§ 13. In like manner, where the substance of an invention consisted in spinning with a much less distance between the

the mode by which the different parts of the common hammer, and the pickaxe also, are united together. Now a patent for a machine, each part of which was in use before, but in which the combination of different parts is new, and a new result is produced, is good; because there is a novelty in the combination. But here the case is perfectly different; formerly three pieces were united together; the plaintiff only unites two; and, if the union of these two had been effected in a mode unknown before, as applied in any degree to similar purposes, I should have thought it a good ground for a patent; but unfortunately, the mode was well known and long practised. I think that a man cannot be entitled to a patent for uniting two things instead of three, where that union is effected in a mode well known and long practised for a similar purpose. It seems to me, therefore, that there is no novelty in that part of the patent as affects the anchor; and, if the patent had been taken out for that alone, I should have had no hesitation in declaring that it was bad." Bayley J., said: "As to the ship's anchor, in substance the patent is for making in one entire piece, that which was formerly made in two. The two flukes of the anchor used to consist of distinct pieces of iron fastened to the shank by welding. In the present form the flukes are in one piece, and, instead of welding them to the shank, a hole is made in the centre, and the shank introduced through the hole. Could there be a patent for making in one entire piece, what before had been made in two pieces? I think not, but if it could, I think that still this would not be new. In the mushroom and the adze anchors, the shank is introduced into the anchor by a hole in the centre of a solid piece; and in reality the adze anchor is an anchor with one fluke, and the double-fluke anchor is an anchor with two flukes. After having had a one-fluked anchor, could you have a patent for a double-fluked anchor? I doubt it very much. After the analogies alluded to in argument of the hammer and pickaxe, I do not think that the mere introducing the shank of the anchor, which I may call the handle, in so similar a mode, is an invention for which a patent can be sustained. It is said in this case that the mushroom anchor and adze anchor, are not ships' anchors, but mooring anchors. I think they are ships' anchors; they are not indeed such anchors as ships carry with them for the purpose of bringing the ship up; but if the ship is required to be stationary, at a particular place, then the common mode of making it stationary, is by the mushroom anchor. So the mode adopted to bring a ship, containing a floating light, to an anchor, is by mooring her to one of these mushroom anchors. That is the description of anchor for a hold-fast to the ship. The analogy between the case of the mushroom anchor and of the adze anchor, is so close to that of the present anchor, that it does not appear to me that this discovery can be considered so far new, as to be

retaining and drawing rollers, than had been before practised, the court held that spinning at a particular distance did not

the proper ground of a patent; in reality it is nothing more than making in one piece, what before was made in two, and introducing into this kind of anchor, the shank, in the way a handle is introduced into a hammer or pickaxe." Best J., said: "Then as to the anchor, the invention claimed is, that he avoids the welding; but that certainly is not new, because that has been done before in the case of the mushroom and adze anchor, the pickaxe and the common hammer. It is said, however, that his invention consists in the application of that which was known before, to a new subject-matter: viz., that he had, for the first time, applied to the manufacturing of anchors a mode in which welding was avoided, which, however, had been long practised, in other instances to which I have before alluded; but he does not state as the ground upon which he had applied for his patent, nor state in the specification that it being known that the process of welding weakens the anchor, he had first applied to an anchor, a mode long practised in the manufacture of other instruments, viz., of making the two flukes of one piece instead of two. If he had so described his process, the question would then arise whether that would have been a good ground for a patent. I incline to think, however, that it having been long known that welding may be avoided in instruments of a similar form, the application of that practice for the first time to a ship's anchor, cannot be considered a new invention, and therefore that it is not the ground of a patent." Mr. Webster remarks upon this case: "The judges were unanimous in their opinion that the patent, in respect of the improvements in the anchor, could not be supported; that the application of a mode well known, and generally used in several of a class of cases, to one particular case of that class, did not constitute some manner of new manufacture, within the meaning of the statute. If the sufficiency be judged of, only from the invention which the results themselves, the cable and the anchor, exhibit, the substitution of a conical end to the shaft, and of a conical hole in the piece constituting the two arms, whereby the pieces were supposed to be more securely united, is as great a change as the substitution of a broad-headed for a pointed stay across the link. And yet there can be no doubt that the invention in the cable was of a much higher order than in the anchor. The improvement in the cable, was the carrying out into practice, certain important principles respecting the action of forces, by the substitution of a broad-headed for the pointed stay, in a link of a particular form. The improvement in the anchor, was the avoiding the welding, by means well known, and practised in cases extremely similar. There was originality of idea in the application of the broad-headed stay, as subsidiary to the principles for the improvement of the chain cable, as laid down in the specification, but there was no originality of idea or of method in avoiding the welding, this

constitute a new manufacture, it having been the previous practice to spin at variable distances.1

§ 14. It appears, then, according to the English authorities that the amount of invention may be estimated from the result, although not capable of being directly estimated on a view of the invention itself.2

§ 15. The utility of the change is the test to be applied for this purpose. As there cannot be a decidedly useful new re

being borrowed from cases which would obviously and immediately present themselves.

It should also be remarked, with the view of pointing out whatever may have contributed to the subtle distinctions which were drawn in this case, that evidence of the great superiority of the cable was given at the trial, but nothing appears to have been said respecting the anchor. And this has been confirmed by the result, for the cable is in constant and general use, but anchors are made as before the patent." Webster on the Subject-Matter, &c. p. 34.

1 Kay v. Marshall, Webs. Pat. Cas. 1 M. & Cr. 373.

2 Mr. Webster thus sums up the general doctrine: "But though the amount of invention, and the consequent sufficiency of a change to support a patent, cannot be directly estimated or ascertained, they may be estimated and ascertained from the result; and with this view, two things have to be considered, namely, the nature of the change, and its consequences. The change may be considerable, that is, may of itself exhibit traces of thought, skill and design; the consequences produced thereby may be important and considerable, or unimportant and inconsiderable; in the former case, both the means and the result will be new, and there will be a sufficiency of invention. These four cases, the only cases which can occur, are all included in the following general proposition and practical test, that whenever the change and its consequences taken together, and viewed as a sum, are considerable, there must be a sufficiency of invention to support a patent. Thus, when the change, however minute, leads to consequences and results of the greatest practical utility, as in the case of Dudley's, Crane's, Hall's, and Daniell's patents, the above condition is satisfied; but if the consequence, as in the case of Fussell's patent, be inconsiderable, the change also being inconsiderable, and such as would most readily suggest itself to any one, the condition is not fulfilled, and the invention is not sufficient to support a patent." Webster on the Subject-Matter, &c. p. 29, 30.

sult, without some degree of invention in producing the change which effects that result, when a real utility is seen to exist, a sufficiency of invention may be presumed. And it is said, that whenever utility is proved to exist in a very great degree a sufficiency of invention to support a patent must be presumed.1

§ 16. The question now recurs, whether the same general doctrine as to the sufficiency of an invention to support a patent be not applicable under our law. Our statute requires that the subject of a patent should be "new and useful." The word "useful" is not supposed to be used, for the purpose of establishing general utility as the test of a sufficiency of invention to support a patent. It had been held, upon the use of the same word in the same connection in the old Patent Act of 1793, that it was used merely in contradistinction to what is frivolous or mischievous to society. This term was held to be satisfied, if the alleged invention was capable of use, and was not injurious to the well-being, good policy, or sound morals of society.2

§ 17. But the subject of a patent must not only be "useful," in this sense, that is, capable of use and not mischievous, but it must also be a "new" art, machine, manufacture, or composition of matter, or "a new improvement" upon one of these things, "discovered or invented" by the patentee, and "not known or used by others" before. It is obvious, therefore, that the subject-matter of a patent must be something substantially different from any thing that has been known or used before; and this substantial difference, in all cases where

1 Webster on the Subject-Matter, &c., p. 30; Webster's Pat. Cas. p. 71, note (e.)

2 Lowell v. Lewis, 1 Mass. 186; Bedford v. Hunt, Ibid. 303; Kneass v. Schuylkill Bank, 4 Wash. 9, 12. To maintain a patent, it is not necessary that the thing should be the best of its kind; but if the use for which it is constructed is practicable, that is sufficient to sustain it as a useful invention. Many v. Jagger, 1 Blatchford's Circ. Ct. R. 372.

analogous or similar things have been previously known or used, must be the measure of a sufficiency of invention to support the particular patent.1

§ 18. Our courts have, in truth, without using the same terms, applied the same tests of the sufficiency of invention, which the English authorities exhibit, in determining whether alleged inventions of various kinds possess the necessary element of novelty. That is to say, in determining this question the character of the result, and not the apparent amount of skill, ingenuity or thought exercised, has been examined; and if the result has been substantially different from what had been effected before, the invention has been pronounced entitled to a patent; otherwise, the patent has failed.2

§ 19. Thus, where the patent was for an improvement in copperplate printing of bank-notes, by printing copperplate on both sides of the note, or copperplate on one side, and letterpress on the other, or letter-press on both sides, as an additional security against counterfeiting; and the defendants had used steel-plate printing; the question was, whether "copperplate printing" included "steel-plate printing." The plaintiff's counsel contended, that even if copperplate did not include steel-plate printing, still the use of the latter by the defendants, applied to bank-notes, to produce the effect stated in the patent, was a mere invasion and virtually an infringement. Washington, J., instructed the jury, that if the use of

1 Mr. Phillips has pointed out the provision in the act of 1793, "that simply changing the form or the proportions of any machine or composition of matter in any degree, shall not be deemed a discovery;" and he remarks that this construction would undoubtedly have been put upon the law without any such express exception. He gives the same place in our law to the doctrine of sufficiency of invention, that it occupies in the English law. See Phillips on Patents, 125, 126, 127.

2 The application of these tests is most frequently found in cases, not where insufficiency of invention has been expressly the ground of defence, but where the question has been whether the patent did not claim something that

was not new.