U.S. Supreme Court
Rubber-Tip Pencil Company v. Howard, 87 U.S. 20 Wall. 498 498 (1874)
Rubber-Tip Pencil Company v. Howard
87 U.S. (20 Wall.) 498
ERROR TO THE CIRCUIT COURT FOR
THE SOUTHERN DISTRICT OF NEW YORK
On the 23d of July, 1867, J. B. Blair, an artist, alleging himself to be the original and first inventor of "a new and useful rubber head for lead pencils," received a patent for his invention. His specification and claim were as follows:
"Be it known that I, J. B. Blair, of the City of Philadelphia, &c., have invented a new and useful cap or rubber head to be applied to lead pencils, &c., for the purpose of rubbing out pencil marks, and I do hereby declare the same to be fully described in the following specifications and represented in the accompanying drawings, of which:"
"Figure 1 is an external view of a pencil as provided with a rubber or elastic erasive head, constructed in accordance with my invention."
"Figure 2 is a longitudinal section of the same."
"Figure 3 shows the head, as made, in a somewhat modified form, or with its upper end terminating in a cone."
"The nature of my invention is to be found in a new and useful or improved rubber or erasive head for lead pencils, &c., and consists in making the said head of any convenient external form, and forming a socket longitudinally in the same to receive one end of a lead pencil or a tenon extending from it."
"In the said drawings, A denotes a lead pencil, and B one of my erasive heads applied thereto. The said head may have a flat top surface, or its top may be of a semicircular or conical"
"shape, or any other that may be desirable. Within one end of the said head I form a cylindrical or other proper-shaped cavity. This socket I usually make about two-thirds through the head, and axially thereof; but, if desirable, the socket or bore may extend entirely through the said head. The diameter of the socket should be a very little smaller than that of the pencil to be inserted in it. The elastic erasive head so made is to fit upon a lead pencil at or near one end thereof, and to be so made as to surround the part on which it is to be placed, and be held thereon by the inherent elasticity of the material of which the head may be composed. The said head is to be composed of india rubber, or india rubber and some other material which will increase the erasive properties of the head."
"The drawings exhibit the elastic head so made as to cover the end as well as to extend around the cylindric sides of the pencil, but it is evident that the contour of the said head may be varied to suit the fancy or the taste of an artist or other person, and I do not limit my invention to the precise forms shown in the drawings, as it may have such or any other convenient for the purpose, so long as it is made so as to encompass the pencil and present an erasive surface about the sides of the same."
"A head made in my improved manner and applied to a pencil as above set forth is of great practical utility and advantage to bookkeepers, accountants, and various other persons. The pointed form of the head, as shown in Figure 3, will be found very useful for draughtsmen in erasing lines from their drawings when it may be desirable not to erase other lines in close proximity to that which it is desirable to erase. The elastic or rubber pencil head, made as above set forth, may be applied not only to lead pencils, but to ink erasers and other articles of like character."
"I claim as a new article of manufacture an elastic erasive pencil head, made substantially in manner as described."
"J. B. BLAIR"
This patent having become the property of the Rubber-Tip Pencil Company, and one Howard having made, as the company alleged, rubber-tipped pencils like those covered by the patent, the company filed a bill to enjoin him, &c. chanrobles.com-red
He set up, among other defenses, that the article of manufacture claimed as an invention was not patentable as such.
And of this view was the court below. It construed the invention claimed to be "broadly any form which would enable the rubber to encompass a pencil, ink eraser, or other articles of like character." It said that the additional words, "and present an erasive surface about the sides of the same," added nothing to the description, because
"it was impossible to have a piece of rubber encompass a pencil, ink eraser, or other article of similar character, without presenting an erasive surface about the sides of the same."
It said further that the article was not the subject of a patent, because the elastic and erasive properties of india rubber were known to all,
"and that no person knowing the elastic quality of rubber could be wanting in the knowledge that a piece of rubber could be made to encompass and adhere to a pencil by making a hole in it; nor could any one be deficient in the skill requisite to make such a hole."
From a decree accordingly, the company took this appeal. chanrobles.com-red
THE CHIEF JUSTICE delivered the opinion of the Court.
The question which naturally presents itself for consideration chanrobles.com-red
at the outset of this inquiry is, whether the new article of manufacture, claimed as an invention, was patentable as such. If not, there is an end of the case, and we need not go further.
A patent may be obtained for a new or useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof. In this case, as has been seen, Blair's patent was for "a new manufacture," being a new and useful rubber head for lead pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character. It becomes necessary, therefore, to examine the description which the patentee has given of his new article of manufacture, and determine what it is, and whether it was properly the subject of a patent.
It is to be made of rubber or rubber and some other material which will increase its erasive properties. This part of the invention alone could not have been patented. Rubber had long been known, and so had rubber combined with other substances to increase its naturally erasive qualities.
It is to be of any convenient external form. It may have a flat-top surface, or its top may be of a semicircular or conical shape, or any other that may be desirable. This would seem to indicate clearly that the external form was not a part of the invention. It was, however, urged upon the argument that the invention did consist in the projecting surfaces extending out from the head, and which appear, as is claimed, in the drawings attached to the specifications. It is true, that in two out of the three drawings projecting surfaces are indicated, but such is not beyond question the case with the third. The shape there shown is conical, extending to a point, and evidently intended to represent the form mentioned as specially adapted to the use of draughtsmen in erasing lines from their drawings. It was the end of such a pencil, not the sides, that was to furnish the particular advantage of form. But although drawings do accompany the specification and are referred to, it is evident chanrobles.com-red
that this reference is for the purpose of illustration only, because the patentee is careful to say that
"he does not limit his invention to the precise forms shown, as it may have such or any other convenient for the purpose, so long as it is made so as to encompass the pencil and present an erasive surface upon the sides of the same."
Certainly words could hardly have been chosen to indicate more clearly that a patent was not asked for the external form, and it is very evident that the essential element of the invention as understood by the patentee was the facility provided for attaching the head to the pencil. The prominent idea in the mind of the inventor clearly was the form of the attachment, not of the head. If additional proof of this is required, it may be found in the further statement in the specifications, which locates the head for use at or near the end of the pencil, and so made as to surround the part on which it is to be placed and be held thereon by the inherent elasticity of the material of which it is to be composed. If intended for use at any other place than on the end of the pencil, the projections could not be essential, as any form that would surround the part would present the requisite erasive surface.
Again, the head is to have in it longitudinally, a socket to receive one end of a lead pencil or a tenon extending from it. This socket is to be cylindrical or of any other proper shape. Usually, the inventor says, he made it so as to extend part way through the head, but if desirable, it might be extended entirely through. It must be within one end, but any particular location at the end is not made essential. This clearly is no more than providing that the piece of rubber to be used must have an opening leading from one end into or through it. This opening may be of any form and of any extent longitudinally. The form, therefore, of the inside cavity is no more the subject of the patent than the external shape. Any piece of rubber with a hole in it is all that is required thus far to meet the calls of the specifications, and thus far there is nothing new, therefore, in the invention. Both the outside and inside may be made of any form which will accommodate the parties desiring the use. chanrobles.com-red
But the cavity must be made smaller than the pencil and so constructed as to encompass its sides and be held thereon by the inherent elasticity of the rubber. This adds nothing to the patentable character of the invention. Everybody knew when the patent was applied for that if a solid substance was inserted into a cavity in a piece of rubber smaller than itself, the rubber would cling to it. The small opening in the piece of rubber not limited in form or shape, was not patentable, neither was the elasticity of the rubber. What, therefore, is left for this patentee but the idea that if a pencil is inserted into a cavity in a piece of rubber smaller than itself the rubber will attach itself to the pencil, and when so attached become convenient for use as an eraser?
An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect, though useful, was not new. Consequently he took nothing by his patent.
The decree of the Circuit Court is