The case of Putnam v. Yerrington, 2 Bann. & A., 237; 90 G. 689; 1876 C. D. 339; Fed. Cas. 11, 486 (Cir. Ct.. Dist. N. J.: 1876), is sometimes cited as finding patentability in the substitution of wire for tin in bottle stopper fastening. In place of a simple metal band of the prior art, the patentee used a wire bent so that a V-shaped part was pressed against the top of the cork. This V-form was evidently new and this, rather than the substitution of material, was supposed to have made the fastener more secure when subjected to stress from within.

The first assistant commissioner of Patents considered claims on a rubber covered roll, in a situation where wood had previously been used. Ex parte Burnham, 172 O. G. 260; 1911 C. D. 189. In doing so he stated that "as a rule, however, invention results in such cases when the material substituted results in a new function not obtainable by use of the material previously employed." Altho thus giving a rule somewhat favorable to a low standard of invention, the assistant commissioner refused to allow claims when they were in such form as to read on the old art with mere change in material, but indicated that the claims would be allowable, if amended so as to bring out a certain structural difference.

Other cases, somewhat too numerous for detailed exposition, have given weight to changes of material, when associated with changes in the construction. One of these was for a steam-pipe union and changed the form of contacting surfaces as well as the material thereof. Paynter v. Devlin, 63 Fed. 122 (C. C., E. D. Pa.: 1894). Another involved a patent for a metal cuspidor in which there was not only substitution of material, but the construction was wholly different; altho held void in New Jersey (2 Bann. & A. 89), it was sustained in New York. U. S. Stamping Co. v. Hezekiah King, 4 Bann. & A. 469; 17 Blatchford 55 (C. C., S. D. N. Y.: 1879). In another, invention was found in the use of wire rather than sheet metal for bottle fasteners, but this was distinguished from a substitution of material, such as wire of one metal rather than another. Putnam v. Weatherbee, Holmes

497; Fed. Cases 11 485; 8 O. G. 320; (Cir. Ct., 1st Cir.: 1875).

7. Converting prior failure into success.

Judicial opinions frequently dwell upon the success achieved as being a determining factor on close questions of invention. But there seems to have been little effort to define what is meant by this. Success alone has been repeatedly declared not to prove the presence of invention. Success in the sense of enlarged usefulness, or greater economy is certainly not in itself patentable. If it were, nearly every patent brought into litigation would be valid, for unless there were some advantage in a patent no one would take the trouble to fight an infringement suit over it. Is there then, any meaning in these expressions about "success out of failure," or are they simply a group of words used to cover our ignorance of the true bases underlying these decisions?

In this paper an effort will be made to take the expression as meaning the first profitable commercial use of an article, after a number of years of unsuccessful effort to use that particular article, where it is affirmatively shown that the successful commercial use was not due to a new demand. If there had been a profitable trade in the article before the substitution was made, then there is no "success out of failure," but simply greater success. It is realized that this definition (like any other) will be subject to criticism, that each of the words making it up themselves require definition, and that it may be many years old. The writers do not chance to have run across it during their reading, and they submit it simply by way of suggestion, as a statement of the test they will attempt to apply, in considering cases that appear to have gone off under this head.

A decision in the Seventh Circuit, Toledo Computing Scale Co. v. Computing Scale Co., 208 Fed. 410 (C. C. A. -7: 1913), perhaps illustrates this principle as well as The patentee had discovered that the failure of

any.

prior computing scales to record accurately was due to the weight of the indicator drum, which interfered with the weighing operations, and he therefore lessened the weight of the drum by constructing it as a thin skeleton frame of aluminum, while the periphery was formed of a thin sheet of paper pasted to the frame. The case is clearly not one developing any novelty in the properties of the material, nor is it one of non-analogous use, for the new scale is intended for precisely the same use as the old ones. The validity of the patent seems to have rested upon the discovery of a hidden defect.

The hose-supporter case, Frost v. Cohn, 112 Fed. 1009 (Cir. Ct., S. D. N. Y.: 1901), is one of the best known decisions on substitution of material. If it can be approved at all it must seemingly be under this head. The sole claim involved read as follows: "In a hose supporter, the combination of the webbing, the loop having an opening large at one end and narrower at the other, the button supporting plate, and the button composed of the central support and the surrounding rubber portion, substantially as set forth." There were in the prior art, clasps which supported the stocking, and clasps which did not tear the stocking, but there were no clasps which both supported and did not tear the stocking. The qualities of supporting and "non tearing" so far as hose clasps were concerned were apparently mutually exclusive. The record showed that for ten years, at least, attempts had been made to produce suitable clasps which would possess all the advantages with none of the disadvantages of the clasps of the prior art. Many expedients had been availed of but the same difficulties obtained, for the fabric was always clamped between two metal surfaces. Not until the use of rubber or fibrous contacting surfaces was a practical hose supporter made possible. The properties of rubber were well known and its substitution for metal was simple, but as borne out by the record, such a change was not one naturally suggesting itself to the man skilled in the art. The court said: "It is this capacity for accomplishing results, this

faculty of seeing what others fail to see and hearing what others fail to hear which has always distinguished success from failure and the inventor from the mechanic. 'In the law of patents it is the last step that wins"." We may leave the case as one of those where there is no obvious inventive thought, but where invention will be assumed because of prior failure and present success. There was certainly no new development of a property, or any non-analogous use, or any correction of a hidden defect. Indeed, the court itself does not seem to have in mind any clear basis for sustaining the patent.

Here may also be considered the case of Protector Last Re-enforcing Co. v. John Pell and Son, 204 Fed. 453, 458, (Dist. Ct. D. N. J., 1913), hypothetically discussing substitution of material. In that case the invention resided in a protector covering for wooden lasts formed of two layers of non-compressible fiber and leather, the fiber layer being exterior. The defendants urged that protectors formed of layers of metal and leather were old, stressing that no invention would be involved in substituting noncompressible fibre for metal. The proof of this prior use was conceded by the court only causa argumenti, the finding being that even under such supposed conditions the patent was nevertheless valid. "The evidence shows that multitudinous unsuccessful attempts covering a period of many years were made to solve the problem which Baker, according to the evidence, ultimately and successfully solved. Even the defendant recognized the value of his invention, and became a licensee thereof, and so continued for a considerable period of time." The patent was sustained on the ground that it was the first commercial success. The problem referred to was the production of a last which was sufficiently rigid to withstand the operation of hammering the heel onto the shoe. Whether this success was made possible by the substitution, as suggested by the defendant, cannot be definitely stated since it is not clear from the court's opinion that the court considered that there had been a substitution of material in fact.

One of the most celebrated of recent patent decisions, and one which illustrates in a striking manner the importance of "success" involved the so-called "Van Heusen" collar. The art was extremely close, and yet the owners of the patents could not be protected without interpreting their claims rather broadly. From any one of several standpoints the principal patent might have been held void. One of the grounds urged for so holding it, was that it involved merely the substitution in collars of another well known material. Indeed the art indicated that substantially the same material had previously been used. But the soft collar had achieved great popularity subsequent to the grant of the patent sued upon, and the court decided that with such remarkable success, invention must be present. Van Heusen Products v. Earl & Wilson, 300 Fed. 922 (Dist. Ct., N. Y.: 1924); affirmed on consent, 332 O. G. 726.

Cases Queried.

Three decisions in the Circuit Court of Appeals, Third Circuit, have been found, which are inconsistent with the views hereinbefore expressed. Two of the cases are comparatively recent, and in both of them the appellate court disagreed with the court below. The appellate court seems to have been greatly impressed by the commercial success achieved by the patented articles.

In the earlier of these two cases, Globe Knitting Works v. Segal, 248 Fed. 495 (1917), a patent was sustained for substituting an elastic for an inelastic crotch in union suits. Similar elastic crotches had been used in other garments, and when union suits became popular the natural substitution was made. There is not found in the opinion any statement of reasons why the patent should have been sustained, except that production occurred. upon a large scale.

The other decision involved the handy little device, familiar to all motorists and nearly everyone else, for vulcanizing punctured tires. The thing was old even in