Merrill v. Yeomans - 94 U.S. 568 (1876)

Rule:

The patent act of Congress very wisely requires of the applicant a distinct and specific statement of what he claims to be new, and to be his invention. In practice, this allegation of the distinct matters for which he claims a patent comes at the close of the schedule or specification, and is often accompanied by a disclaimer of any title to certain matters before described, in order to prevent conflicts with pre-existing patents. This distinct and formal claim is, therefore, of primary importance, in the effort to ascertain precisely what it is that is patented to the appellant in this case.

Facts:

This is a suit by Joshua Merrill, for an infringement of letters-patent No. 90,284, issued to him May 18, 1869, for improved manufacture of two deodorized heavy hydrocarbon oils. Merrill had patented a process for producing these oils in a deodorized form, and appellees were dealers who sold the oils but did not manufacture them. The court below found that there was no infringement by the respondents, and dismissed the bill; whereupon Merrill appealed here.

Issue:

Was there an infringement of Merrill’s patent by the dealers who sold the oils but did not manufacture them?

Answer:

No.

Conclusion:

The United States Supreme Court affirmed, holding that the language of Merrill’s patent did not clearly or precisely describe his claim and that the fair construction of the patent required a conclusion that Merrill described and claimed a patent for the process of deodorizing the heavy hydrocarbon oils. The Court also held that Merrill did not claim as his invention the product of that process.