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some others are patentable as designs. Whatever is made by the hand of man, and is neither of these, is a manufacture, in the sense in which that word is used in the American patent laws. The term should be held to justify a patent for the invention of a new and useful human habitation, or a new and useful improvement of such a structure. This statement is ventured, notwithstanding the facetious obiter dictum of Justice GRIER in the jail case.'

§ 18. The phrase "composition of matter," as used in the statutes, covers all compositions of two or more substances. It includes, therefore, all composite articles, whether they be the result of chemical union, or of mechanical mixture, and whether they be fluids, powders, or solids. To be a proper subject of a patent, a composition of matter must, like a process, a machine, or a manufacture, be able to endure the relevant tests of invention, novelty, and utility, which are stated in the next three chapters of this book.

$ 19. The distinction between a machine and a manufacture cannot be so stated that its application to every case would be clear and satisfactory to every mind. The same remark is true of the distinction between manufactures and compositions of matter. In most instances, however, when something is invented by the mind and constructed by the hand of man, its classification under some one of these heads is sufficiently obvious. If an inventor is certain that his invention belongs to one or another of the three classes of things, but is uncertain as to which, no evil need result from the doubt. No inventor needs to state or to know whether the thing he has produced is a machine, a manufacture, or a composition of matter, provided he knows that it is one or the other of these. Seventeen-year patents may be lawfully granted for a thing which falls under either designation, but it never becomes vitally important to determine to which one of the three classes a particular thing really belongs.

1 Jacobs v. Baker, 7 Wallace, 297, 1868.

$ 20. Designs are patentable under Section 4929 of the Revised Statutes. That section provides that any person who, by his own industry, genius, efforts, and expense, has invented and produced any new and original design for a manufacture, bust, statue, alto-relievo, or bas-relief, any new and original design for the printing of woollen, silk, cotton, or other fabrics, any new and original impression, ornament, patent, print, or picture to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture, or any new, useful, and original shape or configuration of any article of manufacture, may, subject to certain conditions and limitations stated in the statute, obtain a patent therefor. That section is almost a literal transcript of Section 71 of the consolidated Patent Act of 1870,' except that in the latter the word “ pattern" is found in the connection in which the word "patent” is printed in Section 4929. The change from “pattern” to “ patent was doubtless an error of the printers of the Revised Statutes. Those statutes were enacted as printed, and not as is the custom with shorter edicts, as engrossed in writing. The word "patent” is meaningless in that connection, and patterns, though not mentioned in the section, are doubtless covered by its other provisions.

$ 21. In like manner as Section 4929 of the Revised Statutes was enacted to take the place of Section 71 of the Patent Act of 1870, the latter was passed to take the place of Section 11 of the Patent Act of 1861.' The Act of 1870 differed from its predecessor mainly in conferring upon any person the rights to design patents which the Act of 1861 gave only to citizens and to aliens who, having resided one year in the United States, had taken an oath of intention to become citizens. Section 11 of the Act of 1861 was a modification of Section 3 of the Patent Act of 1842, which latter was the first American statute authorizing patents for designs.

1 16 Statutes at Large, Ch. 230, p. 248. 209.

3 5 Statutes at Large, Ch. 263, p. 2 12 Statutes at Large, Ch. 88, p. 543.

8 22. Section 4929, like all three of its predecessors, provided for patents for a certain class of new, useful, and original designs, and for certain other classes of new and original designs, thus recognizing the fact that some designs are useful as well as ornamental, while others have no utility except to please the eye of the beholder. It is questionable whether the framers of the constitutional provision, relevant to encouragement of science and useful arts, intended to provide for patents for designs which are useful only because they are ornamental. In our age, however, beauty is generally believed to have a utility of its own, and patents are therefore granted and sustained for designs which are useful only because they are beautiful."

· Theberath 0. Trimming Co. 15 Fed. Rep. 250, 1883.



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23. Invention necessary to patent

ability. 24. Many negative rules, but no

affirmative rule, for determining the presence or absence of

invention. 25. Mere mechanical skill is not in

vention. 26. Circumstances indicating differ

ence between invention and me

chanical skill. 27. Excellence of workmanship is

not invention, 28. Substitution of materials is not

invention. 29. Exception to the last rule. 30. Enlargement is not invention. 31. Change of degree is not inven

tion. 32. Aggregation is not invention. 33. Simultaneousness of action is

not necessary to invention. 34. Duplication is not invention. 35. Omission is not generally in

vention. 36. Substitution of equivalents is

not invention. 37. New combination, without new


$ 23. It has been shown that the word “discovered," in Section 4886 of the Revised Statutes, has the meaning of the word “invented." It follows that patents are grantable for things invented, and not for things otherwise

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mode of operation, is not inven.

tion. 38. Using old thing for new purpose

is not invention. 39. Cases to which the last rule does

not apply. 40. Doubts relevant to invention,

when otherwise insoluble, are solved by ascertaining compar

ative utility. 41. Form. 42. Questions of invention are ques

tions of fact. 43. Questions of invention some

times investigated in the light

of the state of the art. 44. Joint and sole inventions. 45. How made. 46. How distinguished. 47. Suggestions to an inventor. 48. Information sought by an in

ventor. 49. Mechanical skill not necessary

to invention. 50. Sole patent to one joint inventor

is void. 51. Joint patent to sole inventor and

another is void.

1 Section 2 of this book.

produced. Novelty and utility must indeed characterize the subject of a patent, but they alone are not enough to make anything patentable; for the statute provides that things to be patented must be invented things, as well as new and useful things. The courts have therefore declared that not all improvement is invention, and entitled to protection as such, but that, to be thus entitled, a thing must be the product of some exercise of the inventive faculties.” And the law stated in this section applies not only to processes, machines, manufactures, and compositions of matter, but also to designs.' But a patent may be sustained for an invention which resided in a theory, without a reduction to actual practice, at the time the patent was granted, if that theory afterward proves to be correct,' and also where the correctness of the theory is self-evident."

$24. The abstract rule stated in the last section is as certainly true as it is universally just, but its application to particular cases cannot be made without the guidance of more concrete propositions. In delivering an opinion of the Supreme Court, in January, 1885, Justice MATTHEWS used some language which may be thought to establish an affirmative rule by which to determine the presence or absence of invention in every case. Speaking of a simple device which the court held not to be an invention, he said that it “seems to us not to spring from that intuitive faculty



· Thompson o. Boisselier, 114 U.S. 11, 1884; Gardner o. Herz, 118 U.S. 191, 1885.

9 Pearce 0. Mulford, 102 U. S. 112, 1880; Atlantic Works v. Brady, 107 U.S. 199, 1882: Slawson o. Railroad Co. 107 U. S. 649, 1882; Morris o. McMillin, 112 U. S. 247, 1884; Hollister v. Benedict Mfg. Co. 113 U. S. 59, 1885; Stephenson v. Railroad Co. 114 U. S. 149, 1885; Mun. son o. New York City, 124 U. S. 601, 1888; Pattee Plow Co. v. Kingman & Co. 129 U. S. 294, 1888.

Odell, 18 Fed. Rep. 322, 1883; Osborn v. Judd, 29 Fed. Rep. 96, 1886; Meers v. Kelly, 31 Fed. Rep. 153, 1887; Untermeyer v. Freund, 37 Fed. Rep. 343, 1889.

Telephone Cases, 126 U. S. 535, 1888.

3 Western Electric Mfg. Co. 0.

5 Heath o. Hildreth, 1 McArthur's Patent Cases, 19, 1841; Screw Co. v. Sloan, 1 McArthur's Patent Cases, 210, 1853; In re Seeley, 1 McArthur's Patent Cases, 249, 1853; Chandler v. Ladd, 1 McArthur's Patent Cases, 493, 1857.

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