matter and gravitation, and not the subject of a patent, and the application of that discovery by Torricelli in constructing the barometer which was a patentable subject. He instances also the elastic expansive force, and the condensibility of steam as natural and not patentable properties, even on a first discovery, and the application of those properties, first by the Marquis of Worcester, who used the expansive force to raise water, next by Savery, who availed himself of the condensation of steam in his engine patented in 1698, being the first patent on record for a steam-engine, and next by Watt, in whose invention both the expansive force and the condensation are used.

Mr. Justice Washington instructed the jury that the use and application of bells to fire engines to give alarm of fire, so as to be rung by the motion of the

carriage, was the subject of a patent.

He also considered the application of steam-engines to the purposes of propelling boats to be the subject of a patent.

48

Sec. VII.-EFFECT. RESULT. PRODUCT.

There is a very close analogy between a new application and a new effect or result of what is already

48 Park v. Little and Wood, 3 Wash. C. C. R. 196.

known, as in the instances given by Mr. Justice Buller, of the use of James's fever powder for the cure of a consumption;49 this might be called either a new application or a new effect of the invention. The same remarks that have been made concerning a new application, in this sense of the term, are equally true of a new effect. There is no instance in which it has been held that a mere new effect of the use of a machine already known, without any new combination, machinery, or process, is the subject of a valid patent. The doctrine is laid down by Mr. Justice Story, that

a patent can, in no case, be for an effect only, but for an effect produced in a given manner, or by a peculiar operation. For instance, no patent can be obtained for the admeasurement of time, or the expansive operations of steam; but only for a new mode, or new application of machinery, to produce these effects; and therefore, if new effects are produced by an old machine in its unaltered state, I apprehend that no patent can be legally supported; for it is a patent for an effect only." 9950 In this case as in that of a new application, there must be something new in the method, process, combination, or composition, in order to lay the foundation of a patent.

49 2 H. Bl. 487.

50 Whittemore v. Cutter, 1 Gallison, 478.

Sec. VIII.-ART, SCIENTIFIC THEORY, ABSTRACT PROPOSITION, REDUCTION OF THE INVENTION TO PRACTICE.

A mere scientific theory or abstract proposition, is not patentable. The act of Congress, in describing the subjects of patents, uses the term art, which, if taken in its broadest sense, is, like all the others we have been considering, much too comprehensive, but it serves very well to show what is not a proper subject of monopoly, in contrast with science. A science is not the subject of a patent, and for the same reason, a mere theory, scientific axiom, or principle, or abstract proposition, or truth is not so.51 philosophical truths that have been free from the patent laws, as are the general powers and qualities of matter. The claim of the inventor arises only on the practical application of a theory, or abstract truth, or elementary property, in some art, process or method, which he has invented and put in practice, or some machine or apparatus, or composition of matter, which he has actually made.

All the abstract

discovered, are

A merely intended invention, or improvement, is

51 Lowell v. Lewis, I Mason's R. 187.

not patentable. Mr. Watt, in his specification, suggested his intention to add certain improvements to his steam-engine. Mr. Justice Rooke said, "As to the articles of the specification which denote intention only, I do not think that the patentee can maintain an action for the breach of them; for he cannot anticipate the protection, before he is entitled to it by practical accomplishment."52

53

The subject of a patent must be something that has been reduced to practice; it is not enough that it is merely practicable or possible; it must be something which has been actually done or produced. Mr. Justice Buller remarks, of the cases cited in that of Boulton v. Bull, that none of them go the length of proving that the method of doing a thing without the thing being done or actually reduced to practice, is a good foundation for a patent. When the thing is done or produced, then it becomes the subject of a patent." "The thing to be patented," says Mr. Justice Story," is not a mere elementary principle, or intellectual discovery, but a principle put in practice, and applied to some art, machine, manufacture, or composition of matter."54 This is the doctrine of all It is laid down by Mr. Justice Buller, in

the cases.

the cases on Watt's improvement of the steam-engine, "that though an idea or a principle alone would not support a patent, yet that an idea reduced into practice, or a practical application of a principle, is a good foundation for a patent. What is meant by a principle reduced into practice? It can only mean a practice founded on principle, and that practice is the thing done or made, or in other words, the manufacture which is invented." So Mr. Justice Eyre says, in the same case, "For a principle so far embodied and connected with corporeal substances, as to be in a condition to act, and to produce effects in any art, trade, mystery, or manual occupation, I think there may be a patent. Now this is the thing for which the patent stated in this case was granted, and this is what the specification describes, though it miscalls it a principle. It is not that the patentee has conceived an abstract notion, that the consumption of steam in fire-engines may be lessened, but he has discovered a practical manner of doing it; and for that practical manner of doing it, he has taken his patent. Surely this is a very different thing from taking a patent for a principle; it is not for a principle, but for a process.'

2255

55 Boulton v. Bull, 2 H. Bl. 486, 495.