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while the ends of the strands are still firmly attached to the sheet, there is no material shortening of the length of the sheet. Thus:
What has Golding accomplished by this alleged improvement ? These records leave no doubt that there are substantial advantages in the method of the patent in suit. As the sheet is not shortened, the completed product is regular in form and ready for many uses to which the shortened sheet of the old method could not be put. The metal worked upon can be much heavier than that which could be successfully manipulated by the old process. The meshes are formed in a uniform and regular way, so that a line drawn through their intersections in one direction is at right angles with a line drawn through their intersections in the other direction. There is no irregularity in the width of the strands. Put to the test of actual use, this record discloses that while the method of the Golding and Durkee patent is still in use in some places in this country, the method disclosed in the patent in controversy is largely in use in the United States, Great Britain and Continental Europe; that it has greatly increased the use of expanded metal in this country, and opened new fields for use where sheets of a regular shape can be used to a greater advantage than they could be when made under the old process.
The learned Circuit Court of Appeals for the Third Circuit seems to have regarded the invention as consisting merely of the improvement of the process in the manufacture of expanded metal by stretching certain portions of the metal when the slit is cut and the mesh is opened. A broad claim of that character was made in the Patent Office, and the file-wrapper and contents show that it was disallowed by the Examiner. The claim in its present form, framed by the Examiner as sufficient to cover the real invention of the patent, was accepted by the applicant, and is now the claim of the patent.
If all that Golding did was to show a method of simultaneously cutting and stretching the metal, the Examiner was doubtless right in holding it to have been anticipated by former inventions, notably the patent to Ohl, No. 475,700, and in a degree in the previous patents to Golding and to Golding and Durkee.
But the patent in suit, embraced in the claim allowed, shows more than a mere method of making open meshes by simultaneously cutting and stretching the metal. It shows a method by which the metal is first cut and stretched in the manner indicated to make the halfdiamond, and then a second operation, coördinating with the first and completing the mesh by the manner in which it is performed in connection with the first. It is the result of the two operations combined which produces the new and useful result covered by the claim allowed in the Patent Office, and, which, when read in connection with the specifications, shows substantial improvement in the art of making expanded metal-work.
But it is said that the patent in suit discloses no means of practically operating the method shown, and therefore, as said by the learned judge in the third circuit, “it is but the expression of a happy thought,” but the requirement of the patent law, in order to make a method or process patentable, is that the patent shall indicate to those skilled in the art the adaptation of means to put it into practice.
We think this record amply discloses, while no complete mechanism is pointed out in the specifications, enough to indicate to those skilled in such matters a mechanism whereby the method of the patent can be put into operation. As said by Judge Severens, delivering the opinion of the court in No. 606, in the Circuit Court of Appeals for the Sixth Circuit:
But here the inventor has gone on to point out that the slitting and bending is to be done by a stationary cutter under the sheet, and upper cutters to cooperate in shearing the slit. These upper cutters are so constructed as to bend down the strand to the proper distance. It is not stated just what the form shall be, but only ordinary skill in mechanics would suggest that the outer side of the cutter might be beveled or a shoulder might be formed thereon to carry down the strand when severed.
Mechanism for the shifting of the sheet and of the kníres was already in use in machines for expanding metal, and, indeed, was common in the mechanical arts. Moreover, experts have here testified that these devices could be arranged by any skilful mechanic, and we have no reason to doubt it.
Golding testifies that he at first executed his process by hand. Other witnesses, skilled in the art, say that they could do likewise from the information found in the patent.
The important thing in this patent is a method of procedure, not the particular means by which the method shall be practiced. Golding's machine patent was not applied for for more than a year and a half after the issue of the patent in suit.
It is suggested that Golding's improvement, while a step forward, is nevertheless only such as a mechanic skilled in the art, with the previous inventions before him, would readily take; and that the invention is devoid of patentable novelty. It is often difficult to determine whether a given improvement is a mere mechanical advance, or the result of the exercise of the creative faculty amounting to a meritorious invention. The fact that the invention seems simple after it is made does not determine the question; if this were the rule many of the most beneficial patents would be stricken down. It may be safely said that if those skilled in the mechanical arts are working in a given field and have failed after repeated efforts to discover a certain new and useful improvement, he who first makes the discovery has done more than make the obvious improvement which would suggest itself to a mechanic skilled in the art, and is entitled to protection as an inventor. There is nothing in the prior art that suggests the combined operation of the Golding patent in suit. It is perfectly well settled that a new combination of elements, old in themselves, but which produce a new and useful result, entitles the inventor to the protection of a patent. (Webster Loom Company v. Higgins, C. D., 1882, 285; 21 O. G., 2031; 105 U. S., 580-591.)
To our minds, Golding's method shows that degree of ingenuity and usefulness which raises it above an improvement obvious to a mechanic skilled in the art, and entitles it to the merit of invention. Others working in the same field had not developed it, and the prior art does not suggest the combination of operations which is the merit of Golding's invention.
It is lastly contended, and this is perhaps the most important question in the case, that in view of the former declarations and opinions of this Court, what is termed a process patent relates only to such as are produced by chemical action, or by the operation or application of some similar elemental action, and that such processes do not include methods or means which are affected by mere mechanical combinations, and a part of the language used in Corning v. Burden (15 How., 252) and Risdon Locomotive Works v. Medart (C. D., 1895, 330; 71 O. G., 751; 158 U. S., 68) is seized upon in support of this contention. We have no disposition to question the decision in those cases.
An examination of the extent of the right to process patents requires consideration of the object and purpose of the Congress in exercising the constitutional power to protect for a limited period meritorious inventions or discoveries. Section 4886 of the Revised Statutes provides :
Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof
may obtain a patent therefor. This is the statute which secures to inventors the right of protection, and it is not the province of the courts to so limit the statute as to deprive meritorious inventors of its benefits. The word "process is not used in the statute. The inventor of a new and useful art is distinctly entitled to the benefit of the statute as well as he who invents a machine, manufacture, or composition of matter. The word “ process” has been brought into the decisions because it is supposedly
an equivalent form of expression or included in the statutory designation of a new and useful art.
What then is the statutory right to a patent for a “process” when the term is properly considered Curtis, in his work on the law of patents, says:
A process may be altogether new, whether the machinery by which it 18 carried on be new or old. A new process may be invented or discovered, which may requlre the use of a newly-invented machine. In such case, if both the process and the machine were invented by the same person, he could take separate patents for them. A new process may be carried on by the use of an old machine, in a mode in which it was never used before. ... In such a case, the patentability of the process In no degree depends upon the characteristic principle of the machine, although machinery 18 essential to the process, and although a particular machine may be required. (Curtis, 4th ed., sec. 14.)
In Robinson on Patents (vol. 1, sec. 167) it is said:
While an art cannot be practiced except by means of physical agents, through which the force is brought in contact with or directed toward its object, the existence of the art is not dependent on any of the special means employed. It is a legal, practical invention in itself. Its essence remains unchanged, whatever variation takes place in its Instruments as long as the acts of which it is composed are properly performed.
And Walker on Patents (4th ed., sec. 8) states that valid process patents may be granted foroperations which consist entirely of mechanical transactions, but which may be performed by hand or by any of several diferent mechanisms or machines.
It is undoubtedly true, and all the cases agree, that the mere function or effect of the operation of a machine cannot be the subject. matter of a lawful patent. But it does not follow that 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, is not the subject matter of a valid patent. The contrary has been declared in decisions of this Court. A leading case is Cochrane v. Deener, (C. D., 1877, 242; 11 O. G., 687; 94 U. S., 780,) in which this Court sustained a process patent involving mechanical operations, and in which the subject was discussed by Mr. Justice Bradley, speaking for the Court, said:
That a process may be patentable, Irrespective of the particular form of the Instrumentalities used, cannot be disputed. • • • Either may be pointed out; but if the patent is not confined to that particular tool or machine, the use of the others would be an Infringement, the general process being the same. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as 18 a plece of machinery. In the language of the patent law, it is an art. The machinery pointed out as sultable to perform the process may or may not be new or patentable, wblle the process itselt may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order ; but the tools to be used in doing this may be of secondary consequence.
This clear and succinct statement of the rule was recognized and applied (Mr. Justice Bradley again speaking for the Court) in the case of Tilghman v. Proctor, (C. D., 1881, 163; 19 O. G., 859; 102 U. S., 707.) In the course of the opinion the learned justice tersely says:
A machine is a thing. A process is an act, or a mode of acting. The one is visible to the eye-an object of perpetual observation. The other is a conception of the mind, seen only by its effects when being executed or performed. Either may be the means of producing a useful result.
That this Court did not intend to limit process patents to those showing chemical action or similar elemental changes is shown by subsequent cases in this Court.
In Westinghouse v. Boyden Company (C. D., 1898, 443; 83 O. G., 1067; 170 U. S., 537) the opinion was written by the same eminent justice who wrote the opinion in Risdon Locomotive Works v. Medart, supra, and, delivering the opinion of the Court, he said:
These cases assume, although they do not expressly decide, that a process to be patentable must involve a chemical or other similar elemental action, and It may be still regarded as an open question whether the patentability of processes extends beyond this class of Inventions.
And added these significant words:
Where the process is simply the function or operative effect of a machine, the above cases are conclusive against its patentability; but where it is one which, though ordinarily and most successfully performed by machinery, may also be performed by simple manipulation, such, for instance, as the folding of paper in a pecullar way for the manufacture of paper bags, or a new method of weaving a hammock, there are cases to the effect that such a process is patentable, though none of the powers of nature be invoked to aid in producing the result. (Eastern Paper Bag Co. v. Standard Paper Bag Co., C. D., 1887, 687; 41 O. G., 231 ; 80 Fed. Rep., 68; Union Paper Bag Machine Co. v. Waterbury, 89 Fed. Rep., 889; Travers v. Am. Cordage Co., C. D., 1898, 125; 70 0. G., 277; 64 Fed. Rep., 771.) This case, however, does not call for an expression of our opinion upon this point, nor even upon the question whether the function of admitting air directly from the train-pipe to the brake-cylinder be patentable or not, since there 18 no claim made for an independent process 10 this patent, and the whole theory of the specification and claims is based upon the novelty of the mechanism.
And the same learned justice wrote the opinion of the Court in Carnegie Steel Co. v. Edward Thompson (185 U. S., 403) and sustained a process patent. If by any construction that process could be said to involve a “chemical or other similar elemental action," no stress was laid upon that fact. This Court, speaking through Mr. Chief Justice Waite, sustained a patent in the Bell Telephone Cases (C. D., 1888, 821; 43 O. G., 877: 128 U. S., 1) for a method of trans