Argument for the plaintiff.

stand its use, see at one glance in what these two machines differ from each other? Does not the court see it? Cannot any such mechanic, therefore, make and use the hopper-boy of Stauffer, if he should think proper, and avoid all interference with the improvement of Evans? It cannot be doubted that he may. And so may a person sufficiently skilled in the art or science to which an improvement relates, in every possible case. When he has the improvement, or the improved thing sufficiently described, as the hopper-boy of Evans is admitted to be, and is informed of any preexisting machine or thing of the same general nature which he wishes to make, sell, or use, he can look at that thing, compare it with the improved machine or with the description, drawings, and models in the Patent Office, see the difference, and make and use the original or old one, without the least danger of interfering with the improvement. Where, then, is the use of describing the original or the old invention in the specification of the improvement, and of discriminating in terms between them? It is manifest that such a description would be perfectly useless and vain, and neminem ad vana lex cogit.

2. But admitting that it might be of some use, would it be possible? This is the next head of inquiry; and I contend that it would

not.

And here let it be remembered that this doctrine of discrimination is not confined to such inventions as are express or avowed improvements on particular inventions. It extends necessarily to all inventions which improve anything that existed before. In the present case, there happened, so far at least as is now known, to be but one hopper-boy, that of Stauffer, in use before Evans's. But suppose there had been twenty, of as many different kinds: would they not all have been original with respect to Evans's, or antecedent to it? Undoubtedly; and every man, notwithstanding Evans's patent, would have had a right to use them all, or any of them. What reason or principle could require the description of one in the specification of Evans, which would not equally apply to all? There certainly is none. Let us take the example of a patent for an improved stove, for increasing the heat, or for any other object. How many millions of stoves, of what an endless variety of constructions, are used in the world. Must the patentee of this improved stove, or of this improvement on stoves, describe them all in his specification, and point out in terms the difference between each of them and his invention? It is manifest that he must, according to the doctrine of the Circuit Court; and it is equally manifest that he could not possibly do it. His specification would constitute a library of itself, which no man

Argument for the plaintiff.

would or could read, and which the Patent Office could hardly contain. So, also, improved chimneys, improved carriages, and all the multitude of other improvements, real or imaginary, on things in general use, for which patents are obtained, having preexistent things of the same nature, and used for the same general purpose, must be described in each specification; which, if it were possible to write it, as it would very seldom be, would be far too voluminous to be understood or read.

Thus, it is manifest that the discrimination contended for would be impossible as well as useless, in relation to improvements on unpatented machines. Where, indeed, a machine is already patented, it is very easy to describe it in the specification of the improvement, and point out all the particulars in which they differ from each other. The original specification is in the Patent Office, and may be referred to; the drawings and models are there, and may be seen. Here the rule requiring a discrimination in terms between the original invention and the improvement would not be unreasonable, and it might be useful, by tending to prevent disputes between the different patentees. The mistake of which we complain has probably arisen from not discriminating between improvements on patented and unpatented inventions. In the latter, the discrimination is manifestly impossible as well as useless. In the former, it would be easy, and might be of some use. It might be proper to require it in one case, whether the law positively enjoins it or not. To require it in the other, would be to make the law require what is both useless and impossible. This can never be done by the construction merely of a statute, which must always be reasonable. But it may be said that the statute positively enjoins it. If so, we must submit. When the legislature has clearly expressed its will, the court have no duty but to obey. This brings us to the question, what has the legislature enjoined on this subject?

3. All that can be supposed to relate to it is contained in the second and third sections. The second speaks of improvements; the third of specifications. It points out the object of the specification, and directs what shall be done for its attainment. The object is to put the public in complete possession of the invention, whether an improvement or an original discovery, so that interference with it may be avoided while the patent continues, and its benefits may be fully enjoyed by the public after the patent expires. To this end, it enjoins that the applicant "shall deliver a written description of his invention, and of the manner of using or process of compounding the same, in such full, clear, and exact terms as to distinguish the

Argument for the plaintiff.

same from all other things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same." This is the directory part. The thing is to be described "so as to distinguish it from all other things before known." How distinguish it? By describing all the things before known, and pointing out in terms in what it differs from them all? Certainly not; but by giving a description of it so complete and accurate as "to enable any person skilled in the art, &c., to make, compound, and use the same." Is the discrimination contended for, but not mentioned in the statute, necessary for this purpose? By no means. Any person skilled in the art or science, in order to make, compound, and use the new invention, has but to look to the description of the invention itself. He need not know how nearly it resembles or how widely it differs from any other thing before known. With these he has no concern. And if, on the other hand, he wishes to use nothing before used and known, and to avoid interfering with the patented invention or improvement, he has only to compare the thing which he so wishes to make or use with the description of the patented invention or improvement contained in the specification, and he will immediately see wherein they differ, and be enabled to avoid the latter while he uses the former.

This section (the third) further directs, with a view to the same objects, that the applicant, the inventor, "in case of any machine," shall "fully explain the principle, and the several modes in which he has contemplated the application of that principle, or character by which it may be distinguished from other inventions." Here, as in the rest of the section, nothing is said about improvements, as distinguished from original discoveries. They are all treated equally as "inventions,” and are placed precisely on the same ground. They are all to be so described as that they may be distinguished in their principles and modus operandi, as well as in their construction and composition, from other inventions; and this is to be effected by means not of a formal discrimination in terms between them and any other thing or things of the same general nature, but of a full and accurate verbal description, aided by drawings, models, and specimens, where the matter is of such a nature as to admit their use. In all this, nothing is said or hinted about "improvements," as contradistinguished from "original discoveries." All are treated alike as "inventions," and the same means of enabling all concerned to distinguish them from things before used or known are provided in relation to both.

Argument for the plaintiff.

In fact, what is an "improvement" but a new invention? Every thing that is made better is improved, and every thing that makes another better, or does it in a better way, is an improvement. If it be new, it is an invention so far as it goes. The greater the improvement, the greater is the invention; and any improvement differs from any other, or from an original discovery, if there be any such thing, not in nature, but in degree. They may be greater inventions or less, more or less ingenious, or more or less useful; but as far as they are, so they are all inventions, and are treated precisely alike by this portion of the Patent Law, which, I again repeat, makes no mention and gives no hint of a discrimination in the specification of an improvement, between the improvement, or the thing as improved, and the original thing on which the improvement is made. Treating them all alike as "inventions," it requires, with respect to all, that they shall be so described as clearly to distinguish them, that is, as to enable all concerned to distinguish them, from all other things of the same nature before in use or known. To construe the statute so as to make it require a description not only of the new invention, but of all things of the same general nature before known, and a discrimination in terms between them, would be as unreasonable in the case of an improvement as of an original discovery, and would be perfectly unreasonable in either. It would make the statute do that which its terms do not indicate, and which the law can never be presumed to intend. It would make it require what it is not only impossible in a great variety of cases to do, but what, if done, would in every case be wholly useless and vain. This it cannot be so construed as to require; for neminem ad vana aut ad impossibilia lex cogit.

The counsel then adverted to the second section, where it was supposed, he said, that something might be found to support this doctrine of discrimination. That section spoke particularly of improvements, as to which the third was wholly silent. It said nothing whatever of the specification, its objects or motive. It made two provisions, both useful as declarations of the law, to put persons on their guard and prevent mistakes, but both undoubtedly law, without any such declaration. The first was, that the discoverer and patentee of an improvement in anything before patented should not be entitled to make, use, or vend the original; nor the inventor and patentee of the original to make, use, or vend the improvement. Here again they were both considered as inventors, and both put on the same footing. It was declared, for general information, and to prevent doubts and mistakes, that one should not be entitled to the invention of the other; but nothing was said about the manner of

Argument for the plaintiff.

distinguishing these inventions one from the other. That was left to the third section, where it was done without the least mention or hint of the formal discrimination in terms contended for in the judgment below. It was manifest that this discrimination could derive no countenance from this branch of the second section. It obviously could derive none from the other branch, which, merely for giving information to the public and preventing mistakes, declared "that simply changing the form or proportions of any machine or composition of matter, in any degree, shall not be deemed a discovery." This merely amounts to saying, what would clearly have been the construction of the law without any such declaration, that to constitute a patentable discovery, either original or by improvement, there must be a new principle or modus operandi, and not merely a change of form or proportion. If the change of form or proportion should be such as to produce a new principle or modus operandi, then it would be a discovery or invention, whether it amounts to an original or an improvement only; and here again improvements were treated as inventions, equally with original discoveries, the distinction between them being not in nature, but merely in degree.

But the point under consideration has been expressly settled by the former decision in this case; the same objection for want of this discrimination was made in the court below, on the first trial, and the same doctrine on the subject expressly laid down by the Circuit Court. This doctrine formed one of the grounds of objection, distinctly stated in the argument of the former case in this court, and was distinctly noticed by the court; and with this part of the opinion below, and the objection to it, distinctly in view, this court decided this patent on this same specification to be valid, notwithstanding its want of a discrimination in terms between the improvement and the original invention, which was an express decision on this point in favor of the plaintiff in error. He referred to various parts of the report of the former case of Evans v. Eaton, (3 Wheat. Rep., 454, ante,) to support these positions; remarking, that although the court certainly was not bound absolutely by its own decisions, and ought to overrule them when satisfied of their incorrectness, yet they were. the great landmarks of the law, and ought not to be overturned or shaken without the strongest and clearest reasons.

The learned counsel also cited the authorities cited in the margin, as to the objection to the charge of the court below, upon the ground that it had invaded the proper province of the jury, in respect to the sufficiency of the specification, and to the nature of the patentee's invention as an improvement or an original discovery. 12 H. Bl.,.