1. The doctrine announced in
Smith v.
Nichols, 21 Wall. 112, that
"a mere carrying forward or new or more extended application of
the original thought, a change only in form, proportions, or
degree, doing substantially the same thing in the same way, by
substantially the same means, with better results,"
is not such an invention as will sustain a patent,
reaffirmed.
Page 91 U. S. 151
2. It is no new invention to use an old machine for a new
purpose. The inventor of a machine is entitled to the benefit of
all the uses to which it can be put, no matter whether he had
conceived the idea of the use or not.
The bill in this case was filed by the assignee of D. W. C.
Sanford, alleging an infringement of a patent to Sanford for an
improvement in refrigerators.
The principal defense relied upon was the prior invention of
Lyman. The circuit court sustained this defense and dismissed the
bill. From this decree the complainant appealed.
MR. CHIEF JUSTICE WAITE delivered the opinion of the Court.
In order that we may proceed intelligently in our inquiries as
to the validity of the patent presented for our consideration in
this case, it is important to ascertain at the outset what it is
that has been patented.
Looking to the original patent, issued Nov. 13, 1855, we find
the invention is there described as consisting
"of an improvement in refrigerators whereby the whole of the
contained air is kept in continual rotation, purification,
desiccation, and refrigeration, and with economy of ice,"
and that the inventor claimed and obtained a patent for
"the arrangement set forth for causing the perpetual rotation of
the whole of the air contained within the refrigerating apartments,
said arrangement consisting, when the refrigerator is closed, of an
endless passage or chamber, the walls, shelves, and ice receptacle
of which are so placed and constructed that the air is compelled to
circulate through the entire apartment or apartments, and from
which the water of the melting ice is discharged immediately from
the refrigerator instead of flowing between its walls."
Mention is nowhere made in the specifications attached to this
patent of any advantage which the descending current of air has
over the ascending. The whole apparent object of the inventor
was
Page 91 U. S. 152
to produce a circulation of the confined air without the
introduction of external air. The drawings exhibit shelves
perforated so as to permit the passage of the air in its downward
and upward progress, but the shelves seem only to be alluded to in
the specifications for the purpose of indicating the necessity of
their perforation or of some equivalent arrangement so as to allow
the free transit of the air. They appear as part of the
refrigerator to be improved, and are in no respect necessary for
the accomplishment of the object the inventor had in view. Being in
the refrigerator, they are perforated or otherwise so arranged as
to permit the circulation which the inventor is attempting by his
device to create. But for this, they would prevent, or at least
interfere with, the accomplishment of his object. The shelves
themselves form no part of his improvement, but their perforation
or its equivalent, when they are used, does.
In the reissued patent, the invention is described precisely the
same as in the old, and then the following is added:
"It is well known that mould will not generate in a current of
air, and it is known that when once formed, it propagates itself
and spreads with rapidity; therefore, if anyone part of the
refrigerator be out of the direct course of the circulation, the
air will stagnate there and will develop mould, which will
contaminate the whole apartment. The apartment D may vary in width,
and it may be . . . so narrow as to serve merely as a passage for
the ascending current of air, the greatest benefit being always
derived from the downward current in apartment C."
This last paragraph certainly has much the appearance of an
expansion of the original invention.
The claim, however, as made in the reissue is materially changed
from that in the old. It is capable of division into three parts,
and may be stated as follows:
1. The employment of an open-bottom ice box or its equivalent in
combination with a dividing partition, open above and below, so
placed that by means of self-operating internal circulation the
whole of the contained air shall be kept in motion and caused to
revolve around that partition in currents, moving downward only on
one side of this partition and upward only on the other side when
the same is combined
Page 91 U. S. 153
with a chamber for the refrigeration of food &c., placed
directly under the ice box.
2. Placing shelves or fixtures for holding articles to be
refrigerated, or the articles themselves, in the descending
current, directly under an open-bottom ice box, in combination with
a dividing partition open above and below.
3. The construction of the open-bottom ice box in combination
with the shelves or fixtures in such manner that the air may pass
freely down through the same, and fall directly from the ice upon
the articles to be refrigerated, while at the same time the drip of
the water is prevented.
The patent is therefore for a combination of three elements,
to-wit: 1. an open-bottom ice box, or its equivalent, so
constructed that the air may pass freely down through it, while, at
the same time, the drip of the water from the melting ice is
prevented by collecting the water, and taking it in an escape pipe
outside of the refrigerator; 2. a dividing partition, open above
and below, separating the refrigerator into two apartments; and, 3.
a chamber directly under the open-bottom ice box, in which articles
to be refrigerated may be placed in such manner as to receive the
descending current of air from the ice box directly upon them.
There is no doubt of the utility of this combination. If the
patentee was its original and first inventor, the device was
patentable to him.
It will be observed that no particular form of the opening in
the bottom of the ice box is essential. In fact, an equivalent may
be used. It is so expressly stated. Any device which will allow of
the passage of the cooled air out from among the ice or cooling
surfaces into the chamber below will come within the
specifications. Hence the bottom may be in the form of a grate, or
it may be constructed of bars running only longitudinally, or it
may have one or many open spaces of any form. In this respect, all
is left to the judgment of the builder. He may adopt any
arrangement which he considers the best suited to the
accomplishment of the object to be attained, which is the cooling
of the air by the ice and its discharge into the chamber below.
Neither is there any special requirement as to the manner in which
the water from the
Page 91 U. S. 154
melted ice is to be collected and conducted outside the
refrigerator. It is said in the specifications that the bottom of
the ice box was made funnel-shaped, but this was so that the water
might be conducted to the central discharge, and from thence fall
into the escape pipe. This particular shape, however, is not made
an essential ingredient. Any device that will collect the water in
the discharge pipe and prevent the drip will meet. this requirement
of the invention. So, too, of the escape pipe: it may be of any
desirable form. As little space as possible should be occupied, so
that it may not obstruct the downward passage of the air; but even
this is left as a matter of judgment alone.
Neither is any particular form of partition made essential. It
need not even be vertical. All that is required is, that it shall
be open at the top and bottom, and divide the refrigerator into two
apartments. There are no specifications as to the size of the
openings or their form, or as to the comparative size of form of
the two apartments. It is said that the apartment for the ascending
current may be so narrow, that it will serve only as a passage for
the air; but there is nothing to prevent that for the descending
current being narrow also, if the purposes of the refrigerator are
such as to make that desirable. As the greatest benefit is
generally to be derived from the use of the descending current, it
is probable that this chamber will ordinarily be made as large as
is consistent with a steady and continuous flow of the air; but, if
a rapid descent is considered essential for any of the purposes of
refrigeration, there is nothing to prevent a suitable contrivance
for that purpose. If that can be accomplished by a larger chamber
above leading into a smaller one below, for the purpose of
concentrating the cold air current as it descends, a proper
structure may be employed. If, in any place, the air descending
from the ice box can strike directly upon the articles to be
refrigerated, the structure will be within the limits of the
patent. It may be desirable to preserve the temperature at a lower
degree until it strikes the article than it would be if permitted
to remain in a chamber extending the whole size of the ice box to
the bottom of the refrigerator. In such case, a proper contrivance
for that purpose may be employed. Shelves or other fixtures for
holding the articles to be refrigerated are not necessary, as the
articles themselves may
Page 91 U. S. 155
be placed in the descending current without the aid of any
fixtures. But, if they were, their particular form is not
specified. A nail driven into the wall of the chamber would be a
fixture within the meaning of this call of the specifications. All
the specifications do require is that if shelves or fixtures are
used, they shall be so constructed or placed as the interfere as
little as possible with the free passage of the air.
Such being the patent, we now proceed to consider the defense,
which is, that the invention patented had been anticipated by Asel
S. Lyman and others. Sanford, the patentee, does not carry his
invention back of the summer of 1855, when, it perhaps sufficiently
appears, his application was filed.
On the 21st September, 1854, Lyman filed his application for a
patent for "a new and improved mode of cooling, drying, and
disinfecting air for ventilators and refrigerators." His
improvement in refrigerators consisted
"in so arranging them, that, as fast as the air became warm and
moist and impure by contact with the meat, it is drawn off and
passed through the material, where it is cooled, dried, and
disinfected, and them returned to use again in the refrigerator,
collecting moisture and impurities, which it deposits in the
receptacle intended for that purpose; thus keeping up a full
circulation, and thoroughly ventilating the refrigerator with dry,
pure, cold air."
His device consisted of a receptacle for ice, with a grate for
its bottom, on which the ice rested. This receptacle was placed in
the upper part of the refrigerator, and on one side. Below it was a
cold air chamber, into which the air flowed from the ice through
the grate. The water from the melting ice was collected in this
chamber, and conducted by a pipe to the outside of the
refrigerator. From the cold air chamber was a conduit leading
downwards, but which did not extend to the bottom of the
refrigerator. At the top of the ice receptacle, and on its side,
was an opening into the refrigerator. The operation Lyman described
to be as follows:
"The receptacle being filled with fragments of ice, the air
among this ice will be cooled, and, becoming more dense, will
settle down through the grate into the cold air chamber, thence
down the conduit, and so long as the air in the ice is colder and
heavier than that in the refrigerator, it will continue to fall
down the conduit,
Page 91 U. S. 156
mingling with the lower strata, and forcing the upper strata or
warmest air through the opening into the ice receptacle. When the
air comes in contact with the cold surfaces of the ice, its
capacity for moisture is lessened, and the moisture is deposited on
the ice. By this arrangement of the ice receptacle in the upper
part of the refrigerator, with an opening for receiving air in its
upper part, and a grate in the lower part on which the ice rests, a
cold air chamber below the grate and a descending conduit from this
cold air chamber, or with an arrangement of parts substantially the
same, so that the air shall be caused to circulate rapidly from
bottom to top in the refrigerating chamber, and from top to bottom
in the separate combinations as described, the air is not only
cooled, but it is, by being frequently passed through the
interstices of the ice, thoroughly dried, and it is washed as by a
hail storm; a decided improvement in its smell is effected; and the
apparatus becomes not only cooling and drying, but, to some extent,
a disinfecting apparatus."
He then claimed as his invention
"the combination of the reservoir of cooling, drying, and
disinfecting material with the descending tube or conduit, so that
the cold and condensed air in this conduit shall, on account of its
increased weight, cause the warmer air to pass more rapidly through
the material, where it is cooled, dried, and disinfected, and in
its turn fall down the conduit, being by its sides kept separate
from the other air until it mingles with the lower strata,
substantially as described for the purposes aforesaid."
There was therefore in this invention of Lyman, the open bottom
ice box, and the partition open above and below, dividing the
refrigerator into two apartments, in one of which the air passed
downward only, and in the other upward only. This constituted all
there was of the "endless passage or chamber" in the original
Sanford patent, "so constructed that the air is compelled to
circulate through the entire apartment or apartments." True, the
partition was not vertical; and the apartments need not be of equal
or of any particular proportionate size. Neither was this
necessary, as has been seen in the Sanford patent. Each, however,
called for the circulation of air, and each obtained it
substantially by the same device. They each passed the air cooled
in the ice box through convenient openings downwards in one
apartment, and upwards
Page 91 U. S. 157
through the other. In each device the cooled air passed through
the opening in the bottom of the partition, and the warmed air
through that in the top. All this was done in both cases for the
purpose of cooling, desiccating, and purifying the confined air,
and to prepare it for the purposes of refrigeration. There was
therefore one common object to be accomplished by both the
inventors, and they each devised substantially the same plan for
that purpose.
Undoubtedly Lyman expected to use the ascending air principally
for the purposes of refrigeration, and he therefore supposed the
greatest benefit would be derived from that current; but there was
nothing in his specifications to prevent the use of the descending
air, or from so constructing his refrigerator as to make that
available. If it should be thought advisable to extend the size of
the chamber for the descending air, there was nothing to prevent
it. It would still operate as a conduit in which the cold air would
fall down and be kept separate by the sides from the other air
until it mingled with the lower strata.
It being, then, certain that Lyman contrived a machine which
would produce the desired circulation, and could be used for
refrigeration in the ascending current, it remains only to consider
whether, if one desired to make use of the descending current for
the same purpose, he could claim such use as a new invention.
It is no new invention to use an old machine for a new purpose.
The inventor of a machine is entitled to the benefit of all the
uses to which it can be put, no matter whether he had conceived the
idea of the use or not.
Lyman had the descending current. True, he concentrated the air
as it fell, and sent it downwards through a space smaller than that
which would be contained in a chamber extending the full size of
the bottom of the ice box to the bottom of the refrigerator; but he
did have a space large enough to expose in it some articles to the
effect of that current. If it should be found desirable to utilize
that current to a greater extent than was at first contemplated,
all that need be done is to enlarge the conduit. If the circulation
is kept up, the device will be within the specifications. In fact,
the proof is abundant, that
Page 91 U. S. 158
in his experiments, while perfecting his invention, Lyman did,
in more cases than one, utilize the descending current. With both
the inventors, the circulation by means of an ascending and
descending current was the principal object to be obtained. One
considered the greatest benefit for the purposes of refrigeration
was to be derived from the use of the descending current, while the
other had his attention directed more particularly to the
advantages of the ascending. They each had both, and could utilize
both. It is no invention, therefore, to make use of one rather than
the other.
Lyman had conceived the idea of his invention as early as Aug.
19, 1852, for he then filed his caveat in the Patent Office. His
ideas were at that time undoubtedly crude; but it is clear that he
kept steadily at his work. He built many refrigerators upon his
general plan; and, in some at least, the descending current was
made use of. A part had shelves arranged in such a manner as to
expose the articles in that current; and in some the articles were
placed on the bottom of the refrigerator, immediately under the
outlet of the conduit. In some, the conduit was large, and in
others it was small. The size was made in all cases to depend upon
the judgment of the builder, and the purposes to which the machine,
when completed, was to be applied.
As has been seen, Lyman, after having, as he thought, perfected
his invention, applied for his patent Sept. 21, 1854. Technical
objections were made, and on the 19th April, 1855, he withdrew the
application. He, however, still kept up his correspondence with the
department, vigorously pushing his claim. On the 28th November,
1855, only thirteen days after the grant of the patent to Sanford,
he filed a new application, and, in doing so, distinctly connected
it with the first. There certainly is no material difference
between the old and the new. On the 25th March, 1856, a patent was
in due form issued to him.
Down to this time, it is impossible to discover any material
difference between the two patented inventions. Clearly Lyman was
the oldest inventor, and his patent was consequently the best,
although that of Sanford antedated his. His last application was
rejected Dec. 5, because it had been anticipated
Page 91 U. S. 159
by Sanford; but afterwards, the subject was reconsidered, and a
patent issued to him.
After this grant of a patent to Lyman, Sanford surrendered his
original patent, and obtained his reissue upon the amended
specifications and claim. These have already been stated. All that
can possibly be claimed for this amendment is a combination of the
use of the descending current with the device for the circulation.
There was no change in the machine; it was only put to a new use.
If there was any change of construction suggested, it was only to
increase its capacity for usefulness. It was
"a mere carrying forward or new or more extended application of
the original thought, a change only in form, proportions, or
degree, doing substantially the same thing in the same way, by
substantially the same means, with better results."
This is not such an invention as will sustain a patent. We so
decided no longer ago than the last term, in
Smith v.
Nichols, 21 Wall. 112. Clearly we think therefore
the invention of Sanford was anticipated by Lyman, and his patent
is, on that account, void.
We have been cited to the case of
Roberts v. Harnden, 2
Cliff. 500, decided by Mr. Justice Clifford, upon the circuit, as
an authority against the view we have taken. In that case, the same
construction substantially was given to the patent that we give to
it here. We place our decision upon the facts shown to us. We think
the evidence establishes, beyond all question, that Lyman, and not
Sanford, was the original and first inventor of all there is of
this improvement. In that case the court said
"that the respondent had not introduced any satisfactory
evidence tending to show that the patentee (Sanford) is not the
original and first inventor of the improvement."
What was submitted to that court we do not know. The report of
the case does not contain the evidence, or any intimation of what
it was.
Upon the evidence submitted to us, we think a clear case is made
in favor of the defendants, and that the bill was properly
dismissed.
The decree of the circuit court is affirmed.
NOTE -- In
Roberts v. Buck, on appeal from the circuit
court for the District of Massachusetts, the decree of the circuit
court was affirmed, for the reasons stated in
Roberts v. Ryer,
supra; the questions presented in both cases being
substantially the same.