of making shingles, although the shingle mill were in common use, and the circular saw were in use (meaning, I presume, separately, and not in combination), and there were nothing new in the mode or machinery, by which it was applied (but meaning, I presume, that the combination itself was new), still the plaintiff is entitled to a patent. In the directions thus supposed, with the explanations and additions above inserted, which seem necessary to express the true sense of the propositions, I do not at present perceive any error. But I rather wish to state the real opinions expressed to the jury, with which, upon more mature reflection, I confess myself entirely satisfied. The main question was, and still is, whether there is anything new in the improvement patented by the plaintiff. He was already the patentee of the original shingle machine, which operated with a perpendicular or reciprocating saw. The other part of his apparatus for adjusting the logs to be sawed, was very ingenious, but not being in controversy, requires no consideration. By his present patent, he claims to be the inventor of the application of a circular saw, as a substitution for the perpendicular saw. He does not claim (which is very material) to be the inventor of the circular saw, or of any mode or machinery, by which it may be applied to sawing generally, or to sawing logs, or to sawing shingles. He claims to be the inventor of a combination of it in a particular manner with his old machine, for the purpose of sawing shingles. In what manner is the claim met? Not by showing that any other person ever thought of, or invented such combination before, for it is admitted that the plaintiff is the first person who conceived or executed it; but by showing, that he is not the inventor of a circular saw, or of the particular machinery of belts and drums and wheels, etc., by which such a saw is commonly put in operation; and that the combination itself is so simple, that, though new, it deserves not the name of an invention. The whole argument, upon which this doctrine is attempted to be sustained, is, if I rightly comprehend it, to this effect: "It is not sufficient, that a thing is new and useful, to entitle the author of it to a patent. He must do more. He must find it out by mental labor and intellectual creation. If the result of accident, it must be what would not occur to all persons skilled in the art, who wished to produce the same result. There must be some addition to the common stock of knowledge, and not merely the first use of what was known before. The Patent Act gives a reward for the communication of that, which might be otherwise withholden. An invention is the finding out by some effort of the understanding. The mere putting of two things together, although never done before, is no invention." It did not appear to me at the trial, and does not appear to me now, that this mode of reasoning upon the metaphysical nature, or the abstract definition of an invention, can justly be applied to cases under the Patent Act. That Act proceeds upon the language of common sense and common life, and has nothing mysterious or equivocal in it. The first section enacts, 1 "that when any person etc. shall allege that he has invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application, etc. it shall be lawful for the secretary of State to cause letters patent to be made out, etc., granting the exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery," etc. The thing to be patented 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. It must be new, and not known or used before the application; that is, the party must have found out, created, or constructed some art, machine, etc., or improvement on some art, machine, etc., which had not been previously found out, created, or constructed by any other person. It is of no consequence, whether the thing be simple or complicated; whether it be by accident, or by long, laborious thought, or by an instantaneous flash of mind, that it is first done. The law looks to the fact, and not to the process by which it is accomplished. It gives the first inventor, or discoverer of the thing, the exclusive right, and asks nothing as to the mode or extent of the application of his genius to conceive or execute it. It must also be useful, that is, it must not be noxious or mischievous, but capable of being applied to good purposes; and perhaps it may also be a just interpretation of the law, that it meant to exclude things absolutely frivolous and foolish. But the degree of positive utility is less important in the eye of the law, than some other things, though in regard to the inventor, as a measure of the value of the invention, it is of the highest importance. The first question then to be asked, in cases of this nature, is, whether the thing has been done before. In case of a machine, whether it has been substantially constructed before; in case of an improvement of a machine, whether that improvement has ever been applied to such a machine before, or whether it is substantially a new combination. If it is new, if it is useful, if it has not been known or used before, it constitutes an invention within the very terms of the Act, and, in my judgment, within the very sense and intendment of the Legislature. I am utterly at a loss to give any other interpretation of the Act; and indeed, in the very attempt to make that more clear, which is expressed in unambiguous terms in the law itself, there is danger of creating an artificial obscurity. With these views, I did not hesitate to tell the jury at the trial, that the true question for them to decide was, whether the improvement, secured by the patent, had ever been thought of, or applied to the original machine, by any other person, before the plaintiff conceived and executed the combination. If they were of opinion 1 Act 1793, c. 11 [1 Stat. 318]. that it had not been, and that he was the author of it, then he was the inventor within the meaning of the Act, and entitled to a patent. All the other remarks, introduced as the ground-work of the motion for a new trial, were mere illustrations of this single principle, which was brought home to the case on trial, by a direct application. My judgment on this point remains unshaken by the subsequent arguments, urged at the bar. The case of Brunton v. Hawkes, 4 Barn. & Ald. 541, is thought to countenance the doctrine contended for on behalf of the defendant. If it did, it might be very material to consider, whether it could govern in the construction of our own Patent Act. But, upon the most careful consideration of that case, it does not appear to me to break in at all upon the law, as the Court has held it on the present occasion. One question there, was, whether there was any novelty in an alleged improvement in the making of ships' anchors. It was proved, that the same operation had been long known and applied for similar purposes in the adze anchor and the mushroom anchor. The Court thought, upon the evidence, the plaintiff's invention, as to the anchor, was not new. Lord Chief Justice Abbott said: "A patent for a machine, each part of which was in use before, but in which the combination of the different parts is new, and a new result is produced, is good, because there is a novelty in the combination. But here the case is perfectly different; formerly three pieces were united together; the plaintiff only unites two; and if the union of those two had been effected in a mode unknown before, as applied in any degree to similar purposes, I should have thought it a good ground for a patent. But, unfortunately, the mode was well known and practised." It strikes me, that the doctrine here laid down is perfectly correct, and such as has been often recognized in this Court. And a careful perusal of the opinions of all the judges, in that case, will fortify, in no small degree, what has been delivered by this Court in the present trial. How, indeed, can it be possible, that an English Court should deem some intellectual labor, beyond the novelty of the combination, necessary for a patent, when it is the acknowledged law of England (different in that respect from our own), that the first importer of an invention, known and used in foreign parts, may be entitled to a patent as the inventor in England? What of intellect is employed in the mere importation of a known machine? An inventor, in the sense of the English law, is the first maker, or constructor, or introducer, in England. Upon the whole, my judgment is, that the motion for a new trial ought to be overruled. Judgment accordingly. 222. MORTON v. NEW YORK EYE INFIRMARY UNITED STATES CIRCUIT COURT, EASTERN DISTRICT OF 5 Blatchf. 116, Fed. Cas. No. 9865 THIS was a motion for a new trial. An action on the case to recover damages for an infringement of letters patent [No. 4848] for an "improvement in surgical operations," granted to plaintiff as assignee of Charles T. Jackson and William T. G. Morton, November 12, 1846, tried before Judge Shipman and a jury, had resulted, under the instructions of the Court, in a verdict for the defendants. The patent was for the well-known and valuable discovery of the effect of sulphuric ether in producing nervous quiet and insensibility to pain, especially during surgical operations. The questions arising upon this patent, and discussed in the opinion of the Court, are so important that the specification is given in full: "Be it known that we, Charles T. Jackson and William T. G. Morton, of Boston, in the county of Suffolk, and state of Massachusetts, have invented or discovered a new and useful improvement in surgical operations on animals, whereby we are enabled to accomplish many, if not all, operations such as are usually attended with more or less pain and suffering, without any, or with very little pain to, or muscular action of, persons who undergo the same; and we do hereby declare that the following is a full and exact description of our said invention or discovery: It is well known to chemists that when alcohol is submitted to distillation with certain acids, peculiar compounds, termed 'ethers,' are formed, each of which is usually distinguished by the name of the acid employed in its preparation. It has, also, been known that the vapors of some, if not all of these chemical distillations, particularly those of sulphuric ether, when breathed or introduced into the lungs of an animal, have produced a peculiar effect upon its nervous system; one which has been supposed to be analogous to what is termed intoxication. It has never (to our knowledge) been known until our discovery, that the inhalation of such vapors (particularly those of sulphuric ether) would produce insensibility to pain, or such a state of quiet of nervous action as to render a person or animal incapable, to a great extent, if not entirely, of experiencing pain while under the action of the knife, or other instrument of operation of a surgeon calculated to produce pain. This is our discovery; and the combining it with, or applying it to, any operation of surgery, for the purpose of alleviating animal suffering, as well as of enabling a surgeon to conduct his operation with little or no struggling, or muscular action of the patient, and with more certainty of success, constitutes our invention. The nervous quiet and insensibility to pain produced on a person is generally of short duration; the degree or extent of it, or time which it lasts, depends on the amount of etherial vapor received into the system, and the constitutional character of the person to whom it is administered. Practice will soon acquaint an experienced surgeon with the amount of etheric vapor to be administered to persons for the accomplishment of the surgical operation or operations required in their respec tive cases. For the extraction of a tooth, the individual may be thrown into the insensible state, generally speaking, only a few minutes. For the removal of a tumor, or the performance of the amputation of a limb, it is necessary to regulate the amount of vapor inhaled to the time required to complete the operation. Various modes may be adopted for conveying the etheric vapor into the lungs. . . . After a person has been put into the state of insensibility as above described, a surgical operation may be performed upon him without, so far as repeated experiments have proved, giving to him any apparent or real pain. . . . We are fully aware that narcotics have been administered to patients undergoing surgical operations, as we believe, always by introducing them into the stomach. This we consider in no respect to embody our invention, as we operate through the lungs and air passages, and the effects produced upon the patient are entirely, or so far different as to render the one of very little, while the other is of immense, utility. The consequences of the change are very considerable, as an immense amount of human or animal suffering can be prevented by the application of our discovery. What we claim as our invention is the hereinbefore described means by which we are enabled to effect the above highly important improvement in surgical operations, viz.: by combining therewith the application of ether, or the vapor thereof, substantially as above specified. In testimony whereof, we have hereto set our signatures, this twenty-seventh day of October A. D. 1846. Charles T. Jackson. William T. G. Morton. Witnesses: R. H. Eddy, W. H. Leighton." S. D. Cozzens and C. M. Keller, for plaintiff. E. H. Owen and B. D. Silliman, for defendants. Before NELSON, Circuit Justice, and SHIPMAN, District Judge. SHIPMAN, District Judge. This is an action at law, brought to recover damages for the infringement of a well-known patent. The case came on to be heard at a prior term of this court, before a jury, and after some testimony had been taken tending to show an infringement by the defendants, the Court, having doubts as to the validity of the patent, arrested the hearing of the evidence, and directed the counsel to argue the question of law arising on the face of the specification. This question as will be obvious, at once, to any one familiar with the law of patents who reads the specificationis, is the subject matter of the alleged invention patentable? The question, after argument, was decided in the negative, and the patent was declared void. The same question is now again presented, on a motion for a new trial, before a full court. The point is one of substance and not of form. It was discussed as such, and will be so decided. Any criticisms which we may make on the language of the specification, will be made only for the purpose of dealing with the subject which that language envelops; and, if at any time we appear to discard the phraseology of the instrument, it will not be because we complain of its terms, but only for the reason that we desire to strip the alleged invention and present it naked for consideration. At common law an inventor has no exclusive right to his invention or discovery. That exclusive right is the creature of the statute, and |