It has also been held, that, in an action for an infringement of a patent professing to be an improvement on a former patent, the specification of that former patent must be read. But it is not material whether a machine, made according to that specification of the first patent, would be useful or not, if it be shown that a machine, constructed according to the subsequent patent, is useful.1

§ 25. III. A MANUFACTURE. It has been stated, in a former part of this chapter, that the term "manufacture" was used in the English statute 21 Jac. 1 to denote anything made by the hand of man; so that it embraces, in the English law, machinery, as well as substances or fabrics produced by art and industry.2

ity on the same point; and upon reason and principle there appears to be no objection. The new patent, after the expiration of the old one, will be free from every objection, and whilst the former exists, the new patent can be legally used by the public by procuring a license from Neilson, or by purchasing the apparatus from him, or some of his agents; and the probability of a refusal of the license to any one applying for it is so extremely remote, that it cannot enter into consideration as a ground of legal objection."

See also Fox, ex parte, 1 V. & B. 67. Mr. Webster puts this very clear illustration: "For suppose a particular article-starch, for instance to be the subject of letters-patent, and that all the starch in the country was patent starch; there are attached to the making and selling of that article certain exclusive privileges; but the individual who has purchased it of the patentee has a right to sell it again, and to use it at his will and pleasure; the exclusive privileges are, in respect of that particular portion of the article so sold, at an end, and do not pursue it through any subsequent stage of its use and existence, otherwise every purchaser of starch would be obliged, according to the terms of the letters-patent, to have a license in writing, under the hand and seal of the patentee; the absurdity of which is manifest. Hence it is obvious, that if a person legally acquires, by license or purchase, title to that which is the subject of letters-patent, he may use it or improve upon it in whatever manner he pleases, in the same manner as if dealing with property of any other kind.”

1 Lewis v. Davis, Webs. Pat. Cas. 488, 489.

In Boulton v. Bull, Heath, J., said: "The statute 21 Jac. 1 prohibits all monopolies, reserving to the king, by an express proviso, so much of his ancient prerogative as shall enable him to grant letters-patent, and grants of privilege, for the term of fourteen years and under, of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures. What, then, falls within the scope of the proviso? Such manufactures as are reducible to two classes. The first includes machinery, the second, substances (such as medicines) formed by chemical and other processes, where the vendible substance is the thing produced, and that which operates preserves no permanent form. In the first class the machine, and in the second the substance produced, is the subject of the patent. I approve of the term 'manu

26. We have seen also that it came, by construction, to include the process of making a thing, or the art of carrying on a manufacture; so that all the various objects which are now held in England to be the subjects of letters-patent are included under this term, which alone saves them out of the prohibition of the statute of monopolies.1

§ 27. Our statute, however, having made an enumeration of the different classes of subjects which in England are held to be patentable, it is to be presumed that this term was used to describe one of these classes only, namely, fabrics or substances made by the art or industry of man, not being machinery.2 It may sometimes require a nice discrimination, to determine whether one of these classes does not run into the other, in a given case; as, for

facture' in the statute, because it precludes all nice refinements; it gives us to understand the reason of the proviso, that it was introduced for the benefit of trade. That which is the subject of a patent ought to be specified, and it ought to be that which is vendible, otherwise it cannot be a manufacture."

In Hornblower v. Boulton, 8 T. R. 99, Lord Kenyon defined the term as something made by the hands of man." In The King v. Wheeler, 2 B. & Ald. 349, Abbott, L. C. J., defined it thus: "The word manufactures' has been generally understood to denote either a thing made which is useful for its own sake, and vendible as such, as a medicine, a stove, a telescope, and many others, or to mean an engine or instrument, or some part of an engine or instrument, to be employed, either in the making of some previously known article, or in some other useful purpose, as a stocking-frame, or a steam-engine for raising water from mines. Or it may perhaps extend also to a new process to be carried on by known implements, or elements, acting upon known substances, and ultimately producing some other known substance, by producing it in a cheaper or more expeditious manner, or of a better and more useful kind."

1 See Hindmarch on Patents, p. 80.

Perhaps the best general definition of the term "manufacture," as the subject of a patent, would be, any new combination of old materials, constituting a new result or production, in the form of a vendible article, not being machinery. In one sense, all materials are old; as the amount of matter in existence does not depend on the will or the skill of man, whatever he uses is, in one sense, an old material. In this sense, therefore, all that he does, in producing a new manufacture, is to bring old materials into a new combination, and by so doing to produce a new result in matter. It is this new combination, carried into, or evinced by, a new result or production, that is the subject of a patent. The use of all the materials in other combinations may have been known before; but if they are used in a new combination, producing a new result, there will be a good subject for a patent for a “manufacture,” as there is in respect to "machinery" when the same thing is effected. See Cornish v. Keene, Webs. Pat. Cas. 512, 517.

instance, when a tool or instrument of a novel or improved construction is produced, to be used in connection with other machinery, or to be used separately. As an article of merchandise, found and sold separately in the market, such a production would be a manufacture; but, regarded with reference to its use and intended adaptation, it might be considered as a machine, or part of a machine. In determining, in such cases, how the patent for the article should be claimed, it would probably be correct to range it under the one or the other of these classes, according to the following test. If the article is produced and intended to be sold and used separately, as a merchantable commodity, and the merit of it, as an invention, consists in its being a better article than had been before known, or in its being produced by a cheaper process, then it may properly be considered simply as a manufacture. But if its merit appears only after its incorporation with some mechanism with which it is to be used, and consists in producing, when combined with such mechanism, a new effect, then it should be regarded as a machine, or an improvement of an existing machine. These dictinctions, however, are not vitally important, to be taken in the patent itself, since it is not necessary to the validity of a patent, that the thing should be described with entire accuracy as "a machine" or "a manufacture." If the thing itself is correctly described, and it appears to be novel and useful, and unites all the other requisites of the statute, it may be left to general interpretation to determine whether the subject-matter ranges itself under the one or the other of these classes, or whether it partakes of the characteristics of both. But if the subject-matter be neither a machine nor a manufacture, or composition of matter, then it must be an art. There can be no valid patent, except it be for a thing made, or for the art or process of making or doing something.

.

§ 28. IV. A COMPOSITION OF MATTER. The last class of patentable subjects mentioned in the statute is described by the term "composition of matter." It includes medicines, compositions used in the arts, and other combinations of substances intended to be sold separately. In such cases the subject-matter of the patent may be either the composition itself, the article produced, or it may be the mode or process of compounding it. Generally speaking, the patent covers both, because if the composition is itself

new, the process by which it is made must also be new, and the law will protect both as the subjects of invention. But if the article itself be not new, but the patentee has discovered merely a new mode or process of producing it, then his patent will not be for a new "composition of matter," but for a new "art" of making that particular thing.

§ 29. With regard to this class of subjects, it is sufficient to observe, that the test of novelty must, of course, be, not whether the materials of which the composition is made are new, but whether the combination is new. Although the ingredients may have been in the most extensive and common use, for the purpose of producing a similar composition, if the composition made by the patentee is the result of different proportions of the same ingredients, or of the same and other ingredients, the patent will be good. The patentee is not confined to the use of the same precise ingredients in making his compound, provided all the different combinations of which he makes use are equally new.3

1 Ryan v. Goodwin, 3 Sumner's R. 514, 518.

Ibid.

CHAPTER II.

OF THE QUALITIES AND POSITION OF AN INVENTION WHICH WILL MAKE IT THE SUBJECT OF LETTERS-PATENT.

§ 30. In the foregoing chapter, the different kinds or classes of inventions described in the statute as the subjects of letters-patent have been considered. It is now necessary to ascertain, with as much precision as the inquiry admits of, what is the nature and character of a supposed invention, that will entitle it to be the subject of a patent privilege. And it is to be observed, at the outset of this inquiry, that it is the discovery or invention of any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any of these things, which the statute makes the subject of a patent. One of the first questions to be considered, therefore, in this connection, is, whether there is any special quality or character necessary to a patentable invention, apart from its novelty and utility; and if so, what that quality or character is.

66

§ 31. In discussions on the patentable character of a particular subject, the question has often been raised, whether there is a sufficiency of invention" to support a patent. This, it is said, does not depend on the quantity of thought, ingenuity, skill, labor, or experiment, or on the amount of money, which the inventor may have bestowed upon his production. And it is undoubtedly true, that, whether the invention was the result of long experiment and profound search, or of a merely accidental discovery, is not the essential ground of consideration in determining the patentable character of any subject.1 Still, we read in many of the adjudged cases frequent discussions of the question, whether the inventive faculty has been at work in the production of a particular thing. And nothing is more common than to witness at the bar, in the trial of patent causes, a great expenditure of evidence and argument upon the inquiry whether a particular change from an old to a new article, process, method of operation,

1 Crane v. Price, 1 Webs. Pat. Cas. 411; Earle v. Sawyer, 4 Mason, 6.