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of the United States. In accordance with the power it confers, and in pursuance of the object it mentions, Congress has, from time to time, enacted certain statutes. The principal enactment, in force at this writing, is Section 4886 of the Revised Statutes of the United States. Subject to certain conditions and limitations, hereafter to be explained in this book, that section provides that any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor. Statute law, identical with this, has been in force in the United States ever since April 10, 1790; except that the conditions and limitations attending it have varied somewhat from time to time; and except that compositions of matter were not mentioned in the statute prior to that of February 21, 1793, though they were doubtless covered by the word “manufacture," which the earlier statute contained.

§ 2. The word “discovery” does not have, either in the Constitution or the statute, its broadest signification. It means invention, in those documents, and in them it means nothing else. The “discoveries” of inventors are inventions. The same man may invent a machine, and may discover an island or a law of nature. For doing the first of these things, the patent laws may reward him, because he is an inventor in doing it; but those laws cannot reward him for doing either of the others, because he is not an inventor in doing either. The statute provides that patents may be granted for four classes of things. These are arts, machines, manufactures, and compositions of matter. None of these things can be originally made known by discovery, as our continent was. They are not found, but are created. They are results of original thought. They are inventions.

. Laws of nature, on the other mand, can never be invented by man, though they may be discovered by him. When discovered, they may be utiized by means of an art, a


In re Kemper, 1 MeArthur's Patent Cases, 4, 1841.

machine, a manufacture, or a composition of matter. It is the invention of one or more of these, for the purpose of utilizing a law of nature, and not the discovery of that law, that may be rewarded with a patent.' In a few published precedents, there are phrases which seem to imply discord with these propositions; but there is no American case which invalidates them, and they are all implied and illustrated in the scientific and legal histories of the discoveries and inventions which pertain to the telegraph.

Stephen Gray, in 1729, discovered the electric current, and discovered that some substances are conductors, while other substances are non-conductors of that current; but he did not live to see those laws of nature utilized in any way. Other discoveries, relevant to electricity, were made later in the eighteenth century, by Franklin, by Galvani, and by Volta. The researches of Ersted, Ampère, and Arago, about the year 1820, disclosed the fact that a current of electricity, passing through an insulated wire, will magnetize a piece of soft iron around which any part of that wire is coiled; and the further fact, that when that current is broken, the magnetism of that iron instantly expires. This was the crowning discovery that made the electro-magnetic telegraph a possibility. Professor Morse, the inventor of that telegraph, had no share in making that discovery, nor in making either of those which preceded it. He was not a scientist. His profession pertained to the fine arts, and not to those commonly called useful. Being, however, a gentleman of reading, he was somewhat con· versant with the principal known laws of electricity and electro-magnetism, and when he found his knowledge deficient he resorted to those still better informed than himself. During an ocean voyage in 1832 he conceived the invention, which he completed in 1837, patented in 1840, and embodied in 1844 in a working telegraph from Washington to Baltimore. Morse was as justly entitled to a patent for that invention as he would have been had he

I O'Reilly o. Morse, 15 Howard, 112, 1853: Morton 0. Infirmary, 5 Blatch. 116, 1862.

been the discoverer of all the laws of nature which it utilized. On the other hand, Stephen Gray, had he lived in the time and in the country of Morse, would not have been entitled to a patent for his discovery, splendid as it was, because what he made known was neither an art, a machine, a manufacture, nor a composition of matter; and because, to have given him an exclusive right to the electric current would have been to discourage and not to promote the progress of science and useful arts. It would have been to prohibit all others, during the life of that patent, from using any electric telegraph or telephone, should any be invented. It would have been to prohibit man from utilizing one of the laws of God.

$ 3. The word “art” also has a narrower meaning in the patent laws than it has in the dictionaries. In the latter its signification is, “the use of means to produce a result.” In the patent laws it covers only a certain limited meaning of the word process. The common meaning of this latter word is “an operation performed by rule to produce a result.” One instance of such a process is the mixing of crude India rubber with sulphur, and then subjecting the mixture to a high degree of heat, thereby producing a new and useful composition of matter: a composition which will be soft India rubber if the proportion of the sulphur to the crude rubber is one part to five, and will be hard India rubber if the two ingredients are equal in weight. Another process is the planing of boards in a planing-machine. Both of these processes are arts in the dictionary sense of that word. The first produces its result by chemical action and the action of heat. The second produces its result solely by the action of a machine. Because of this difference, the first' is a patentable process, while the second is not. This distinction was announced and applied by the Supreme Court thirty years ago, and has since been enforced by Judge WHEELER, and recognized by Judges WALLACE, BLODGETT, and LOWELL.


1 Telephone Cases, 126 U. S. 532, 1888.

$ 4. In Corning v. Burden'it appears that Henry Burden obtained a patent, in the specification of which he stated that he had invented an “improvement in the process of manufacturing iron,” and described two machines, both of them contrived by him, and either of them capable of producing upon puddler's balls the effect contemplated, whenerer such balls were caused to pass through such machine. That effect was the compacting of the balls by pressure into the form of blooms. Burden was the first to do that by machinery, though it had long been done by hand. The court below instructed the jury, in substance, that the patent was for the process of converting puddler's balls into blooms, by continuous pressure and rotation of the balls between converging surfaces, and that any machine which would perform that work by that process would infringe that patent. The case turned in the Supreme Court on the question of the soundness of that instruction. That court decided that instruction to have been erroneous, and therefore reversed the judgment of the court below. As the reason for its decision, the Supreme Court announced that processes which consist only in the use of machinery are not patentable, and that all other methods of producing useful results are patentable as processes, they being such processes as are covered by the word “art” in the statute. The court supported the first of these doctrines by showing that a patent for a process performed by

machine would really be a patent for its function or effect, and would therefore prohibit the use of subsequent, differezt, and better machines for performing the same function or producing the same effect. Such a patent, if granted and sustained, would bar all subsequent inventions in the same department of machinery, until such time as it might expire. It would therefore obstruct the progress of a useful art and, in so doing, would contravene the spirit and the

purpose of the Constitution and the statute. Accordingly the court said, that “it is well settled that a man cannot have a patent for the function of a machine.”

Corning o. Burden, 15 Howard, 267, 1853.

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§ 5. In MacKay v. Jackman' it appears that the patentee invented a machine for sewing together the soles and uppers of all kinds of boots and shoes, and obtained a patent for that machine in July, 1858, and obtained a patent for the process of using that machine in August, 1860. Suits were brought against Jackman and others for using specimens of that machine after the expiration of the machine patent, but before the expiration of the patent for the process. Judge WHEELER, however, dismissed the bills, and cited Corning v. Burden to support his opinion, that a patent for a process of using a machine is void. To have held the contrary would have enabled the patentee to possess a monopoly of his invention for more than twenty-three years instead of for twenty-one.

In New v. Warren’ the bill was based on a patent for a tank to hold asphaltic cement, and on a patent for the process of using that tank. Judge WHEELER held the latter patent to be invalid, saying, “For this mere operation of the machine, it does not seem that there can be a patent, in addition to a patent on the machine.”

In Brainard v. Cramme' the patent had two claims covering a machine for washing shavings, and two other claims for the washing of shavings by that machine. Judge WALLACE held the latter to be entirely inoperative, and indeed the complainant himself seems to have arrived at a knowledge of the law on that point, for he voluntarily proposed to file a disclaimer as to the alleged process.

In Goss v. Cameron' the patent purported to cover a method of using a printing-press, but Judge BLODGETT held that such a claim, if literally construed, would be void, and that, in order to stand, it must be construed to cover the particular machinery described, and not to cover the process of using such machinery.

In Hatch v. Moffitto the complainant sued on a patent

MacKay v. Jackman, 12 Fed. Rep. 621, 1882. Rep. 615, 1882.

* Goss o. Cameron, 14 Fed. Rep. · New 0. Warren, 22 Off. Gaz. 576, 1882. 587, 1882.

5 Hatch o. Moffitt, 15 Fed. Rep. 3 Brainard 0. Cramme, 12 Fed. 253, 1883.



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