spe

small arms," the improvement was stated in the cification to consist in letting out the air from the barrel, and causing a communication between the powder in the pan and the powder in the barrel, without, at the same time letting out the powder, by means of an air-hole in the lock. It appeared by experiments made in court, that the powder would pass through the hole in the patented lock by its own gravity, without the least difficulty. The Lord Chief Baron. "It seems to me, that the utility of this invention, and the purpose of this patent, wholly fail; for the purpose of the hole, as described in the specification, is to let the air pass through, and at the same time secure the powder from passing through; that of itself would be an answer to this action.''57

The law is the same in this respect, in France, as in England and the United States. M. Renouards says that a mere experiment, without a successful result, is not sufficient ground of a patent; to entitle a party to which, he must succeed in producing a result or effect.

Sec. IX.-MATERIALS, SUBSTANCES, COMPOSITIONS OF MATTER.

The use of the ordinary known materials cannot

57 Manton v. Parker, Dav, Patent Cas. 327.

58

p. 282

be monopolized by patent.59 We must understand this doctrine to be limited to known materials, and to such as naturally exist, whether known or not, for the discovery of a new elementary substance or material, by analysis or otherwise, does not give a right of a monopoly of it.

60

Our statute provides for granting a patent right of a new composition of matter. This expression has reference to medicines, and compositions used in the arts. The same subjects are covered under the English statutes under the general term manufactures. In these instances the composition itself is usually considered to be the subject of the patent, and not the mode or process of compounding, but both the composition and the mode of compounding may be considered to be included in the invention, where the compound is new, since in that case the mode or process of compounding must also be so, though it may consist merely in observing the proportions assumed by the inventor, which being given, the composition may be made in many instances by any person without previous instruction or practice. And in this case it will be immaterial whether the inventor has the monopoly of the compounding or the composition, since the monopoly of either, will, in effect, include both. The expressions, composition

"Per. Buller J. Boulton v. Bull, 2 H. Bl. 487.

60 2 H. Bl. 483. 487.

of matter, usually applied to mixtures and chemical compositions. It is no objection to a patent for at composition, that all the ingredients were known and in use; it is enough that the compound is new. And this composition may be merely the imitation of some natural composition or mixture; for a new method, by invented processes and apparatus, of producing a composition of matter, which is sometimes, or in some places, to be met with as a natural production, is as much the subject of a patent, as a new machine to produce a known and old effect.

Sec. X.-COMBINATION.

A combination, as the subject of a patent, is analogous to a composition of matter, the former expression being usually applied to mechanical inventions as the latter is to chemical. It is sufficient also, in this case, that the combination is new, though the separate things combined may have been before in use and well known. Where a patent is for a new combination of existing machinery or machines, and does not claim or specify any improvement or invention, except the combination, proof that the machines or any part of their structure existed before, forms no objection to the patent, unless the combination has

"Bovill v. Moore, Dav. Pat. Cas. 361.

existed before, for the reason that the inventor is limited to the combination.62

Sec. XI.-IMPROVEMENT.

The act of Congress of 1793 expressly recognises the right to a patent for an improvement on a machine, by the provision in the second section, "that any person who shall have discovered an improvement in the principle of any machine, or in the process of any composition of matter, which shall have been patented, and shall obtain a patent for such improvement, shall not be at liberty to make, use, or vend the original discovery; nor shall the first inventor be at liberty to use the improvement." The French law has a similar provision, and both merely adopt the construction which had before been put upon the statute of monopolies by the English courts. Lord Coke mentions an early case against this construction. He says, "If the substance was in esse before, and a new addition thereunto, though that addition make the former more profitable, yet it is not a new manufacture in law; and so was it resolved in the Exchequer Chamber, Pasch. 15 Eliz. in Bircot's case, for a privilege concerning the preparing

62 Per Story J., Moody v. Fiske, 2 Mason, 112; and see also opinion of Abbott C. J., Brunton v. Hawkes, 4 B. & Ald. 541, and of Lord Eldon, Hill v. Thompson, 3 Meriv. 630.

and melting, &c. of lead ore; for there it was said, that that was to put but a new button to an old coat; and it is much easier to add than to invent. And there it was also resolved, that if the new manufacture be substantially invented according to law, yet no old manufacture in use before can be prohibited.' But the doctrine of Bircot's case was early abandoned. Mr. Justice Buller says that, "In Morris v. Branson, tried at the sittings after Easter term, 1776, the patent was for making eyelet-holes or net-work in silk, thread, cotton or worsted; and the defendant objected that it was not a new invention, it being only an addition to the stocking-frame. Lord Mansfield said, "after one of the former trials on this patent, I received a very sensible letter from one of the gentlemen who was upon the jury, on the subject whether on principles of public policy there could be a patent for an addition only. I paid great attention to it, and mentioned it to all the judges. If the general point in law, viz. that there can be no patent for an addition, be with the defendant, that is open upon the record, and he may move in arrest of judgment. But that objection would go to repeal almost every patent that was ever granted." There was a verdict for the plaintiff, with 5007, damages, and no motion was made in arrest of judgment. Though his Lordship did not mention what were the opinions of

63 3 Inst. 184.