Syllabus. 214 U.S. EXPANDED METAL COMPANY v. BRADFORD. CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE THIRD CIRCUIT. GENERAL FIREPROOFING COMPANY v. EXPANDED METAL COMPANY. CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE SIXTH CIRCUIT. Nos. 66, 606. Argued March 18, 19, 1909.-Decided June 1, 1909. The writs of certiorari in these cases bring conflicting decisions of the Circuit Courts of Appeal to this court for review. The patent involved in this case shows a method for expanding metal consisting of two operations, which when combined produce a new and useful result covered by the claim allowed; and this result, when read in connection with the specifications, shows substantial improvement in the art of making expanded metal work. A new combination of elements, though old in themselves, which produces a new and useful result, entitles the inventor to the protection of a patent. Loom Co. v. Higgins, 105 U. S. 580. While the mere function or effect of the operation of a machine cannot be the subject-matter of a patent, a method of doing a thing so clearly indicated that those skilled in the art can avail themselves of mechanism to carry it into operation can be the subject-matter of a patent. Cochrane v. Deener, 94 U. S. 780. A process and an apparatus by which it is performed are distinct things. They may be found in one patent; they may be the subject of different patents. Leeds & Catlin v. Victor Talking Machine Co., 213 U. S. 301. An invention or discovery of a process or method involving mechanical operation and producing a new and useful result, such as expanding metal, may, and in this case does, entitle the inventor to a patent, and such a process is not limited to those showing chemical action or elemental changes. Risdon Locomotive Works v. Medart, 158 U. S. 68, distinguished. 214 U. S. Argument for the Expanded Metal Co. In this case, held, that the Golding patent No. 547,242 for the process of expanding metal was a substantial improvement of the art involving mechanical operations and producing a new and useful result independently of particular mechanisms for performing such process, and is valid. 157 Fed. Rep. 564, reversed; 164 Fed. Rep. 849, affirmed. THE facts, which involve the validity of certain letters patent of the United States, are stated in the opinion. Mr. Ernest Howard Hunter for the Expanded Metal Co., petitioner in No. 66 and respondent in No. 606: The general question involved in these cases is that of the patentability of processes which consist of mechanical steps or operations only; the specific question is whether the improvement in the art or method of making expanded sheet metal described and claimed in Golding's patent No. 527,242, dated October 9, 1894, is a new and useful invention, and susceptible as such of protection under the patent laws. "Expanded sheet metal," or "expanded metal," as first suggested, as a possibility, and described in earlier patents was merely an idea of the possibility and desirability of such material as a commercial article, and the method of production, which the earlier patents disclosed, was commercially impracticable, and such metal was never practically or commercially produced according to it. "Expanded metal," as a commercial product, capable of use in the industrial arts, was originated by the complainant's patentee, Golding, and one Durkee, under the process described in letters patent No. 320,242, dated June 16, 1885. It was then first commercially and practically produced, became known as "expanded metal" and became extensively used and recognized as a new commercial article; but although commercially successful to some extent it was limited and restricted in its uses by the inherent defects of the process by which it was produced. So great were these defects that some of the companies, both here and abroad, where Golding had Argument for the Expanded Metal Co. 214 U. S. introduced his method, failed to achieve commercial success for about ten years until the improvement in the art described in the patent in suit. This improvement was a radical departure from the former method employed by the patentee. By it the deficiencies and limitations were entirely removed, and the character of the metal was so greatly improved that its adaptability and availability for commercial use were greatly extended. In fact this new process as described in the patent in suit, revolutionized the art of expanding sheet metal, and resulted in its being widely and generally adopted for industrial purposes throughout the world. The patentee's invention consisted in a combination of certain operations in a certain relation to one another and to the material acted upon, by which a new result might be accomplished. The instrumentalities, which might be employed to carry out that invention commercially, were no part of the invention. What the patentee gave to the world was a new method of manipulating or cutting, bending and stretching sheet metal, to produce the thing known as expanded metal. That new method did not depend upon any particular instruments, it could be carried out by anyone by such instruments as might be found best adapted to the purpose. A dozen different machines might be created for carrying out the process; in fact, several different machines have been created. Old machines might be reorganized and made to do the work. Instruments must be used to apply it to practice, but the invention must reside in the method and not in the instruments. The patent laws require that a patentee shall explain his invention in a manner sufficiently clear to enable those skilled in the art to understand it. If the invention is a machine, then the machine must be described sufficiently to enable those skilled in the art to build and operate the machine; if the invention is a process, consisting, as a process must, merely in the performance of certain operations upon an article or substance, independently of the particular instruments employed, 214 U. S. Argument for the Expanded Metal Co. then the patentee must describe the performance of those operations sufficiently to enable those skilled in the art to practice them, leaving to such persons the choice of the instruments used for the purpose. The real defense is: that, even though Golding had invented a new and useful method which was not a machine or a manufacture or a composition of matter, it was not susceptible of protection under the patent laws, because it was a process or method which consisted of mechanical operations and did not involve chemical reactions or elemental changes, relying on Risdon Iron & Locomotive Works v. Medart, 158 U. S. 68, but that case is not in point. As to this see Westinghouse v. Boyden Power Brake Co., 170 U. S. 537; Carnegie Steel Co. v. Cambria Iron Co., 185 U. S. 403; Simonds Rolling Machine Co. v. Hathorn Mfg. Co., 90 Fed. Rep. 201; Melvin v. Thos. Potter Sons & Co., 91 Fed. Rep. 151; Kahn v. Starrells, 135 Fed. Rep. 532; Thomas & Sons Co. v. Electric Porcelain Co., 111 Fed. Rep. 923; Baker Lead Mfg. Co. v. National Lead Co., 135 Fed. Rep. 546; Kirchberger v. American Acetylene Burner Co., 124 Fed. Rep. 764; American Tube Works v. Bridgewater Iron Co., 132 Fed. Rep. 16; Shepard v. Excelsior Furnace Co., 137 Fed. Rep. 399; J. R. Williams Co. v. Miller DuBrul & Peters, 107 Fed. Rep. 290; Peters v. Union Biscuit Co., 120 Fed. Rep. 679; In re Weston, 94 O. G. 1786; S. C., 17 App. D. C. 431; In re Wagner, 105 O. G. 1783; S. C., 22 App. D. C. 267; Ex parte Patterson, 116 Q. G. 2533. The doctrine that processes involving mechanical operations, as distinguished from chemical reactions or elemental changes, are unpatentable, is foreign to the patent jurisprudence of other nations. Boulton v. Bull, Davies' Pat. Cases, 162; King v. Wheeler, 3 Barn. & Ald. 350; Boulton & Watt v. Bull, 2 H. Bl. 493; Jones v. Pearce, 1 Web. Pat. Cases, p. 123; Russell v. Cowley, 1 Web. Pat. Cases, 459; Walton v. Potter, 1 Web. Pat. Cases, 585; Gibson v. Brand, 1 Web. Pat. Cases, 627; Reynolds v. Amos, 3 Pat. Off. Rep. 215; Dowling v. Billington, 7 Pat. Off. Rep. 191; Tubes, Limited, v. Perfecta Seamless Steel Co., VOL. CCXIV-24 Argument for Bradford and Fireproofing Co. 214 U.S. 20 Pat. Off. Rep. 77; Gammons v. Battersby, 21 Pat. Off. Rep. 322. The doctrine that processes are not patentable unless they involve chemical reactions and elemental changes is unjust and contrary to the spirit of the Constitution and the intent of the patent laws. 1 Robinson on Patents, § 167, p. 250; Dowling v. Billington, 7 Pat. Off. Rep. 191; O'Rourke Engineering Construction Co. v. McMullen et al., 160 Fed. Rep. 933, 938. If it be conceded-and it cannot be logically denied that an exercise of the inventive faculties can be involved in the discovery of a combination of functions, acts or operations, by which a new and useful result is obtained, then to deny the patentability of such inventions is to establish a false standard of patentability, and to exclude a large class of meritorious inventors from the protection of the patent laws. Such a false standard is not recognized in other countries, it is not within the spirit of the Constitution or the meaning of the statutes, and we believe it was never the intent of the Supreme Court to create it. Mr. Frederick P. Fish and Mr. Thomas W. Bakewell, with whom Mr. E. Hayward Fairbanks was on the brief, for respondents in No. 66 and petitioner in No. 606: The subject of the patent in suit is the manufacture of expanded metal. This product, expanded metal, was old and the operations for making it were first disclosed and fully described in British specification, No. 2,125 of 1862, and other patents earlier than the one in suit. In 1885 Golding & Durkee patented a machine (patent No. 320,241), which is still largely in use, for making this old product, expanded metal. Their mode of operation was such that they did not greatly strain the metal and they were consequently adapted to cut and expand thin sheets. When, however, Golding came to treat thick sheets, he required cutters especially adapted for that purpose. He therefore devised a machine with knives arranged in a straight row |