Heath defines in what sense a method is an invention within the statute, where he describes it to be a principle reduced to practice." So Mr. Justice Buller, in the same case, says that a method must be reduced to practice, in order to support a patent. He says, "the mere application or mode of using a thing was admitted not to be a sufficient ground for a patent; for on the court putting the question, whether, if a man by science were to devise the means of making a double use of a thing known before, he could have a patent for that? it was rightly and candidly admitted that he could not. The method and the mode of doing a thing are the same; and I think it impossible to support a patent for a method only, without having carried it into effect and produced some new substance."'15 And Mr. Justice Grose makes the same distinction.16 And so Mr. Justice Rooke, in one of the same series of cases," speaking of Watt's specification, said, as to those parts of the specification which denoted intention only, and did not state the thing to which it was to be applied, he did not think the patentee could maintain an action for a breach of them. That is, whether the question relates to an invention, a discovery, a manufacture, method, process, or principle, it must 14 Boulton v. Bull, 2 H. Bl. 481. be a thing actually and practically carried into effect. Mr. Justice Eyre very clearly explains the same distinction. In Watt's case a patent was granted for a new invented method of lessening the consumption of steam and fuel in steam-engines. Eyre J. C. "Shall it now be said, after we have been in the habit of seeing patents granted, in the immense number in which they have been granted for methods of using old machinery, to produce substances that were old, but in a more beneficial manner, and also for producing negative qualities by which benefits result to the public, by a narrow construction of the word manufacture in the statute, that there can be no patent for methods producing this new and salutary effect, connected, and intimately connected, as it is, with the trade and manufactures of the country? This I confess, I am not prepared to say.' 9918 The same judge thus further illustrates this subject: He says, "when the effect produced is no substance or composition of things, the patent can only be for the mechanism, if new mechanism is used, or for the process, if it be a new method of operating, with or without old mechanism, by which the effect is produced. To illustrate this. The effect produced by Mr. David Hartley's invention of a 'method for securing buildings from fire,' is no substance or composition of things; it is a mere negative quality, the 18 Boulton v. Bull, 2. H. Bl. 495. absence of fire. This effect is produced by a new method of disposing iron plates in buildings. In the nature of things, the patent could not be for the effect produced. I think it could not be for the making the plates of iron, which, when disposed in a particular manner, produced the effect; for those are things in common use. But the invention consisted in the method of disposing those plates of iron, so as to produce their effect, and that effect being a useful and meritorious one, the patent seems to have been very properly granted to him for his method of securing buildings from fire. In Mr. Hartley's method, plates of iron are the means which he employs; but he did not invent those means, the invention wholly consisted in the new manner of using, or I would rather say, of disposing a thing in common use, and which thing every man might make at his pleasure. In the nature of things it must be, that in the carrying into execution any new invention, use must be made of certain means proper for the operation. Manual labor, to a certain degree, must always be employed; the tools of artists frequently; often things manufactured, but not newly invented, such as Hartley's iron plates; all the common utensils used in conducting any process, and so up to the most complicated machinery that the art of man ever devised. Now let the merit of the invention be what it may, it is evident that the patent, in almost all these cases, cannot be granted for the means by which it acts, for in them there is nothing new, and in some of them, nothing capable of appropriation. Even where the most complicated machinery is used, if the machinery itself is not newly invented, but only conducted by the skill of the inventor, so as to produce a new effect, the patent cannot be for the machinery. In the list of patents with which I have been furnished, there are several for new methods of manufacturing articles in common use, where the sole merit and the whole effect produced, are the saving of time and expense, and thereby lowering the price of the article, and introducing it into more general use. Now I think these methods may be said to be new manufactures, in one of the common acceptations of the word, as we speak of the manufactory of glass, or any other thing of that kind. The patent cannot be for the effect produced, for it is either no substance at all, or, what is exactly the same thing as to the question upon a patent, no new substance, but an old one produced advantageously for the public. It cannot be for the mechanism, for there is no new mechanism employed. It must then be for the method; and I would say, in the very significant words of Lord Mansfield, 19 "it must be for method detached from all physical existence. whatever. ''20 The same judge proceeds to point out a distinc tion, which is of great importance, and which serves as a clew to clear up some of the obscurity that hangs over the cases on this subject. He says, "When the object produced is some new substance or composition of things, it should seem that the privilege of the sole working, or making, ought to be for such new substance or composition, without regard to the mechanism or process by which it has been produced, which, though perhaps also new, will be only useful as producing the new substance. Upon this ground Dolland's patent was, perhaps, exceptionable, for that was for a method of producing a new object-glass, instead of being for the object-glass produced. If Dr. James's patent had been for his method of preparing his powders, instead of the powders themselves, that patent would have been exceptionable upon the same ground." There certainly is a plain distinction between an invention of a new composition, as a medicine, and a new process, art, or method, since in the former case, there may be nothing new in the process or mode of proceeding in compounding or manufacturing the substance, in the latter the mode of proceeding to construct the machine or instrument to which the patent relates, may be the only thing invented. Hence, in discussing this subject, judges and writers sometimes 312 H. Bl. 492. |