PATENT PATENTABILITY — continued. PATENT-PATENTABILITY continued. was made wider or narrower or had more or fewer stamp for barrels, consisting of a removable slip sets of reeds, either full or partial. Estey v. Burdett, 109 U. S. 633. 47. There is no patentable invention in applying an old mode of attaching to a stove its projecting parts to attaching the base-pan to the stove. Bussey v. Excelsior Manufacturing Co., 110 U. S. 131. 48. Given a certain kind of block for use in paving streets, a foundation of stone or gravel, and the filling of spaces between the blocks with gravel or sand, the bringing of them together does not involve invention. Phillips v. Detroit, 111 U. S. 604. 49. An adaptation of a patented article to the performance by the means employed under the patent, of a function which its structure and action would suggest to an ordinarily skilful mechanic, is not patentable. Tucker v. Spalding, 13 Wal. 453. 50. A device which consists merely of a stump or peg to prevent the rear part of a cornplanter from tipping back too far, is not patentable, it being such merely as any skilful mechanic would have devised and applied. Brown v. Guild [The Corn-Planter Patent], 23 Wal. 181. 51. There is no patentability in a device consisting of an ornamental chain for necklaces formed of alternate closed links and open spiral links, the latter being finished before they are sprung into the solid links, and the connection being made by springing the links together, instead of soldering them. There is merely the exercise of ordinary mechanical skill. Pearce v. Mulford, 102 U. S. 112. of metal so attached to the paper stamp that the removal of the slip must mutilate the stamp, although new and of superior utility in preventing frauds on the revenue, does not show invention. Hollister v. Benedict & Burnham Manufacturing Co., 113 U. S. 59. 57. If a product is not new, it cannot be the subject of a patent, although the process which produces it may be; as, for instance, paper pulp extracted from wood by chemical agencies alone, which is the same substance as paper pulp obtained from vegetable substances by chemical and mechanical processes. American Wood-Paper Co. v. Fibre Disintegrating Co. [The Wood-Paper Patent], 23 Wal. 566. 58. While a process producing a known substance, e. g., alizarine of madder, is patentable, the product of itself is not, although artificially produced from a substance other than madder. Cochrane v. Badische Anilin`& Soda Fabrik, 111 U. S. 293. 59. The use, not in combination, but in succession, of two things not separately claimed as patentable, is not a patentable combination. Beecher Manufacturing Co. v. Atwater Manufacturing Co., 114 U. S. 523. 60. A patent for a combination can be supported only on its novelty; not on its fitness to be used to make a better article by rendering available a newly discovered property of the material employed. Le Roy v. Tatham, 14 How. 156. 61. Thus, a claim of a combination of machinery "when used to form pipes of metal, under heat and pressure, in the manner set forth, 52. The application of the power of a steam- or in any other manner substantially the same," engine to a vertical capstan by means of the old cannot be supported on a discovery of a propand familiar arrangement of shafts and cog-erty in lead by means of which it can be used to wheels before used in applying the power to a make a new kind of pipe. Ib. windlass, shows no patentable invention, only the ordinary judgment and skill of a trained mechanic being required to conceive or to execute the idea. Morris v. McMillin, 112 U. S. 244. 53. A device which, in effect, consists merely in passing a lead pencil through a piece of indiarubber, which by its own elasticity is kept in place at the head of the pencil, is not patentable. Rubber-Tip Pencil Co. v. Howard, 20 Wal. 498. 54. A combination, to be patentable, must produce a force, effect, or result different from that given by its separate parts; otherwise it is only an aggregation of separate elements. A combination, therefore, which consists only of the application of piece of rubber to one end of a piece of wood which makes a lead pencil is not patentable. [DAVIS, STRONG, and BRADLEY, JJ., dissenting.] Reckendorfer v. Faber, 92 Ú. S. 347. 55. The uniting and compressing of several similar parcels of plastering hair in one bale, for convenience in transporting, is not invention, and not patentable. King v. Gallun, 109 U. S. 99. 56. A device in connection with a revenue 62. A combination is not patentable unless the function of one part modifies that of another, - unless the combination is a new machine of distinct character and function, or produces a result not the mere aggregate of separate contributions. Pickering v. McCullough, 104 U. S. 310. 63. There can be no patentable combination of a portable reservoir of a stove, with a flue in its rear and a base-pan beneath it. Bussey v. Excelsior Manufacturing Co., 110 U. S. 131. 64. Nor between a damper for the middle flue of a three-flue stove and a base-pan or warming-closet. Ib. 65. Patentability as affected by Want of Novelty What constitutes Want of Novelty.] An article, to be new within the meaning of the patent law, must differ from the old by being more or less efficacious, or possess new properties by a combination with other ingredients. Milligan & Higgins Glue Co. v. Upton, 97 U. S. 3. 66. A mere change in the form of a soluble article of commerce, the comminution of the ordinary angular flakes of glue, for instance, by reducing it to small particles so that it may more PATENT PATENTABILITY — continued. readily be put in solution and more easily bandled, and may have an improved appearance and be therefore more salable, does not make it a new article within the meaning of the patent law. Ib. 67. A patent for "an alleged new and useful improvement in ladies' hair nets," held void because the specification and claim described various fabrics which had long been well known and in public use previous to the application; i. e., a set of meshes of coarse thread combined with another set of finer and nearly invisible thread to fill the spaces. Dalton v. Jennings, 93 U. S. 271. 68. A patent for a shovel-plough which does not claim the inclined shovel mould-board, nor the principle of passing the earth over the recess of the plough into the furrow behind, nor the passage of the earth over a recess in the mouldboard, formed exclusively with a curved edge, the edge being described merely as scalloped out so as to form a recess," shows no novelty. Eddy v. Dennis, 95 U. S. 560. 66 69. A patent for an improvement in rings, like martingale rings, the ring consisting merely of a metal core with a covering of a composition like artificial ivory, applied in a plastic state, is void for want of novelty, the patent being for a product, not a process, and both ring and compound being old. Rubber-Coated Harness-Trimming Co. v. Willing, 97 U. S. 7. 70. There is no novelty in the use of gold tubing, itself an old article, in making links of a chain of a spiral form. Pearce v. Mulford, 102 U. S. 112. 71. A patent for an oil-tank car declared void for want of novelty and utility, there being no exercise of the inventive faculty, and the claims clearly being frivolous. Densmore v. Schofield, 102 U. S. 375. 72. A process consisting of thoroughly cooking meat in water heated to the boiling-point, of removing the bone and gristle, of pressing the warm meat into a case with force sufficient to remove superfluous air and moisture, so as to make the meat form a solid cake, and of closing the case air-tight upon the meat, shows neither novelty nor invention. Wilson Packing Co. v. Chicago Packing & Provision Co. [Packing Company Cases], 105 U. S. 566. 73. Nor can a process described substantially as above be deemed to embrace the subjecting of the cases to the Appert process after they are packed and sealed, and the cooking of the meat in water first heated to the boilingpoint, and therefore to be patentable as a new combination, these elements not being included in the claim. Ib. 74. An improvement in trucks for locomotive engines, which consists simply in the application of the old contrivance of a railroad-truck swivelling upon the king-bolt, with transverse slot and pendent divergent links, already in use under railroad cars, to the analogous purpose of forming the forward truck of a locomotive engine, - PATENTABILITY — continued. there being no novelty in the mode of application, does not show patentable invention. Pennsylvania Railroad Co. v. Locomotive Engine Co., 110 U. S. 490. 75. Upon the question of the novelty of a patented invention, the time of the invention, not the time of the application for the patent, fixes priority. Klein v. Russell, 19 Wal. 433. 76. ·Patentability as affected by Prior Public Use or Prior Publication What constitutes such Use, etc.] Under the act of 1793, if the thing patented had been in use, or had been described in a public work, anterior to the supposed discovery by the patentee, the patent was void. Evans v. Eaton, 3 Wheat. 454; Evans v. Eaton, 7 Wheat. 356. 77. So if the inventor had suffered the thing invented to go into public use, or to be publicly sold for use, before applying for a patent. Pennock v. Dialogue, 2 Pet. 1. 78. Whatever the intention of the inventor, if he suffer his invention to go into public use by any means whatever, without an immediate assertion of his right, he is not entitled to a patent. Shaw v. Cooper, 7 Pet. 292. 79. What delay of the inventor in obtaining a patent, and what use by the public before application, will defeat the inventor's right thereto. Ib. 80. Under Rev. Sts. § 4886, public use for more than two years with consent of the inventor avoids the patent. Consolidated Fruit-Jar Co. v. Wright, 94 U. S. 92; Manning v. Cape Ann Isinglass & Glue Co., 108 U. S. 462. 81. The use of an invention by the inventor or by others under his direction, made in good faith, solely to test its qualities, remedy its defects, and bring it to perfection, is not a public use of it within the meaning of the patent law, although others thereby derive a knowledge of it. Elizabeth v. American Nicholson Pavement Co., 97 U. S. 126. 82. Where an inventor of a wooden pavement, therefore, for the purpose of testing it, puts down a small section of it, at his own expense, on a public road belonging to a corporation which receives tolls, and of which he is a stockholder and the treasurer, there is no public use of the invention such as should deprive the inventor of the benefit of his patent. Ib. 83. Where an inventor gives the invented article, without restriction or injunction of secrecy, to another to be used, its use by the donee is public within the meaning of the statute, although the article, a corset-spring, for instance, is such that its use is in its nature private. [MILLER, J., dissenting, holding a private use which leads to no reproduction, and which leaves the public at large as ignorant as before the invention, no abandonment.] Egbert v. Lippmann, 104 U. S. 333. 84. So where an inventor sells a safe with the plates of the door secured by conical bolts screwed into the plates, the ends of the bolts being flush PATENT PATENTABILITY - continued. with the surfaces of the door, there is a public use of the bolts. Hall v. Macneale, 107 U. S. 90. 85. There is a public use such as to defeat a patent where the invention is of a process, made by a workman in a manufactory, communicated by the inventor to his employer and others, and openly used in the factory for several years. Worley v. Tobacco Co., 104 U. S. 340. 86. The consequences of such use are not altered by an assignment by the inventor to his employer of an interest in the invention. Ib. 87. A previous publication, to invalidate the patent, must be such as to enable a person skilled in the art to which the invention relates to make the article described. Seymour v. Osborne, 11 Wal. 516; Cohn v. United States Corset Co., 93 U. S. 366; Downton v. Yeager Milling Cɔ., 108 U. S. 466. See Sewall v. Jones, 91 U. S. 171. 88. But a prior publication may defeat the patent, although it does not describe the invention perfectly in every detail, if the defects of description are such as mere mechanical skill unaided by invention might remove. Pickering v. McCullough, 104 U. S. 310. 66 89. A patent for an improvement in corsets issued on a specification of slots or pockets for the bones, closed or stopped in the weaving, and varying in length relatively to each other as desired," a woven corset with pockets closed at a uniform distance from the edge being disclaimed, is invalidated by a previous publication describing an invention differing from the specification only in being silent as to variation in the length of pockets. Cohn v. United States Corset Co., 93 U. S. 366. 90. A patent cannot be sustained under the act of 1836 where the invention was known previously to at least five persons, and probably to many others, and was tested, shown to be successful, and used. Coffin v. Ogden, 18 Wal. 120. 91. Patentability as affected by Anticipation What constitutes Anticipation.] A machine anticipates an invention of a machine in no respect materially different except in being larger and stronger, and so better fitted for heavy work. Woodbury Patent Planing-Machine Co. v. Keith, 101 U. S. 479. 92. In order that an invention may have effect as an anticipation of a subsequent invention, it is not material that the inventor perceive and state all its advantages. Stow v. Chicago, 104 U. S. 547. 93. A refrigerator with an open-bottom icebox, and a partition with openings at the top and bottom so arranged that the air cooled by the ice will descend in one compartment and ascend and return to the ice by the other, is anticipated by one in which the cold air descends by a mere conduit, although in the former the descending current is chiefly used for refrigeration, and in the latter the ascending. Roberts v. Ryer, 91 U. S. 150. 94. A process for preserving Indian corn in the green state by removing the kernels from the cob, putting them in cans and exposing the sealed cans to heat of the temperature of boiling water, puncturing, resealing while hot, and heating again, is anticipated by a process for preserving any kind of food, animal or vegetable, by put ting it, in whatever form, whether intact or stul in its husks, into sealed cans, and submitting the cans to heat gradually raised to the like temperature, and after a suitable time gradually lowered again, although the specification of the former recommends a particular way of removing the kernels from the cob. Such recommendation is not of the substance of the process. [CLIFFORD, J., dissenting.] Sewall v. Jones, 91 U. S. 171. 95. A bar or cross-piece for connecting shawl straps and handle, made stiff by the addition of metal, is anticipated by a bar made stiff in a degree by the use of the firmest leather doubled and stitched. Cranch v. Roemer, 103 U. S. 797. 96. An invention of a pavement of alternate tiers of square-ended and wedge-shaped blocks on a foundation of gravel or earth, the wedgeshaped blocks being driven to pack the gravel or earth, is anticipated by a pavement differing only in having the square-ended blocks octagonal in form and in contiguous rows, and the wedgeshaped ones driven in the remaining square spaces. Stow v. Chicago, 104 U. S. 547. 97. An invention of a combined step-cover and wheel-fender, consisting merely of a broad plate fastened rigidly to the lower part of the carriage door and extending downward over the step, is anticipated by a rigid vertical bar attached to the door with a broad plate projecting from its lower end and covering the step. There is no difference in principle or in mode of operation, but only of shape. Gosling v. Roberts, 106 U. S. 39. 98. An invention of a dredging boat with two propellers at the stern and a mud-fan at the bow somewhat like a propeller, designed to stir up the mud at the bottom, and with water-tight compartments so proportioned and arranged that the boat may be sunk and brought into position to work effectively in various depths of water, is anticipated where the water-tight compartments and propellers not materially different have been severally used on different boats, and the selec tion and combination of elements is only what might be made by mechanical skill. Atlantic Works v. Brady, 107 U. S. 192. 99. An invention of an improvement in making artificial teeth which consists of the making of a vulcanite dental plate of a vulcanizable rubher compound, so that teeth, gums, and plate are perfectly joined, without crevices, is not anticipated by experiments which consisted of casting in moulds sets of teeth on a tin base, but from which a tight joint could not be produced, the metal, also, shrinking in cooling, and the experiments for these and for other reasons being aban PATENT-PATENTABILITY · continued. doned. Smith v. Goodyear Dental Vulcanite Co., 93 U. S. 486. 100. A patent for an improvement in swageblocks used for welding and re-forming the shattered ends of railroad rails, consisting of a large anvil with a fixed raised iron block on top nearly as high as a rail, with one face shaped to fit the side of a rail, and a block of the same height with its opposing face shaped to fit the other side of the rail, the latter block being so arranged as by the operation of a cam to move up and grasp a rail placed between the two blocks, is not anticipated by the ordinary angle-iron machine consisting of two blocks, one fixed and the other movable, the former machine holding the rail by the sides with the anvil as a base so that the work of hammering and forming the rail is not done on top of the blocks, while the latter holds one bar of the iron which is to form the angle as in a vise with no base for the bar itself, while the other bar is welded to it and the angle is formed by hammering on top of the blocks. Illinois Central Railroad Co. v. Turrill [Cawood Patent], 94 U. S. 695. 101. Nor by the bayonet machine, which is in form and substance nothing more than a hingevise with jaws so shaped that their lateral surfaces come into contact except for a short space equal to the diameter of a bayonet shank, and used to merely hold the lower segment of the shank in an upright position while the upper segment is turned over. Ib. 102. Nor by a machine consisting of a stationary die, part of a frame against which one side of a rail is placed, to resist lateral pressure exerted on a sliding die on the other side of the rail and pressure on another die from above, there being no anvil, and apparently no way in which the rail may be worked on from above. Ib. 103. A stone-crushing machine, consisting of two nearly upright convergent adjustable jaws, to one of which a limited and unvarying vibratory movement is imparted by a revolving shaft, a fly-wheel also being used to equalize the strain, is not anticipated by an ice-crushing machine consisting of a hopper with one movable side, the other sides having projections to split the ice, the motive power being supplied by a hand-lever and converging adjustable jaws, revolving shaft, and fly-wheel being wanting. Blake v. Robertson, 94 U. S. 728. 104. Nor is it anticipated by an ore-crushing machine consisting of a cylindrical nut or pestle in a basin, a crushing motion being communicated to the pestle by a lever attached, there being here neither converging jaws, revolving shaft, nor fly-wheel. Ib. 105. A lubricator in which the lubricant is forced from the cup or reservoir by hydrostatic pressure applied through a pipe entering the reservoir near its bottom and in which the lubricant is kept separate from the water by the difference in gravity, is different from one in which a pipe is PATENT PATENTABILITY continued. made to enter in like manner for the purpose of melting the lubricant; and an invention of the latter does not anticipate the invention of the former. Garratt v. Seibert, 98 U. S. 75. 106. An invention of a steak-broiler, consisting of an upright metal cylinder with a lid at the top, an open bottom traversed through the middle by a V-shaped trough filled with a substance which is a non-conductor of heat, and each side of which the flame may ascend in equal sheets, the whole so arranged that the steak, clasped by a wire holder, may be placed vertically in a dripping-pan placed in the trough, and so broiled on both sides equally and at the same time, and the juice of the meat be thereby saved, is not anticipated by a broiler having no such trough, and no arrangement for evenly distributing the flame along the two sides of the meat, although consisting of a cylinder with an opening in the bottom and a fixed vertical wire arrangement for holding the steak. Sharp v. Dover Stamping Co., 103 U. S. 250. 107. Nor by one consisting of a broiling chamber with a vertical steak-holder close to one side of the chamber, a removable side having a pan to catch the gravy attached at the bottom, a central opening for the flame, and two deflectors intended to distribute the heat evenly, there being no such trough, and the proper distribution of the heat not being effected. 1b. 108. An invention for adapting the bat-wing burner to the burning of air-gas, consisting in perforating the base of the burner tube, surrounding the burner with a tube open at the top but closed at the bottom, and united to the burner below the perforations, thereby furnishing a regulated supply of gas outside of the burner, directed toward the tip and increasing the steadiness and power of the flame, is not anticipated by a bat-wing burner slitted nearly to its base, with a surrounding-tube smaller at top than at bottom, so arranged as, on being screwed down on the tube, to press against a conical part of the tube near its top and close the slit, although by not screwing the tube down as originally intended an additional outside supply of gas might be obtained, the tube not having been used in that way. Clough v. Barker, 106 U. S. 166. 109. Given the former of those combinations, the application thereto of a tubular regulating valve carried by an adjustable cylinder inserted within the burner tube is not anticipated by a burner in which the regulating valve is carried by the surrounding tube on the outside. Ib. 110. Nor does it anticipate a combination which, although like it in principle, in its method of supplying additional gas, and in its valve arrangement for regulating the supply, differs from it in dispensing with one of the pieces, in being less expensive, and in keeping the burner and the flame always in the same position instead of turning them around in regulating. Clough v. Gilbert & Barker Manufacturing Co., 106 U. S. 178. continued. PATENT - REISSUE 5. Where a new patent is granted on surren PATENT - PATENTABILITY — continued. 111. Given several inventions of washboards made of sheet-metal with the surface broken into variously shaped protuberances formed of the body of the metal, a patent for a washboard with protuberances of a different shape will not preclude the issue of a patent to another for a wash-der of the original, for alleged defective or insufboard with protuberances of still a different shape, the difference being substantial and not colorable. Duff v. Sterling Pump Co., 107 U. S. 636. Identity between things, in general. See PATENT-INFRINGEMENT. PATENT POWER OF CONGRESS Power to modify the Rights of the Patentee after Issue of the Patent To decide that one is the Inventor.] Congress has power to modify the rights of a patentee and of the public in a patent-right after issue of the patent, if it does not thereby take away existing rights to property. McClurg v. Kingsland, 1 How. 202. 2. Quære, whether congress may decide that one is the inventor of a certain thing so as to preclude judicial inquiry. Evans v. Eaton, 3 Wheat. 454. ficient specification, the specification cannot be charged in substance, either by the addition of new matter or by the omission of important particulars, so as to enlarge the scope of the invention, but, in general, only to render it more definite and certain, so that it may embrace the claim made. Russell v. Dodge, 93 U. S. 460. 6. The patentee, and his representatives as well, may, on a reissue, enlarge or restrict the claim so as to give it validity and secure the invention. Providence Rubber Co. v. Goodyear, 9 Wal. 788. 7. The right to a reissue may be lost by laches. Johnson v. Flushing & North Side Railroad Co., 105 U. S. 539. And see Gage v. Herring, 107 U. S. 640. 8. A reissue cannot be granted for the purpose of enlarging a claim, unless the application for the reissue is made with due diligence. If the application is delayed for four years the reissue Right to surrender for is void, no sufficient excuse for the delay being Lost by Laches. shown. [MILLER, J., dissenting.] Mahn v. Harwood, 112 U. S. 354. PATENT - REISSUE a Reissue See pl. 1-9. Reissue must not be on a Claim different from the Original Identity, presumed, when open to Proof, how determined. Reissue void as to Matter disclaimed. See pl. 10-45. When Application for Reissue is complete· Effect of Surrender and Reissue-Power of Officers to accept a Surrender. See pl. 46-59. 1. Right to surrender for a Reissue Lost by Laches.] One may surrender his patent, and by an amendment cure the defect by which it is rendered invalid, as well where the defect is in the claim as where it is in the specification. Battin v. Taggert, 17 How. 74. 2. Such amendment of a defective claim will protect the right of the patentee to everything within the scope of the original invention. Ib. 9. A reissued patent is within the spirit of that provision of the law which permits the patentee, when through inadvertence, accident, or mistake he has claimed more than that of which he was the original inventor, to surrender his patent and take out a reissue. Gage v. Herring, 107 U. S. 640. 10. Reissue must not be on a Claim different from the Original - Identity, presumed, when open to Proof, how determined - Reissue void as to Matter disclaimed.] A reissued patent must be for the same invention which formed the subject of the original, or, where divisional reissues are granted, for a part thereof. It must contain nothing substantially new or different. Giant Powder Co. v. California Powder Works, 98 U. S. 126. 11. The final clause of Rev. Sts. § 4916, which provides that amendments may be made in certain cases on proof satisfactory to the commissioner that the new matter was a part of the original invention and was omitted by mistake, 3. Thus, one took a patent merely for the combination of an apparatus for breaking coal, of which he was the inventor, with an apparatus for screening, which he did not invent, and after-etc., does not alter the rule. Ib. wards surrendered it, and took another for the breaking apparatus alone, it was held that he did not deprive himself of the right to a patent for the breaking apparatus by describing it and not claiming it on the issue of the first patent. Ib. 4. Where an inventor limits his original claim and takes out a patent with a claim narrower than his invention, through a mistake of the commissioner of patents in supposing the original claim to cover prior inventions, the commissioner, on discovering his mistake, may grant a 12. Quære, whether that clause relates to all patents, or only to patents for machines. Ib. 13. Where a patent fully and clearly describes and claims a complete specific invention, and is not inoperative or invalid by reason of a defective or insufficient specification, a reissue cannot be had for the purpose of expanding and generalizing the claim so as to cover an invention not specified in the original. James v. Campbell, 104 U. S. 356; Clements v. Odorless Excavating Apparatus Co., 109 U. S. 641. |