it is stated that, 'in operation, the adjustable band block may be drawn out to make any size waistband for skirts, without its being necessary to increase the circumference of the bottom of the form, and by simply moving the sleeve upon the shaft (standard) up or down, the size of the skirt is uniformly increased or diminished.' This invention contains all of the elements, substantially, of the Hall patent, except the double braces. It has the standard, ribs, sliding blocks, and rests. It also has the brace-expanding mechanism for the lower part, which performs the same function as that in the Hall patent.

It appears, so far, that all of the elements of the claim have been shown to have been anticipated, except that of the double braces. But it is manifest that this element is not new. It was the principal novelty employed in the patent granted to S. B. Ferris, August...