Vol. IV.] SMITH V. GOODYEAR DENTAL VULCANITE Co. [No. 2. plained of what he supposed to be the negligence of his solicitor. The proof of his extreme poverty is ample. His ill-health interfered with his working successfully in the line of his profession, and his family was subjected to great privations. He seems never to have had any con siderable money. He borrowed sometimes small sums to purchase underclothing for himself. He made frequent applications to his friends for advances to enable him to prosecute his application for a patent, offering as a compensation for such advances, sometimes one quarter and sometimes one half of the patent when obtained. He appears never to have remitted his efforts until, in 1864, he induced Dr. Flagg, who had been his partner in former years, and Dr. Osgood to advance, first, one hundred dollars, and afterwards, seven hundred and twenty dollars, by means of which the patent was obtained. Even then he had not the twenty dollars necessary to be paid when it was allowed. For the assistance he thus received he gave one quarter of his invention. Before this time, between the third rejection of his application and his obtaining the advances mentioned, everything was done which was within his power. In February, 1859, in the midst of his pecuniary embarrassments, his solicitor applied to the patent office, not for a return of any portion of the fee paid, nor for a withdrawal of the application, but that the specification and one drawing might be sent to him. This request was refused. An attempt was then made for an appeal to the board, but that not being allowed by the commissioner, nothing further was done in the patent office until the applicant was enabled, by the funds obtained from Drs. Flagg and Osgood, to renew his endeavors. Then, on the 1st of March, 1864, he presented a petition for the grant of a patent to himself for the same invention which he had endeavored to secure in 1855 (the application for which remained in the office unwithdrawn), and accompanied his petition with a specification and drawings corresponding exactly with those he had previously made. This final effort was successful. The office practically acknowledged that the prior rejection had been an error, and declared that in justice to his rights as an inventor, the admission of his claim, limited to the use of hard rubber or vulcanite, as he had before limited it, would not be objected to. Accordingly the patent was granted on the 7th of June, 1864, and by sundry conveyances it subsequently became vested in the complainants. Two surrenders and reissues have since been made, the last dated March 21, 1865, and it is for an alleged infringement of this second reissue that the present suit has been brought. The bearing of this history upon the merits of the controversy will appear as we proceed to examine the several defences set up. Among these the one perhaps most earnestly urged is the averment that the device described in the specification was not a patentable invention, but that it was a mere substitution of vulcanite for other materials which had previously been employed as a base for artificial sets of teeth, a change of one material for another in the formation of a product. If this is in truth all that the thing described and patented was; if the device was merely the employment of hard rubber for the same use, in substantially the same manner and with the same effect that other substances had been used for in the manufacture of the same articles, it may Vol. IV.J SMITH V. GOODYEAR DENTAL VULCANITE Co. [No. 2. This is be conceded that it constituted no invention. So much is decided in Hotchkiss v. Greenwood, 11 How. 248. But such is not our understanding of the device described and claimed. In the specification it is declared that the invention "consists in forming the plate to which the teeth, or teeth and gums, are attached, of hard rubber, or vulcanite, so called, an elastic material possessing and retaining in use sufficient rigidity for the purpose of mastication, and at the same time being pliable enough to yield a little to the motions of the mouth." immediately followed by a description of the manner of the proposed use, that is, of making the hard rubber plates; and the claim, as stated, is "the plate of hard rubber, or vulcanite, or its equivalent, for holding artificial teeth, or teeth and gums, substantially as described," that is, plainly formed as described. The invention, then, is a product or manufacture made in a defined manner. It is not a product alone separated from the process by which it is created. The claim refers in terms to the antecedent description, without which it cannot be understood. The process detailed is thereby made as much a part of the invention as are the materials of which the product is composed. We shall not quote at large the description of the mode of making the plate. Such a quotation would unnecessarily prolong this opinion. It plainly shows a purpose of the inventor to secure what had not been secured before, a combination of a plate with artificial teeth, or with gums and teeth, in such a manner as to be free from the objections and defects or inconveniences attending the method before practised of attaching such teeth to a metallic plate fitted to the roof of the mouth. Some of these objections are stated — such as expense, hurting the mouth, impeding mastication, and obstruction to perfect articulation. In carrying out the purpose proposed the materials employed were all old. The teeth, the wax, the plaster, the molds, the soft rubber, and the hard rubber were none of them new. It is also true that the steps in the process were not all new. Plaster had been used for formation of molds. The process of forming a plate by the use of such molds was well known, and so was the process of converting a vulcanizable compound into vulcanite by heating it and allowing it to cool in molds. But the process of Dr. Cummings extended beyond the use of known materials and the employment of the processes mentioned. It was vulcanizing soft rubber in a mold and in contact with artificial teeth inserted in place into it while it remained in a soft condition. It was well described by the circuit judge as "the making of a vulcanite dental plate out of vulcanizable compound, into which the teeth were imbedded in its plastic condition, and the rubber compound, with the teeth thus imbedded in it, afterwards vulcanized by heat, so that the teeth, gums, and plate should be perfectly joined without any intervening crevices, and the plate should possess the quality of hard rubber or vulcanite." The combination thus resulted in a manufacture which was "one piece." If, then, the claim be read, as it should be, in connection with the preceding part of the specification, and construed in the light of the explanation which that gives, the invention claimed and patented is "a set of artificial teeth as a new article of manufacture, consisting of a plate of hard rubber, with teeth, or teeth and gums, secured thereto in the manner described in the specification, by imbed Vol. IV.] SMITH V. GOODYEAR DENTAL VULCANITE CO. [No. 2. ding the teeth and pins in a vulcanizable compound, so that it shall surround them while it is in a soft state, before it is vulcanized, and so that when it has been vulcanized the teeth are firmly and inseparably secured in the vulcanite, and a tight joint is effected between them, the whole constituting but one piece." It is evident this is much more than employing hard rubber to perform the functions that had been performed by other materials, such as gold, silver, tin, platinum, or gutta percha. A new product was the result, differing from all that had preceded it, not merely in degree of usefulness and excellence, but differing in kind, having new uses and properties. It was capable of being perfectly fitted to the roof and alveolar processes of the mouth. It was easy for the wearer, and favorable for perfect articulation. It was light and elastic, yet sufficiently strong and firm for the purposes of mastication. The teeth, gums, and plate constituting one piece only, there were no crevices between the teeth and their supporters into which food could gather and where it could become offensive, and there could be no such crevices so long as the articles lasted. They were unaffected by any chemical action of the fluids of the mouth. Besides all this, they were very inexpensive as compared with other arrangements of artificial teeth. To us it seems not too much to say that all these peculiarities are sufficient to warrant the conclusion that the device was different in kind or species from all other devices. We cannot resist the conviction that devising and forming such a manufacture by such a process and of such materials was invention. More was needed for it than simply mechanical judgment and good taste. Were it not so, hard rubber would doubtless have been used in the construction of artificial sets of teeth, gums, and plates long before Cummings applied for his patent. To find a material, with a mode of using it, capable of being combined with the teeth in such a manner as to be free from the admitted faults of all other known combinations, had been an object long and earnestly sought. It had been a subject for frequent discussion among dentists and in scientific journals. The properties of vulcanite were well known, but how to make use of them for artificial sets of teeth remained undiscovered and apparently undiscoverable until Cummings revealed the mode. But when revealed its value was soon recognized, and no one seems to have doubted that the resulting manufacture was a new and most valuable invention. The eminent dentists and experts examined in this case uniformly speak of it as such. Not one has ventured to testify that it was not an invention. They speak of it as "a novel and desirable thing;" as "the greatest improvement in dentistry" made in many years, and as an invention which is "a great benefaction to mankind whereby both health and comfort are promoted." The evidence also shows that it has wrought a revolution in dental practice, and that many thousands of operators are using it in preference to older devices. All this is sufficient, we think, to justify the inference that what Cummings accomplished was more than a substitution of one material for another, more than the exercise of mechanical judgment and taste, that it was, in truth, invention. doubtedly the results or consequences of a process or manufacture may in some cases be regarded as of importance when the inquiry is whether the process or manufacture exhibits invention, thought, and ingenuity. Un Vol. IV.J SMITH V. GOODYEAR DENTAL VULCANITE CO. [No. 2. "The utility Webster, on the subject matter of patents, page 30, says: of the change, as ascertained by its consequences, is the real practical test of the sufficiency of an invention; and since the one cannot exist without the other, the existence of the one may be presumed on proof of the existence of the other. Where the utility is proved to exist in any degree, a sufficiency of invention to support the patent must be presumed." We do not say the single fact that a device has gone into general use and has displaced other devices which had previously been employed for analogous uses establishes in all cases that the later device involves a patentable invention. It may, however, always be considered, and when the other facts in the case leave the question in doubt, it is sufficient to turn the scale. We have, therefore, considered this branch of the case without particular reference to Hotchkiss v. Greenwood, 11 How. 248. The patent in that case was for an improvement in making door and other knobs for doors, locks, and furniture, and the improvement consisted in making them of clay or porcelain, in the same manner in which knobs of iron, brass, wood, or glass had been previously made. Neither the clay knob nor the described method of attaching it to the shank was novel. The improvement, therefore, was nothing more than the substitution of one material for another in constructing an article. The clay or porcelain door-knob had no properties or functions which other door-knobs made of different materials had not. It was cheaper and perhaps more durable, but it could be applied to no new use, and it remedied no defects which existed in other knobs. Hence it was ruled that the alleged improvement was not a patentable invention. The case does decide that employing one known material in place of another is not invention, if the result be only greater cheapness and durability of the product. But this is all. It does not decide that no use of one material in lieu of another in the formation of a manufacture can, in any case, amount to invention or be the subject of a patent. If such a substitution involves a new mode of construction, or develops new uses and properties of the article formed, it may amount to invention. The substitution may be something more than formal. It may require contrivance, in which case the mode of making it would be patentable, or the result may be the production of an analogous but substantially different manufacture. This was intimated very clearly in the case of Hicks v. Kelsey, 18 Wall. 670, where it was said "the use of one material instead of another in constructing a known machine is, in most cases, so obviously a matter of mere mechanical judgment, and not of invention, that it cannot be called an invention, unless some new and useful result, as increase of efficiency, or a decided saving in the operation, be obtained." But where there is some such new and useful result, where a machine has acquired new functions and useful properties, it may be patentable as an invention, though the only change made in the machine has been supplanting one of its materials by another. This is true of all combinations, whether they be of materials or processes. In Crane v. Price, 1 Webster's Patent Cases, 393, where the whole invention consisted in the substitution of anthracite for bituminous coal in combination with a hot-air blast for smelting iron ore, a patent for it was sustained. The doctrine asserted was, that if the result of the sub Vol. IV.] SMITH V. GOODYEAR DENTAL VULCANITE Co. [No. 2. stitution was a new, a better, or a cheaper article, the introduction of the substituted material into an old process was patentable as an invention. This case has been doubted, but it has not been overruled, and the doubts have arisen from the uncertainty whether any new result was obtained by the use of anthracite. In Kneass v. The Schuylkill Bank, 4 Wash. C. C. 9, the use of steel plates instead of copper for engraving was held patentable. So has been the flame of gas instead of the flame of oil to finish cloth. These cases rest on the fact that a superior product has been the result of the substitution, a product that has new capabilities and that performs new functions. So in the present case the use, in the manner described, of hard rubber in lieu of the materials previously used for a plate, produced a manufacture long sought but never before obtained: a set of artificial teeth, light and elastic, easily adapted to the contour of the mouth, flexible, yet firm and strong; consisting of one piece, with no crevices between the teeth and the plate; impervious to the fluids of the mouth, unaffected by the chemical action to which artificial teeth and plates are subjected when in place, clean and healthy, - peculiarities which distinguish it from everything that had preceded it. These differences, in our opinion, are too many and too great to be ascribed to mere mechanical skill. They may justly be regarded as the results of inventive effort, and as making the manufacture of which they are attributes a novel thing in kind, and consequently patentable as such. A second objection urged by the defendant against the validity of the complainant's patent is alleged want of novelty of the invention, and a strenuous effort has been made to convince us that, although hard rubber had not been used in the manner described for the production of the manufacture, equivalent materials and processes had been, and that a plate substantially the same as that of Dr. Cummings had been made before his improvement. We are not, however, convinced. The patent itself is prima facie evidence that the patentee was the first inventor, at least it casts upon him who denies it the burden of sustaining his denial by proof. We do not find such proof in the case. Though the patent was not granted until June 7, 1864, the invention was completed at least as early as April 12, 1855, when the application for a patent was made. Indeed, as we have noticed, a caveat to protect it was filed on the 11th of May, 1852, which clearly foreshadowed the invention. Yet, taking the spring of 1855 as the time when it was completed, we find nothing in the proofs to justify a conclusion that Dr. Cummings was not the first inventor. It would answer no good purpose to review the voluminous evidence supposed to bear upon this branch of the case. We shall refer only to that which is deemed most important, and which has been most pressed upon us in this argument. Of the English patent of Charles Goodyear it is enough to say that, though the provisional specification was filed March 14, 1856, the completed specification was not until the 11th of September following. It was, therefore, on the last-mentioned date that the invention was patented. The experiments made by George E. Hawes, it must be admitted, closely resembled the process described in the reissued patent to the complainants. He cast in molds sets of teeth on a tin base, in a manner very like that in which the vulcanite plate is formed by the Cummings proc |