# Rubber-Tip Pencil Company v. Howard

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United States Supreme Court
87 U.S. 498
Rubber-Tip Pencil Company v. Howard
ERROR to the Circuit Court for the Southern District of New York; the case being thus:
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.
Drawings, attached to the specification. TAI TABLE
'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.
He set up, among other defences, 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.
Mr. J. S. Washburn, for the appellant:
1. The construction by the court below of the specification and claim is illiberal and contrary to the just rule laid down in many cases in this court, including especially a recent one, that patents for invention are to receive a liberal interpretation, and are, if practicable, to be so construed as to uphold and not destroy the right of the inventor.
There exists in the present case no necessity which compels an illiberal construction. Indeed, such construction can be sustained only by rejecting the substantial effect of the language of the specification, as explained by the drawings.
The claim is for 'an elastic, erasive pencil-head, made substantially in manner described.' The claim immediately following the description of the invention must be construed in connection with the explanations contained in the specifications.
Now, the specification describes the invention as an 'improved' rubber, or erasive head for lead-pencils, and shown in the specification and drawings to be a solid, elastic, socketed, erasive head, 'so made as to fit upon a lead-pencil at or near the end thereof, and to be so made as to surround the part on which it is to be placed, and to be held thereon by the inherent elasticity of the material of which the head may be composed,' and having the projecting, working erasive surfaces shown in the drawings, which it is stated are 'constructed in accordance with my invention,' and by which drawings the invention is stated to be 'represented.'
It is true that the specification says—
'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 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.'
And from this language the court below assumed that the head might be of any external form whatever, so long as it encompasses the pencil, and that the words 'and present an erasive surface about the sides of the same' were without any meaning.
But this is a misconception. The language relied on by the court below, and above quoted, should be taken in connection with the language preceding:
'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 statement in the first above-quoted paragraph, that the contour may be varied, and that the inventor does not limit himself to the precise forms shown in the drawings, is made with reference to the 'end' of the pencil being covered or uncovered, and is subject to the express condition that the forms shall be 'convenient for the purpose,' and the implied condition to be fairly derived from the use of the word 'precise,' that they must correspond substantially with the drawings. There is certainly nothing from which it can be fairly derived that he intended to disclaim the features which are clearly portrayed in the drawings, upon which its practical value as an eraser depends; and the use of the words 'to suit the fancy or the taste of an artist or other person,' confines the meaning of the inventor to a matter of simple style, and indicates that he does not limit himself to a precise contour as a matter of ornamental configuration. This is further indicated by the fact that, in the drawings, while the top of the head is varied and the contour of the projecting erasive working surfaces about the sides may be varied from hexagon to square or circular, the projecting, working surfaces themselves are always retained.
It is also evident from the context that the words 'and present an erasive surface about the sides of the same' mean such erasive surface as is portrayed in the drawings, and as is 'convenient for the purpose.'
The court below therefore disregarded the drawings. But it is well setted that the drawings constitute a part of the specification, and are to be resorted to to aid a specification, which would otherwise be imperfect; to help out the description; to furnish clearer information respecting the invention described in the specification; to show the nature, character, and extent of the claim, as well as make a part of the description; and to add anything to the specification which is not specifically contained or mentioned therein.
The fact that the construction placed upon the language in the present case is inconsistent with what the drawings establish, is enough to show it to be a misconstruction.
2. There are certain leading facts, known to everybody, which answer the concluding remarks of the court below, and are of themselves enough to decide this case.
Lead-pencils have very long-longer than any living man remembers-been used to make marks. India-rubber has very long longer than any living man remembers-been used to rub them out. But never until lately was india-rubber used for this purpose except in a form disconnected from the pencil. But on a summer's morning of 1867, one Blair, a poor artist of Philadelphia, seeing that it will be more convenient to use it on his pencil than off, puts in a certain way, a piece of a certain shape, on the pencil, and finding a great advantage in thus using such a piece, shows what he has done. Behold! thousands, hundreds of thousands and millions of rubber-tipped pencils at once appear. Very rich companies, like the Rubber-Tip Pencil Company, are incorporated. Great capital is invested in the matter, and rubber-tipped pencils become a manufacture of the nation. How can it be said that there is no invention here? So far as the patent laws are concerned, utility, as ascertained by the consequences of what is done, is the test of invention, and when utility is proved to exist in any great degree, a sufficiency of invention to support the patent must be presumed. In such a case it is vain to talk about the small amount of ingenuity shown or to say that the arrangement and application are so simple and obvious that anybody could see them.
Messrs. F. W. Betts and S. W. Kellogg, contra.
The CHIEF JUSTICE delivered the opinion of the court.

## Notes

* ↑ Klein v. Russell, 19 Wallace, 433.
* ↑ Seymour v. Osborne, 11 Wallace, 547.
* ↑ Earl v. Sawyer, 4 Massachusetts, 9; Burrall v. Jewett, 2 Paige, 143; Washburn v. Gould, 3 Story, 133, 138, 139; Emerson v. Hogg, 2 Blatchford, 9; Hogg v. Emerson, 6 Howard, 485; 11 Id. 606.
* ↑ Roberts v. Dickey, Circuit Court of the United States, Western District of Pennsylvania, per Strong, J., and McKennan, circuit judge, 1 Official Gazette, 4, 5, 6; and see McCormick v. Seymour, 2 Blatchford, 243; and Curtis on Patents, § 41.
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).
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