is itself patentable in its character, may be the subject of a patent where such application is an invention-where it is effected by new means, instruments, or machinery, or new improvements of those already in use. Thus Mr. Justice Johnson says, "the legal title to a patent consists not in a principle merely, but in an application of a principle, whether previously in existence or not, to some new and useful purpose.' He intends the case of an application effected by new apparatus, machinery, or instruments, or processes; such an application as requires invention. In this sense, Mr. Justice Buller says, the new application of the effect of water in changing colors, may be the subject of a new patent, when applied in a new manner, and by new processes, to a species of manufacture to which it had not been before applied. He illustrates this in the case of the invention of water-tabbies, which "owed its rise to the accident of a man's spitting on a floor cloth, which changed its color; from which he reasoned on the effect of intermixing water with oils or colors, and found out how to make water-tabbies, and had his patent for water-tabbies only. But if he could have had a patent for the principle of intermixing water with oil, or colors, no man could have had a patent for any distinct manufacture, produced on the same principle. Suppose painted floor cloths to be produced on the same principle, yet as the floor cloth and the tabby are distinct substances, calculated for distinct purposes, and were unknown to the world before, a patent for one would be no objection to a patent for another."'39 So where the shearing of cloth from list to list by means of shears, was known, and the shearing it from end to end by rotary cutters was also known, it was held that a machine constructed so as to shear from list to list by means of rotary cutters, was such an invention as would entitle its author to a valid patent.40 This was not a mere use of the rotary cutter for another purpose, but some contrivance and machinery must have been necessary in order to move the cloth under the cutter transversely, other than that necessary to move it lengthwise, and it was this contrivance or machinery, which was the foundation of the patent. A known mode of operating or process of manufacture, merely applied to new objects, has never been held to be patentable. Thus the Court of King's Bench held that a new application to the manufacture of one kind of anchors, of a mode of manufacture before practised in some other kinds, could not be a subject of a valid patent." They assumed 40 Lewis v. Davis, 3 Car. & P. 502. 992 11. Bl. 488. Mr. Jus no doubt that this mode of manufacturing an anchor was entirely obvious to any workman who had been conversant with the use of the same mode, in other instances, and, that no material change or contrivance, invention or discovery, was necessary in order to manufacture an anchor in this way-that is, it was substantially the same process. tice Heath suggests that it is doubtful whether a new application of a machine is patentable. And he might for the same reason extend the query to the case of a new application of a method or process. He says, "If there may be two different species of patents, the one for an application of a principle to an old machine, and the other for a specific machine, one must be good and the other bad. The patent that admits the most lax interpretation should be bad, and the other alone conformable to the rules and principles of common law, and to the statute on which patents are founded." He implies that a patent for the application of a new principle to an old machine is not a good subject of a patent. But whether it will be so or not, will depend on the considerations which have been stated already. There certainly is no such dilemma as Mr. Justice Heath seems to suppose; for if it be admitted that a machine may be patented, it does not follow 42 Boulton v. Bull, 2. H. Bl. 481.. that a patent for the application of a principle is therefore void. On the contrary, we have seen that such a patent may be valid. The true distinction on this subject is clearly pointed out by Mr. Justice Story, who says, "To entitle a party to a patent for a whole machine, it must in substance be a new machine; that is, it must be a new mode, method, or application of mechanism, to produce some new effect, or to produce an old effect in a new way.. 9943 But a mere naked application of what is known to a new purpose, without any new apparatus, means, or instruments, is not patentable. Mr. Justice Buller says, "Suppose the world were better informed than it is, how to prepare Doctor James's fever powder, and an ingenious physician should find out that it was a specific cure for a consumption, if given in particular quantities, could he have a patent for Doctor James's powder in consumptions, or to be given in particular quantities? I think it must be conceded that such a patent would be void; and yet the use of the medicine would be new, and the effect of it as materially different from what is now known, as life is from death."" So the same judge instanced in the same case the new use of arsenic for the cure of agues, in illustration of the doctrine that a mere new applica 43 Woodcock v. Parker, 1 Gallison, 438. 44 Boulton v. Bull, 2 H. Bl. 487. tion of a known thing was not a foundation of a patent.15 The original inventor of an application of a power or principle, though he may at the same time discover the power or principle, cannot take out a patent for its general application. He is limited to what he has effected. Thus Mr. Justice Heath says, in the cases of Watt and Boulton, on the improvement in the steam-engine, that a patent could not be claimed for the power of steam; it can be claimed only for a particular application of that power, effected by new modes and by new means or processes. "The Marquis of Worcester discovered the expansive force of steam, and first applied it to machinery. As the original inventor, he was clearly entitled to a patent. Would the patent have been good, applied to all machinery, or to the machines which he had discovered? The patent decides the question. It must be for the vendible matter, and not for the principle. Another objection may be urged against the patent, upon the application of the principle to an old machine, which is, that whatever machinery may be hereafter invented would be an infringement of the patent, if it be founded on the same principle. If this were so, it would reverse the clearest position of law respecting patents for "A new application of machinery already known, is said, by M. Renouard, (p. 175. 459.) to be a patentable subject in France. |