Letters patent No. 272,660, issued February 20, 1883, to Alfred
A. Cowles for an "insulated electric conductor," are void for want
of patentable novelty in the alleged invention covered by them.
The cases reviewed which establish (1) that the application of
an old process or machine to a similar or analogous subject, with
no change in the manner of application and no result substantially
distinct in its nature, will not sustain a patent, even if the new
form of result had not before been contemplated, and (2) that on
the other hand, if an old device or process be put to a new use
which is not analogous to the old one, and the adaptation of such
process to the new use is of such a character as to require the
exercise of inventive skill to produce it, such new use will not be
denied the merit of patentability.
The Court stated the case as follows:
This was a bill in equity for the infringement of letters
Page 144 U. S. 12
patent No. 272,660, issued February 20, 1883, to Alfred A.
Cowles, for an "insulated electric conductor."
In his specification, the patentee stated that
"Before my invention, copper wires had been covered with one or
two braidings of cord, and paraffine, tar, asphalt, and various
substances had been employed for rendering the covering waterproof
and furnishing a proper insulation. With conductors of this
character, several accidents occurred in consequence of the
conductor's becoming heated and setting fire to the insulation. For
this reason, objections were made to insuring buildings against
loss by fire where electric lamp wires were introduced. To render
the conductor fireproof without interfering with the insulation led
me to invent and manufacture the insulated electric conductors to
which the present invention relates, which conductors have gone
extensively into use during about a year and a half before the date
of this specification."
His method of preparing the wire was stated substantially as
follows: the wire was first passed through a braiding machine, and
a layer of cotton or other threads braided about it. The covered
wire was then passed through a vessel containing paint, preferably
white lead or white zinc ground in oil, and mixed with a suitable
drier. A second braiding was then applied directly upon the fresh
paint. The threads thus braided upon the paint force the paint into
the first braided covering, and at the same time the paint oozes
through between the threads. In this way, the paint was
incorporated throughout the braided covering and filled up the
pores, and the wire was thus perfectly insulated, and there was no
possibility of inflaming the covering. "With intense heat, the
threads may char, but they will not burn."
"If desired," said he,
"a coat of paint may be applied outside of the outer layer of
fibrous material, and this may be colored, so as to be used in
distinguishing the wires. It is always preferable to braid the
second or subsequent coats upon the paint when fresh, but I do not
limit myself in this particular, as the paint may be dried, or
partially so, before the next layer of braiding is applied. Paint
might be applied to the wire before the first braiding. "
Page 144 U. S. 13
"I am aware that wire has been covered with braided threads;
also that India rubber, asphaltum, and similar materials have been
applied upon the covering, either hot or cold; but one coating of
such material was allowed to set or harden before the next layer of
braided material was applied. Hence the asphaltum or similar
material was not forced into the interstices, and besides this, all
these substances ignite by the wire's becoming heated, or fire will
follow along upon such covering."
"I have discovered that ordinary paint, composed of lead or zinc
with linseed oil, is practically noncombustible, and it prevents
the covering's being ignited by the wire's becoming hot if there is
a resistance to the electric current. Besides this, fire will not
burn along the conductor, as is the case where the fibrous covering
is saturated with asphaltum, India rubber, or similar
material."
"I claim as my invention:"
"1. The method herein specified of insulating electric
conductors and rendering the coating substantially noncombustible,
consisting in applying a layer of fibrous material, a layer of
paint, and a second layer of fibrous material upon the paint before
it dries or sets, substantially as set forth."
"2. An insulated and noncombustible covering for electric
conductors, composed of two or more layers of cotton or similar
threads, with paint that intervenes between the layers and fills
the interstices of the covering, substantially as set forth."
Upon a hearing upon pleadings and proofs in the circuit court,
plaintiff's bill was dismissed, 32 F. 81 and 35 F. 68, and an
appeal taken to this Court.
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
The stress of this case in upon the question of patentable
Page 144 U. S. 14
novelty. The art of insulating electric wires has been known
almost as long as that of conducting electricity for practical
purposes by means of wires. Prior to the use of electricity for
lighting, however, the feeble character of the currents conveyed
upon these wires did not require that the insulating material
should be noncombustible, and the skill of the inventor was
directed toward a method of insulation which should protect the
wire from moisture and other external injury. For this purpose, the
wires were covered with braid which had been saturated or covered
with tar, paraffine, India rubber, gutta-percha, asphaltum, and
various substances of like nature to exclude the action of the
water and afford a proper insulation.
Upon the introduction of electric lighting, it was found that
this method of insulation, while efficient to protect the wire from
external influences, was unable to withstand the intense heat
frequently generated in the wire itself by the powerful currents of
electricity necessary for illuminating purposes. At first these
wires were covered with cotton, which had been saturated in
paraffine and other similar substances. The result was that the
insulating material was melted or set on fire, and dropped off the
wire while still burning, and became so frequently the cause of
conflagrations that the insurance companies declined to issue
policies upon buildings in which this method of insulating wires
was employed. A new substance was needed, which would not only
operate as a nonconductor of electricity and as a protection
against moisture, but which should also be noncombustible.
This material was discovered in ordinary paint. Mr. Cowles was
not the first, however, to discover that paint was useful for the
purpose of insulating electric wires. In several English patents
put in evidence, paint is suggested as a proper covering for
protective as well as for insulating purposes, in lieu of gutta
percha, India rubber, resin, pitch, or other similar substances;
but, as a noncombustible insulator was never required for
telegraphing purposes, there is no intimation in any of them that
it possessed this quality. It had, however, been a matter of common
knowledge for many years that paint was
Page 144 U. S. 15
practically noncombustible. While the linseed oil in paint is to
a certain extent combustible, the carbonate of lead is a material
both noncombustible and a nonconductor.
It is clear that none of these English patents can be claimed as
anticipations, since they all relate to the protection of land or
submarine telegraph cables, and the use of paint, so far as it was
used at all, was simply as a waterproof covering for a braided
wire. There is nothing to indicate that the paint, as used by them,
was applied in the manner indicated by the patent, or that it made
the covering noncombustible or was intended at all for that
purpose.
The most satisfactory evidence of the use of a noncombustible
covering for electric wires is found in the testimony of Edwin
Holmes, manufacturer of an electric burglar alarm, who states that
when he first commenced using electric conductors "the wire was
insulated by winding a thread, larger or smaller, as the case might
be, around the wire, and that thread was covered with paint," and
that all his wires were "insulated in that way until paraffine was
substituted for the paint." The paint was applied by drawing the
wire through a vessel containing the paint, and then through a
piece of thick rubber or gutta-percha, which removed the surplus
paint and left a smooth surface on the thread which covered the
wire. He began to cover his wires in this way as early as 1860, and
says that he accomplished his insulation
"sometimes by covering the wire with a thicker thread and two
coats or more of paint; sometimes by a thread covering and a coat
of paint, then another thread covering and a coat of paint on
that."
And upon being asked to describe the condition of the first
coating of paint when the second coating of fibrous material and
paint was put on, he said: "The first coat was partially dried, so
as to keep its place, but would admit of an impression from the
next covering of thread." On being called upon subsequently for an
affidavit to be used on an application for a rehearing, he stated
that his object was not to produce a noninflammable wire, and that
the wire used by him was not noncombustible or noninflammable, and
was no better adapted for electric light conduction than the
paraffine-coated wire. He
Page 144 U. S. 16
further stated that when the second layer of braid was laid on,
the condition of the first layer was not such as to cause the
threads of the second layer to force the paint into the
interstices, and so load the wire with an abnormal quantity of
paint, as is done in the process described in the Cowles patent.
The substance of his testimony in this particular was that the
coating of paint upon his first layer was allowed to harden before
the second layer was applied, so that the application of the second
layer would not cause the paint upon the first layer to be forced
into the interstices of that layer or to ooze through the braiding
of the second layer.
Thomas L. Reed, another witness, gave a somewhat similar
experiment of the method of insulating wires by passing the naked
wire through a tub containing paint, then braiding it, and then
immersing it in a second tub containing paint, and finally passing
it through jaws to scrape off the surplus paint and compress it. As
this method of insulation, however, does not resemble so closely
the Cowles patent as that employed by Mr. Holmes, it is unnecessary
to notice it further.
Practically the only difference between the Holmes and Cowles
insulators is in the fact that the coat of paint applied to the
first braid in the Holmes process was allowed to dry before the
second coat of braid was applied, and thereby the braid was not so
thoroughly permeated with the paint as is the case in the Cowles
patent. That the idea of applying the second coat of braiding upon
the interposed insulating material while such material was wet or
unset is not in itself a novel one is evident from the English
patents to Brown and Williams, to Duncan and to Henley, all of
which describe a method for insulating conductors by applying a
layer of fibrous material, a layer of insulating material, and a
second layer of fibrous material upon the former before the
insulating material is set or hardened. Indeed, it is doubtful
whether Cowles considered this feature of his process as of any
great importance at the time he made his application, since he
speaks of it only as a "preferable" method, and says that he does
not limit himself in this particular, "as the paint may be dried,
or partially so, before the next layer of braiding is applied." But
however
Page 144 U. S. 17
this may be, the method described by Cowles differs only in
degree, and not in kind, from that described by Holmes. In other
words, it is a more thorough doing or that which Holmes had already
done, and therefore involving no novelty within the meaning of the
patent law. Indeed, we are not satisfied that the method employed
by Holmes did not, for all practical purposes, saturate the first
layer of braid as completely as if the second coat had been applied
while the first was still wet. The process and the results in both
cases are practically the same,
viz., protection,
insulation, and incombustibility. There were certain affidavits
introduced which tended to show that the Holmes insulator was not
incombustible; but in view of the experiments made by Mr. Earle,
the defendant's expert, by applying the same current of electricity
to wires insulated by these different methods, we incline to the
opinion that the method practiced by Mr. Holmes was nearly, if not
quite, as efficient in this particular as the other. If his
testimony be true (and no attempt is made to show that it is not),
it is difficult to see, even if his insulator were not
incombustible, that Mr. Cowles did more than make use of his
process in a somewhat more efficient manner.
In the case of
Gandy v. Belting Co., recently decided,
143 U. S. 587, the
patentee found that the canvas theretofore manufactured was unfit
for use as belting by reason of its tendency to stretch, and to
obviate this he changed the Constitution of the canvas itself by
making the warp threads heavier and stronger than the weft -- in
short, he made a new canvas constructed upon new principles and
accomplishing a wholly new result. That case is not a precedent for
this.
It is true that the insulator used by Holmes was not intended to
be, and perhaps was not known to be, incombustible, since this
feature of its incombustibility added nothing to its value for
protecting a burglar alarm wire, which carries a current of
comparatively low tension; but as already observed, the testimony
indicates that the insulator employed by him was in fact nearly, if
not quite, as incombustible as that made by the plaintiff under the
Cowles patent. If this be so, and
Page 144 U. S. 18
the two insulators are practically the same in their method of
construction, it is clear that Cowles has no right to claim the
feature of incombustibility as his invention, since nothing is
better settled in this Court than that the application of an old
process to a new and analogous purpose does not involve invention,
even if the new result had not before been contemplated. It was
said by Chief Justice Waite in
Roberts v. Ryer,
91 U. S. 150,
91 U. S. 157,
that
"it is no new invention to use an old machine for a new purpose.
The inventor of machine is entitled to all the uses to which it can
be put, no matter whether he had conceived the idea of the use or
not."
In
Pennsylvania Railway v. Locomotive Truck Co.,
110 U. S. 490,
110 U. S. 494,
the adoption of a truck for locomotives which allowed a lateral
motion was held not to be patentable in view of the fact that
similar trucks had been used for passenger cars. All the prior
cases are cited and many of them reviewed, and the conclusion
reached that
"the application of an old process or machine to a similar or
analogous subject, with no change in the manner of application and
no result substantially distinct in its nature, will not sustain a
patent even if the new form of result had not before been
contemplated."
The principle of this case was expressly approved and adopted in
that of
Miller v. Foree, 116 U. S. 22, and
has been frequently applied in the administration of patent law by
the circuit courts.
Crandal v. Watters, 9 F. 659;
Ex
Parte Arkell, 15 Blatchford 437;
Blake v. San
Francisco, 113 U. S. 679;
Smith v. Elliott, 9 Blatchford 400;
Western Electric
Company v. Ansonia Co., 114 U. S. 447;
Spill v. Celluloid Manufacturing Company, 21 F. 631;
Sewall v. Jones, 91 U. S. 171.
On the other hand, if an old device or process be put to a new
use, which is not analogous to the old one, and the adaptation of
such process to the new use is of such a character as to require
the exercise of inventive skill to produce it, such new use will
not be denied the merit of patentability. That, however, is not the
case here, since the Cowles process had been substantially used by
Holmes for the same propose of insulating an electric wire, and the
discovery of its incombustible
Page 144 U. S. 19
feature involved nothing that was new in its use or method of
application.
The utmost that can be said for Cowles is that he produced a
somewhat more perfect article than Holmes; but, as was said by this
Court in
Smith v.
Nichols, 21 Wall. 112,
88 U. S. 119,
"a mere carrying forward, or new or more extended application of
the original thought, a change only in form, proportions, or
degree, the substitution of equivalents, doing substantially the
same thing in the same way by substantially the same means, with
better results, is not such invention as will sustain a
patent."
It was held in this case that where a textile fabric, having a
certain substantial construction, and possessing essential
properties, had been long known and in use, a patent was void when
all that distinguished the new fabric was higher finish, greater
beauty of surface, the result of greater tightness of weaving, and
due to the observation or skill of the workman, or to the
perfection of the machinery employed.
See also Morris v.
McMillin, 112 U. S. 244;
Busell Trimmer Co. v. Stevens, 137 U.
S. 423, and cases cited.
The decree of the circuit court is therefore
Affirmed.
MR. JUSTICE FIELD dissented.
