When a certain particular combination of known mechanical powers or principles produces a new and useful effect in a manufacture, that combination becomes the lawful subject of a patent.-(Warner rs. Goodyear, Appeal Cases, Cranch, Ch. J., D. C., 1846.)

Any new combination, which is of substantial advantage in the arts, comes within the policy and protection of the patent law.-(Tyler vs. Deval, 1 Code Rep., 31 La., 1848.)

A combination, to be patentable, must effect a new result, or an old result by a new mode of action; there must be novelty, either of product or process.-(Botten vs. Clayton, 2 Whart. Dig., 408.)

A new, or improved, or more economical effect, attributable to the change made in the mode of operation of existing machinery, proves the change has introduced a new mode of operation, which is the subject-matter of a patent.-(Forbush vs. Cook, 2 Fish, 672.) To make a valid claim for a combination it is not necessary that the several elementary parts of the combination should act simultaneously. If those elementary parts are so arranged that the successive action of each contributes to produce some one practical result, which result, when attained, is the product of the simultaneous or successive action of all the elementary parts, viewed as one entire whole, a valid claim for thus combining these elementary parts may be made.—(I bid., 669.)

These quotations give correctly, I believe; the current doctrine of the courts on the subject of patentable combinations. A careful reading of them will show the only true method of determining whether or not a given arrangement of different mechanical devices constitutes a valid combination under the patent law.

These learned jurists inquire—

First. Is the effect or product of the alleged combination a new effect, or a materially better effect, or as good an effect more economically attained?

Second. Do all the separate devices claimed in the combination take part in producing said effect?

If the first question is answered affirmatively, then it is evident that there is in the alleged combination a patentable invention. If both questions can be answered in the affirmative, then the combination is patentable.

If the first question is answered in the negative, then it is a nonpatentable arrangement.

If the first question is answered in the affirmative, and the latter in the negative, then the application contains a patentable invention, but not in the manner and form claimed.

Whoever attempts to determine whether or not a machine is patentable by first examining the machine itself, is very liable to arrive at false conclusions.

The true method of examination is to first ascertain what is the effect, and second, what produces the effect. Apply this test to the case in question. The applicant alleges that he has invented an arrangement of machinery that will produce better spikes and bolts at less expense than could be done by any machinery before known. If this be true, then he has a patentable invention, for the test of invention is the result attained. If he can retain the bar of iron at or near the temperature it

has when leaving the reducing-rolls, until it is worked into spikes, and if this has not been done before, then he can make better spikes. If he can do this without first cutting the bar into "lengths" and reheating them, then he can make better spikes, at less expense. It being determined that he produces a better effect at less expense, it must be the result of new machinery, or a new combination of old machinery. We now turn to his device, and we find the same old spike-machine as heretofore. We also find the ordinary reducing-rolls of a rolling-mill. But he has placed his spike-machine near the reducing-rolls; and right between the spike-machine and reducing-rolls he has placed a peculiarly constructed furnace, so adjusted as to admit of one end of the bar being conducted from the reducing-rolls to the spike-machine while hot, and the other end of the bar being swung over the furnace to retain its heat until the whole bar is worked into spikes. In this adjustment of these three machines we find the cause of the effect produced. The specified arrangement of these machines in reference to each other is essential to the effect, and every device or machine in the arrangement acts an important part in producing this effect. In view of the end to be attained, these three devices, the reducing-rolls, the furnace, and the spikemachine, become, by the decisions of the courts already quoted, a single machine, and as such is embraced in the statute defining the subject matter for patents.

The fact that the applicant was obliged to construct a new form of furnace for this machine, having a peculiarly shaped and adjustable roof, for which he makes a separate claim, obviates the charge that his combination is a mere mechanical expedient and without invention.

It is further claimed by the examiner that the reducing-rolls, the furnace, and the spike-machine, do not co-act in producing the result. It is true they do not all act upon the same spike at the same moment, but the term co-act, as used by the courts, does not mean that all the devices in the combination shall absolutely act upon the result at the same instant of time. It only means that each device shall fill a necessary office, and act a necessary part in producing the result. They may act simultaneously or successively, and in either case it would be co-action. Neither is it necessary that the parts of the combination shall be connected together by operating mechanism. Without such mechanism the effect is complete. Hence, it is doubtful whether, if such mechanism existed, it could properly be regarded as any part of the combination. Neither is it necessary that there should be any automatic arrangement for conveying the bar of iron from the reducing-rolls through the furnace to the spike-machine.

The improved effect is complete without such arrangement. It is barely possible that some automatic process might be devised for this part of the work, that would still further lessen the expense. If f so, it is a legitimate field for further invention hereafter.

The doctrine that all the parts of a valid combination must necessa

rily be connected by operating mechanism, and that the product mustbe transferred from one device to another in the combination by automatic process, is illogical and pernicious. It is true that such connecting mechanism and automatic arrangement will generally exist, but to say that it is absolutely essential is, I think, fallacious.

I am clear in the opinion that the application presents a legitimate combination, and if the same is novel the applicant is entitled to a patent.

I should prefer, however, to see a combination claim substituted for the "arrangement" claim. With this change, I see no such defect in the specification or claims as should excuse the examiner from proceeding to the examination of the case upon its merits.

PHILIP WEINBERG.

APPEAL FROM PRIMARY EXAMINER.

September 6, 1871.

In the matter of the application of Philip Weinberg for design patent on MUFFS.

LEGGETT, Commissioner:

This case comes from the primary examiner on the following question: Can color, parti-colors, (indefinable,) their indefinite shades and contrasts or measurements form the proper subject for a design patent, and how far, if at all?

It is clear that the law never was intended to give a man a design patent to serve merely the purpose of a trade-mark.

A prerequisite for a patent of any kind is an exercise of inventive genius. This is no less true of design than of functional patents. It is true the section of the law relating to design patents says, "that if any person by his own industry, genius, efforts, and expense, has invented or produced any new and original design," &c.; and many seem to suppose that by the introduction of the word "produced," it was intended to grant design patents without evidence of the exercise of inventive genius, and hence patents are continually sought, and sometimes granted, for the most trivial changes in form or color. The word "produced" was never intended to give any such latitude, nor was it intended in any way to let down the standard for grant of patents. The word "invent" had become so intimately associated with improvements in functional constructions and combinations that the word "produced” was used in connection with the word "invention," merely to relieve it of this functional signification. When read in connection with the words "genius" and "original," as found in the statute quoted, the word "produced" is evidently used with a much higher signification than merely made or constructed; it means created. "Invented or produced," as used in this section of the law, means the exercise of a higher faculty than would have been indicated by "invented" alone.

In mechanism an exercise of constructive genius may, perhaps, be sufficient to obtain a patent, but a design patent presupposes an exercise of creative genius. Original thought is demanded, a new idea must be begotten and embodied.

A mere substitution of one color for another possesses no element of originality, and indicates no exercise of genius, and cannot, therefore, become the subject of a patent; neither can any blending or arrangement of colors, unless a new esthetical effect is produced-an original idea indicated.

I am not prepared to say that no design patent could be based on colors, but, with the foregoing explanation, my views are, I think, sufficiently indicated for the case under consideration and other similar

cases.

TORREY AND TILTON.

Extension.

September 7, 1871.

In the matter of the application of Edward P. Torrey in behalf of himself and William B. Tilton, for extension of patent granted to them September 8, 1857, and reissued February 10, 1863, for IMPROVEMENT IN DOOR-SPRINGS.

LEGGETT, Commissioner:

The invention in this case consisted in an improvement upon the tortive rod door-spring, by means of which the tortive power of the spring may be increased or decreased at pleasure. This the inventors accomplished by a combination of a protruding end of the rod, squared to fit a key, with a ratchet-wheel firmly attached to the rod, and a pawl so attached to a bracket as to act as a stop to the ratchet-wheel. This contrivance differed in form and construction from anything existing at the time the patent was granted, yet the evidence introduced by the remonstrant leaves much doubt as to whether its mechanical equivalent did not exist at the time; and if the same evidence had been before the examiner while considering the original application, it is probable that the patent would never have been granted.

I need not, however, examine this part of the subject with much thoroughness, for there is another obstacle that proves fatal to the application for extension.

The law provides that the "patentee" may apply for extension, and there is no legal provision for the extension of a patent being granted upon the application of any other person or persons. The office has construed this law, in accordance with the decisions of courts upon analogous laws, to mean the patentee or his executors or administrators. No other applicants can legally be recognized by the office.

In the patent sought to be extended, E. P. Torrey, and W. B. Tilton

are joint inventors and joint patentees; E. P. Torrey is the applicant for extension-but E. P. Torrey is no more the patentee than John Smith or John Jones. It is true he purports to act for himself and for Tilton, but also acknowledges that he does not know the whereabouts of Tilton, and supposes him to be dead, thereby confessing that he does not appear by authority of Tilton, nor as his administrator or executor. This is a defect in the application that cannot now be mended.

Torrey states in his application that he holds by assignment the entire interest of Tilton in both the original term and extension of the patent, and refers to the records of the Office for the assignment, but the records do not sustain the statement. It is very doubtful whether the assignment referred to conveys any interest in this patent; it certainly does not convey Tilton's interest in the extension if granted.

The applicant's attorney also claims that Torrey was really the sole inventor of the device; that Tilton obtained his interest in the patent by reason of having done the mechanical work in developing the invention. If this be true, then the joint patent should never have been granted, and, of course, cannot be extended. Any cause which, if known at the time, would properly have defeated the original application, would certainly, with greater propriety, prove fatal to an application for extension.

The extension is refused.

MCCORMICK AND BAKER.

APPEAL FROM EXAMINERS-IN-CHIEF.

September 21, 1871.

In the matter of the application of McCormick and Baker for patent for IMPROVEMENT IN HARVESTERS.

LEGGETT, Commissioner:

The application in this case, as finally amended, sets forth four claims. The first, third, and fourth were allowed by the primary examiner. The second was rejected. The board of examiners-in-chief sustained the action of the primary examiner.

The second claim, the only one now in controversy, reads as follows: The combination of the main frame, the driving-wheel, the flanged bracket arranged opposite the driving-wheel, the finger beam secured to said bracket and inclined forward at an acute angle to the face of the driving-wheel, and the grain-wheel mounted on an axis inclined at an obtuse angle to the axis of the driving-wheel, all these parts being constructed and arranged as hereinbefore set forth for joint operation.

The references cited by the primary examiner show that no one of the elements in this combination is new, and that no one of them performs any new function by being introduced into it, and no new effect is produced.

In a patentable combination we look for a new effect, or a better effect,