is to say, without looking at the apparent amount of skill or invention involved in bringing these several modes of operation into one machine, which was not the invention claimed, if the result accomplished thereby did not differ substantially, in respect to the processes embraced in it, from what had been done before in sep if the principles of the machine are new, either to produce a new or an old effect, the inventor may well entitle himself to the exclusive right of the whole machine. By the principles of a machine (as these words are used in the statute) is not meant the original elementary principles of motion, which philosophy and science have discovered, but the modus operandi, the peculiar device or manner of producing any given effect. The expansive powers of steam, and the mechanical powers of wheels, have been understood for many ages; yet a machine may well employ either the one or the other, and yet be so entirely new, in its mode of applying these elements, as to entitle the party to a patent for his whole combination. The intrinsic difficulty is to ascertain, in complicated cases like the present, the exact boundaries between what was known and used before, and what is new, in the mode of operation. "The present machine is to make cotton and woollen cards. These were not only made before the present patent, by machinery, but also by machinery which, at different times, exhibited very different stages of improvement. The gradual progress of the invention, from the first rude attempts to the present extraordinary perfection, from the slight combination of simple principles to the present wonderful combinations, in ingenuity and intricacy scarcely surpassed in the world, has been minutely traced by the witnesses on the stand.. "The jury, then, are to decide whether the principles of Mr. Whittemore's machine are altogether new, or whether his machine be an improvement only on those which have been in use before his invention. I have before observed that the principles are the mode of operation. If the same effects are produced by two machines by the same mode of operation, the principles of each are the same. If the same effects are produced, but by a combination of machinery operating substantially in a different manner, the principles are different. - "The great stages (if I may so say) in making the cards by Whittemore's machine, which admit of a separate and distinct operation in the machinery, are, 1. The forming and bending the wire; 2. The pricking the leather; 3. The sticking the wire into the leather; and, 4. The crooking the wire after its insertion. Were either of these effects produced in the machines formerly in use by a combination of machinery or mode of operation substantially the same as in this machine? If so, then clearly his patent could only be for an improvement, and of course it is void; if not, then his patent is free from any objection on the ground of being broader than his invention. It will not be sufficient, to protect the plaintiff's patent, that this specific machine, with all its various combinations and effects, did not exist before; for if the different effects were all produced by the same application of machinery in separate parts, and he merely combined them together, or added a new effect, such combination would not sustain the present patent, any more than the artist, who added the second-hand or repeater to a watch, could have been entitled to a patent for the whole watch." arate machines, the subject-matter claimed as the invention was not new. § 47. On the other hand, where the patent claimed, as the invention of the party, a new and useful improvement in the making of friction-matches, by means of a new compound, and it was said that the ingredients had been used before in the making of matches, the court said that the true question was, whether the materials had been used before in the same combination, and if not, that the combination was patentable, however apparently simple it might be. That is to say, if the result at which the inventor had arrived the production of a friction-match, by a particular combination of materials was new, there was a sufficiency of invention, without looking at the apparent facility or difficulty of accomplishing it.1 § 48. So, too, where it was said in the defence that a machine for cutting ice was but an application of an old invention to a new purpose, it being likened to the common carpenter's plough, the court distinguished the machine from everything that had been made before, by pointing out that such a combination of apparatus had not been known before.2 1 Ryan v. Goodwin, 3 Sumner's R. 514, 518. In this case, Mr. Justice Story said: "It is certainly not necessary that every ingredient, or, indeed, that any one ingredient, used by the patentee in his invention, should be new or unused before for the purpose of making matches. The true question is, whether the combination of materials by the patentee is substantially new. Each of these ingredients may have been in the most extensive and common use, and some of them may have been used for matches, or combined with other materials for other purposes. But if they have never been combined together in the manner stated in the patent, but the combination is new, then, I take it, the invention of the combination is patentable. So far as the evidence goes, it does not appear to me that any such combination was known or in use before Phillip's invention. But this is a matter of fact, upon which the jury will judge. The combination is apparently very simple; but the simplicity of an invention, so far from being an objection to it, may constitute its great excellence and value. Indeed, to produce a great result by very simple means, before unknown or unthought of, is not unfrequently the peculiar characteristic of the very highest class of minds." * Wyeth v. Stone, 1 Story's R. 273, 279. In this case, Mr. Justice Story said: Assuming the patent to be for the machinery described in the specification, and the description of the invention in the specification to be, in point of law, certainly and correctly summed up, (points which will be hereafter considered,) I am of opinion that the invention is substantially new. No such machinery is, in my § 49. But where an invention was claimed to be a mode by which the back of a rocking-chair could be reclined and fixed at any angle required, by means of a certain apparatus, the patent was declared void, because the same apparatus or machinery had been long in use, and applied, if not to chairs, at least in other machines, to purposes of a similar nature. An examination of the result attained by the plaintiff showed that he had accomplished nothing which had not been done before, but had merely applied an old contrivance to a new purpose. § 50. The question will arise, then, in reference to any supposed invention, in what is the novelty to consist? or, in other words, what is the nature of the change that has been effected, which will entitle it to the protection of a patent? It is a leading general principle on this subject, as we have already seen, that there must be something more than a change of form, or of the juxtaposition of parts, or of the external relations of things, or of the order or arrangement in which things are used. The change, or the new combination or relations, must introduce or embody some new mode of operation, or accomplish some effect not before produced. This is what is called, in the judicial sense, introducing a new principle. But then it is plain, from the nature of this subject, that no rules can be laid down which will admit of application to all supposable cases. All that can be done in the way of exhibiting the doctrines which are to be applied in judicial inquiries into the novelty of inventions, is to classify the adjudged cases, and to observe the illustrations which they furnish of the judgment, established by the evidence to have been known or used before. The argument is, that the principal machine, described as the cutter, is well known, and has been often used before for other purposes, and that this is but an application of an old invention to a new purpose; and it is not therefore patentable. It is said that it is, in substance, identical with the common carpenter's plough. I do not think so. In the common carpenter's plough there is no series of chisels fixed in one plane, and the guide is below the level, and the plough is a movable chisel. In the present machine there are a series of chisels, and they are all fixed. The successive chisels are each below the other, and this is essential to their operation. Such a combination is not shown ever to have been known or used before. It is not, therefore, a new use or application of an old machine. This opinion does not rest upon my own skill and comparison of the machine with the carpenter's plough; but it is fortified and sustained by the testimony of witnesses of great skill, experience, and knowledge in this department of science." 1 Bean v. Smallwood, 2 Story's R. 408, 410. different modes in which this patentable requisite of novelty may present itself. One class of the adjudged cases consists of those in which the supposed invention has been held to be nothing more than a double use, or double application, of what had in fact existed before; and another class embraces the cases where there. has been held to be something involved which may be the subject of a patent. § 51. Thus the application of an old contrivance to a new use, in the case of the rocking-chair, furnishes one instance where there may be a clear line of demarcation between the invention of a new thing and a double use of an old thing. So, too, where the change consisted in the substitution of potter's clay, or any kind of porcelain, as the material for making door-knobs attached to a spindle or shank, the Supreme Court of the United States, proceeding upon a state of facts which ascertained that knobs made of wood or iron had been previously attached to the shank in the same way, and that the sole change consisted in the substitution of one material for another, held the subject not patentable.2 § 52. Another case of a double use, or double application, of a well-known mode of manufacture is presented by the case of the anchor, already referred to. The supposed invention consisted in manufacturing ship's anchors having two flukes, by making the two flukes of one piece of metal, and piercing it in the middle by a hole for the insertion of the shank, instead of making the two flukes in separate pieces and welding them to the shank. The advantage of the change consisted in avoiding the injury to the iron occasioned by repeated heating, and using a method of manufacture which required but one heating, namely, for the purpose of welding the end of the shank to the side of the hole in which it was inserted. Now, if anchors or other similar instruments had not been made before in this mode, there could be no doubt that a patent might be supported for anchors of this particular manufacture. But the principle of this mode of manufacture was not new, and nothing was new but its application to the making of what are called ship's anchors, or anchors with two flukes, which of themselves were an 1 Bean v. Smallwood, 2 Story's R. 408, 410. See a somewhat similar case, Hovey v. Stevens, 1 Woodb. & Minot, 290. * Hotchkiss v. Greenwood, 11 Howard, 248. old instrument. It appeared that the mushroom anchor, the adze anchor, the common hammer, and the pickaxe had all been made in this way. There was no invention, therefore, of a new process of manufacture, or of an article as made by a new process; but the novelty consisted solely in the application of an old process of manufacture to a new occasion; that is, it was a double use. Had this mode of manufacture not been used before in cases extremely similar, an inventor of it might have patented its application, not only to anchors, but to other instruments.1 § 53. Hence it appears that the presence or the absence of the patentable quality of novelty depends in some degree on the position in which the supposed inventor stands with reference to the history of the art; for there may be in what he has done an element of novelty, and yet that novelty may consist only in the new occasion or new use to which he applies an old or well-known method. Thus the principle, that is to say the method of operation, or the order of combination, under which his invention ranges itself, may have been discovered and applied before, but not on precisely the same occasions, or uses, or with the same materials. When this is the case, the question to be determined is, whether the new application is anything more than a double use, or whether something has been discovered, or some effect produced, which goes beyond the mere skill of a constructor in adapting a well-known method to different occasions, and enters the domain of what is called invention. § 54. Illustrations of this distinction may be seen in the application of well-known medicines, drugs, and chemical substances upon new occasions, or for new specific purposes. If it is discovered that a medicine, known and used as a valuable remedy in one class of diseases, has also great efficiency in curing another and different disease, there is a new application of a known thing, but it is only a double use of that thing.2 1 Brunton v. Hawkes, 4 B. & Ald. 540, 550. In Boulton v. Bull, 2 H. Bl. 487, Buller J., said: "Suppose the world were better informed than it now is how to prepare Dr. Janes's fever-powder, and an ingenious physician should find out that it was a specific cure for a consumption, if given in particular quantities; could he have a patent for the sole use of Janes's powders in consumptions, or to be given in particular quantities? I think it must be |