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certain manufacture which was salable as an article of commerce, to be void, because of a prior article similar to it, but so rough and unfinished that it never could have found a sale in the market. Similar circumstances and opinions also controlled the decision by the same Judge in the case of Hatch v. Moffitt.'

$ 28. It is not invention to substitute superior for inferior materials, in making one or more or all of the parts of a thing.'

In each of the leading cases which established this rule, the decision was made in spite of the undeniable superiority of the new manufacture over those which preceded it. The clay door-knobs covered by the first patent have everywhere driven from use those wooden and metallic ones which were previously known. The improvement in the second of the cited cases had much merit; and that involved in the third case was widely adopted. The three patents were, however, all held to be void by the Supreme Court, because, though specifically new and highly useful, the things covered by them were found not to be invented things : were held to be only the result of judgment and skill in the selection and adaptation of materials, and not the product of the inventive faculties of those who produced them.

There being no invention in substituting superior for inferior materials, there is certainly none in selecting from a number of materials recommended by a prior patentee, that one which is best adapted to the purpose in view.'

$ 29. Important exceptions have, however, been estab


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McArthur's Patent Cases, 536, 1857; Post o. Hardware Co. 26 Fed. Rep. 618, 1886; Forschner v. Baumgarten, 26 Fed. Rep. 858, 1886; J. L. Mott Iron Works v. Cassidy, 31 Fed. Rep. 47, 1887; National Roofing Co. v. Garwood, 35 Fed. Rep. 658, 1888.

3 Welling v. Crane, 14 Fed Rep. 571, 1882.



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lished to the general rule of the last section. If the substitution involved a new mode of construction, or if it developed new uses and properties of the article made, it may amount to invention. So also, where the excellence of the material substituted could not be known beforehand, and where practice showed its superiority to consist not only in greater cheapness and greater durability, but also in more efficient action, the substitution of a superior for an inferior material was held by Judge NATHANIEL SHIPMAN to amount to invention.' And substantially the same doctrine has been held by Justice BRADLEY,' and by Judge WALLACE.

$ 30. It is not invention to so enlarge and strengthen a machine that it will operate on larger materials than before.

In Phillips v. Page the patent covered the first circular saw-mill which was adapted to sawing logs. Its utility was great, and was unquestioned. Machines like it, except that they were much smaller in every part, had been used before to saw lath and other slender articles out of small blocks of wood. The Supreme Court therefore held that Mr. Page did not invent a circular saw-mill, but merely constructed one, by copying on a larger scale the prior machine for sawing lath.

In the case of the Planing Machine Co. v. Keith the patent covered the Woodbury Planing Machine, a machine which differed from the older Woodworth Planing Machine in one respect only. Woodworth used rollers to press the boards against the bed of the machine, whereas Woodbury used pressure bars for that purpose. The Supreme Court held the Woodbury patent to be void because Alfred Anson, of Norwich, Connecticut, had previously invented and con


Smith v. Dental Vulcanite Co. 93 U. S. 496, 1876.

? Dalton o. Nelson, 13 Blatch. 357, 1876.

3 Celluloid Mfg. Co. 0. Crane Chemical Co. 36 Fed. Rep. 110 1888.

* Celluloid Mfg. Co. o. American Zylonite Co. 35 Fed. Rep. 301, 1888.

5 Phillips v. Page, 24 Howard, 164, 1860.

6 Planing Machine Co. 0. Keith, 101 U. S. 490, 1879.


structed a machine for dressing window-sash, which had pressure bars like Woodbury, instead of pressure rollers like Woodworth. This decision was made notwithstanding the fact that the Anson machine was too small and too weak for general planing work upon boards and planks. In Peters v. Active Mfg. Co. this rule was again applied and illustrated by the Supreme Court.'

$ 31. It is not invention to change the degree of a thing, or of one feature of a thing.

In Glue Co. v. Upton' the patent covered pulverized glue made from flake glue by grinding it in any suitable manner. It had several points of superiority over all former kinds of glue, but the Supreme Court held that, not being a product of invention, the patent covering it was void.

In Guidet v. Brooklyn 'the patent covered paving-stones of a certain shape and with rough sides. Paving-stones of the same shape, but with sides less rough, had been known before. To make the sides of the prior stones rougher was held by the Supreme Court to be a change in degree only, and therefore not patentable.

In Estey v. Burdetti one of the claims of the patent involved depended upon concentrating certain valve openings into a smaller space than had theretofore been occupied by them. The Supreme Court held that there was no invention in that change.

In Preston v. Manard the alleged invention consisted in making the reel of a fountain hose-carriage of larger diameter than were the reels of former hose-carriages, in order to allow the water to pass through the hose when partly wound upon the reel. The Supreme Court held that there resided no invention in that improvement.

Circuit Court cases which have been decided by skilful




Peters o. Mfg. Co. 129 U. S. 530, 1888.

? Glue Co. o. Upton, 97 U.S. 6, 1877.

Estey v. Burdett, 109 U. S. 640, 1883.

• Preston o. Manard, 116 V. S. 663, 1885.

3 Guidet 0. Brooklyn, 105 U. 8. 552, 1881.

6 Stow 0. City of Chicago, 3 Bann. & Ard. 91, 1877; Wbite o.


judges furnish still other illustrations of the rule of this section.

$ 32. Aggregation is not invention.

In Hailes v. Van Wormer' the patents passed upon covered certain self-feeding coal stoves. These stoves were better than any which preceded them, because they contained more good things than were ever before assembled in that kind of heater. All of the things so assembled were old. The superiority of the patented stoves arose from the fact that sundry good features, theretofore scattered through several, were in them gathered into one such article of

manufacture. The things so united did not, however, per- form any joint function, but each did only what it had

formerly done in former stoves. The Supreme Court held the whole to be a mere aggregation of devices, and not to be invention.

The case of Reckendorfer v. Faber' was based upon patents for a new and useful article, of which many millions of specimens had been made and sold since those patents were granted. That article was a piece of soft rubber united to one end of a lead pencil. The Supreme Court called attention to the fact that there was no joint operation performed by the pencil and the rubber, and therefore held the patents to be void for want of invention.

In Pickering v. McCullough the doctrine of this section was explained by Justice MATTHEWS with uncommon clearness. Speaking through him, the Supreme Court said : “In a patentable combination of old elements, all the constituents must so enter into it as that each qualifies every other; to draw an illustration from another branch of the law, they must be joint tenants of the domain of invention, seized each of every part, per my et per tout, and not mere




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tenants in common, with separate interests and estates. It must form either a new machine of a distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions."

In addition to these three leading Supreme Court cases, several other precedents in the same tribunal, and many Circuit Court decisions illustrate the application of the rule of this section to a variety of contrivances and aggregations."

$ 33. The rule of the last section does not state nor imply that all the parts of a patentable combination must act at the same time. The fact on that point is no criterion by means of which to distinguish invention from aggregation. Justice CURTIS, in a Circuit Court case,' stated the true doctrine on this subject, and stated it with marked lucidity, saying : “ To make a valid claim for a combination, it is not necessary that the several elementary parts of the combination should act simultaneously. If those elementary parts are so arranged that the successive action of each contributes to produce some one practical result, which result, when attained, is the product of the simultaneous or successive action of all the elementary parts, viewed as

1 Tack Co. o. Mfg. Co. 109 U. S. 120, 1883; Bussey u. Mfg. Co. 110 U. S. 145, 1883; Phillips v. Detroit, 111 U. S. 607, 1883; Stephenson v. Railroad Co. 114 U. S. 158, 1884; Beecher Mfg. Co. 0. Atwater Mfg. Co. 114 U. S. 523, 1884; Thatcher Heating Co. o. Burtis, 121 U. S. 293, 1886; Hendy v. Iron Works, 127 U. S. 375, 1887; Combined Can Co. 0. Lloyd, 11 Fed. Rep. 154, 1882; Perry o. Foundry Co. 12 Fed. Rep. 149, 436, 1882; Doubleday v. Roess, 11 Fed. Rep. 737, 1880; Nicodemus 0. Frazier, 19 Fed. Rep. 260, 1884; Stutz 0. Armstrong, 20 Fed. Rep. 843, 1884; Hayes 0. Bickelhoupt,

21 Fed. Rep. 566, 1884; Mosler Safe & Lock Co. o. Mosler, 22 Fed. Rep. 901, 1885; Watson v. Railway Co. 23 Fed. Rep. 445, 1885; Peard V. Johnson, 23 Fed. Rep. 509, 1885; Ames o. Spring Bed Co. 24 Fed. Rep. 785, 1885; Phipps v. Yost, 26 Fed. Rep. 448, 1886; Troy Machinery Co. v. Bunnell, 27 Fed. Rep. 810, 1886; Duesh_o. Medlar Co. 30 Fed. Rep. 619, 1887; J. L. Mott Iron Works v. Skirm, 30 Fed. Rep. 621, 1887; Schmid o. Mfg. Co. 37 Fed. Rep. 347, 1889.

? Forbush v. Cook, 2 Fisher, 669, 1857.


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