used to produce a different effect, and for a different purpose, there may be a patent for the application of the materials to produce the new effect or result. Thus, where the defendant had obtained a patent for an improvement in packing hy

I remember having tried an action in the Circuit in the District of Connecticut some years since, brought upon a patent for an improvement in manufacturing buttons. The foundation of the button was wood, and the improvement consisted in covering the face with tin, and which was bent over the rim so as to be firmly secured to the wood. Holes were perforated in the centre, by which the button could be fastened to the garment. It was a cheap and useful article for common wear, and in a good deal of demand.

On the trial, the defendant produced a button, which had been taken off a coat on which it had been worn before the Revolution, made precisely in the same way, except the foundation was bone. The case was given up on the part of the plaintiff. Now the new article was better and cheaper than the old one; but I did not then suppose, nor do I now, that this could make any difference, unless it was the result of some new contrivance or arrangement in the manufacture. Certainly it could not, for the reason that the materials with which it was made were of a superior quality, or better adapted to the uses to which the article is applied.

It seemed to be supposed, on the argument, that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon the article, beyond that produced when applied to the metallic knob, inasmuch as the fused metal by which the shank was fastened to the knob prevented the shank from acting immediately upon the knob, it being inclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack or be broken, but was made firm and strong, and more durable.

This is doubtless true. But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of the wood knob, or one of bone or ivory, or of other materials that might be mentioned.

Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury; for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor.

draulic, and other machines, by means of a lining of soft metal, and thereby rendering certain parts of such machines air and fluid tight; and the plaintiff afterwards discovered that soft metal had the property of diminishing friction, and of preventing the evolution of heat, when applied to surfaces in contact when in rapid motion and subject to pressure, and took a patent for the application of this discovery to machines; it was held, that the application of the soft metal by the plaintiff, differing essentially from that of the defendant, and the plaintiff having confined his claims to the new effect produced, by embodying his discovery in a machine, namely, the diminution of friction and heat, and not claiming the former effect of packing, his patent was good.1

1 Newton v. Vaucher, 11 Law and Eq. R. 589, 592 (6 Exch. Rep. 859.) In this case, Mr. Baron Parke said: "The only question is, whether the plaintiff's invention is contained in the defendant's and is old, and that question must depend upon a comparison between the specifications of the plaintiff's patent of 1843, and of the defendant's of 1839. The specifications are to be read in connection with their titles. I will take the defendant's specification first, and see what his invention is. It is a patent for several machines; and his invention, as described in the specification (inter alia,) is as follows: 'My invention relates to a mode of packing parts of hydraulic engines or machines, or rendering the same fluid tight, which part of my invention applies to steam engines, and in those parts where moving surfaces require to be packed or rendered steam tight.' The defendant then proceeds to describe the mode of applying his invention; and it is to be observed, that in that part where he is speaking of the axis of the pump to be received into a suitable recess or bearing,' he does not apply his invention to the bearing; for the axis is not to rest upon soft, but upon hard metal. He then proceeds to remark that there is a material for packing that part where the axis works, the end of the axis or piston working in a groove, the object being to pack with metal in such a manner as to make all the parts water or fluid tight.. He then proceeds to describe the metallic composition he uses for that purpose, to which we need not advert, as it is not material. Now, I think it is obvious that this invention consists in the application of soft metal, instead of elastic substances, which had been in use before, for the purpose of enabling the axis of the machine to work in a case, and to be water, air, or steam tight. Nothing is said upon the subject of friction, or upon the subject of bearings. After the date of the defendant's patent, it was discovered by the person from whom the plaintiff purchased his patent, that

Salmany

§ 28. The doctrine in relation to utility being, in this country, that the subject-matter of a patent must not be

soft metal could be used beneficially, not merely for the purpose of excluding air or water, but that it produced this remarkable effect, that, where there was pressure upon it, friction was in a great degree diminished. That probably arises, as my Brother Alderson has suggested, from the circumstance that the particles of the soft metal (which may be said to approach more nearly in their nature to those of a fluid,) have comparatively a more easy motion among themselves than those of a hard metal. If water could be confined in the same way as soft metal is, and the axis could be made to revolve in the water so confined, the invention might possibly answer as well. It was, however, discovered, that, by the adoption of soft metal, no heat or friction, comparatively speaking, would take place. Then the question is, whether the plaintiff's patent is for the application of that principle. Now, upon looking at his specification, which embodies a new principle in a new machine, it differs materially from the defendant's, which is for the purpose merely of packing; for in the plaintiff's invention it is essential that there should be not only the intervention of soft metal, but that there should also be a hard rim covered in part with that soft metal, or some other means to prevent the soft metal from expanding and getting out of its place. But any other hard rim covered with soft metal, or substances covered with soft metal, are part of that machine. That is no part of the defendant's invention. Therefore, I think, the discovery of the person under whom the plaintiff claims, is not merely a discovery of a new principle, but of a new principle embodied in a new machine. Then, that being so, if the plaintiff claims a patent for that new principle embodied in a new machine, and that only for the purpose of diminishing friction, and the application of it is only to cases where there is pressure as well as motion, that patent is perfectly good; but if he has also claimed in it the application of soft metal to all cases of stuffing, to include fluids of every description, his patent in that respect is for an old invention, and is void. The question is now reduced to that single point. I entertained some doubt during the argument upon the question, whether the plaintiff's patent is simply for the application of soft metal for the purpose of preventing friction where there is pressure and motion, or whether it is not also for the application of soft metal in cases of stuffing rods for the purpose of excluding air, water, or other fluid. If the determination of the question depended solely upon the specification, and the title of the patent were not read, I should have been inclined to think that the plaintiff claimed both; but if the specification and the title be read together, (and the specification is always taken to be an exemplification of the thing for which the patent is obtained,) it is clear that the plaintiff's claim is confined to bearings in cases where there is pressure with motion. [His

injurious or mischievous to society, or frivolous or insignificant, it follows, that every invention for which a patent is claimed must be, to a certain extent, beneficial to the community; it must be capable of use for some beneficial purpose; but, when this is the case, the degree of utility, whether larger or smaller, is not a subject for consideration in determining whether the invention will support a patent.1 But it is obvious that the capability of use, for some beneficial purpose, is a material element in determining whether there is a sufficiency of invention to support a patent; the force of the word "useful," introduced into the statute in connection with the epithet "new," being to determine whether the subject-matter, upon the whole, is capable of use, for a purpose from which any advantage can be derived to the public. General rules will not decide this question in particular cases; but the circumstances of each case must be carefully examined, under the light of the principles on which general rules are founded.

lordship read the title of the plaintiff's specification.] That appears to me to apply only to cases of bearings. I think the concluding part, " and also improvements in oiling or lubricating the same," is wholly immaterial. In the next place, we must see in what way he describes the machine for which the patent is granted. [His lordship read the greater part of the plaintiff's specification, and proceeded.] Now, had it not been for the title of this patent, by which the plaintiff appears to me to confine his invention to bearings, there would be strong reason to contend that he applied it also to cases in which rods or bars were to slide. But reading it in conjunction with the title, I think the plaintiff's patent does not extend so far, and consequently that it is not void upon that ground. The steam engine is the example of the case in which there is friction and pressure; but in the case of guide rods to locomotive steam engines, there is a bearing, and the instance he gives is that of a bearing. As it is my opinion that the plaintiff's patent is confined to these cases, no part of it includes an old invention, and, consequently the patent is good."

1 Lowell v. Lewis, 1 Mass. 182; Bedford v. Hunt, Ib. 302: Kneass v. The Schuylkill Bank, 4 Wash. 9, 12; 2 Kent's Com. 369; Phillips on Patents, 136-144. Evidence that the invention of the defendant is better than that of the plaintiff is improper, except to show a substantive difference between the two inventions. Alden v. Dewey, 1 Story's R. 336.

§ 29. In considering the question of the novelty of an invention, Buller, J., laid down the rule, that when the novelty is disputed, the patentee is bound to offer some evidence of novelty. That is, he must show in what his invention consists, and that he produced the effect proposed by his patent, in the manner specified. Slight evidence of this, on his part, is sufficient, and it is then incumbent on the party alleging the want of novelty to show the defect.1

§ 30. Under our law, it would seem that the patent itself is prima facie evidence of the novelty of the invention. The act of 1836, § 6, requires the applicant to make oath that he verily believes himself to be the original and first inventor or discoverer of the thing, and that he does not know or believe that it was ever before known or used. Mr. Justice Story has held, that this oath, on a trial, is evidence in the cause of a prima facie character, and that it is the foundation of the onus probandi thrown upon the defendant.2 The patent recites the oath, and thus the jury have cognizance of it; and, as the oath asserts that the patentee was the original and first inventor, it must be evidence of the novelty of the invention, if it is evidence of the fact that the patentee was the inventor.3

§ 31. In connection with the subject of novelty, it is further to be remembered, that our statute also requires that the subject-matter of a patent should not have been "known or used by others before the discovery or invention thereof" by the patentee.1

1 Turner v. Winter, 1 T. R. 602, 607.

2 Alden v. Dewey, 1 Story's R. 336.

3 Ibid. See also Stearns v. Barrett, 1 Mass. R. 175; Pennock v. Dialogue, 4 Wash, R. 538; Dixon v. Moyer, Ibid. 68; Phillips on Patents,

407.

4 Act of 1836, § 6. Upon the former law, the words of which were "not known or used before the application," the Supreme Court of the United States put the construction which has been adopted by Congress in the sub