§ 60. Invention in an Article of Manufacture. When considering this matter of a manufacture let us again consider the case of the carpenter's claw hammer. See § 42, ante. It is an article comprising in one structure the property of applying a forcible blow and the property of drawing a nail. It is a composite structure, having a helve or handle compounded with a striking head and a claw; no one of these members moves relatively to the other two in operating; and when it was first invented, it might properly have been claimed as an article of manufacture consisting of a handle, a striking head, and a claw, combined in one implement; the term implement being in this case used advisedly, because from its derivation (in and plere) it implies an article which fulfills a want. Had the court seen fit in the case of the Reckendorfer composite pencil and eraser to consider it as an article of manufacture distinguished by the peculiarities that the same handle or holder was fitted or combined (using this term in the mechanical sense previously explained, § 42) at its opposite ends with a marker and an eraser, the doctrine of aggregations although invented by counsel to win a patent cause might never have been adopted by a court. In the stove case (Hailes v. Van Wormer, 87 U. S. 20 Wall. 353, 22 L. ed. 241, patent of Aug. 11th, 1863) the court might properly have taken the same view as to the article being an implement or article of manufacture; for while the patented stove was pronounced to be an unpatentable invention on the ground that it was an aggregation and not a combination, it might have been regarded as a composite article of manufacture comprising in a single structure certain mechanical features or devices which were utilized simultaneously for the useful purpose the

stove was devised for, viz: for utilizing the light and the heat simultaneously evolved by burning coal.

That the patentee was not mechanically wrong in believing that a true mechanical combination existed in the composite structure, appears from the following considerations. The members recited in the claim were, the illuminating openings, the flame expansion chamber, coal supply reservoir, fire pot, descending flue, and draft flue. The fire pot enclosed and supported the fuel so that it might be burned to evolve light and heat: The flame expansion chamber was an annular chamber above the fire pot, and below the coal reservoir; it with the illuminating openings (which were made of mica) confined the products of combustion so that they could not escape into the room, and compelled them to descend through the descending flue (against the natural tendency of heated gases to ascend); it also supported the coal supply reservoir: The descending flue conducted the hot gaseous products of combustion from the flame chamber to the base of the stove so that they might heat it. The draft flue conducted the products of combustion. from the base of the stove (where they were delivered by the descending flue) upward to the nozzle to which the smoke pipe was applied in use: The coal supply reservoir closed the otherwise open top of the flame expansion chamber, and supplied the coal to the fire pot: The illuminating openings, which were formed of mica, permitted the light from the burning fuel to radiate into the room, thus enabling the light to be utilized; they also co-operated with the gas expansion chamber in confining the products of combustion and compelling them to pass down the descending flue. All of the above members operated simultaneously to enable the

light and heat evolved by the fuel to be utilized. Remove the fire-pot from these assembled devices and the residue were rendered useless for want of means to hold the burning fuel. Remove the flame expansion chamber, and the whole stove would have been disorganized. Remove the descending flue, and neither the ascending draft flue would have been operative, nor would the base of the stove (to which the descending flue conducted the gases) have been operative as a radiator of heat. Remove the ascending draft flue and the residue of the stove would have been useless for the want of an enclosed passage for the gases from the base of the stove to the stove pipe nozzle. Remove the coal supply reservoir, and the top of the annular flame expansion chamber would have been left open for the escape of all the products of combustion; the two flues also would have been inoperative for the lack of means to compel the hot gases to pass into them, and the apparatus would have been useless; there would also have been no means of supplying the fire pot automatically with fuel as it burned away. Remove the illuminating openings, and the gases would not have been confined and compelled to pass through the flues; and if the illuminating openings had been replaced with opaque non-illuminating devices, then a material and substantial part of the duplex result of the apparatus (the radiation of light from the burning fuel into the room) would have been frustrated. Under such circumstances it is plain that each and every member recited in the claim co-operated with the others for the accomplishment of the duplex result attained by their connection in a single implement; they did not constitute an unconnected aggregation of devices in any mechanical sense or common

sense meaning of that phrase, but constituted a true mechanical combination; and if they did not constitute a legal combination, it is only because of a doctrine which was unknown until about the date of this case, and under which, if it be carried to its legitimate conclusions, no assemblage of mechanical devices however new and useful can be a legal combination unless some one or more of the members move in doing their work, or unless all the members composing the combination operate jointly to produce only a single result which is not duplex or multiplex. If the composite implement had not been a new one why was it that the defendant was unable to find a single old structure embodying all its features of construction, but found only some of the features of construction in one old stove, and some in another? And of the utility of the composite structure as a whole there was no question. Had the stove containing this combination of this first claim, and had the composite pencil, been regarded by the court as implements or articles of manufacture filling wants, the questions of infringement and of whether the language of the specifications did or did not restrict the claims to peculiarities of the members would not have been affected, and the Patent Law would not have been unsettled by a new theory which in the case of such composite implements withdraws the question of invention from the domain of evidence and makes its determination a mere matter of opinion. Whether such mechanical combinations are or are not properly claimed as legal combinations appears to be a matter of the mere form of the language of the claim, which should not defraud an inventor of his right to a patent for a new and useful invention.

§ 61. Process of Making an Article of Manufacture is not a Distinguishing Characteristic of it.

It has been previously stated (§ 10) that a change of the material of which an article of manufacture is made is evidence that it is an invention, whenever such change introduces a new property, or quality, or mode of operation into the class of articles to which the changed article belongs. Of late years a new doctrine on this subject has been promulgated by the United States Supreme Court. Smith v. Goodyear Dental Vulcanite Co. 93 U. S. 493, 23 L. ed. 983. In this case the court when defining the patentee's invention used the following language:

"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."

According to this doctrine a change of the process by which an article is made makes it a substantially different article from an old one of the same kind and having the same physical peculiarities, and therefore makes the article made by the different process a patentable one. Let us test this doctrine by an example.

Glass tumblers were formerly made exclusively (as the higher grades now are) by the process of "blowing." According to this process a small mass of molten glass is gathered upon one end of an iron tube; by blowing air through the tube this mass is expanded into a globular flask; the bottom of this flask is flatted by pressure against a flat stone; the flask is cut off near its neck,