Popular Science Monthly/Volume 15/September 1879/Novelty in Patents



BY the statute of 1870 it was enacted that an invention, to be patentable, must possess, among other qualifications, that of newness or novelty. But what constitutes novelty is not defined. The solution of the question is left to be determined according to the circumstances of each particular case. It is this fact which makes the question such a difficult one to be answered; for in each case there is generally some little element present which distinguishes it from other cases, and makes it impossible to frame one decided rule of universal application. The question is also rendered less easy of solution from the fact that it comes up most frequently in its most difficult aspect—in cases of infringement, where the point under discussion is, whether the alleged invention is, or is not, substantially identical with some prior existing thing, which has been in common use here or described in some patent or printed publication. Yet, despite the nicety in which this question of novelty is involved, we are not compelled to leave it entirely unsolved. A careful study of the subject discloses certain principles which by their application somewhat prune down the difficulty. We are fortunate in being able to approach the question from two sides; for, as was true in the case of the two-faced shield, over which those two knights of old story wrangled so long, an inspection of the subject from two points of observation decidedly simplifies matters. The first of these methods of studying the subject I would designate the negative, and the second the positive method. By the negative method we deduce certain principles in regard to cases which have at first sight a color of novelty, but are not novel, so as to be patentable. By the positive method we arrive at certain conclusions in regard to what actually constitutes novelty in a patentable sense.

I propose to discuss, first: What cases, at first sight possessing novelty, do not actually possess novelty? A study of cases warrants us in accepting, as a first principle, that every change or mere substitution of a mechanical equivalent is not necessarily a patentable novelty; for it may not be substantially unlike some prior thing. We may have, for instance, a machine, comprising, say, three distinct parts. A man, not the inventor, substitutes for each of these parts other equivalents, producing the same results. This is not a patentable invention. Even if the products be better or cheaper, it is at most only an improvement upon a former invention, and can be used only with the permission of the former patentee.

I spoke above of a "mechanical equivalent." This needs to be defined in order that we may have a clear comprehension of the above principle. To define it, however, is not so easy. Mr. Parsons has said that "he would be a very acute man who could certainly discern, or a very bold man who would certainly assert, what is meant by a mechanical equivalent." At the risk of being considered bold, certain judges have, nevertheless, ventured to attack the Gordian knot. We find one definition in Smith vs. Downing, 1 Fisher's Patent Cases, 87: "By equivalents in machinery is usually meant merely the substitution of one mechanical power for another, or one obvious and customary mode for another, of effecting a like result." This definition is not sufficiently explicit. A better one is to be found in Carter vs. Baker, 4 Fisher's Patent Cases, 409: "When, in mechanics, one device does a particular thing, or accomplishes a particular result, every other device known and used in mechanics, which skillful and experienced workmen know will produce the same result, or do the same particular thing, is a known mechanical substitute for the first device mentioned for doing the same thing, or accomplishing the same result. It is sufficient to constitute a known mechanical substitute that, when a skillful mechanic sees one device doing a particular thing, he knows the other device, whose uses he is acquainted with, will do the same thing."

This definition not only covers those elements which come strictly under the head of mechanics, but is also our guide in determining what constitutes an equivalent in an "art," or a "manufacture," or a "composition of matter." The definition of an equivalent of any substance in a composition made of several ingredients, for example, is, in accordance with our guide, any other substance having similar properties and producing substantially the same effect.

So much for the first class of cases, which at first sight are apparently novel, but which in reality are not novel, so as to be patentable.

Another class of cases against which the verdict of "no novelty" must be pronounced is where a new use is made of an old invention. This is no new invention. The mere application of an old invention or means or method of operation to a new use does not amount to a patentable novelty. There is nothing new made by such a proceeding. The use of the thing is perhaps enlarged and that is all. It was upon this principle that adverse decisions were rendered to the claimants in the cases of Losh vs. Hague, and Howe vs. Abbott. In the first of these, which is reported in 1 Webster's Patent Cases, 205, it was held that the application to railway-carriages of a kind of wheel previously in use on common carriages would not support a patent. In the second case, which is reported in 2 Story, 190, the patentee claimed as his invention a process of curling palm-leaf for mattresses. It appeared from the evidence that horse-hair had for a long time been prepared by the same process and devoted to the same purpose. In delivering his opinion Judge Story said: "The application of an old process to manufacture an article to which it had never before been applied, is not a patentable invention. There must be some new process or some new machinery used to produce the result. . . . He who produces an old result by a new mode or process is entitled to a patent for that mode or process. But he can not have a patent for a result merely without using some new mode or process to produce it."

Allied to this question of double use is the question whether a patent can be taken for a particular use of a known machine, when the plaintiff is the first to discover the benefit of such use. As may be supposed, from the place in which I have inserted this question, the answer is "No." And there is justice in the answer; for a man is entitled to all the benefit of an article which he has invented and patented. The man who happens to discover an additional use to which the invention may be applied does not by that discovery and application create a patentable novelty. He devises no new combination of machinery, no new process. Hear what Lord Chelmsford said on the subject. His opinion is to be found in Ralston vs. Smith, 11 H. L. C, 256. In this case, by the way, the plaintiff had discovered that by giving a differential motion to different parts of an old machine, a power existing in it might be developed and brought into action. Lord Chelmsford, after stating that he saw no new process, or new combination of machinery, said, "It appears to me that such a discovery is not the subject of a patent." And the same doctrine is laid down in the case of Tetley vs. Easton, 2 C. B. (N. S.), 706.

There is another class of cases which demands attention. It sometimes happens that a man seeks a patent for a mere aggregation of things—as, for example, a hammer with a screw-driver inserted in one end of the handle and an awl in the other. The absurdity of granting a patent in such a case is very apparent, and it is no wonder that in the case of Swift vs. Whizen, 3 Fisher's Patent Cases, 357, a decision was given against the patentability of the very aggregation given above as an example.

A distinction should be made between such aggregations, when the whole is easily divisible into its component parts, and aggregations where the individuality of the component parts is lost. I would revert to the hammer and screw-driver as an example of what I mean by the divisibility of the whole. The hammer can be taken by itself, the awl by itself, and the screw-driver by itself, and used. As an example of what I mean by the loss of individuality, take the combined glasscutter, screw-driver, can-opener, etc., which have been on sale in the streets of late. Here there is but one invention in reality, and the various parts are merged in one whole. The novelty lies in the new combination of the glass-cutter, can-opener, etc., in such a way that the utility of the parts would be lost by division.

We have now left to discuss the general rule that a mere alteration in the form, size, material, or proportions of an existing device is not such a change as to produce patentable novelty. This rule is related to the first one given in regard to the substitution of mechanical equivalents, but it is much wider in its scope. It is laid down in express terms in the second section of the act of February 21, 1793. This declaratory law was not reënacted in the patent act of 1836, yet necessity and justice compel its recognition. For, as was said in Winans vs. Denmead, 15 Howard, 341: "It is a principle which necessarily makes part of every system of law granting patents for new inventions. Merely to change the form of a machine is the work of a constructor, not of an inventor; such a change can not be deemed an invention."

A very interesting case on this point is reported in 11 Howard, 248 (Hotchkiss vs. Greenwood). It relates particularly to the substitution of a new material. In this case a new clay knob was substituted for a metallic knob. It was claimed that there was a patentable novelty. But there was no new mechanical device or contrivance. The knob was not new. The metallic shank and spindle were not new; nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. The only change was in the substitution of a clay for the former metallic knob. Judge Nelson very properly decided that there was no such novelty in this as to warrant the granting of a patent. "This of itself," said he, "can never be the subject of a patent. No one will pretend that a machine, 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 better and cheaper, can be distinguished from the old one; or, in the sense of the patent law, can entitle the manufacturer to a patent."

So much for the negative method of investigation of the subject of novelty in patents. We have discussed many cases of apparent novelty and have seen in what novelty does not consist. In accordance with the old saw, "You tell me what you're not, and I'll tell you what you are," we are now prepared to turn to what I have called the positive method of investigation and learn what is patentable novelty.

To answer the question, What is novel, so as to be patentable? is easier than the one we discussed in the first part of this paper. In a few words, there is patentable novelty when there is a different principle of operation; when there is a different result in kind, or when there is a new combination. It is for one or another of these reasons that a patent is ever granted. There may be other grounds apparently, but a closer investigation will show them to be but another species of the above family, and consequently to be classified with them in their application.

The first two of the three principles enumerated can best be treated of together. To repeat, there will be novelty when either the manufacture produced, or the manner of producing an old one is new. In the former case there must be something substantially new, different from what was before known. In the latter case the principle of the machine must be different. And, as I have shown before, a mere change of the form or proportions will not suffice, if both are the same in principle, structure, mode of operation, and produce the same result. This is true even if there is some small variance in some small matter for the purpose of evasion, or a color for a patent. There must be some principles different from any previously known.

This opens up the ancillary and important question, What is meant by "the principles of a machine"?

In Whittemore vs. Cutter, 1 Gall., 478, Judge Story says: "By the principles of a machine is not meant the original elementary principles of motion which philosophy and science have discovered, but the modus operandi, the peculiar manner or device for producing any given effect. If the same effects are produced by two machines by the same mode of operation, the principles of each are the same. If the same effects are produced, but by combinations of machinery operating substantially in a different manner, the principles are different."

In deciding whether the principles of a machine are new, there is one block over which we may stumble and which we should take care to avoid. There is danger of confusing form with principle. The question of what constitutes form and what principle is frequently a very nice question to decide. Judge Washington, in Treadwell vs. Bladen, 4 Wash., 706, has pointed out a road out of the confusion. "The safest guide," says he, "to accuracy in making the distinction is, to ascertain what is the result to be obtained by the discovery; and whatever is essential to that object, independent of the mere form and proportions of the thing used for the purpose, may generally, if not universally, be considered as the principle of the invention."

The third principle above enumerated, that a new combination is a patentable novelty, is well elucidated in the case of Barrett vs. Hull, 1 Mass., 474. This was a case for the infringement of a patent granted for "a new and useful improvement, being a mode of dyeing and finishing all kinds of silk-woven goods." Judge Story said: "A patent may be for a new combination of machines to produce certain effects; and this whether the machines constituting the combination be new or old." And in Whitney vs. Emmett, 1 Baldwin, 311, also the patentability of a new combination was upheld. What the learned Judge said is so good an epitome of all that has been said in the second part of this paper, that I give it, although it is merely cumulative:

"Novelty consists in producing a new substance, or an old one in a new way, by new machinery, or a new combination of the parts of an old one, operating in a peculiar, better, cheaper, or quicker method, a new mechanical employment of principles already known."

The rule in regard to new combinations, as above laid down, is most just, for the most valuable inventions consist in the combination of known mechanical powers. It makes no matter if some of the elements are old (McCormick vs. Talcott, 20 Howard, 405); nor even if every part of such invention can be found in some form or other among the many devices of human ingenuity. As was said in Pitts vs. Edmond, 2 Fisher's Patent Cases, 55, "The man who unites these powers and produces a new and important result to society is well denominated a public benefactor."

There is one important principle in regard to combinations which, although not bearing directly upon the question of novelty, yet ought to be remembered. Judge Story called attention to it in the preceding case of Barrett vs. Hull: "It is no infringement," he said, "of the patent to use any of the machines separately, if the whole combination be not used, for in such case the thing patented is not the separate machines, but the combination."

With this quotation I end the discussion of the question of novelty in patents. I have endeavored to make my answer as satisfactory as the difficulties of the question would allow. I have for that purpose viewed the subject from two standpoints of opposite natures and have enumerated and discussed certain principles of general application which were disclosed by this double observation. The work must at the best, however, be incomplete, for, as Mr. Parsons says, "It is obviously impossible to find precise and technical rules which always answer the question."