practice, and embodied in some distinct machinery, apparatus, manufacture, or composition of matter, is not patentable under the laws of the United States. He is the first inventor, in the sense of the Patent act of the United States, and entitled to a patent for his invention, who has first perfected and adapted the same to use; and until the invention is so perfected and adapted to use, it is not patentable. Ibid.

61. It seems, that in a race of diligence between two independent inventors, he who first reduces his invention to a fixed and positive form is entitled to a priority of right to a patent therefor. Ibid

62. Where a patent for an improvement on looms sets forth as the invention claimed "the communication of motion from the Reed to the Yarn Beam, in the connection of the one with the other, which is produced as follows," describing the mode. It was held, that the invention was limited to the specific machinery and mode of communicating the motion, &c., specially described in the specification. If it were otherwise construed, as including all modes of communicating the motion, &c., it would be utterly void, as being an attempt to patent an abstract principle, or for all possible and practical modes of communication of motion whatsoever, though invented by others, and substantially different from the mode stated in the patent. Stone v. Sprague, 1 Story, 270.

63. Patents for inventions are not granted as monopolies or restrictions upon the rights of the community, but "to promote science and the useful arts," and are to be liberally construed. Blanchard v. Sprague, 2 Story, 164.

64. The power of Congress to grant to inventors is general; and it is in their discretion to say, when, and for what length of time, and under what circumstances, the patent for an invention shall be granted. Ibid.

65. Congress has power to pass an act, which operates retrospectively, to give a patent for an invention already in public use; but no act will be construed to operate retrospectively, unless such a construction is unavoidable. Ibid.

66. In the present case, it was held, that the patent was for a machine, and not for a principle or function; and, therefore, was valid. Ibid.

67. The application of an old process to produce a new result, is not a patentable invention; there must be, also, some new process or mode. But the production of an old result by a new process is patentable. Howe v. Abbott, 2 Story, 190.

68. A machine is only patentable when it is substantially new; but the application of an old machine to a new process is not patentable. Bean v. Smallwood, 2 Story, 408.

69. In the present case, the invention was held not to be patentable, because it was merely the application of an old apparatus to a new purpose. Ibid.

70. Where the plaintiff, in the specification of his patent, claimed as his invention "an improvement in the construction of the axles or bearings of railway, or other wheeled carriages," and it appeared that the improvement, though it had never before been applied to railway carriages, was well known as applied to other carriages, it was held, the patent was not good. Winans v. Prov. R. R. Co., 2 Story, 412.

71. Patents are to be interpreted by a consideration of the whole instrument, and it is to be thereby determined what thing is intended to be patented. Carver v. Braintree Manufacturing Co., 2 Story, 433.

72. Whoever finally perfects a machine, and renders it capable of useful operation, is entitled to a patent, although others may have had the idea, and made experiments towards putting it into practice; and although all of the component parts may have been known under a different combination, or used for a different purpose. Washington v. Gould, 3 Story, 122.

73. Patents are entitled to a liberal construction, since they are not granted as restrictions upon the rights of the community, but "to promote science and the useful arts." Blanchard v. Sprague, 3 Sumner, 535.

74. A patent will not be valid, which is simply a principle or function detached from machinery. Ibid.

75. Congress has general power, under the Constitution of the United States, to grant patents to inventors; and it rests in the sound discretion of Congress to say, when and for what length of time, and under what circumstances, the patent for an invention shall be granted. Therefore, an act of Congress, granting a patent, was not unconstitutional, though it operated retrospectively to give a patent for an invention, which, though made by the patentee, was in public use and enjoyed by the community at the time of the passage of the act. Ibid.

76. A patent was granted by act of Congress of 1834, ch. 213, but declared void by the Court, on the ground of a defect in the act. Afterwards the grant of the patent was renewed by another act of Congress (1839, ch. 14.) Quære, whether the latter act would be constitutional, if it gave damages for the construction or use of the machine before the grant of the patent under the act. Ibid.

77. It is not necessary to the validity of a patent for a new and useful invention, that any of the ingredients should be new or unused before for the purpose. The true question is, whether the combination of materials by the patentee is substantially new. Ryan v. Goodwin, 3 Sumner, 514.

78. An invention, to be valid, must be substantially different from any machine or thing in use. Stanley v. Whipple, 2 McLean's R., 35.

79. The true meaning of the words of the Patent law, "not known or used before the application," is, not known or used by the public before the application. Pennock et al. v. Dialogue, 2 Peters' R., 19.

80. The words "any newly invented machine, manufacture, or composition of matter," in the 7th section of the act of 1839, have the same meaning as "invention," or "thing patented." McClurg et als. v. Kingsland et als., 1 Howard, 202.

81. Same as the above.

Smith v. Pearce, 2 McLean, 176.

82. An alteration merely formal, or a slight improvement, will give no right. Ibid.

83. By the provisions of the act of Congress of 17th April, 1800, citizens and aliens, as to patent rights, are placed substantially upon the same ground. In either case, if the invention was known or used by the public before it was patented, the patent is void. In both cases, the right must be tested by the same rule. Shaw v. Cooper, 7 Peters', 202.

84. A patent, to be valid, must be of some utility. Stanley v. Whipple, 2 McLean, 35.

85. Mere technical objections to letters patent are not to be encouraged or construed liberally for him making them. Woodworth v. Hall, 1 Woodbury, 248.

86. A patent is not to protect a monopoly of what existed before and belonged to others, but to protect something which did not exist before, and which belongs to the patentee. Davoll v. Brown, 1 Woodbury, 53.

87. A construction of patents, liberal for the patentees, is proper. But the description of the patent must be so certain, as to be understood by those acquainted with the subject matter. Ibid.

88. But the whole of the specification, as well as the summary and the drawings, are generally to be examined and compared, and not one alone look

ed to, in order to decide what new part or new combination is claimed to be invented and protected. Ibid.

89. In coming to a result, practical views, rather than subtle distinctions, must govern. Ibid.

90. A difference in form or proportions only, makes no difference in the principle of a machine. Brooks & Morris v. Jenkins et al., 3 McLean, 250. 91. A patent is invalid, if described in a foreign publication. Ibid.

92. The exclusive grant in a patent is the construction and use of the thing patented. Boyd v. Brown, 3 McLean, 295.

93. Where the right consists in certain instruments, by which a bedstead of a particular structure is made, the structure or use of these instruments is prohibited. Ibid.

94. A patentee of a flouring mill of a certain structure, has an exclusive right to make and use such mill, but he can claim no monopoly in the sale of the flour he manufactures. Ibid.

95. If the thing claimed to have been invented has been before made, or described in any public work, the patent is void. Ibid.

96. The principle of a machine depends upon its peculiar structure, by which a certain effect is produced. Ibid.

97. To constitute an inventor, it is not necessary to have the manual skill to make the draughts, &c., if the ideas are furnished for producing the result aimed at. By Judge Betts, in Spackman & Kelsey v. A. & E. Higgins & Co. and C. & E. Harvey, U. S. C. C. Southern District of New York, January term, 1847.

98. An inventor may sell the thing invented before the same shall have been patented, and may stipulate for the sale of his invention before it is completed, without vitiating his claim. By Judge Betts, in Spackman et al. v. Higgins et al., U. S. C. C. Southern District of New York, January term, 1847.

99. Some months before the patent issued, the inventors issued their manufactured goods as patent goods, or registered patterns. Now, although "registered pattern" is not a term at law, yet it may well indicate them to be claimed by the inventors as their design, and for which they were preparing to take out a patent. Ibid.

100. The study of Courts has usually been, and especially since the Patent acts of 1836 and 1839, to carry out the protection of the law to inventors, so as to secure them the full benefit of their inventions. The inventors are bound to notify the public of their claim, by an application for a patent. This is a matter of nicety, and men of great experience are often in difficulty as to the precise mode of getting up their papers. Correspondence ensues between the officers at Washington and the patentee, which consumes time. But if the claim thus put forward, although originally informal, be followed up with reasonable diligence, and if eventually the patent is granted, it excludes strangers interfering in the mean time. Ibid.

101. Inventors cannot be stripped of their property-the fruit, oftentimes, of great toil, ingenuity, and expense-by slight and unimportant alterations in the machine; alterations which the description of the invention would of itself naturally, if not necessarily, suggest, without the aid of much ingenuity and skill. By Judge Nelson, in Gibson v. Harris, U. S. C. C. Northern District of New York, at Chambers, November 10, 1846.

*Provided such sale shall be within two years from the date of the invention, and under circumstances which do not show that it is the intention of the inventor to waive his claim to a patent and dedicate his invention to the public. See act of 1839, sec. 7th.-[Compiler.

102. Under the acts of 1836 and 1839, the earliest invention is to prevail over any subsequent one, unless allowed to go into public use, or on sale, for two years before taking out a patent. By Justice Woodbury, in Allen v. Blunt, U. S. C. C. Mass. District, November term, 1846.

103. An invention, to be as valid as the first, must be seasonably reduced to practice, and put in use.

Ibid.

104. To warrant a patent the invention must be useful, that is, capable of some beneficial use, in contradistinction to pernicious, or frivolous, or worthless. Dickinson v. Hall, 14 Pick. 217.

105. A patented invention is deemed useful if it is not frivolous.

The want

of utility is good cause for not granting the patent, but not for setting it aside. Whitney v. Emmett, 1 Bald. 303.

106. A court cannot pronounce a patent worthless merely from the specification, without evidence of any experiments. Case v. Morey, 1 N. Hamp. 347. 107. The provisions of the 10th section of the act of 21st February, 1793, apply only to cases in which a patent has been obtained by fraud, surreptitiously, or by false suggestions, and are intended to protect the public from imposition. Delano v. Scott, Gilpin, 489.

108. A patent issued by the United States, securing the exclusive right to manufacture and use certain medicines, does not authorize a person to administer them in the character of a practising physician; unless he is regularly licensed to practise, and in other respects conforms to the laws of the State where the medicines are administered. Jordan v. Overseers of Dayton, 4 Ham. 294. 109. If a patent is for an improvement, it must be substantially new, and one capable of application by the means pointed out by the patent, specification, drawing, model, and old machine. Whitney v. Emmett, 1 Bald. 303.

110. And if, by these means, the invention, and the mode of using it, are intelligible to persons of mechanical skill in the subject matter, the requisites of a specification, by the 3d section of the act of 1793, are complied with. Ibid. 111. Though a patentee believes himself bona fide to be the original inventor of the improvement patented, yet the fact of his not being so, if it does not constitute a false suggestion in obtaining it, appears to be a sufficient ground for repealing it. Delano v. Scott, Gilpin, 489.

112. Where two patents are granted for the same thing, the second patent is inoperative until the first is set aside. Jackson v. Lawton, 10 Johns., 23. 113. A patent issued to an assignee stands on the same footing, as to remedy, as if issued to the party originally entitled. Wallace v. Minor, 7 Ham. (Part 1st,) 249.

114. The assignment of a patent, though not recorded in the office of the Secretary of the United States,* is still valid, except as against creditors and subsequent purchasers without notice. Holden v. Curtis, 2 N. Hamp. 61.

115. A mere nominal variance between the patent itself and the description of it in the conveyance, does not make the assignment of it invalid. Nor is the patent itself void, because the elementary principles of it were previously known and used, unless the application of them is similar to others. Ibid..

116. A controversy respecting the validity of a patent right is one strictly between the parties immediately concerned, although the public may have an eventual interest in it. Wood v. Williams, Gilpin, 517.

II. Of the specification and description of the invention or discovery, and of the claim.

117. No defect or concealment in the specification will avoid the patent, unless it arose from an intention to deceive the public. Whittemore v. Cutter, 1 Gallis, 429.

* In the Patent Office. See Act of July 4, 1836, sec. 11th.

118. The patentee must describe in his patent in what his invention consists with reasonable certainty, otherwise it is void for ambiguity. If it be for an improvement in an existing machine, he must, in his patent, distinguish the new from the old, and confine his patent to such parts only as are new; for if both are mixed up together, and a patent is taken for the whole, it is void. Howell v. Lewis, 1 Mason, 182.

119. But if the invention is definitely described in the patent, so as to distinguish it from what is before known, the patent is good, although the specification does not describe the invention in such full and exact terms that a person skilled in the art and science of which it is a branch would construct or make the thing invented; unless such defective description or concealment were with intent to deceive the public. Gray v. Osgood, 1 Peters' C. C. R. 374.

120. If the patent be for an improved machine, or for an improvement of a machine, for the meaning of the terms is substantially the same, then the patent must state in what the improvement specifically consists, and it must be limited to such improvement. Barrett et al. v. Hall et al., 1 Mason, 447.

121. If, therefore, the terms be so obscure or doubtful that the court cannot say which is the particular improvement which the patentee claims, and to what it is limited, the patent is void for ambiguity; and if it covers more than the improvement, it is void, because it is broader than the invention. Ibid.

122. Where a combination of machinery already exists up to a certain point, and the patentee makes an addition or improvement to the machinery, he must confine his patent to the improvement. Ibid.

123. If an invention consists in a new combination of machinery, or in improvements upon an old machine to produce a new effect, the patent should be for the combined machinery or improvements on the old machine, and not for a mere mode or device for producing such effects, detached from the machinery. Ibid.

124. Where a patentee, in his specification, states and sums up the particulars of his invention, and his patent covers them, he is confined to such summary, and he cannot afterwards be permitted to sustain his patent by showing that some part which he claims, in his summing up, as his invention, though not in fact his invention, is of slight value or importance in his patent. His patent covers it; and if it be not new, the patent must be void. Moody v. Fiske et al., 2 Mason, 112.

125. A patent for an improvement should describe the machine in use, that it may be known in what the improvement consists. Sullivan v. Redfield et al., 1 Paine, 441.

126. One had patented "a new and useful improvement in the steam tow boat," but the specification did not mention the invention as an improvement, but simply described a tow boat: Held, that the specification was broader than the patent, and therefore bad. Ibid.

127. The invention should be so clearly described as to enable the public to put it in use. Ibid.

128. The specification described the invention as "consisting essentially in attaching the packet to the steamboat, with ropes, chains, or spars, so as to communicate the power of the engine from the towing vessel to the vessel taken in tow, and kept always at convenient distance; the manner of applying the power varying with the circumstances in some measure:" Held, bad for uncertainty. Ibid.

129. It is for the jury to decide whether the specification discloses the whole truth relative to the discovery, or whether any thing material has been concealed with intent to deceive. Reutgers v. Kanowers et al., 1 Wash. C. C. R.