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CHAPTER IV.

UTILITY.

77. Utility necessary to patentabil

ity. 78. Utility is negatived by lack of

function. 79. Perfection not necessary to util.

ity. 80. Beauty has utility. 81. Utility is negatived where func

tion is evil.

82. Functions which sometimes

work evil, and soinetimes work

good. 83. Functions thought by some to

be good, and by others to be

bad. 84. Good functions in wrong places. 85. Doubts relevant to utility to be

solved against infringers.

$ 77. The useful arts are those that Congress is authorized by the Constitution to promote, and accordingly the statute includes utility among the qualities which a process or a thing must have in order to be patentable.' To possess utility, a thing or a process must be capable of producing a result, and that result must be a good result. Both these elements inhere in the meaning of the word ; and they are so distinct as to require separate explanation.

$ 78. Utility is absent from all processes and devices which cannot be used to perform their specified functions, and patents for such subjects are therefore void.' This rule applies even to cases in which, by simply adding new elements to useless contrivances, highly useful inventions are produced.

In Burrall v. Jewett: the patent covered the cylinder of a threshing-machine, having rows of teeth inserted in its convex surface and revolving within a barrel which had no

* Revised Statutes, Section 4886.

? Bliss v. Brooklyn, 10 Blatch.522, 1873; Rowe o. Blanchard, 18 Wis

.

consin, 465, 1864.

3 Burrall v. Jewett, 2 Paige, 143, 1830.

66

teeth. The contrivance was confessedly useless. After the patent for it was granted, the patentee, or some other person, by simply inserting rows of teeth in the concave surface of the barrel, produced the successful threshingmachine, which has everywhere superseded the ancient fail. The law applicable to these facts was stated by Chancellor WALWORTH in the following terms: “ The patent is void if the machine will not answer the purpose for which it was intended, without some addition, adjustment, or alteration, which the mechanic who is to construct it must introduce of his own invention, and which had not been invented or discovered by the patentee at the time his patent was issued."

In Bliss v. Brooklyn the patent covered a certain hosecoupling. The contrivance was worthless, because it proved on trial to be inoperative. The subsequent addition of a lug to one of its parts, transformed the coupling into a useful in vention. Judge BENEDICT nevertheless held the patent to be invalid for want of utility.

$79. If, however, a device performs a good function, though but imperfectly, the utility of that device is not negatived by the fact that it is susceptible of improvement, which will make it operate much better,' nor by the fact that some prior invention performed the same function quite as well, or even performed it with superior excellence. Nor is utility negatived by later inventions which are so much superior to the patented process or thing, that they entirely superseded the use of the latter. Indeed, patents are never held to be void for want of utility, merely because the things covered by them perform their functions but poorly.' In such cases no harm results to the public from the exclusive right, because few will use the invention, and because those who do use it without permission, will seldom or never be obliged to pay for that use, anything beyond the small benefit they may really have realized therefrom.'

Wheeler o. Reaper Co. 10 Blatch. 189, 1872.

Seymour o. Osborne, 11 Wallace, 516, 1870; Sbaw 0. Lead Co. 11 Fed. Rep. 715, 1882.

3 Bell 0. Daniels, 1 Fisher, 375, 1858.

Railway Co. v. Sayles, 97 U. S. 559, 1878; Poppenhusen o. Comb Co. 2 Fisher, 72. 18.58; McComb o. Ernest, 1 Woods, 203, 1871.

• Vance 0. Campbell, 1 Fisher, 485, 1859; Conover 0. Roach, 4 Fisher, 16, 1857.

$ 80. Utility is not negatived by the fact that the manufacture covered by the patent has no function except to decorate the object to which it is designed to be attached.' In such cases utility resides in beauty. Whatever is beautiful is useful, because beauty gives pleasure, and pleasure is a kind of happiness, and happiness is the ultimate object of the use of all things.

$ 81. Utility is negatived if the function performed by an invention is injurious to the morals, the health, or the good order of society.' An invention to improve the art of forgery, or one to facilitate the spread of a contagious disease, or one to render air or water intoxicating, would of course be unpatentable for want of utility. The more completely such an invention could perform its function, the more objectionable it would be in this respect. But utility is not negatived by the fact that the article covered by a patent is an imitation of a natural substance.'

$ 82. An important question relevant to utility in this aspect, may hereafter arise and call for judicial decision. It is perhaps true, for example, that the invention of Colt's revolver was injurious to the morals, and injurious to the health, and injurious to the good order of society. That instrument of death may have been injurious to morals, in tending to tempt and to promote the gratification of private revenge. It may have been injurious to health, in that it is very liable to accidental discharge, and to thereby cause wounds, and even homicide. It may also have been injurious to good order, especially in the newer parts of the country, because it facilitates and increases private war

Gibbs o. Hoefner, 19 Fed. Rep. 324, 1881.

? Magic Ruffle Co. o. Douglas, 2 Fisher, 330, 1863.

3 Bedford v. Hunt, 1 Mason, 301, 1817.

* In re Corbin and Martlett, 1 Mc. Arthur's Patent Cases, 521, 1857.

fare among frontiersmen. On the other hand, the revolver, by furnishing a ready means of self-defence, may sometimes have promoted morals and health and good order. By what test, therefore, is utility to be determined in such cases ? Is it to be done by balancing the good functions with the evil functions? Or is everything useful within the meaning of the law if it can be used to accomplish a good result, though in fact it is oftener used to accomplish a bad one? Or is utility negatived by the mere fact that the thing in question is sometimes injurious to morals, or to health, or to good order? The third hypothesis cannot stand, because if it could it would be fatal to patents for steam-engines, telegraphs, electric lights, and indeed many of the noblest inventions of the nineteenth century. The first hypothesis cannot stand, because if it could it would make the validity of the patents to depend on a question of fact, to which it would often be impossible to give a reliable answer. The second hypothesis is the only one which is consistent with the reason of the case, and with the practical construction which the courts have given to the statutory requirement of utility.

$ 83. Another question relevant to utility of function will sooner or later demand the attention of counsel and of courts. A particular invention may invariably perform one specific function, which function is deemed good in some quarters, and in other quarters is thought to be bad. The function performed by a newly invented smoking-pipe, if it increased the prevalence of smoking, would be thought by many persons to be only evil, and that continually: would be deemed by many moralists to be injurious to the morals, and by many physicians to be injurious to the health of society. James I. would doubtless have refused a patent for such an invention, unless by granting one he could have diminished its use. On the other hand, there are many persons who would regard such an invention as truly useful. Federal judges would be found among both parties, and an entire difference of personal opinion on the point might perhaps exist among the justices of the Supreme Court themselves. Personal opinion cannot, therefore, control the decision of such a question, for if it could there would be no stability to the jurisprudence of the subject. Nor ought former custom to be the criterion, for if it were each age would be hampered by a prior and lower civilization. Science may hereafter demonstrate the uniform hurtfulness of smoking, and when it does the courts can hardly adjudge it to be useful on the ground that millions of men formerly smoked. It seems, therefore, that in such cases of divided personal opinion relevant to the utility of a particular result, the only criterion of decision is the average public sentiment of the time when the question arises. Accordingly, the courts at present uphold patents which relate to tobacco, and will probably always sustain the utility of inventions which perform functions that average public sentiment is willing to have performed.

$ 84. Utility is negatived by the fact that the patented process or thing is injurious to the thing to which it is applicable,' and also by the fact that the function performed by the patented part of a machine, though good in itself, is injurious to the utility of the machine as a whole. The first of these points is well illustrated by the first case cited in this section : a case based on a patent for a process of treating leather to an application of fat liquor. The second point is equally well illustrated by the second case : a case based on a patent for a locomotive spark arrester. To arrest sparks is in itself a good thing to do, but where it must be done in such a way as to stop or seriously retard the locomotive, it is not desirable to attempt it. Therefore a device which would arrest sparks, but only at the expense of retarding the locomotive from the smoke-pipe of which they issued, was rightly held to be wanting in utility.

$ 85. A patent is prima facie evidence of utility,' and

· Klein O. Russell, 19 Wallace, 433, 1873.

? Wilton v. Railroad Co. 1 Bright

ley's Federal Digest, 618, 1849.

3 Vance v. Campbell, 1 Fisher, 483, 1859.

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