Page:Federal Reporter, 1st Series, Volume 4.djvu/548

 584 FESEBAIi BEFOBTEB. �but the effect produced by the additional window was the eame in kind as that produced by the existing window, and accomplished in the same way. There was no patentable matter in the discovery that it would be more convenient to have light transmitted through the box in another place, and I am unable to see that any invention was required to ac- complish that resuit by adding another window. �In order to constitute a patentable combination, the resuit must be some effect different from the effect of the separate parts, and produced by the combined forces. A new resuit jnust arise from the reunion of the elements of the combina- tion, and not simply from the separate action of each ele- ment. So the law bas been declared in numerous cases, and no different rule is contended for in this case. The difficulty in this, as in most cases of this description, is not in regard to the rule of law, but in applying the rule with proper dis- crimination to the facts of the particular case. It is not, therefore, to be expected, in controversies of this character, that any prior adjudged case can be found bo similar in its facts as to furnish a direct authority one way or the other. �But, in this instance, there is one prior adjudged case so very similar to the one in hand, that it may very well be said to compel the conclusion that this patent is void. I refer to the case of Halles v. Van Wormer, 20 Wall. 354. That was the case of a base-burning stove having two chambers, in one of which the coal is first placed, and whence it descends to the other and is there consumed. One claim of the patent was for the construction of an "illuminating window" in one of the chambers, in combination with certain other designated parts of the stove. The "illuminated window" was an open- ing in the stove covered with mica. The other parts of the stove were already known in combination, and the court says : "It is impossible to regard the mere addition of such open- ings to a stove, containing the improvements described in the re-issued patent, as the formation of a new combination. It is not invention." In that case the rest of the stove was old, as here the rest of the fare box is conceded by the disclaimer to be old. In that case, as here, the additional element waa ����