§ 20. Objections to Rules, and Replies thereto.

It may be urged that if the foregoing tests for determining invention be established as the proper ones, many changes claimed in patents will be declared inventions that are too insignificant and simple to be considered as such, and are unworthy of being attributed to the hypothetical exalted conception of the inventive faculty of the mind. To this objection it may be replied that as no one can define the limits of the inventive faculty it is impossible to determine by mere opinion what new changes which are beneficial in their results are so small or so simple as to be excluded from its range of action. There are also the following further considerations, viz: that no one is or can be injured by such a method of determining invention. The patentee can not be injured, because when he has a valid patent he has the opportunity of receiving whatever benefits may flow from the invention, and if there be such benefits the patentee has a right to them in consideration of the publication of his invention and the consequent right of the public to use it forever, after the expiration of the patent. The public cannot be injured because the patenting does not deprive them of any rights; as they have no rights to any changes which were previously unknown and nonexistent, unless they be within the exceptions previously mentioned in § 6. To deny a patent for a new and useful change, or to declare a patent for such a change (which is not within the exceptions previously mentioned in § 6) void on the ground that it is too simple and insignificant to be deemed an invention, ignores the well known fact that the present high condition of our manufacturing industries has not been reached by mighty leaps, but has been attained by a series of progressive

steps, each of which when considered by itself may seem small and insignificant relatively to the present result, but each of which has formed the platform from which the next higher step has been projected; and in this view no one of the steps is really insignificant. Moreover the inventor has some rights which others are bound to respect, and to deny invention and patentability when a beneficial change embodying a new or better mode of operation has been produced is to defraud an inventor and patentee of his just rights for the benefit of the infringer. Besides, if the new change constituting the invention is insignificant and of no value as compared with things previously in public use for the same purpose, the public will undoubtedly refrain from using the new change, and the patent for it can do no harm. If, however, they do use it, the fact of such use, in preference to the use of that which was known previously, is conclusive evidence that the new change is not really insignificant. If a court should declare a new and useful change, that is not within the exceptions, to lack invention because the court may be of opinion, formed after the event, that the change is a small one, and should form this opinion notwithstanding the facts that the change was unknown before its production by the patentee and that it is used by an infringer afterwards, the patentee would be as certainly robbed under pretense of law as he would be if his personal property were taken from him by a highwayman.

§ 21. Fallibility of Opinion Formed after the Event.

It may however be urged by an infringer that the new change produced by the patentee is an obvious one, and

should not therefore be deemed an invention, however new and useful it may be and although it is not within the exceptions previously named in § 6. To this objection it may be replied that all opinions expressed by witnesses in patent litigation, and by the courts, as to the obviousness of patented changes, are opinions formed after the event, and are therefore entirely unreliable, because in such cases it generally happens that the change, after it has been made public and put into successful use, appears to some minds to be so simple that the wonder to them is it was not made before, and this circumstance reacts upon the mind and deprives it of the power of judging impartially. Because also it is one of the common infirmities of mankind to think (after the event) that they could have done without effort that which has been done by another; and when there is no real anticipation of a patented invention, nothing is easier to say than that it was an obvious change, that there is no invention it, and that it is not such a change as Congress intended to protect by the patent laws.

If the change was really an obvious one, how does it happen that it was not in use? If obvious, it certainly would have been used by others previous to its production by the patentee, especially in view of the fact that the use of the change by an infringer after the patentee publishes it is conclusive evidence that the change is one that is useful and was needed. No better criticism can be made upon the attempt to defraud a patentee of the benefits incident to his new and useful invention by stigmatising it as simple and obvious, than the language of Judge Story in the decision rendered in the case of Earle v. Sawyer, 4 Mason, 1, referred to in § 15.

§ 22. Extent of Change Required for Invention.

As to the extent of the change that is required to constitute invention, the earlier decisions of the courts and those which have followed in the same line have set forth this subject in language that cannot be excelled. nor misunderstood, as follows:

"It is of no consequence, whether the thing be simple or complicated; whether it be by accident, or by long laborious thought or by an instantaneous flash of the mind, that it is first done. The law looks to the fact and not to the process by which it is accomplished. It gives the first inventor, or discoverer of the thing, the exclusive right, and asks nothing as to the mode or extent of the application of his genius to conceive or execute it." Earle v. Sawyer, 4 Mason, 1.

"It is of no consequence, as to the validity of a patent, how much or how little labor, study, or thought, the invention cost. * * * The degree of labor and thought may be sometimes evidence to the jury upon the question of invention; but although the invention be accidental, or a sudden flash of thought, the party is entitled to the benefit of his discovery." Many v. Sizer, 1 Fish. Pat. Cas. 21.

66

Many of the patents or inventions which have been upheld are such slight changes from former modes or machines as to be tested in their material diversity chiefly by their better results, such as the flame of gas rather than oil, the hot blast rather than the cold, charcoal used in making sugar, hot water in place of cold in making cloth, etc." Smith v. Downing, 1 Fish. Pat. Cas. 91.

"If, in a patented improvement, a new and useful result has been attained, neither the simplicity of the struct

ure nor the greater or lesser amount of intellect employed are of importance in determining the validity of the patent." Teese v. Phelps, 1 McAllister, 48.

"It is always difficult to determine what degree of improvement takes a case out of the mere exercise of mechanical judgment and puts it in the domain of invention or discovery. The general rule upon the subject is that any change in the position of old elements, whereby new and better results are accomplished, is a sufficient exercise of the inventive faculty to warrant the issuing of letters patent." Stockton v. Maddock, 10 Fed. Rep. 132.

“Though the difference between a patented thing and the prior art may be slight, yet if the difference involves a new and valuable result, it is patentable." Hancock Inspirator Co. v. Jenks, 21 Fed. Rep. 911. (Brown, J.)