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as so used, the former was not the mechanical equivalent of the latter.
§ 16. Combination and aggregation. It is commonly said that a combination is patentable, and an aggregation of parts is not, but, as in other cases involving the question of invention, or lack of invention, no precise rule can be laid down for distinguishing these two things under all sets of facts. It has been said, however, that in a patentable combination, the elements must contribute to a new mode of operation, or produce a new and common result; and that a "combination, to be patentable, must produce a different force or effect, or result in the combined forces or processes, from that given by their separate parts. There must be a new result produced by their union; if not so, it is only an aggregation of separate elements” (27).
In the case from which this quotation is taken, a leading case in the Supreme Court, it was held that a leadpencil, provided at one end with a rubber eraser, did not constitute a patentable combination. Continuing, the court said: “An instance and an illustration are found in the discovery that, by the use of sulphur mixed with india-rubber, the rubber could be vulcanized, and that without this agent, the rubber could not be vulcanized. The combination of the two produced a result or an article entirely different from that before in use. Another illustration may be found in the frame in a saw-mill which advances the log regularly to meet the saw, and the saw which saws the log; the two co-operate and are simulta
(27) Reckendorfer v. Faber, 92 U. S. 347, 357.
neous in their joint action of sawing through the whole log; or in the sewing machine, where one part advances the cloth, and another part forms the stitches, the action being simultaneous in carrying on a continuous sewing. A stem-winding watch key is another instance. The office of the stem is to hold the watch, or hang the chain to the watch; the office of the key is to wind it. When the stem is made the key, the joint duty of holding the chain and winding the watch is performed by the same instrument. A double effect is produced, or a double duty performed by the combined result. In these and numerous like cases the parts co-operate in producing the final effect, sometimes simultaneously, sometimes successively. The result comes from the combined effect of the several parts, not simply from the separate action of each, and is therefore patentable."
Two other cases may serve to illustrate how close to the dividing line between patentable combination and aggregation two cases may approach, and still be distinguishable. In Hailes v. Van Wormer (28), the patentee had brought together, in a base-burning stove, which was well-known at the time, several elements, each of them individually, admittedly old, but all of them combined for the first time in a stove of that sort, and all of them contributing, as it was claimed, to the common result of producing a stove which was an improvement over all stoves of that kind theretofore used. These elements werea certain kind of fire-pot; a certain kind of fuel reservoir above it; a revertible flue outside of the fire-pot; a di
(28) 20 Wall. 353.
rect draft of a particular sort; and mica-covered openings in the casing of the stove. The object which the patentee sought to accomplish by combining these elements, and his reason for selecting each one, were fully explained in his specification as set out in the opinion. Nevertheless, the court, in denying validity to his patent, said: “It must be conceded that a new combination, if it produces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the combination was made. But the results must be a product of the combination, and not a mere aggregate of several results each the complete product of one of the combined elements. Combined results are not necessarily a novel result, nor are they an old result obtained in a new and improved manner. Merely bringing old devices into juxtaposition, and there allowing each to work out its own effect without the production of something novel, is not invention. No one by bringing together several old devices without producing a new and useful result, the joint product of the elements of the combination and something more than an aggregate of old results, can acquire a right to prevent others from using the same devices, either singly or in other combinations, or, even if a new and useful result is obtained, can prevent others from using some of the devices, omitting others, in combination.”
In Williams v. The Rome, etc. R. R. Co. (29), the court passed upon the validity of a patent wherein the patentee had produced, as it appeared, the first successful kero
(29) 15 Blatch. 200.
sene-burning locomotive headlight, his invention consisting in the bringing together of several old elements, namely: a circular wick tube, perforated air screens to regulate the passage of air to the interior and exterior of the flame, a cap deflector above the wick, a certain kind of oil reservoir, a flame-spreading device above the cap deflector, a certain kind of wick-holding device, and a certain kind of chimney-supporting device. In holding the patent valid, the court, after commenting on Reckendorfer v. Faber and Hailes v. Van Wormer, and the doctrines there announced, said: “These doctrines are not applicable to the present case. The flame of the lamp and its illuminating character, as to brilliancy, steadiness, size, and position, is the result to which all the devices used contribute. They all co-operate to effect and modify such illuminating character of the flame of the lamp. A locomotive head-light must be large, brilliant, steady, easy of adjustment as to the position of its wick, concentrated as nearly as possible in the focus of the reflector, and supplied freely with oil without interfering with the projection of the light forward, and without pumping mechanism." The opinion then points how each of the devices embodied in the lamp contributes toward the illuminating character of the flame-and on this ground the cases are distinguishable (30).
The rule derived from these three cases may be stated with substantial accuracy in the words of Justice Curtis, in a circuit court case (31), wherein it was also held that
(30) A full discussion of these three cases is found in Merwin, Patentab. Inven. and Renwick, Patentabl. Inven.
(31) Forbush v. Cook, 2 Fisher, 669.
all the elements of a valid combination need not act simultaneously, but may act successively. He said: “To make a valid claim for a combination, it is not necessary that the several elementary parts of the combination should act simultaneously. If those elementary parts are so arranged that the successive action of each contributes to produce some one practical result, which result, when attained, is the product of the simultaneous or successive action of all the elementary parts, viewed as one entire whole, a valid claim for thus combining those elementary parts may be made." Later cases are in accord with this doctrine.
§ 17. What is invention. If there has been an exercise of the inventive faculty, it is immaterial how small may have been the actual effort involved-how easily, or how quickly the idea may have come to the inventor, or whether the invention was the result of deliberation, conscious or unconscious, or of intuition, or of any other exercise of the reasoning faculty. The courts have properly refrained from trying to analyze the inventor's mental processes in any particular case, and have determined that the presence or absence of invention is shown by the result, when viewed in the light of such rules of decision as they have been able to apply. Thus, there is invention in constructing a footboard for a row boat, with the point turned up at an angle with the body of the board, in order to better accommodate the rower's foot, the same effect having previously been accomplished by stuffing rags under the rower's toe (32); or in combining a sheet of
(32) Davis v. Parkman, 45 Fed. 693.