Double Use. The mere application of an existing process, machine, manufacture, or compound to a purpose to which it had never before been applied, is not patentable. If the prior device is a patented one, the patentee has the exclusive right to it for all the uses to which it is applicable, no matter whether he knew of all those uses or not, and no matter what the use for which he deemed it specially applicable. All new uses that are afterward found or discovered for the device are his property.1 man, Upon this topic a learned judge says: "It requires no commentary to establish that the application of an old "thing to a new use, without any other invention, is not "a patentable contrivance. A who should use a common coffee-mill for the first time to grind peas, "could hardly maintain a patent for it. A man, who "should, for the first time, card wool on a common "cotton-carding machine, would find it difficult to estab"lish an exclusive right to the use of it for such a pur 66 112 pose. In a subsequent case before the same judge, Elias Howe brought suit for an infringement of a patent owned by him for a process of preparing palm-leaf or brub-grass for stuffing for beds. It appeared, at the trial, that the same process had been previously applied to the preparation of hair for the same purpose. The judge said of the patented process: "It is therefore the mere applica❝tion of an old process or old machinery to a new use. It "is precisely the same, as if a coffee-mill were now for the "first time used to grind corn. The application of an old process to manufacture an article to which it had never "before been applied, is not a patentable invention. There 66 1 Woodman vs. Stimpson, 3 Fisher's Pat. Cases, 104. McComb vs. Brodie, 2 Patent Office Gazette, 119. 2 Ames vs. Howard, 1 Robb's Pat. Cases, 694. "must be some new process or some new machinery used "to produce the result. If the old spinning-machine to "spin flax were now first applied to spin cotton, no man "could have a new patent to spin cotton in that mode, "much less the right to spin cotton in all modes, although "he had invented none. He who produces an old result "by a new mode or process, is entitled to a patent for that "mode or process; but he can not have a patent for a "result merely, without using some new mode or process "to produce it."1 The patent was held invalid. It may be remarked, apropos of this case, that the claim was not rightfully drawn; if claim had been made to the prepared brub-grass as a new article of "manufacture," it might have been possible to show that the manufacture had such different properties, in kind, from the former manufacture, and so much advantage in cheapness, as to support a patent. In a still later case, before the Supreme Court, the improvement claimed in the patent was the making of door and other knobs of clay or porcelain fitted upon a shank in a common manner. It was shown that knobs of clay or porcelain were old, and that the mode of fastening the shank into the cavity of the knob was old. The only new thing was the substitution of a clay or porcelain knob in the place of a metallic one. The court said: "The difference " is formal, and destitute of ingenuity or invention. It may "afford evidence of judgment and skill in the selection and "adaptation of the materials in the manufacture of the "instrument for the purposes intended, but nothing more; and the patent was declared void. 2 1 Howe vs. Abbott, 2 Robb's Pat. Cases, 103. 2 Hotchkiss vs. Greenwood, 11 Howard, 248. Combinations. An invention is, generally speaking, always a specific thing or a combination of specific things; and this is true, whether the invention be an art, machine, manufacture, or composition,—for a process must consist of a single step or a succession of steps, a machine must be a single elementary power or a combination of elementary powers, a manufacture (when strictly distinguished from other patentable subjects) is a specific thing, and a composition of matter must always be a combination of different ingredients. A combination may be a valid and proper one, though all the parts which compose it are old when considered separately.1 All the new elements of a combination can be, generally, claimed specifically, as well as in the combination. When the invention under consideration is a combination, its novelty is not impugned by showing that any one or more of its elements less than the whole had been used together before. The novelty of a combination can only be destroyed by showing that all the elements. thereof had been used together before, and in the same relation to each other as in the combination under consideration. "Equivalents" in Combinations. There seems to be some uncertainty, in some cases decided by the courts, as to how broadly the doctrine of equivalents applies to mechanical combinations. Take the case of Crompton vs. Belknap Mills (vol. iii. Fisher's Patent Cases, page 536). The judge, in the course of his decision, quotes as follows: "Any machine combining substantially in the same "manner, substantially the same elements, or well-known. 1 Evans vs. Eaton, Peters's Circuit Court Rep. 343. Barrett vs. Hull, 1 Mas. 474. "substitutes for the same, must be regarded as an infringe"ment.' Gorham vs. Mixter, 1 Am. Law Jour. 549. 66 "But it would not be infringed by a combination which dispensed with one of the elements and substituted there"for another element, substantially different in construction "and operation, but serving the same purpose.' Eames vs. Godfrey, I Wallace, 79. 66 "Nor by any and every combination of the same ele"ments, which may produce the same result, but only by "the peculiar combination of the elements described or one substantially the same.' Case vs. Brown, 2 Wal"lace, 320. 66 "The elements here combined are old, the patent is for the peculiar combination, and the doctrine of mechanical. "equivalents does not apply.' McCormick vs. Talcott, 20 "Howard, 405." Now the first two of these quoted decisions would be generally recognized as applications of the doctrine of mechanical equivalents, if their language had been used with. reference to a claim for a specific thing. The language of the third case seems to be extreme in the opposite direction. The decision last quoted, which will be given more at length soon, enunciates as a rule for construction of claims, that the "state of the art" shall be taken into consideration; and this rule is as well applicable to a claim for a specific thing as to a claim for a combination. In the case of Crompton vs. Belknap Mills, the judges, while seeming to enunciate broadly the rule that the doctrine of mechanical equivalents does not apply to elements. of combinations which are old when separately considered, really decided that there was no infringement of the plaintiff's combination claim, because there was a "marked and substantial difference" between one element of the plain tiff's combination and an element in the defendant's combination for performing a similar office, which can hardly be held to be a practical decision upon the point in question. There can be no question made, that when an element of a combination is new, separately considered, the doctrine of mechanical equivalents applies with full force.1 The decision of the Supreme Court, in the case of McCormick vs. Talcott (20 Howard, 402), was as follows: The claim was, 66 - 4th. I claim the combination of the "bar L and the dividing-iron M, for separating the wheat "in the manner described." Upon this the court said (page 404): "In order to ascertain whether the divider "used by defendants infringes that of the complainant, we "must first inquire whether McCormick was the first to "invent the machine called a divider, or has merely im"proved a known machine by some peculiar combination "of mechanical devices which perform the same functions "in a better manner. If he be the original inventor of "the device or machine called the divider, he will have "the right to treat as infringers all who make dividers operating on the same principle, and performing the same functions by analogous means or equivalent combinations, even though the infringing machine may be "an improvement of the original, and patentable as such. But, if the invention claimed be itself but an improve"ment on a known machine, by a mere change of form or "combination of parts, the patentee can not treat another as an infringer who has improved the original machine "by use of a different form or combination, performing "the same functions. The inventor of the first improve 66 66 66 66 66 1 Cahoon vs. Ring, 1 Fisher's Pat. Cases, 397. |