the nature of things, require skill and thought and invention so to unite the metal and clay as to make them, together, a firm and substantial article of manufacture; or, second, that the new manufacture produced by the substitution of one material for another in part of the article, and the uniting of the two materials, though of dissimilar qualities, and never before united for that purpose, was not patentable, even though it required skill and thought and invention to unite them; and though the new manufacture thus produced were cheaper and better than any like article ever before known.

1st. The first position, I respectfully contend, the Court had no right to assume. . . . Knobs had been in use many hundred years; potter's ware and porcelain, many thousand; but no one ever before succeeded in uniting the clay and the iron so as to make of the two a substantial and useful article. . .

2d. But the second alternative position is the one on which I understood the Court to rest, namely, that the new manufacture produced by the substitution of one material for another as in this case the substitution of clay or porcelain in the place of metal for the knob, using metal as theretofore for the collet and spindle, was not patentable, though the materials are dissimilar, and were never before united for that or a like purpose; and though it required skill and thought and invention to unite them, and though the new manufacture thus produced was cheaper and better than any like article ever before known. This position cannot be maintained either by reason or authority. The clay or porcelain knob connected with the metal shank is a new and useful manufacture, according to the letter as well as the spirit and intent of our statute. . . .

The counsel for the defendants in error made the following points. The Court now is called upon to decide whether this patent, or whether any patent, can be sustained merely for applying a common, well-known material to a use to which it had not before been applied, without any new mode of using the material, or any new mode of manufacturing the article sought to be covered by the patent..

It is a strange claim, to say the least of it. According to the principle of the claim, one man may claim a patent for making a stove of sheetiron; another may claim a patent for making stoves of cast-iron; another may claim a patent for making stoves of copper; and each may claim, not the right to make a stove of a particular form and shape only, or by any peculiar process of making, but the exclusive right to make all sorts and shapes of stoves out of the particular material named. So another man claims the exclusive right of using ice to cool water; another claims the exclusive right to use ice for cooling wine; another, to use the same article to cool brandy; and a physician claims the exclusive right to use the article of ice to cool a fevered patient's head. Again, one man has been long accustomed to make window-sashes of pine wood; another comes and says he can make window-sashes of cast-iron, and

claims the exclusive right to make all the cast-iron sashes the country may want for the next fourteen years.

To allow such a claim, it appears to us, would be violating the spirit of the Act of Congress. The object of the Act of Congress is to encourage men to devote their time and talent in making new and useful discoveries in the arts, manufactures, and compositions of matter. Why does the Act provide so carefully for new compositions of matter, if an individual could obtain a patent for a use of an element of matter without any composition at all?

The patentee in this case is endeavoring to add a new clause to the patent law. He is claiming the right to apply a common element of nature to a new purpose, without the aid of any new mode or process of working it, and without combining it with any other portions of matter so as to make it a composition. . . .

Mr. Justice NELSON delivered the opinion of the Court.

This is a writ of error to the Circuit Court of the United States for the District of Ohio. The suit was brought against the defendants for the alleged infringement of a patent for a new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain. The improvement consists in making the knobs of clay or porcelain, and in fitting them for their application to doors, locks, and furniture, and various other uses to which they may be adapted; but more especially in this, that of having the cavity in the knob in which the screw or shank is inserted, and by which it is fastened, largest at the bottom and in the form of dovetail, or wedge reversed, and a screw formed therein by pouring in metal in a fused state; and, after referring to drawings of the article thus made, the patentees conIclude as follows:

"What we claim as our invention, and desire to secure by letters patent, is the manufacturing of knobs, as stated in the foregoing specifications, of potter's clay, or any kind of clay used in pottery, and shaped and finished by moulding, turning, burning, and glazing; and also of porcelain."

The instruction assumes, and, as was admitted on the argument, properly assumes, that knobs of metal, wood, etc., connected with a shank and spindle, in the mode and by the means used by the patentees in their manufacture, had been before known, and were in public use at the date of the patent; and hence the only novelty which could be claimed on their part was the adaptation of this old contrivance to knobs of potter's clay or porcelain; in other words, the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise; as it might very well be urged, and successfully urged, that a knob of a new composition

of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent. The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and none the less so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use; and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well-known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob. But this, of itself, can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent. The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purpose intended, but nothing more.

I remember having tried an action in the Circuit in the District of Connecticut some years since, brought upon a patent for an improvement in manufacturing buttons. The foundation of the button was wood, and the improvement consisted in covering the face with tin, and which was bent over the rim so as to be firmly secured to the wood. Holes were perforated in the centre, by which the button could be fastened to the garment. It was a cheap and useful article for common wear, and in a good deal of demand. On the trial, the defendant produced a button, which had been taken off a coat on which it had been worn before the Revolution, made precisely in the same way, except the foundation was bone. The case was given up on the part of the plaintiff. Now the new article was better and cheaper than the old one; but I did not then suppose, nor do I now, that this could make any difference, unless it was the result of some new contrivance or arrangement in the manufacture. Certainly it could not, for the reason that the

materials with which it was made were of superior quality, or better adapted to the uses to which the article is applied. .

Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury; for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor.

We think, therefore, that the judgment is, and must be, affirmed. Mr. Justice WOODBURY dissented.

I feel obliged to dissent from my brethren in this case. It is chiefly, however, in regard to the manner in which some of the facts were submitted to the jury; but, involving as it does an important principle in the practice under our patent system, it may be useful to explain the grounds of my dissent.

...

It has been urged here, that this invention was merely applying clay and porcelain to a new purpose, and that merely a new purpose, in our patent system, is not entitled to protection. 2 Story, 190, 412; Losh v. Hague, Webster Pat. Cas. 207; Curtis on Patents, 87. The meaning of this rule, however, as eviscerated from all the cases is, that the application of an old machine or old composition of matter before patented to a new object, or what is termed a double use, does not entitle one to a patent connected with this new object; because then there is no new machinery or new combination of old parts, as in merely applying a patent grist-mill to a new purpose of grinding plaster.

But it is entirely different if you apply an old earth, or old mechanical power, or old principle in physics, to a new object. There is then a new form adopted, or a new combination for the purpose. And though the elementary material be old, or the elementary principle operating be old, it being difficult to discover a new substance or new elementary principle, yet there is a new shape and consistency and use given, or a new modus operandi, which, if cheaper and better, benefits the world and deserves protection and encouragement.

If these are the effects, however small the skill or ingenuity required to imitate them, they are not excluded from the aid of the laws by either principles or precedents. They are not mere double uses of a previous machine or composition; but a double or additional form or composition of an article for a new purpose.

...

The precedents are quite full on this, and some of them in all respects nearly in point. Similar to this was the hot blast, substituted for the cold in making iron, and a patent for it upheld. Neilson's Case, Webster, P. C. 14. The blast was still air, but in a different condition, leading

to new and useful results. So the use of the flame of gas to finish cloth rather than the flame of oil. Webster, P. C. 99. So steel plates used instead of copper in engraving. Kneass v. Schuylkill Bank, 4 Wash. C. C. 9, 11. That very closely resembles the present case. So pit-coal, substituted for charcoal in making iron, has been deemed patentable (Webster, P. C. 14); and anthracite for bituminous coal (273).

There are also some strong opinions beside these decisions in favor of a change in metal for an instrument being alone sufficient for a patent, if more useful or cheaper. See Webster on Sub. Matter, 25, note, and Curtis on Patents, 8. (Phillips on Patents, 134, if there be any contrivance connected with it.) Indeed, why should it not be sufficient? A new mode of operating or a new composition to produce better results is the daily ground for a patent. All which the Act of Congress itself requires is that the invention be for "any new and useful improvement on any art, machine, manufacture, or composition of matter," etc. 5 Stat. at Large, p. 119, 6. Must it not then be considered such an improvement, if operating with new materials both cheaper and more durable?

Who cannot realize that, since the improved modes of cutting, boring, and shaping, the substitution of iron for, wood in many manufactures might not often be a gain in strength and durability, quite beyond any difference in expense, and be justly patentable? Who, too, would not deem it material to gain by the use of wood or leather, or a cheap metal, instead of gold and silver, for some manufacture or mechanical purpose, when it can be done with increased benefit as well as cheapness? And why is not he a benefactor to the community, and to be encouraged by protection, who invents a use of so cheap an earth as clay for knobs, or in a new form or combination, by which the community are largely gainers?

On the whole case, then, it seems to me that justice between these parties, as well as sound legal principle, requires another trial on instructions upon some points omitted, and instructions in some other respects different in law from what were given in this instance at the first trial.

225. NATIONAL AUTOMATIC DEVICE CO. v. LLOYD

CIRCUIT COURT, NORTHERN DISTRICT OF ILLINOIS.

40 Fed. 89

IN EQUITY. On motion for injunction pendente lite.

1889

Selden Fish and Banning, Banning & Payson, for complainant. W. C. Hoyer, H. D. Paul, B. M. Shaffner, and George Burry, for defendants.

BLODGETT, J. Complainant moves for an injunction pendente lite in this case. The bill charges the infringement of patent No. 410,981,