"All the devices of which the alleged combination is made are
confessedly old. No claim is made for any one of them singly as an
independent invention. It must be conceded that a new combination,
if it produces new and useful results, is patentable, though all
the constituents of the combination were well known and in common
use before the combination was made. But the results must be a
product of the combination, and not a mere aggregate of several
results, each the complete product of one of the combined elements.
Combined results are not necessarily a novel result, nor are they
an old result
Page 104 U. S. 318
obtained in a new and improved manner. Merely bringing old
devices into juxtaposition, and there allowing each to work out its
own effect, without the production of something novel, is not
invention."
"The combination, to be patentable," said Mr. Justice Hunt in
Reckendorfer v. Faber, 92 U. S. 347,
92 U. S.
357,
"must produce a different force or effect, or result, in the
combined forces or processes, from that given by their separate
parts. There must be a new result produced by their union; if not
so, it is only an aggregation of separate elements."
In Nimmo's apparatus, it is perfectly clear that all the
elements of the combinations are old and that each operates only in
the old way. Beyond the separate and well known results produced by
them severally, no one of them contributes to the combined result
any new feature; no one of them adds to the combination anything
more than its separate independent effect; no one of them gives any
additional efficiency to the others or changes in any way the mode
or result of its action. In a patentable combination of old
elements, all the constituents must so enter into it as that each
qualifies every other; to draw an illustration from another branch
of the law, they must be joint tenants of the domain of the
invention, seised each of every part,
per my et per tout,
and not mere tenants in common, with separate interests and
estates. It must form either a new machine of a distinct character
and function or produce a result due to the joint and cooperating
action of all the elements, and which is not the mere adding
together of separate contributions. Otherwise it is only a
mechanical juxtaposition, and not a vital union.
In the case of this apparatus, the mold was known, and a rib or
former was known, and their use in combination was known. Salvetat
described a rib so arranged that after it had performed it function
in shaping the interior of the vessel, it could be withdrawn
through the top of the vessel so as not to produce injury by
striking against its side. This rib Nimmo substituted for the old
one in the same combination. And this is the whole of the
invention. Upon the principle stated, there is no invention in
it.
We are also of opinion that the invention claimed for
Page 104 U. S. 319
Nimmo, as described in the reissued patent, is covered by the
prior patents to Wise and to Smith.
Undoubtedly they both embody the principle of a former used in
combination with a mold for the purpose of manufacturing crucibles,
connected so that the former can be withdrawn in the case of
vessels having a bilge, without injury.
It is objected, however, that the machines described in these
patents are mere paper machines, not capable of successful
practical working. But on examination it sufficiently appears, we
think, that the objections can be sustained only as to minor
matters of detail in construction not affecting the substance of
the invention claimed, and could be removed by mere mechanical
skill, without the exercise of the faculty of invention. In this
view, the Wise and Smith patents are not rendered inefficient as
defenses in this suit by reason of the alleged imperfections of the
machines described in them.
The bill of the appellants was dismissed by the court below on
the ground of the prior knowledge and use of the alleged invention
at Kier's works in Pittsburgh. We are of opinion that the testimony
sustains that finding.
Decree affirmed.