rfi , 4CL act
Cbc Conservative.
the statute law , nnd on one of the great
est expouiiders of our system of juris
prudence , and I ask that faith be kept
with mo arid that I have justice. "
Is it an answer to such'a petition to say :
"No , what you have done , though new
and useful , 'seems to us not to spring
from that intuitive faculty of the mind
put forth in the search for new results , or
new methods , creating what had not
before existed , or bringing to light what
lay hidden from vision ; but , on the
other hand , to be the suggestion of that
common experience , which arose spon
taneously and by necessity of human
reasoning , in the minds of those who
had become acquainted with the circum
stances with which they had to deal ? ' "
And yet this is what the supreme
court did say in the case of Hollister v.
Benedict ( see 118 U. S. , page 72) ) . But
the question still remains , in a given
case , by what formula , by what process
of reasoning , are we to determine that
subtle and essentially metaphysical dis
tinction between invention and me
chanical skill ; and , in the face of a clear
statute , which makes no such distinc
tion , are we in each equity case to leave
it to the judgment of a chancelor to say ,
in respect to admittedly new and useful
things , "This is invention ; that is mere
mechanical skill ? " Was it "the intui
tive faculty of the mind put forth in the
search of new results , or new methods ,
creating what had not before existed or
bringing to light what lay hidden from
vision , " which told the man who knew
that broken glass on the top of a brick
wall or spikes on an iron fence would
turn a thief , that a barb on a wire fence
would repel a steer ; or was it but the
"suggestion of that common experience
which arose spontaneously and by the
necessity of human reasoning in the
minds of those who had become ac
quainted with the circumstances with
which they had to deal ? " Yet in the
barbed wire cases , 148 U. S. , 275 , * de
cided in 1892 , the supreme court said
that the barb on the fence wire was pat-
eutable invention , while in Hollister v.
Benedict , 118 U. S. , 593 , decided in 1885 ,
the same court said that the invention
there under consideration was merely
mechanical skill. In both cases the par
ticular subjects of the patents were
each recognized as new and useful ; but
in the barbed wire case the supreme
court , without express reference to
Judge Marshall's views , but in fact
recognizing them and the force of the
statute , applied those principles and up-
* In the case of the barbed wire patent , 14Q
U. S. , 275 , the invention of Glidden was not as
broad as the difference between broken glass
on the top of a wall or spikes on an iron fence
and a barb on u fence wire ; it was the differ
ence between the substitution of a coiled wire
prong , illustrated at page 270 of 1J3 U. S. , and
the diamond-shaped prong of the prior Kelly
patent , illustrated at page 270 of 148 U. S. ; and
yet , as this difference was just the difference
between failure and success , it was held to boa
. . . .
- -
a patentable difference.
held the patent , while in the case of
Hnllister v.Beuedict , the supreme court ,
rejecting the plain language of the stat
ute and the principles of Chief Justice
Marshall , wont into metaphysics , and
as a result held the patent invalid , because -
cause , on its own metaphysical distinc
tion , it found therein only the evidence
of mechanical skill. There is nothing
in the statute law which says a thing
which is now and useful and the result
of mechanical skill is not patentablo.
On the contrary , on its face and on any
liberal construction of this statute , such
as Chief Justice Marshall's opinion
would imply , anything which comes
within the broad terms and classes of
the statute and is now and useful is
patentablo , whether or not it bo the re
sult of mechanical skill.
It is true there are certain obvious
cases , such as the mere substitution of
material making a door-knob of clay or
porcelain , instead of brass , iron , or
wood , * which , involving merely the
selection of material , are held not to
constitute a novel thing , and are , there
fore , not patentable , because , in such
cases , it is not "new" to merely substi-
* Hotchldss v. Greenwood , 11 Howard , 2-18
Mr. Justice Nelson , rendering the opinion ol
the supreme court in that case , is thus careful
in stating the premises xipon which the con
clusion of the court is based , so much respect
does ho show for the language of the patent
statute :
"The instruction assumes , and , as was ad
mitted on the argument , properly assumed ,
that knobs of metal , wood , etc. , connected
with a shank and spindle , in the mode and by
the means used by the patentees in their
manufacture , had been before known , and
were in public use at the date of the patent ;
and hence the only novelty which could be
claimed on their part was the adaptation oi
this old contrivance to knobs of potter's claj
or porcelain ; in other words , the novelty con
sisted in the substitution of the clay knob in
the place of ono made of metal or wood , as the
case might be. And in order to appreciate
still more clearly the extent of the novelty
claimed , it l.i proper to add , that this knob oj
potter's clay is not new , and therefore consti
tutes no part of the discovery. If it , was , a very
different question might arise , as it might verj
well bo urged , and successfully urged , that u
knob of a new composition of matter , to which
this old contrivance had been applied , and
which resulted in a new and useful article , was
the proper subject of a patent.
"Tho novelty would consist in the new com
position , made practically useful , for the pur
poses of life , by the means and contrivances-
mentioned. Jt would be a new manufacture ,
and none the leas so , within the mcaniiiy of the
patent law , because the. means employed to
adapt the new composition to a useful jntrpoie
tuere old or irell-known.
"But in the case before us , the knob is not
new , nor the metallic shank and spindle , nor
the dovetail form of the cavity in the knob ,
nor the means by which the metallic shank is
securely fastened therein. All these were well-
known , and in common use ; anil the only thlny
new is the substitution of a knob of a different
material from thai heretofore used In connec
tion with this arrangement ,
"Now it may very well bo that , by connect
ing the clay or porcelain knob with the metal
lic shank in this well-known mode , an article
is produced better and cheaper than in the case
of the metallic or wood knob ; but this does not
result from any new mechanical device or con-
trivanco.-but from the fact- that the material
J
tuto one material for another ; but , on
the other hand , let it bo shown that the
new material in its new application per f ?
forms some new function , as in the case /
of used nonconductor
gutta-percha as a -
tor for wire , when a similar material
had previously been used simply to pre
vent wire from rusting , and. presto , wo
have a patentable invention ( Colgate v.
Western Union Telegraph Co. , 15
Blatchf. , 865)- ) }
Novelty mid Utility.
These cases illustrate that , after all , it
is only novelty , combined with utility ,
that is , in fact , the test which should be
applied. In the door-knob case , as the
court found , from the facts presented ,
that the patented device did not show
the slightest discovery , in any sense , but
merely the selection of materiel applied
in exactly the ohl way , and because the
patented contrivance did not show the
slightest mechanical skill or ingenuity ,
but merely the selection of old materials ,
accomplishing the same purpose in the
same way , the court hold the patent void
for want of novelty. It distinctly ap
pears from the opinion of the court in
of which the knob is composed happens to bo
better adapted to the purpose for which it Is
made. The improvement consists in the Hiipt'ri-
oi-ity of the material , and which is not new ,
over that previously employed in milking \ho \
knob.
"But this , of itself , can never bo the subject ,
of a patent. No ono will pretend that a ma
chine , made , in whole or in part , of materials
better adapted to the purpose for which it is
used than the materials of which the old one is
constructed , and for that reason bettor and
cheaper , can bo distinguished from the old ono ;
or , in the sense of the patent law , can entitle
the manufacturer to a patent. "
fin showing the novelty of the patent in the
case of Colgate v. Western Union Telegraph
Co. , Judge Blatchford , rendering the opinion
of the court , states :
"The combination of gutta-percha and met
allic wire in such form as to incase a wire or
wires , or other conductors of electricity , with
the non-conducting substance ( gutta-percha ) ,
making a 'submarine telegraph cable'at once
lloxiblo and convenient , which may bo sus
pended on poles in the air , submerged in water ,
or buried in the earth to any extent , for atmo
spheric and submarine telegraphic communi
cation , and for other electric , galvanic , and
magnetic uses , as hereinbefore described.
"It is manifest , " said the court , in this case ,
"that the gist of the invention is the discovery
of the fact that gutta-percha is a non-conductor
of electricity and the application of that fact
to practical use by combining gutta-percha , by
the means specified , with a metallic wire , in
the manner described , and then using the cable
formed by such combination for the purpose of
conducting electricity along the enclosed wiro.
The point of the invention is not the mere mechanical - 4
chanical covering of a metallic wire with
gutta-percha , as a mechanical protection from
abrasion or injury from without , or for any
purpose aside from a use of the covered wire
as a conductor of electricity. * * The claim
is valid oven though a metallic wire covered
with gutta-percha existed before the plaintiff's
invention , / / / / wan not known that ( jutia-parcha
wan a non-conductor of electricity and could
be lined to Insulate the win1. The use by the
patentee of the wire so covered to conduct
electricity was not a double use of the covered
wire , oven though the covered wire existed j
" ' - ' ' '
before.
i- *
