# Wicke v. Ostrum/Opinion of the Court

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* Opinion of the Court
United States Supreme Court
103 U.S. 461
Wicke v. Ostrum
The patent sued on in this case is for a machine for nailing boxes, invented by George Wicke. Before this invention nails were driven singly, and by hand. By the machine more than one could be driven at the same time.
In the description of the invention which accompanied the application for the patent, the inventor said, in effect, that it consisted in the employment of grooved spring jaws for the purpose of holding the nails and guiding them to their places, combined with a corresponding number of rising and falling plungers for driving each nail singly and at the same time. The plungers were made with globe or disk shaped collars, so adjusted or arranged that they would spread the spring jaws at the proper moment to allow the heads of the nails to pass. To depress the plungers, he arranged a cam, so formed and fitted as to have spent its force when the nail was driven to its place. 'Finally,' he said his invention consisted 'in the general arrangement and combination of all its parts, so that the plungers and jaws, as well as the table which supports the boards, can be adjusted according to the different sizes of the boxes to be made.' He then described the construction of the different parts of the machine and the manner of its operation, from which, and the drawings and models, it appears that the machine was an upright one, by means of which the nails were to be driven vertically.
With such a machine the nails must necessarily be held in place by some mechanical device until they were guided to and fastened in the board. A nail implies a head larger than its point, and, if it is to be driven vertically, some provision must be made for directing the point carefully to its proper place, and then letting the head pass without obstruction as it is driven. Such clearly was the office of the 'grooved spring jaws' and the 'globe or disk shaped collars' of the plungers in this machine.
To make the claims of his letters-patent intelligible, they must be read in connection with the specifications to which they relate, and in this way it becomes apparent that the object of the inventor was to secure a patent for a new combination of old elements. Grooved spring jaws were confessedly very old. So were rods of iron with curvilinear projections, like those called plungers, and cams, of almost any shape, and treadles, and levers, and adjustable carriages, tables, and slides. The use of these things separately could not be patented. But the combinantion of them so as to produce a machine useful for driving nails was new. This the inventor might claim, and, so far as anything appears, he was entitled to a patent for the employment of spring jaws in the combination and for the purpose described in his specifications; for the combination of his peculiarly shaped plungers with spring jaws for the purposes of such a machine; for the use of the cam he described in combination with the gate and treadle to drive his machine; and for the adjustable carriage, table, and slide when used on such a machine as his. He was entitled also to the benefit of all the mechanical equivalents of his several elements, known at the time of his invention, if used in the same combination.
As has already been seen, Wicke made an upright machine. For such a machine the combination of all his several elements was necessary. If any one, or its mechanical equivalent, was left out, an upright machine like his could not be operated successfully. A combination of other elements, not the equivalents of has, would be a different machine, and consequently not an infringement. From the evidence it is clear he was the first to put into practical use the idea of driving more than one nail at the same time in the manufacture of boxes by the use of machinery. The idea he could not patent, but his contrivance to make it practically useful he could. By his patent he appropriated to himself only so much of the field of invention which his idea embraced as was covered by the machine described in his specification and claimed in his application.
The defendant conceived the idea of driving nails horizontally instead of vertically, and made a machine for that purpose, which he patented. He does not use the spring jaws or the peculiar shaped plungers of the Wicke machine, because he does not need them. As his object is to drive the nails horizontally, they can be laid in a groove and held there by gravity until forced into the board. Having no spring jaws to be opened, he need not shape his plunger or driver so as to effect that object. He thus has been enabled to dispense with two elements of Wicke's combination, in the absence of which that machine could not be successfully worked. Neither has he substituted any mechanical equivalent for what he has thus put aside. By changing the form of the machine and the manner of its operation, he has no need of any such contrivances. He may use the equivalent of one half of the spring jaw of Wicke's machine, but he does not want the other half, or anything, else in its place, as the nail will lie where it is put until driven into the board. He accomplishes by natural causes what Wicke required a mechanical contrivance to do. His machine will not do the work of Wicke's, that is to say, drive a nail vertically, nor will Wicke's do that of his, and drive horizontally. The truth is, the two machines are entirely unlike, and while they both drive more nails than one at the same time, they do it in different ways. That of Wicke, operating vertically, requires all the elements of his combination, while that of the defendant, doing its work in another way, is made by leaving out two elements which are indispensable to Wicke.
The fair construction of the fourth and fifth claims is that they are for the combination of the cam, gate, and treadle, or the adjustable carriage, table, and slide, with the elements of the other claims. It is possible that if there had been nothing more done by the defendant than to put into the machine of Wicke his rock shaft and attachments in the place of the cam, the shaft would be considered as the equivalent of that element in Wicke's device. So, too, the bed, slides, and gauges of the defendant's machine, if used in that of Wicke, might be considered the same in effect as the adjustable carriage, table, and slide which he contrived. But these contrivances of the defendant are not used in combination with any of the other devices of Wicke, and, therefore, they do not infringe his claims.
On the whole, we are clearly of the opinion that the court below was right in holding, as it did, that no infringement had been proven.
Decree affirmed.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
Public domainPublic domainfalsefalse