Bean v. Smallwood. 2 Story. SAMUEL BEAN V. THOMAS SMALLWOOD. [2 Story, 408. October T. 1843.] A machine is only patentable, when it is substantially new; but the application of an old machine to a new purpose is not patentable. In the present case the invention was held not to be patentable, because it was merely the application of an old apparatus to a new purpose. CASE for infringement of a patent, dated 30th of March, 1840, for "a new and useful improvement in the rockingchair." The specification annexed to the patent stated as follows: "The principal feature of this invention and improvement consists in making the seat and stool of the chair in two parts, so that whilst the stool remains stationary, the seat is made to rock on the top of it; thus doing away with the long and cumbersome rockers on the common chair, which occupy a great deal of room, and are very destructive to carpets, and which also renders the back of this improved chair susceptible of being fixed in a reclining position at any angle to suit the wishes of the sitter, and at the same time rendered perfectly secure from being thrown off the stool. * Plea, the general issue, with a notification of [* 409 ] special matters of defence, (1). That the invention was not new, but is described in certain books, naming them, and invented and used before by certain persons, naming them. B. R. Curtis, for the defendant, at the trial, cited London Journal of Arts and Sciences, (of the conjoint series,) vol. 7, 1836, p. 161, describing an easy-chair, patented in 1833. The chair is in two parts, on curved surfaces; he also cited Phillips on Patents, 102, 106. Bean v. Smallwood. 2 Story. He also read the specification of Simmons's patent for "an improvement in rockers for chairs, cradles, or other things intended to be rocked," granted in 1819. Sewall, for the plaintiff, admitted, that the two first parts in the claim in the plaintiff's specification of his invention were similar to those in Simmons's patent; but he insisted, that the third part in his claim in the specification was the plaintiff's invention, and under the Patent Act of 3d March, 1837, ch. 812, sec. 9, he was entitled to maintain his present suit for an improvement thereof, as the patent was by the act good pro tanto. He added, that the third claim was new, and if not, it was an application to a new purpose. Curtis, e contrà, contended, that the section applied only to cases where the patent was broader than the invention, by mistake, accident, or inadvertence. He further insisted, that the plaintiff's patent was substantially, in all respects, like Simmons's patented invention, with unimportant differences of form. And he called a witness who established the facts; and his testimony was admitted by the plaintiff to be unimpeachable. STORY, J. It seems to me, that, upon the evi[* 410] dence * admitted by the parties, the plaintiff has no case. His patent is not (as the plaintiff admits) for a new combination of old materials, or for a new rockingchair, framed in a manner unknown before. If it were, it seems admitted by the plaintiff, that, upon the evidence, it would not be maintainable. It would seem open to one of two objections; (1). That the defendant does not use precisely the same combination, but a modification thereof; that is to say, although he uses the two first specifications of the claim in the patent, he does not use the third; but an Bean v. Smallwood. 2 Story. apparatus to accomplish the same purpose, of a somewhat different structure. Or, if the last apparatus be substantially like the plaintiff's, then that the same apparatus is not new, nor the combination in any part new. But he contends, and it seems to me, that it may perhaps be deemed a fair interpretation of the words, in which the claim is summed up in the specification, that it is a claim for three distinct and several things, and that if either is new, pro tanto, he is entitled to maintain his suit under the 9th section of the Patent Act of 1837, ch. 45. Now, the summing up of his claim is as follows: "What I claim as my invention, and desire to secure by letters-patent, consists, (1). In making the seat and stool of the chair in two parts, so that the seat shall rock on the top of the stool, instead of having the parts permanently united with rockers on the legs of the stool as heretofore. (2). And also the mode of connecting together the seat and stool by the vertical plates attached to the seat, passing through the stool, with shoulders projecting from the sides thereof, which catch against the under side of the stool when the seat is rocked to or fro. (3). And likewise the manner of reclining the back of the seat at any angle required, by the lock, plates, and notches in the hanging plates, which receive them as before described." The two first specifications of claim are admitted to be the same as in Simmons's patent, and therefore are not new or patentable. The third and last speci- [* 411 ] fication of claim, upon the testimony of Mr. Eddy, which is admitted to be true, is equally unsupportable. He says, that the same apparatus, stated in this last claim, has been long in use, and applied, if not to chairs, at least in other machines, to purposes of a similar nature. If this be so, then the invention is not new, but at most is an old invention, or apparatus, or machinery, applied to a new purpose. Now, I take it to be clear, that a machine, or apparatus, or other Winans v. Boston & Providence Railroad Co. 2 Story. mechanical contrivance, in order to give the party a claim to a patent therefor, must in itself be substantially new. If it is old, and well known, and applied only to a new purpose, that does not make it patentable. A coffee mill applied for the first time to grind oats, or corn, or mustard, would not give a title to a patent for the machine. A cotton gin applied without alteration to clean hemp, would not give a title to a patent for the gin as new. A loom to weave cotton yarn would not, if unaltered, become a patentable machine as a new invention by first applying it to weave woollen yarn. steam-engine, if ordinarily applied to turn a grist mill, would not entitle a party to a patent to it, if it were first applied by him to turn the main wheel of a cotton factory. In short, the machine must be new, not merely the purpose to which it is applied. A purpose is not patentable; but the machinery only, if new, by which it is to be accomplished. In other words, the thing itself which is patented must be new, and not the mere application of it to a new purpose or object. A Under the circumstances, upon the admissions of the parties, it does not strike me that the action is maintainable. The plaintiff submitted to a nonsuit. Ross WINANS v. BOSTON AND PROVIDENCE RAILROAD COMPANY. [2 Story, 412. October T. 1843.] Where the plaintiff, in the specification of his patent, claimed as his invention "an improvement in the construction of the axles or bearings of railway, or other wheeled carriages," and it appeared, that the improvement, though it Winans v. Boston & Providence Railroad Co. 2 Story. had never before been applied to railway carriages, was well known as applied to other carriages; It was held, that the patent was not good. CASE for infringement of a patent dated the 30th of July, 1831, for "a new and useful improvement of railway and other wheeled carriages." Plea, the general issue with special matters of defence, (1). That the invention was not new. (2). That the invention was in public use before the patent, with the consent of the patentee. The specification annexed to the patent was in substance as follows: "To all whom it may concern, be it known, that I, Ross Winans, have invented an improvement in the construction of the axles, or bearings, of railway, or other wheeled carriages, and that the following is a full and exact description thereof: "The axle, with my improved journals, or bearings, may be made straight, and the wheels placed thereon in the usual way; but instead of forming the bearing under the body of the carriage, and within the naves, or hubs, of the wheels, there to sustain the weight of the load, I extend the axles out at each end, projecting beyond the naves to such a length as shall enable me to form them into gudgeons. The lengths and diameters of these gudgeons, I regulate according to the load they are intended to sustain, and to other circumstances. In all cases, however, the value of my invention depends upon the gudgeons having their diameters as small as a due attention to the strength required will allow. The caus * ing the axles to run in boxes, or upon bearings, [* 413 ] without the naves, admits of their being made much smaller than usual, the degree of diminution which I have found to answer well in practice, will hereafter be stated. They should be formed of good wrought iron, and case-hardened; or overlaid, or cased with the best steel, and hardened, which materially diminishes the extent of bearing surface necessary to enable them to receive and resist the pres |