PART I.

THE SUBJECT-MATTER OF PATENTS, AND THE PARTIES ENTITLED THERETO.

CHAPTER I.

NOVELTY AND UTILITY.

§ 1. THE Patent Act now in force in this country requires that the subject of every patent should be "new and useful," whether it be an art, machine, manufacture, or composition of matter, or an improvement on any of these things. The inquiry that meets us on the threshold is, what constitutes. novelty, and what constitutes utility, in the sense of the statute?

§ 2. It is one of the first principles of patent law, that a patent cannot be obtained for a mere philosophical or abstract theory, be the subject what it may: it can only be for theory reduced to practice. If, therefore, the subject of the patent be an art, it must be an art actually put in practice and unknown before;—if it be a machine, it must be substantially new in its structure and mode of operation, and not merely changed in form or in the proportion of its parts: 2—if it be a manufacture, or composition of matter, it must be something

1 Act of July 4, 1836, c. 357, § 6.

2 Lowell v. Lewis, 1 Mason's R. 182, 187; Wyeth v. Stone, 1 Story's R. 273, 279.

actually made and substantially different from any thing the making of which was before known.1

§ 3. In machinery, it is not necessary, in order to defeat a patent, that a machine should have existed in every respect similar to that patented; for a mere change of former proportions will not support a patent. If a patent is claimed for a whole machine, it must in substance be a new machine; that is, it must be a new mode, method, or application of mechanism, to produce some new effect, or to produce an old effect in a new way. In cases of difficulty, where the machinery is complicated, and many of the elements employed are powers and instruments of motion long known, the test, which is to determine the boundaries between what was known and used before, and what is new, is, to observe what is new in the mode of operation. If the principles of a machine, that is, the peculiar device or manner of producing the given effect, be new, although the effect itself be old, a patent may be claimed for the machine.3

§ 4. On the other hand, the mere purpose, or effect of a machine, however novel, can furnish no ground for a valid patent, unless the machine itself, the instrument by which the purpose is effected, is substantially new. The application of what is old to a new purpose is not patentable.1

§ 5. It is necessary, however, to consider somewhat in detail what amount of invention is essential to support a patent.

1 Ryan v. Goodwin, 3 Sumner's R. 518.

2 Woodcock v. Parker, Gallison's R. 438, 440; Whitemore v. Cutter, Ibid. 480. If new effects are produced by an old machine in its unaltered state, no patent can be legally supported, for it is a patent for a legal effect only. Ibid.

3 Whitemore v. Cutter, 1 Gallis. 480, 481.

4 Winans v. Boston and Providence Railroad, 2 Story's R. 412; Bean v. Smallwood, Ibid. 408, 411.

§ 6. It is often laid down, that provided the invention is substantially new, it is of no consequence whether a great or small amount of thought, ingenuity, skill, labor, or experiment has been expended, or whether it was discovered by mere accident. Still it is sometimes necessary to ascertain what

1 In Crane v. Price, Webster's Pat. Cas. 411, Sir N. C. Tindall, C. J., said: "But in point of law, the labor of thought or experiment, and the expenditure of money, are not the essential grounds of consideration on which the question, whether the invention is or is not the subject-matter of a patent ought to depend. For if the invention be new and useful to the public, it is not material whether it be the result of long experiment and profound search, or whether by some sudden and lucky thought, or mere accidental discovery." So also in Earle v. Sawyer, 4 Mas. 6, Mr. Justice Story said: "The thing to be patented is not a mere elementary principle, or intellectual discovery, but a principle put in practice and applied to some art, machine, manufacture, or composition of matter. It must be new, and not known or used before the application; that is, the party must have found out, created, or constructed some art, machine, &c., or improvement on some art, machine, &c., which had not been previously found out, created, or constructed by any other person. It is of no consequence whether the thing be simple or complicated; whether it be by accident, or by long, laborious thought, or by an instantaneous flash of the mind that it is first done. The law looks to the fact, and not to the process by which it is accomplished. It gives the first inventor or; discoverer of the thing the exclusive right, and asks nothing as to the mode or extent of the application of his genius to conceive or execute it. It must also be useful, that is, it must not be noxious or mischievous, but capable of being applied to good purposes; and perhaps it may also be a just interpretation of the law, that it meant to exclude things absolutely frivolous and foolish. But the degree of positive utility, is less important, in the eye of the law, than some other things, though in regard to the inventor, as a measure of the value of the invention, it is of the highest importance.

The first question then to be asked, in cases of this nature, is, whether the thing has been done before. In case of a machine, whether it has been substantially constructed before; in case of an improvement of a machine, whether that improvement has ever been applied to such a machine before, or whether it is substantially a new combination. If it is new, if it is useful, if it has not been known or used before, it constitutes an invention, within the very terms of the act, and, in my judgment, within the very sense and intendment of the legislature. I am utterly at a loss to give any other interpretation of the act; and, indeed, in the very attempt to make that more clear which is expressed in unambiguous terms in the law itself, there is danger of creating an artificial obscurity."

bearing the amount of thought, design, or ingenuity that may have been expended, has upon the question of novelty. It may not be necessary that there should be positive evidence of design, thought, or ingenuity; but if it is necessary that the possibility of these qualities having been exercised should not be excluded by the character of the supposed invention, then such possibility becomes one test of the sufficiency of invention. While the law does not look to the mental process by which the invention has been reached, but to the result, it may still require that the result should be such as not to exclude the possibility of some skill or ingenuity having been exercised. It requires this, because it requires that the subject-matter of a patent should be something that has not substantially existed before. While such a thing may have been produced by mere accident, and not by design, yet it may also have been the fruit of design and study. If, however, the character of the alleged invention be such, that no design or study could by possibility have been exercised in its production, then its character is strong proof that it does not differ substantially from what had been produced before. We must look, therefore, to the character and purposes of the invention, and not to the actual process by which it was produced, in order to see that the possibility of thought, design, ingenuity, or labor having been exercised, is not excluded.1

§ 7. Thus, if an alleged invention is absolutely frivolous and foolish, though it may have the element of novelty, in one sense, it is not the subject of a patent. So, too, mere colorable variations, or slight and unimportant changes, will not support a patent; as the immersion of cloth in a steam bath, with the view of damping it, instead of immersing it in hot water; 2 and the substitution of steam as the means of heating hollow rollers over which wool was to be passed, instead of

1 See post 27 a.

2 Rex v. Fussell, cited in Webster on the Subject-Matter of Patents p. 26.