experiments towards putting it in practice. It will not be enough to take away the claim of first invention to show that suggestions aided the claimant. It must appear that they would furnish all the information necessary to accomplish the result.2 Nor will it invalidate a patent to show that every part of the machine. described in it is not the original invention of the patentee; that is only necessary as to the parts claimed as his own invention.3 But the employment of mechanical skill to construct a machine in accordance with ideas furnished by another, gives no right to the invention. The amount of labor and expense to which a claimant has been put does not properly enter into the question of the right to the patent. A person is not deprived of his right to an invention made while in the service of another, unless his employment embraced the exercise of his inventive faculties. (a) Claim for a patent for improvements upon existing machines.It is a well-settled rule that there may be a patent for an improvement upon an existing machine, whether the latter be itself patented or not. In such a case, the inventor of the improvement must confine himself to a patent for that.7 So, if old materials and old principles be used in a state of combination, to produce a new result, there may be a patent. The invention consists in the combination, and the combiner is, for the purposes of a patent, the "first" inventor to that extent.8 A patentee may have a second patent for an improvement on the thing first patented. Under these rules it is not sufficient merely to place old parts in juxtaposition. There must be invention. This implies a new or peculiar function developed by the combination; all the elements must so enter in that each qualifies the others.10 Invention must be distinguished from mere mechanical skill. So, it has been held, that a combination of old elements is patentable where a new and useful result is produced by their 1 Washburn v. Gould, 3 Story, 122. See Cahoon v. Ring, 1 Cliff. 592. Ex parte Henry, L. R. 8 Ch. App. 167. 2 Pitts v. Hall, 2 Blatch. 229. Allen v. Rawson, 1 C. B. 551. 3 Holliday v. Rheem, 18 Pa. St. 465. 4 Yoder v. Mills, 25 Fed. R. 821. 5 Crane v. Price, 4 M. & G. 580. 353. 8 Hailes v. Van Wormer, 20 Wall. Mathews v. Flower, 25 Fed. R. 830. 10 Pickering v. McCullough, 104 U. S. 310; contra, Stutz v. Armstrong, 20 Fed. R. 843. 11 Scott Mfg. Co. v. Sayre, 26 Fed. R. 153; Peard v. Johnson, 23 Id. 507; Atlan 6 Hapgood v. Hewitt, 11 Biss. 184. tic Works v. Brady, 107 U. S. 192; Aff'd, 119 U. S. 226. Beecher Mfg. Co. v. Atwater Mfg. Co., 7 Evans v. Eaton, 7 Wheat. 356; Whit- 114 U. S. 523. temore v. Cutter, 1 Gall. 478. (a) Cf. Solomons v. United States, 137 U. S. 342; Dalzell v. Dueber Mfg. Co., 149 U. S. 315; Lane & Bodley Co. v. Locke, 150 U. S. 193; Jencks v. Langdon joint action, or an old result in a cheaper or more advantageous manner.1 A patent for "improvements," -e. g., by the patentee, — is, to some extent, construed differently from an original patent, since a claimant in his specification may not only refer to the improvement which he now claims, but to former rights as something known, and only necessary to be referred to for the purpose of explaining the claim. This last matter is not to be construed with more strictness and precision than is necessary to enable it to fulfil that purpose of explanation for which it was introduced. Accordingly, where the patentee of the improvements had referred to electric currents transmitted through "metallic circuits," and a subsequent improvement (alleged to be an infringement) used "metallic circuits" in part, and the earth in part, it was decided that the expression "metallic circuits" meant metallic circuits "so far as it is material to the improvements claimed that they should be so;" and the defendants having used wholly metallic circuits in a respect material to the improvements of the plaintiff, they were held liable.2 This general subject will be more fully considered under the head, "The subject-matter of a patent." It is now necessary to notice the qualifications imposed by the statute upon the right to obtain a patent, whereby an application may be defeated notwithstanding patentability. Invention described in a printed publication, either here or in a foreign country. A true first inventor or discoverer, so far as his own knowledge is concerned, may fail to obtain a patent, or, if he obtains it, may be defeated because the invention has been described in some printed publication before his own invention or discovery.3 If this fact appears, it is a good defence to an action for an infringement.4 Unless so described or patented, the inventor here is entitled to a patent, if he believed himself to be the first inventor.5 The rule is established in England that in order to invalidate a patent by a prior book publication, it is not enough to show that the invention was described in a published book, but it must also appear that it became known to a sufficient part of the "public." 1 Railway Reg. Mfg. Co. v. No. Hudson Co. R. R. Co., 26 Fed. R. 411; Davis v. Fredericks, 21 Blatch. 556. 5 O'Reilly v. Morse, 15 How. U. S. 62, 110; Hays v. Sulsor, 1 Fisher Pat. Cas. 532; Bartholomew v. Sawyer, 4 Blatch. 2 Telegraph Co. v. Brett, 10 C. B. 838, 347; Doyle v. Spaulding, 19 Fed. R. 744. Plimpton v. Spiller, L. R. 6 Ch. D. 880, 881 (1851). 8 See U. S. Rev. Stats. § 4886. 4 Judson v. Cope, 1 Fisher Pat. Cas. 615. 412. 6 The word "public" here seems to mean persons conversant with the particular subject, or persons who are desirous of taking out patents for new inventions, and therefore desirous of making themselves acquainted with the course of inventions generally.1 Under this principle it was held not to be sufficient that an American book of illustrations containing a drawing of the invention was on a book-shelf in the Patent Office, but not entered as a donation in the usual catalogue, though it appeared that the librarian saw it before the patent was taken out in England.2 It is enough, however, if known to the public, though not used.8 Invention first patented in a foreign country. This is a ground for denying to an inventor here a patent, or defeating it if granted. This rule does not apply to the inventor or discoverer who obtained the foreign patent. He is entitled to a patent here under the terms of the Revised Statutes.4 The language of this section is: "No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented, or caused to be patented, in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application" for the patent here. The time must expire at the same time with that of the foreign patent, and must in no case exceed seventeen years. Invention known or used by others in this country. This fact will destroy the right of a claimant, without reference to the point whether the invention or discovery is described in any printed book. The knowledge or use may be proved as a fact.5 Invention or discovery suffered to go into public use by inventor or discoverer. This act is fatal to a patent if the public use be . suffered to exist for two years. (a) The same principle exists in England, but no definite time is fixed there. It is well settled that there must be no public use by the inventor or others with his consent prior to the grant of the patent." Some question may arise as to the meaning of the expression "public use" in this connection. It does not mean trials of an incomplete invention by way of experiment.1 (a) It does, however, include a case where it comes to the knowledge of others than the inventor, though not to the public at large.2 A wide interpretation prevails in this country. In a recent case it was decided that where the invention had been communicated to a single individual, and used by that person without any injunction of secrecy for more than two years before the patent was applied for, it had gone into public use. This seems to be a very unsatisfactory construction, as it gives no force to the word public. It was dissented from by Mr. Justice MILLER. 8 However, prior use must be proved beyond a reasonable doubt.1 The effect of prior public use was made severe upon the inventor by an Act of Congress of March 3, 1839. As the law then stood, the inventor lost his right to the patent, though the invention had gone into public use without his consent. This rule was very recently applied to the great case of the "driven well" (Green's patent). The same policy is continued under the Revised Statutes incorporating the act of 1839 with a later act of 1870.6 If a public use is proved for the required two years prior to application for a patent, the burden of proof will be on the appli cant to show by convincing proof that the use was not public in the sense of the statute, but was for the purpose of perfecting an incomplete invention by tests and experiments.7 Abandonment. A patentee may so conduct himself as to lead to the inference that he has abandoned his invention to the public. This view may be taken without reference to the matter of public It is a question of fact, as showing intention. A recent illustration is found in the case where, an application having been rejected at the Patent Office, the applicant took no steps for eight years to reinstate it. There was, accordingly, a presump use. tion of abandonment.s The Revised Statutes of the United States provide that any citizen of the United States, or alien resident for one year, who has made oath of his intention to become a citizen, who makes any new invention or discovery, and desires further time to mature it, may file in the patent office a caveat setting forth the 300. 1 In re Newall, 4 C. B. N. s. 269. 2 Carpenter v. Smith, 9 M. & W. 8 Egbert v. Lippmann, 104 U. S. 333. 4 Wetherell v. Keith, 27 Fed. R. 364. Andrews v. Hovey, 123 U. S. 267, con struing statute of March 3, 1839; s. c. cu 7 Smith & Griggs Mfg. Co. v. Sprague, 123 U. S. 249. 8 U. S. Rifle, &c. Co. v. Whitney Armз Co., 118 U. S. 22. See post, p. 538. (a) Harmon v. Struthers, 43 Fed. R. 437; s. c. 57 Id. 637. design of the invention and its distinguishing characteristics, and praying protection of his right until he shall have matured his invention. The caveat, having been filed, is confidential, and is operative for one year, except that if application is made within the year by any other person for a patent with which the caveat would interfere, the commissioner of patents gives notice to the caveator by mail. If the caveator wishes to avail himself of his caveat, he must file his regular application for a patent within three months, the usual time for transmitting the notice to the caveator through the mail being added.1 II. The subject-matter of a patent. The subject will be treated under two heads: (1) What is not patentable; (2) What is patentable. (1) What is not patentable. Though the instances falling under this head are extremely numerous, they seem to be capable of arrangement under four principal classes. 1. Where the subject is a principle or mere property of matter. 2. Where the application is for a result as distinguished from a mode of producing the result. 3. Where, owing to inventions already existing, whether patented or not, there is no novelty in the invention or discovery. 4. Where invention is not exercised, but at most only mechanical skill. 1. There can be no patent for the discovery of a mere property of matter, such as that the inhalation of ether produces insensibility to pain. A new force or principle can only be patented in connection with the means by which it operates. So electricity or steam cannot be exclusively appropriated, except by mechanical inventions or combinations which produce a particular result. A principle is not patentable. It is the device which is patentable. 2. It is a general rule that a patent can only be had for a means of producing a result instead of a result itself. (a) This remark is particularly applicable to a machine as distinguished from a process; for in the latter there may be a patent for the method of producing the result, and also a separate claim and patent for the result itself.4 The distinction between a machine and a process has already been adverted to. In the former the mechanical powers are used, while in the latter the chemical forces are employed. Of this, a good example is the manner of treating India rubber by 1 U. S. Rev. Stats. § 4902. See Phelps v. Brown, 4 Blatch. 362. 2 Morton v. N. Y. Eye Infirmary, 5 Blatch. 116. 8 Smith v. Ely, 5 McLean, 76; Blanch ard v. Sprague, 3 Sumner, 535. * Merrill v. Yeomans, 1 Holmes, 331. (a) Excelsior Needle Co. v. Union Needle Co., 32 Fed. R. 221. |