been done before in separate machines, the subject-matter claimed as the invention was not new.

§ 24. On the other hand, where the patent claimed, as the invention of the party, a new and useful improvement in the making of friction matches, by means of a new compound, and it was said that the ingredients had been used before in the making of matches, the court said that the true question was, whether the materials had been used before in the same combination, and if not, that the combination was patentable, however apparently simple it might be. That is to say, if the result at which the inventor had arrived, the production of a friction match, by a particular combination of materials, was new, there was a sufficiency of invention, without looking at the apparent facility or difficulty of accomplishing it.1

§ 25. So, too, where it was said, in the defence, that a machine for cutting ice was but an application of an old invention to a new purpose, it being likened to the common carpenter's plough, the court distinguished the machine from

1 Ryan v. Goodwin, 3 Sumner's R. 514, 518. In this case, Mr. Justice Story said: "It is certainly not necessary that every ingredient, or, indeed, that any one ingredient used by the patentee in his invention, should be new or unused before for the purpose of making matches. The true question is, whether the combination of materials by the patentee is substantially new. Each of these ingredients may have been in the most extensive and common use, and some of them may have been used for matches, or combined with other materials for other purposes. But if they have never been combined together in the manner stated in the patent, but the combination is new, then, I take it, the invention of the combination is patentable. So far as the evidence goes, it does not appear to me, that any such combination was known or in use before Phillip's invention. But this is a matter of fact, upon which the jury will judge. The combination is apparently very simple; but the simplicity of an invention, so far from being an objection to it, may constitute its great excellence and value. Indeed, to produce a great result by very simple means, before unknown or unthought of, is not unfrequently the peculiar characteristic of the very highest class of minds."

everything that had been made before, by pointing out that such a combination of apparatus had not been known before.1

§ 26. But where an invention was claimed to be a mode by which the back of a rocking-chair could be reclined and fixed at any angle required, by means of a certain apparatus, the patent was declared void, because the same apparatus or machinery had been long in use, and applied, if not to chairs, at least in other machines, to purposes of a similar nature.2 An examination of the result attained by the plaintiff showed that he had accomplished nothing which had not been done before, but had merely applied an old contrivance to a new purpose.

§ 27. This last case furnishes a clear line of demarkation between invention and a mere application to a new use. It shows that the end, effect, or result attained must be new;

1 Wyeth v. Stone, 1 Story's R. 273, 279. In this case, Mr. Justice Story said: "Assuming the patent to be for the machinery described in the specification, and the description of the invention in the specification to be, in point of law, certainly and correctly summed up, (points which will be hereafter considered,) I am of opinion that the invention is substantially new. No such machinery is, in my judgment, established by the evidence to have been known or used before. The argument is, that the principal machine, described as the cutter, is well known, and has been often used before for other purposes, and that this is but an application of an old invention to a new purpose; and it is not therefore patentable. It is said that it is, in substance, identical with the common carpenter's plough. I do not think so. In the common carpenter's plough there is no series of chisels fixed in one plane, and the guide is below the level, and the plough is a movable chisel. In the present machine there are a series of chisels, and they are all fixed. The successive chisels are each below the other, and this is essential to their operation. Such a combination is not shown ever to have been known or used before. It is not, therefore, a new use or application of an old machine. This opinion does not rest upon my own skill and comparison of the machine with the carpenter's plough; but it is fortified and sustained by the testimony of witnesses of great skill, experience, and knowledge in this department of science."

2 Bean v. Smallwood, 2 Story's R. 408, 410.

and that if the same end, effect, or result has been attained before, it is not new, and there has been no invention, but merely an application of means before known to produce an effect before known, on a new occasion. The purpose itself, which is to be accomplished, is not patentable; but the adaptation of materials to the execution of the purpose, or the apparatus by which the purpose is accomplished, is the true subject of the patent: and if the same purpose has in other instances been accomplished by the same means, the use of those means on a new occasion does not constitute a sufficiency of invention. In other words, the machinery, apparatus, or other means is not new.1

1 In the case last cited, Bean v. Smallwood, Mr. Justice Story said: "The third and last specification of claim, upon the testimony of Mr. Eddy, which is admitted to be true, is equally unsupportable. He says, that the same apparatus stated in this last claim has been long in use, and applied, if not to chairs, at least in other machines, to purposes of a similar nature. If this be so, then the invention is not new, but, at most, is an old invention, or apparatus, or machinery, applied to a new purpose. Now, I take it to be clear, that a machine, or apparatus, or other mechanical contrivance, in order to give the party a claim to a patent therefor, must, in itself, be substantially new. If it is old and well known, and applied only to a new purpose, that does not make it patentable. A coffee-mill, applied for the first time to grind oats, or corn, or mustard, would not give a title to a patent for the machine. A cotton gin, applied, without alteration, to clean hemp, would not give a title to a patent for the gin as new. A loom to weave cotton yarn would not, if unaltered, become a patentable machine, as a new invention, by first applying it to weave woollen yarn. A steam engine, if ordinarily applied to turn a grist mill, would not entitle a party to a patent for it if it were first applied by him to turn the main wheel of a cotton factory. In short, the machine must be new, not merely the purpose to which it is applied. A purpose is not patentable; but the machinery, only, if new, by which it is to be accomplished. In other words, the thing itself which is patented must be new, and not the mere application of it to a new purpose or object." In Huddart v. Grimshaw, Webster's Pat. Cas. 86, Lord Ellenborough said: "In inventions of this sort, and every other through the medium of mechanism, there are some materials which are common, and cannot be supposed to be appropriated in the terms of any patent. There are common elementary materials to work with in machinery, but it is the adaptation of these materials to any particular purpose that constitutes the

§ 27 a. So, too, the substitution of one material for another, in a particular manufacture, if the inventive faculty has not been at work, has been held by the Supreme Court of the United States not to be sufficient to support a patent; and the test whether the inventive faculty has been at work is, whether more ingenuity and skill were required to make the substitution than was possessed by an ordinary mechanic, acquainted with the business. The plaintiff claimed a patent for an improvement in making the knobs of doors, by making them of clay or porcelain, instead of wood or metal. It appeared that the mode of forming the knob, and the mode of fastening it to the shank or spindle were old, and had been used in knobs made of wood or metal. The court said, that 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 invention.1

invention; and if the application of them be new, if the combination in its nature be essentially new, if it be productive of a new end, and beneficial to the public, it is that species of invention which, protected by the king's patent, ought to continue to the person the sole right of vending; but if, prior to the time of his obtaining a patent, any part of that which is of the substance of the invention has been communicated to the public, in the shape of a specification of any other patent, or is a part of the service of the country, so as to be a known thing, in that case he cannot claim the benefit of his patent." See also Hovey v. Stevens, 1 Woodbury and Minot's R. 290, 297, 298, 299, where Mr. Justice Woodbury held it doubtful, whether a change, by merely attaching several knives to a cylinder, to be ground, instead of attaching but one, without any difference being shown in producing the rotary motion, was a sufficient change in form, or principle, or results, to justify a patent.

1 Hotchkiss v. Greenwood, 11 Howard's R. 248, 264. Mr. Justice Nelson, delivering the opinion of the court in this case, said: "The instruction assumes, and as was admitted on the argument, properly assumed, 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

§ 27 b. But, on the other hand, if the end, effect, or result is new, although the same means may previously have been

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 material 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.

It

The difference is formal, and destitute of ingenuity or invention. may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.