Page:Popular Science Monthly Volume 15.djvu/632

614 accordance with our guide, any other substance having similar properties and producing substantially the same effect.

So much for the first class of cases, which at first sight are apparently novel, but which in reality are not novel, so as to be patentable.

Another class of cases against which the verdict of "no novelty" must be pronounced is where a new use is made of an old invention. This is no new invention. The mere application of an old invention or means or method of operation to a new use does not amount to a patentable novelty. There is nothing new made by such a proceeding. The use of the thing is perhaps enlarged and that is all. It was upon this principle that adverse decisions were rendered to the claimants in the cases of Losh vs. Hague, and Howe vs. Abbott. In the first of these, which is reported in 1 Webster's Patent Cases, 205, it was held that the application to railway-carriages of a kind of wheel previously in use on common carriages would not support a patent. In the second case, which is reported in 2 Story, 190, the patentee claimed as his invention a process of curling palm-leaf for mattresses. It appeared from the evidence that horse-hair had for a long time been prepared by the same process and devoted to the same purpose. In delivering his opinion Judge Story said: "The application of an old process to manufacture an article to which it had never before been applied, is not a patentable invention. There must be some new process or some new machinery used to produce the result. . . . He who produces an old result by a new mode or process is entitled to a patent for that mode or process. But he can not have a patent for a result merely without using some new mode or process to produce it."

Allied to this question of double use is the question whether a patent can be taken for a particular use of a known machine, when the plaintiff is the first to discover the benefit of such use. As may be supposed, from the place in which I have inserted this question, the answer is "No." And there is justice in the answer; for a man is entitled to all the benefit of an article which he has invented and patented. The man who happens to discover an additional use to which the invention may be applied does not by that discovery and application create a patentable novelty. He devises no new combination of machinery, no new process. Hear what Lord Chelmsford said on the subject. His opinion is to be found in Ralston vs. Smith, 11 H. L. C, 256. In this case, by the way, the plaintiff had discovered that by giving a differential motion to different parts of an old machine, a power existing in it might be developed and brought into action. Lord Chelmsford, after stating that he saw no new process, or new combination of machinery, said, "It appears to me that such a discovery is not the subject of a patent." And the same doctrine is laid down in the case of Tetley vs. Easton, 2 C. B. (N. S.), 706.

There is another class of cases which demands attention. It sometimes happens that a man seeks a patent for a mere aggregation of