Morton v. New York Eye Infirmary. invention is, the herein before-described means by which we are enabled to effect the above highly important improvement in surgical operations, namely, by combining therewith the application of ether, or the vapor thereof, substantially as above specified. In testimony whereof, we have hereto set our signatures, this 27th day of October, A. D. 1846. Charles T. Jackson, Wm. T. G. Morton. Witnesses: R. H. Eddy, W. H. Leighton." At common law, an inventor has no exclusive right to his invention or discovery. The exclusive right is the creature. of the statute, and to that we must look to see if the right claimed in a given case is within its terms. The Act of Congress (Act of July 4th, 1836, 5 U. S. Stat. at Large, 112, § 6,) provides, "that any person or persons having discovered or invented any new or useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer," shall be entitled to receive a patent therefor. The true field of inquiry, in the present case, is, to ascertain whether or not the alleged invention set forth in this specification is embraced within the scope of the Act. Very little light can be shed on our path by attempting to draw a practical distinction between the legal purport of the words "discovery" and "invention." In its naked, ordinary sense, a discovery is not patentable. A discovery of a new principle, force, or law, operating, or which can be made to operate, on matter, will not entitle the discoverer to a patent. It is only where the explorer has gone beyond the mere domain of discovery, and has laid hold of the new principle, force, or law, and connected it with some particular medium or mechanical contrivance, by which, or through which, it acts on the material world, that he can secure the exclusive control of it under the Patent Act. He then controls his discovery through the means by which he has brought it into practical action, or their equivalent, and only through Morton v. New York Eye Infirmary. them. It is then an invention, although it embraces a discovery. Sever the force or principle discovered from the means or mechanism through which he has brought it into the domain of invention, and it immediately falls out of that domain and eludes his grasp. It is then a naked discovery, and not an invention. These remarks are not made for the purpose of laying down sweeping general propositions. We are too well aware of the futility, or, we might say, mischief, of that practice of expounding the law of patents, to embark in it. But these suggestions are submitted for the purpose of showing the relation of the terms "discovery" and "invention," and especially the dependence of the former upon the latter, as used in the statute. Every invention may, in a certain sense, embrace more or less of discovery, for it must always include something that is new; but it by no means follows that every discovery is an invention. It may be the soul of an invention, but it cannot be the subject of the exclusive control of the patentee, or of the patent law, until it inhabits a body, any more than a disembodied spirit can be subjected to the control of human laws. Now, that this patent contains the record of a discovery, there can be no doubt. And it is equally clear that, in a certain sense, it was new at about the date of the patent. It is important here to ascertain precisely what that discovery was. It is described, in general terms, in the first paragraph of the specification, to be "a new and useful improvement in surgical operations on animals." This is at best vague, not from any fault of the person who drafted the schedule, but from the inherent difficulties of his task, and the imperfect nature of human language, as an instrument of thought. But we can clearly gather, from the paper itself, what the discovery was; and we are aided in this by those parts of the specification which state what was old and well known. The second paragraph recites: "It is well known to chemists that when alcohol is submitted to distillation with certain acids, peculiar compounds, termed ethers, are formed, each of which is usually distinguished by the name of the acid employed in its prepara Morton v. New York Eye Infirmary. tion." The origin and existence of ethers, those wonderful agents that produce a harmless insensibility to pain, formed no part of the discovery. No one of them was brought to light by these patentees, for they were all well known before. The same paragraph further sets forth, that "it has, also, been known, that the vapors of some, if not all, of these chemical distillations, particularly those of sulphuric ether, when breathed or introduced into the lungs of an animal, have produced a peculiar effect on the nervous system-one which has been supposed to be analogous to what is usually termed intoxication." It was not, then, the fact that these vapors could be introduced into the air-passages and lungs that was discovered. This was as old as respiration, or, at least, as old as the existence of the vapors. Neither was it discovered that, when inhaled, these vapors produced an effect like that of intoxication, exhilaration, and, more or less, stupefaction. This, too, had long been well known. The next paragraph distinctly sets forth the real discovery that was made, namely, that this well-known inhalation of well-known agents, in increased quantities, would produce a state of the animal analogous to complete intoxication, accompanied by total insensibility to pain. It appropriately adds: "This is our discovery." It is not important to inquire here, whether this was the discovery of an increased and more perfect effect, the same in kind with that already well known, or whether it was the discovery of an entirely new effect. The effect discovered was produced by old agents, operating by old means upon old subjects. The effect alone was new, and to that only can the term "discovery" apply. That this mere discovery, however novel and important, is not patentable, needs neither argument nor authority to prove. This the specification impliedly concedes, for, after thus clearly setting forth the discovery, a struggle is made to grapple it to something in active existence, and thus make the two, in this new special relation, a patentable invention. This is done by "combining it with, or applying it to, any operation of surgery." "This is our invention." The beneficial effects described as resulting from Morton v. New York Eye Infirmary. the application, refer merely to the utility of the alleged invention, which is not in question, and may, therefore, be laid out of the case. The object of thus combining the discovery with, or applying it to, surgical operations, is apparent. It was to shelter the discovery under those terms of the Patent Act which protect" any new and useful improvement on any art." It was clearly not the discovery or invention of an "art," or "machine," or "manufacture," or "composition of matter." Nor was it an "improvement" on any one of the last three. It was, therefore, called, in substance, an improvement on the art of surgery. But we cannot change a thing by a name. In a certain general sense, it is an improvement on the art of surgery. So would the invention of a new and useful lancet, saw, forceps, or bandage, be an improvement on the same art. But the patent securing the exclusive use or sale of such an instrument, must rest exclusively upon the novelty of its construction. It could borrow no element of patentability from the art in which it was designed to be used, except merely the element of utility. Of this latter the art would furnish the test. Now, this discovery of the effect of ether on the patient, in holding him motionless and insensible during the operation, has the same legal relation to the art of surgery, that a machine or other mechanical contrivance for holding him would have. It holds him better, stiller, and with less discomfort and danger to himself than any mechanism could; but its office is to hold and protect the patient. It has no other relation to, or connection with, the art of the surgeon. We use the word "protect," as applied to the patient, in the largest sense, and as including not only exemption from pain during the operation, but also from the shock which such operations often give the system. The only legal quality or aid, then, which this alleged invention can draw from the art with which it is connected in the specification, is that which relates to its utility. Of this it supplies undoubted evidence. The eminent surgeons who testified on the trial concurred in stating that its usefulness could not be overrated. We must, then, leaving the art of surgery to Morton v. New York Eye Infirmary. supply the evidence of its utility, contemplate the discovery as separated from the use to which it is applied. At this point the patent breaks down; for the specification presents nothing new except the effect produced by well-known agents, administered in well-known ways, on well-known subjects. This new or additional effect is not produced by any new instrument by which the agent is administered, or by any different application of it to the body of the patient. It is simply produced by increasing the quantity of the vapor inhaled. And even this quantity is to be regulated by the discretion of the operator, and may vary with the susceptibilities of the patient to its influence. It is nothing more, in the eye of the law, than the application of a well-known agent, by well-known means, to a new or more perfect use, which is not sufficient to support a patent. But it was insisted, on the argument, that the claim, at the close of the specification, when properly understood, discloses the true character of the invention, and furnishes ground upon which the patent can stand. This clause declares, that "what we claim as our invention is, the herein before described means by which we are enabled to effect the above highly important improvement in surgical operations, namely, by combining therewith the application of ether, or the vapor thereof, substantially as above specified." The plaintiff's counsel insists, that the true reading of the claim, in the light of the preceding part of the specification, is not that which asserts a combination of the discovery with surgical operations, but rather an application of the discovery to surgical operations, by the means described; and that the means described, and the only means described, are the process of rendering the system insensible to pain by the inhalation of ether. But we do not discover that this exposition of the claim relieves the difficulty. What is the process which is here set forth? The process of inhalation of the vapor, and nothing else. To couple with it the effect produced, by calling it a process of rendering the system insensible to pain, is merely to connect the result with the means. The means, that is, the process of the inhalation |