tion of the fine lines of the engraving than could be attained by the old modes of preparing the paper. So, also, in another case, where the object of the plaintiff's invention was to render fabrics water-proof, at the same time leaving them pervious to air. Before the plaintiff's patent, a solution of alum and soap was used, and the fabric to be rendered water-proof was immersed therein. But this produced a water-proof surface only, which was, moreover, not lasting. The plaintiff's new process consisted in immersing successively in two solutions, first, in a solution of alum and carbonate of lime, and then in a solution of soap. The effect was to make each fibre of the cloth water-proof throughout, while the whole fabric remained pervious to air.2 In these and similar cases, where it appears that a superior article is produced by a change in the method or process of making it, the true subject of the patent is the improved process, and it is supported as an invention by the improved effect, whether the process be dearer or cheaper, simpler or more complicated, than the old one.

§ 18. Another very important case is presented by Crane's patent for "an improvement in the manufacture of iron "; the improvement consisting in a new process of making iron, followed by extremely important effects. Before the plaintiff's patent, the use of a hot-air blast, in the manufacture of iron with bituminous coal, was known, and the use of a cold blast, with anthracite coal, was known; but the plaintiff's invention consisted in a new process of making iron with a hot blast and anthracite coal. The effect of the change in the process was, that the yield of the furnaces was more, the nature, properties, and quality of the iron better, and the expense of making it less, than under the former process. Upon the question whether this was a patentable invention, Tindal, C. J., delivering the judgment of the Court of Common Pleas, said: "We are of opinion, that if the result produced by such a combination is either a new article, or a better article, or a cheaper article, to the public, than that produced before by the old method, that such combination is an invention or manufacture intended by the statute, and may well become the subject of a patent."3 By defining this as a new "manufacture," the learned

1 Sturz v. De La Rue, 5 Russ. Chancery R. 322.

Halliwell v. Dearman, 1 Webs. Pat. Cas. 401, note (t).

Crane v. Price, 1 Webs. Pat. Cas. 375, 409.

judge did not simply mean that the iron produced was a new iron; although, in respect to its being of better quality, it may be said to have been a new article of iron; since that which has new or superior properties is, in a metaphysical sense, a new thing, although it is still iron. But the word "manufacture" was here used, as it must be used, in reference to any new process, by an English judge, when dealing with such a case, as meaning the art or process of manufacturing. Keeping this in view, it will be seen that the comprehensive proposition laid down by the court in this case, and the comments which follow it, embrace the cases where the process itself presents the advantages of the change from the old to the new, or where the article manufactured presents such advantages, or where they appear both in the process itself and in the result of using the process. Thus, if the article made be either new or better, having different or superior properties, the advantages are presented by the thing itself, as made by the new process. If the article, as made by the new process, is of as good or better quality, and cheaper, the advantage of cheapness is gained by a more economical process than the old one, and the improvement appears in the process, while the article made by it may or may not be new; that is to say, may or may not possess other new properties than cheapness.

§ 19. There is a class of cases, some of which have been already mentioned, where the distinction between a mere process and a machine has come into view, in the construction of the particular patent in controversy, in pursuance of the general rule of construction, by which the real invention is to be beneficially secured to the patentee, if the terms of his specification will admit of it. These cases will come under review hereafter, in considering the application of this rule.

§ 20. II. A MACHINE. The next subject of letters-patent recited in the statute is a machine, or an improvement of a machine. When the supposed invention is not a mere function, or abstract mode of operation, separate from any particular mechanism, but a function, or mode of operation is embodied in mechanism designed to accomplish a particular effect, it will be a machine in the sense of the patent law. A very concise statement of the dis

1 Blanchard v. Sprague, 3 Sumner, 535, 540.

tinction between a machine and a method or process is to be found in a dictum of Mr. Justice Heath: "When a mode of doing a thing is referred to something permanent, it is properly termed an engine; when to something fugitive, a method." But without recurring to the distinction between a machine and a process, it may be said that a machine is rightfully the subject of a patent whenever a new or an old effect is produced by mechanism new in its combinations, arrangements, or mode of operation.

§ 21. If the subject of the invention or discovery is not a mere function, but a function embodied in some particular mechanism whose mode of operation and general structure are pointed out, and which is designed to accomplish a particular purpose, function, or effect, it will be a machine, in the sense of the patent law.2 A machine is rightfully the subject of a patent when wellknown effects are produced by machinery entirely new in all its combinations, or when a new or an old effect is produced by mechanism, of which the principle or modus operandi is new.3 The word" machine," in the statute, includes new combinations of machines, as well as new organizations of mechanism for a single purpose. There may be a patent for a new combination of machines to produce certain effects, whether the machines constituting the combination be new or old. In such cases, the thing patented is not the separate machines, but the combination. A single instance of such a combination is presented by the telescope, in which a convex and concave glass of different refracting powers are combined to make the object-glass.5.What constitutes a claim

1 Boulton v. Bull, 2 Hen Blackstone, 463, 468. The meaning of the learned judge, expressed in a more amplified form, appears to be this: that an engine or machine has been invented, when mechanism has been constructed, which does something in a particular mode; and that a method or process has been invented, when the mode of doing a thing has been devised that is capable of being carried out by various mechanisms, and does not require one permanent mechanism. Blanchard v. Sprague, 3 Sumner's R. 535, 540.

3 Whittemore v. Cutter, 1 Gallis. 480; Boulton v. Bull, 2 H. Bl. 463, 468. When a mode of doing a thing is referred to something permanent, it is properly termed an engine; when to something fugitive, a method. Per Heath, J., in Boulton v. Bull.

Barrett v. Hall, 1 Mas. 474; Evans v. Eaton, 3 Wheat. 454, 476, 506; Prouty v. Draper, 1 Story's R. 568; Park v. Little, 3 Wash. 196; Pitts v. Whitman, 2 Story's R. 609; Ames v. Howard, 1 Sumner, 482.

Dolland's case, Webs. Pat. Cas. 42, 43.

for a combination only, and what will be a claim for the specific parts of a machine, as well as for the combination, is a question of construction on the patent and specification, the rules for which will be stated hereafter.

§22. The statute also makes a new and useful "improvement" of a machine the subject of a patent. A patent for the improvement of a machine is the same thing as a patent for an improved machine. Improvement, applied to machinery, is where a specific machine already exists, and an addition or alteration is made, to produce the same effects in a better manner, or some new combinations are added, to produce new effects.2 In such cases the patent can only be for the improvement, or new combination. The great question, of course, when an alleged invention purports to be an improvement of an existing machine, is to ascertain whether it be a real and material improvement, or only a change of form. In such cases, it is necessary to ascertain, with as much accuracy as the nature of such inquiries admits, the boundaries between what was known and used before, and what is new, in the mode of operation. The inquiry, therefore, must be, not whether the same elements of motion, or the same component parts are used, but whether the given effect is produced substantially by the same mode of operation, and the same combination of powers, in both machines; or whether some new element, combination, or feature has been added to the old machine, which produces either the same effect in a cheaper or more expeditious manner, or an entirely new effect, or an effect that is in some material respects superior, though in other respects similar to that produced by the old machine.5

§ 23. This inquiry will therefore involve the question, whether the alleged improved machine operates upon the same principle as the former machine; or, in other terms, whether it produces the 1 Per Heath, J., in Boulton v. Bull, 2 H. Bl. 463, 482; and per Story, J., in Barrett v. Hall, 1 Mas. 475.

* Whittemore v. Cutter, 1 Gallis. 480.

Ibid.; Odiorne v. Winkler, 2 Gallis. 51.

4 Whittemore v. Cutter, 1 Gallis. 478, 481. Whether an improvement is trifling and insignificant, or real and important, is a question for the jury. Losh v. Hague, Webs. Pat. Cas. 205.

• Whittemore v. Cutter, 1 Gallis. 478; Brunton v. Hawkes, 4 B. & Ald. 540.

same effect by the same mechanical means, or by means which are substantially the same. One machine may employ the same mechanical power in the same way as another machine, though the external mechanism may be apparently different. At the same time a machine may have an external resemblance to another, and yet may operate upon a different principle. It is therefore ne

cessary, where the effect is the same, to determine whether the modus operandi, the peculiar method of producing the effect, is substantially the same. Where the effect is different, the test of a sufficient "improvement" to sustain a patent will be the character and importance of the effect itself.

§ 24. There may be a patent for an improvement of a machine that is itself the subject of an existing patent. It has been held in England, that a patent including the subject-matter of a patent still in force is valid, if the improvement only is claimed in the specification. In such cases, the new patent will come into force after the expiration of the old one, or it may be applied by using a license under the former patent, or by purchasing the specific machine which the former patent covers, before its expiration.2

1 Barrett v. Hall, 1 Mas. 470. In this case, Mr. Justice Story said: "The true legal meaning of the principle of a machine, with reference to the Patent Act, is the peculiar structure or constituent parts of such machine. And, in this view, the question may be very properly asked, in cases of doubt or complexity, of skilful persons, whether the principles of two machines be the same or different. Now, the principles of two machines may be the same, although the form or proportions may be different. They may substantially employ the same power in the same way, though the external mechanism be apparently different. On the other hand, the principles of two machines may be very different, although their external structure may have great similarity in many respects. It would be exceedingly difficult to contend that a machine which raised water by a lever was the same , in principle with a machine which raised it by a screw, a pulley, or a wedge, whatever in other respects might be the similarity of the apparatus."

Crane v. Price, Webs. Pat. Cas. 333, 413. In this case, Sir W. C. Tindall, C. J., said: "Now, it is further argued, that, in point of law, no patent can be taken out which includes the subject-matter of a patent still running or in force. No authority was cited to support this proposition; and the case which was before Lord Tenterden, and in which he held, that where an action was brought for an infringement of improvements in a former patent granted to another person, and still in force, that the plaintiff must produce the former patent and specification; that at least affords a strong evidence that the second patent was good. (Lewis v. Davis, 3 Car. & P. 502.) The case of Harmar v. Playne (14 Ves. jr., 130, 11 East, 101; Dav. Pat. Cas. 311; Fox, ex parte, 1 Ves. & B. 67) is a clear author