CHAPTER II.

THE SUBJECT OF INVENTION OR DISCOVERY.

§ 68. THE Act of Congress of July 4, 1836, ch. 357, § 6, declares the subject of letters-patent to be "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." In the preceding chapter, we have considered the qualifications of novelty and utility, with reference to all these subjects; and we have now to treat of the several subjects themselves.

§ 69. In England, the Statute of Monopolies made the subject-matter of letters-patent "the sole working or making of any manner of new manufactures within this realm." It has been doubted whether the employment of other phrases has had any great tendency to elucidate the subject. Language may be inadequate to express all the minute distinctions which present themselves, in considering what may, consistently with the purposes and objects of the Patent Law, be the subject of a patent. But whether we have or have not gained any thing in point of precision and certainty, by the enumeration in our statute, perhaps we have not enlarged the subject of patents beyond the general scope of the English law, as judicially expounded. At least, the English exposition of the term "manufactures" will help us to understand what is intended by the classification in our own statute.

§ 70. The cardinal principle, which lies at the foundation

of the Patent Law in England, as well as in this and most other countries, is, that whatever be the character of the subject-matter, or the way in which it is described, the result must be an effect produced in manufactured, as distinguished from elementary matter. The subject-matter of a patent may be either a thing produced or the mode of producing a thing; but it must be the one or the other, and can never be a new discovery of an elementary principle, without practical application to the production of some particular effect in matter. This fundamental rule is deducible not only from the meaning of the term "manufacture," which cannot be made to mean any thing that does not result in manufactured matter in some way but also from the general scope and spirit of the Patent Law, which was not designed to create monopolies in abstract principles or theoretical discoveries, but to promote the arts and manufactures of the country.2

1 " All invention, whatever its object, will consist in new applications, or adaptations. Matter is endowed with certain properties, and subject to certain laws; man cannot alter these properties or impose other laws, but he has the power of applying those properties and of giving occasion for the exercise of those laws according to his will, and the result of the exercise of that will, is exhibited in manufactured as distinguished from elementary matter." Webster on the Subject-Matter of Letters-Patent for Inventions, (London, 1841,) p. 7.

2 "Now the word 'manufactures' has been generally understood to denote either a thing made, which is useful for its own sake, and vendible as such, as a medicine, a stove, a telescope and many others, or to mean an engine or instrument, or some part of an engine or instrument, to be employed, either in the making of some previously known article, or in some other useful purpose, as a stocking-frame, or a steam-engine for raising water from mines. Or it may perhaps extend also to a mere process, to be carried on by known implements or elements, acting upon known substances, and ultimately producing some other known substance, but producing it in a cheaper or more expeditious manner, or of a better or more useful kind. But no merely philosophical or abstract principle can answer to the word manufactures. Something of a corporeal and substantial nature, something that can be made by man from the matters subjected to his art and skill, or at the least, some new mode of employing practically his art and skill, is requisite to satisfy this word. A person, therefore, who applies to the crown for a patent, may

§ 71. But, subject to this restriction, the words, "any manner of new manufactures," in the Statute of Monopolies, have received in construction a comprehensive import. According to the construction of the Courts, the word manufacture is used in the statute in a literal and a figurative sense. It is used in a literal sense, because it clearly includes any species of new manufactured article, or tangible product of industry; or a new machine, the construction or production of which, as an arrangement of matter, is the result at which the inventor aims. But when it is extended to include the mode of producing an old or well-known substance, or an old and well-known effect upon matter, by a new method or process, it seems to be used in a sort of figurative sense; because, in such cases, it is the method or process of producing the thing or the effect that is new, and is the real subject of the invention, and the manufacture, or the result attained in matter, is then made to stand in the place of the new method or process of attaining it.

§ 72. Thus, "manufacture" has been defined to be "some

represent himself to be the inventor of some new thing, or of some new engine or instrument. And in the latter case he may represent himself to be the inventor of a new method of accomplishing that object, which is to be accomplished by his new engine or instrument, as was the case of Watt's Patent, in which he represented himself to be the inventor of a new method of lessening the consumption of steam and fuel in fire-engines, and by his specification he described certain parts to be used in the construction of fire-engines. Or supposing a new process to be the lawful subject of a patent, he may represent himself to be the inventor of a new process, in which case it should seem that the word "method" may be properly used as synonymous with process. The language of the patent may be explained and reduced to certainty by the specification; but the patent must not represent the party to be the inventor of one thing, and the specification show him to be the inventor of another, because, perhaps, if he had represented himself as the inventor of that other, it might have been well known that the thing was of no use, or was in common use, and he might not have obtained a grant as the inventor of it." The King v. Wheeler, 2 B. & Ald. 349, 350.

thing made by the hand of man;"1 and it has also been held to include the practice of making a thing, or of producing a result.2 As in Watt's patent for "a method of lessening the

1 Per Lord Kenyon, in Hornblower v. Boulton, 8 T. R. 99.

2 "It was admitted, at the argument at the bar, that the word 'manufacture,' in the statute, was of extensive signification; that it applied not only to things made, but to the practice of making, to principles carried into practice in a new manner, and to new results of principles carried into practice. Let us pursue this admission. Under things made we may class, in the first place, new compositions of things, such as manufactures in the most ordinary sense of the word; secondly, all mechanical inventions, whether made to produce old or new effects, for a new piece of mechanism is certainly a thing made. Under the practice of making, we may class all new artificial manners of operating with the hand, or with instruments in common use, new processes in any art, producing effects useful to the public. When the effect produced is some new substance or composition of things, it should seem that the privilege of the sole working or making ought to be for such new substance or composition, without regard to the mechanism or process by which it has been produced, which, though perhaps also new, will be only useful as producing the new substance. Upon this ground Dolland's patent was perhaps exceptionable, for that was for a method of producing a new object glass, instead of being for the object glass produced. If Dr. James's patent had been for his method for preparing his powders, instead of the powders themselves, that patent would have been exceptionable upon the same ground. When the effect produced is no substance or composition of things, the patent can only be for the mechanism, if new mechanism is used, or for the process, if it be a new method of operating, with or without old mechanism, by which the effect is produced. To illustrate this. The effect produced by Mr. David Hartley's invention for securing buildings from fire is no substance, or composition of things; it is a mere negative quality, the absence of fire. This effect is produced by a new method of disposing iron plates in buildings. In the nature of things, the patent could not be for the effect produced. I think it could not be for making the plates of iron, which, when disposed in a particular manner, produced the effect; for those are things in common use. But the invention consists in the method of disposing those plates of iron so as to produce their effect; and that effect being a useful and meritorious one, the patent seems to have been very properly granted to him for his method of securing buildings from fire. And this compendious analysis of new manufactures mentioned in the statute, satisfies my doubt, whether any thing could be the subject of a patent but something organized and capable of precise specification. But for the more satisfac

consumption of steam and fuel in fire-engines," which was held, after great consideration, to be a good subject-matter.1 The distinction to which this case gave rise, and which greatly extended the meaning of the term "manufacture," is this: that although a principle, or a rule in mechanics, or an elementary truth in physics, cannot be the subject of a patent, yet a new principle, rule, or truth, developed, carried out, and embodied in the mode of using it, may be the subject of a patent. A mere principle is an abstract discovery, incapable of answering the term "manufacture; " but a

tory solution of the other points which are made in this case, I shall pursue this subject a little further. In Mr. Hartley's method, plates of iron are the means which he employs; but he did not invent those means; the invention wholly consisted in the new manner of using, or I would rather say of disposing, a thing in common use, and which every man might make at his pleasure, and which, therefore, I repeat, could not, in my judgment, be the subject of the patent. In the nature of things it must be that, in the carrying into execution any new invention, use must be made of certain means proper for the operation. Manual labor, to a certain degree, must always be employed; the tools of artists frequently; often things manufactured, but not newly invented, such as Hartley's iron plates; all the common utensils used in conducting any process, and so up to the most complicated machinery that the art of man ever devised. Now let the merit of the invention be what it may, it is evident that the patent, in almost all these cases, cannot be granted for the means by which it acts, for in them there is nothing new, and in some of them nothing capable of approbation. Even where the most complicated machinery is used, if the machinery itself is not newly invented, but only conducted by the skill of the inventor so as to produce a new effect, the patent cannot be for the machinery. In Hartley's case it could not be for the effect produced; for the effect, as I have already observed, is merely negative, though it was meritorious. In the list of patents with which I have been furnished, there are several for new methods of manufacturing articles in common use, where the sole merit and the whole effect produced are the saving of time and expense, and thereby lowering the price of the article, and introducing it into more general use. Now I think these methods may be said to be new manufactures, in one of the common acceptations of the word, as we speak of the manufactory of glass, or of any other thing of that kind." Per Eyre, C. J., in Boulton v. Bull. 2 H. Bl. 492.

1 Boulton v. Bull, ut supra. Hornblower v. Boulton, ut supra.