The writs of certiorari in these cases bring conflicting
decisions of the Circuit Courts of Appeal to this Court for
review.
The patent involved in this case shows a method for expanding
metal consisting of two operations, which when combined produce a
new and useful result covered by the claim allowed, and this
result, when read in connection with the specifications, shows
substantial improvement in the art of making expanded metal
work.
A new combination of elements, though old in themselves, which
produces a new and useful result, entitles the inventor to the
protection of a patent.
Loom Co. v. Higgins, 105 U.
S. 580.
While the mere function or effect of the operation of a machine
cannot be the subject matter of a patent, a method of doing a thing
so clearly indicated that those skilled in the art can avail
themselves of mechanism to carry it into operation can be the
subject matter of a patent.
Cochrane v. Deene,
94 U. S. 780.
A process and an apparatus by which it is performed are distinct
things. They may be found in one patent; they may be the subject of
different patents.
Leeds & Catlin v. Victor Talking Machine
Co., 213 U. S. 301.
An invention or discovery of a process or method involving
mechanical operation and producing a new and useful result, such as
expanding metal, may, and in this case does, entitle the inventor
to a patent, and such a process is not limited to those showing
chemical action or elemental changes.
Risdon Locomotive Works
v. Medart, 158 U. S. 68,
distinguished.
Page 214 U. S. 367
In this case,
held that the Golding patent No. 547,242
for the process of expanding metal was a substantial improvement of
the art involving mechanical operations and producing a new and
useful result independently of particular mechanisms for performing
such process, and is valid.
157 F. 564 reversed; 164 F. 849 affirmed.
The facts, which involve the validity of certain letters patent
of the United States, are stated in the opinion.
Page 214 U. S. 373
MR. JUSTICE DAY delivered the opinion of the Court.
These cases involve opposing decisions as to the validity of
letters patent of the United States No. 527,242, dated October
Page 214 U. S. 374
9, 1894, granted to John E. Golding for an alleged improvement
in the method of making expanded sheet metal. In case No. 66, here
on writ of certiorari to the Circuit Court of Appeals for the Third
Circuit, a decree of the Circuit Court of the United States for the
Eastern District of Pennsylvania, sustaining the patent, was
reversed, and the patent held invalid. The opinion of the circuit
judge sustaining the patent is found in 136 F. 870 . The case in
the court of appeals is found in 146 F. 984. After the decree in
the Circuit Court of Appeals for the Third Circuit, the Expanded
Metal Company having filed a bill against the General Fireproofing
Company in the Circuit Court of the United States for the Northern
District of Ohio, the case was heard and the patent held invalid on
the authority of the case in the Circuit Court of Appeals for the
Third Circuit. 157 F. 564. The Circuit Court of Appeals for the
Sixth Circuit reversed the United States Circuit Court for the
Northern District of Ohio, and held Golding's patent valid and
infringed. 164 F. 849. These writs of certiorari bring these
conflicting decisions of the courts of appeal here for review.
The patent in controversy relates to what is known as expanded
sheet metal. Expanded metal may be generally described as metal
openwork, held together by uncut portions of the metal, and
constructed by making cuts or slashes in metal and then opening
them so as to form a series of meshes or latticework. In its
simplest form, sheet metal may be expanded by making a series of
cuts or slits in the metal in such relation to each other as to
break joints, so that the metal, when opened or stretched, will
present an open mesh appearance. It may be likened to the familiar
woven wire openwork construction, except that the metal is held
together by uncut portions thereof, uniting the strands, and the
whole forms a solid piece.
In the earlier patents, different methods are shown for cutting
the metal, which cuts were afterwards opened by a separate
operation of pulling or stretching. These crude methods
Page 214 U. S. 375
are shown in the earlier American and English patents which
appear in the record. While nothing more than such methods was
accomplished in the art, there was little general or commercial use
for expanded metal.
It was apparent that, if a method could be devised by which the
metal could be simultaneously cut and expanded, such method would
be a distinct advance in the art, and this record discloses that
the desirable result of simultaneously performing these operations
was accomplished in the Golding and Durkee patent No. 320,242. In
that patent, the operation was performed by means of knives
arranged in a step order, the sheet to be fed obliquely. The
inventors described the Golding and Durkee method as follows:
"The process consists in the employment of a flat piece of metal
of any desired size, and beginning at one side and corner and
making an incision within the side of the metal, thus forming a
strand which is simultaneously pressed away from the plane of the
metal in a direction at or near a right angle, the position the
strand assumes depending upon the distance it is moved from the
plane of the metal.
a in the drawing shows the first cut
made. The next step in this process is to make additional
incisions, as is shown at
c, b, and
d, further
within the place of metal, and leaving uncut sections at the ends
of the cuts, and simultaneously with the cutting the strands are
pressed away from the plane of the metal at the angle and to the
desired position, as above described. Thus, each row of meshes is
simultaneously cut and formed from a blank piece of metal without
buckling or crimping the blank. In the act of cutting and forming
the meshes, the finished article is contracted in a line with the
cuts or incisions, and consequently it is shorter in this direction
than the piece from which it was cut, but it is greatly lengthened
in a line at an angle to the plane of the original sheet, plate, or
blank."
The result was to produce expanded metal, as shown in this
figure:
Page 214 U. S. 376
image:a
With this patent as the advanced state of the art, Golding set
about making further improvements, and the result was the patent in
suit. The specifications of the patent in suit state:
"In the manufacture of what is now generally known as expanded
sheet metal, it has been customary to first cut the slits in the
sheet metal at short distances apart, and to open the metal at the
cuts thus formed by bending the severed portions or strands in a
direction at right angles substantially to the plane or the sheet.
It has also been made by simultaneously cutting and opening the
metal by means of cutters set off or stepped relatively so to make
the slashes or cuts in different lines in the manner set forth in
patents No. 381,230 or No. 381,231, of April 17, 1888. In both of
these methods, the product is somewhat shorter and materially wider
than the original sheet, but practically no stretching or
elongation of the metal forming the strands is caused."
"In my present invention, I seek to avail myself of the ability
of the metal to stretch or distend as well as of its ability to
bend under strain or pressure, and the invention consists in the
improved method of making expanded metal
viz., by
simultaneously cutting and opening or expanding the metal at the
cuts by stretching the severed portions. "
Page 214 U. S. 377
In the method further described in the specifications, the
expanded metal is shown to be made by the use of knives making a
series of slits in a straight line at equal distances apart across
the sheet, and at the same time, carrying downward the severed
portions of the metal. And this operation is performed by bending
the severed portion at a time when its ends are securely attached
to the main sheet, thereby expanding the sheet without materially
shortening it. The sheet is then fed forward, and the slitting and
stretching operation is repeated in such a manner that the slits
are in every case made back of the portion unsevered by the
preceding operation, or, in other words, as the specification
states, the slits and unsevered portions alternate in position in
each successive operation, the bends given to the severed portions
or strands being in direction at right angles to the plane of the
sheet, there is no contraction in the length of the metal, and the
expansion is obtained by the stretching, distension, or elongation
of the severed strand. This patent contains the single claim, which
is as follows:
"The herein-described method of making open or reticulated metal
work, which consists in simultaneously slitting and bending
portions of a plate or sheet of metal in such manner as to stretch
or elongate the bars connecting the slit portions and body of the
sheet or plate, and then similarly slitting and bending in places
alternate to the first-mentioned portions, thus producing the
finished expanded sheet metal of the same length as that of the
original sheet or plate, substantially as described."
It is thus apparent that the method covered by the claim of the
patent is accomplished by the two operations indicated and
performed in the manner pointed out in the specifications. The
first operation of cutting, bending, and stretching the strands
simultaneously produces a series of stretched loops or half
diamonds. Thus:
Page 214 U. S. 378
image:b
This series of half diamonds is then supplemented by the second
operation, which consists in making a second series of cuts and
expansions for stretching the strands back of and opposite the
parts of the metal left uncut by the first operation. The result is
that the series of one-half diamonds is converted into the series
of full diamonds, and because of the manner in which the stretching
is done, while the ends of the strands are still firmly attached to
the sheet, there is no material shortening of the length of the
sheet. Thus:
image:c
What has Golding accomplished by this alleged improvement? These
records leave no doubt that there are substantial advantages in the
method of the patent in suit. As the sheet is not shortened, the
completed product is regular
Page 214 U. S. 379
in form and ready for many uses to which the shortened sheet of
the old method could not be put. The metal worked upon can be much
heavier than that which could be successfully manipulated by the
old process. The meshes are formed in a uniform and regular way, so
that a line drawn through their intersections in one direction is
at right angles with a line drawn through their intersections in
the other direction. There is no irregularity in the width of the
strands. Put to the test of actual use, this record discloses that,
while the method of the Golding and Durkee patent is still in use
in some places in this country, the method disclosed in the patent
in controversy is largely in use in the United States, Great
Britain, and Continental Europe; that it has greatly increased the
use of expanded metal in this country, and opened new fields for
use where sheets of a regular shape can be used to a greater
advantage than they could be when made under the old process.
The learned Circuit Court of Appeals for the Third Circuit seems
to have regarded the invention as consisting merely of the
improvement of the process in the manufacture of expanded metal by
stretching certain portions of the metal when the slit is cut and
the mesh is opened. A broad claim of that character was made in the
Patent Office, and the file wrapper and contents show that it was
disallowed by the examiner. The claim in its present form, framed
by the examiner as sufficient to cover the real invention of the
patent, was accepted by the applicant, and is now the claim of the
patent.
If all that Golding did was to show a method of simultaneously
cutting and stretching the metal, the examiner was doubtless right
in holding it to have been anticipated by former inventions,
notably the patent to Ohl, No. 475,700, and in a degree in the
previous patents to Golding and to Golding and Durkee.
But the patent in suit, embraced in the claim allowed, shows
more than a mere method of making open meshes by simultaneously
cutting and stretching the metal. It shows a method by which the
metal is first cut and stretched in the
Page 214 U. S. 380
manner indicated to make the half diamond, and then a second
operation, coordinating with the first, and completing the mesh by
the manner in which it is performed in connection with the first.
It is the result of the two operations combined which produces the
new and useful result covered by the claim allowed in the Patent
Office, and, which, when read in connection with the
specifications, shows substantial improvement in the art of making
expanded metal work.
But it is said that the patent in suit discloses no means of
practically operating the method shown, and therefore, as said by
the learned judge in the Third Circuit, "it is but the expression
of a happy thought;" but the requirement of the patent law, in
order to make a method or process patentable, is that the patent
shall indicate to those skilled in the art the adaptation of means
to put it into practice.
We think this record amply discloses, while no complete
mechanism is pointed out in the specifications, enough to indicate
to those skilled in such matters a mechanism whereby the method of
the patent can be put into operation. As said by Judge Severens,
delivering the opinion of the court in No. 606, in the Circuit
Court of Appeals for the Sixth Circuit:
"But here the inventor has gone on to point out that the
slitting and bending is to be done by a stationary cutter under the
sheet, and upper cutters to cooperate in shearing the slit. These
upper cutters are so constructed as to bend down the strand to the
proper distance. It is not stated just what the form shall be, but
only ordinary skill in mechanics would suggest that the outer side
of the cutter might be beveled or a shoulder might be formed
thereon to carry down the strand when severed."
"Mechanism for the shifting of the sheet and of the knives was
already in use in machines for expanding metal, and, indeed, was
common in the mechanical arts. Moreover, experts have here
testified that these devices could be arranged by any skilful
mechanic, and we have no reason to doubt it."
Golding testifies that he at first executed his process by
Page 214 U. S. 381
hand. Other witnesses, skilled in the art, say that they could
do likewise from the information found in the patent.
The important thing in this patent is a method of procedure, not
the particular means by which the method shall be practiced.
Golding's machine patent was not applied for for more than a year
and a half after the issue of the patent in suit.
It is suggested that Golding's improvement, while a step
forward, is nevertheless only such as a mechanic skilled in the
art, with the previous inventions before him, would readily take,
and that the invention is devoid of patentable novelty. It is often
difficult to determine whether a given improvement is a mere
mechanical advance or the result of the exercise of the creative
faculty amounting to a meritorious invention. The fact that the
invention seems simple after it is made does not determine the
question; if this were the rule, many of the most beneficial
patents would be stricken down. It may be safely said that if those
skilled in the mechanical arts are working in a given field, and
have failed, after repeated efforts, to discover a certain new and
useful improvement, that he who first makes the discovery has done
more than make the obvious improvement which would suggest itself
to a mechanic skilled in the art, and is entitled to protection as
an inventor. There is nothing in the prior art that suggests the
combined operation of the Golding patent in suit. It is perfectly
well settled that a new combination of elements, old in themselves,
but which produce a new and useful result, entitles the inventor to
the protection of a patent.
Webster Loom Co. v. Higgins,
105 U. S. 580,
105 U. S.
591.
To our minds, Golding's method shows that degree of ingenuity
and usefulness which raises it above an improvement obvious to a
mechanic skilled in the art, and entitles it to the merit of
invention. Others working in the same field had not developed it,
and the prior art does not suggest the combination of operations
which is the merit of Golding's invention.
It is lastly contended, and this is perhaps the most important
question in the case, that, in view of the former declarations
Page 214 U. S. 382
and opinions of this Court, what is termed a process patent
relates only to such as are produced by chemical action, or by the
operation or application of some similar elemental action, and that
such processes do not include methods or means which are effected
by mere mechanical combinations, and a part of the language used in
Corning v.
Burden, 15 How. 252, and
Risdon Iron &
Locomotive Works v. Medart, 158 U. S. 68, is
seized upon in support of this contention. We have no disposition
to question the decision in those cases.
An examination of the extent of the right to process patents
requires consideration of the object and purpose of the Congress in
exercising the constitutional power to protect, for a limited
period, meritorious inventions or discoveries. Section 4886 of the
Revised Statutes provides:
"Any person who has invented or discovered any new and useful
art, machine, manufacture, or composition of matter, or any new and
useful improvement thereof . . . may . . . obtain a patent
therefor."
This is the statute which secures to inventors the rights of
protection, and it is not the province of the courts to so limit
the statute as to deprive meritorious inventors of its benefits.
The word "process" is not used in the statute. The inventor of a
new and useful art is distinctly entitled to the benefit of the
statute as well as he who invents a machine, manufacture, or
composition of matter. The word "process" has been brought into the
decisions because it is supposedly an equivalent form of
expression, or included in the statutory designation of a new and
useful art.
What, then, is the statutory right to a patent for a "process"
when the term is properly considered? Curtis, in his work on the
Law of Patents, says:
"A process may be altogether new, whether the machinery by which
it is carried on be new or old. A new process may be invented or
discovered, which may require the use of a newly invented machine.
In such a case, if both the process and the machine were invented
by the same person, he could take separate
Page 214 U. S. 383
patents for them. A new process may be carried on by the use of
an old machine in a mode in which it was never used before. . . .
In such a case, the patentability of the process in no degree
depends upon the characteristic principle of the machine, although
machinery is essential to the process, and although a particular
machine may be required."
Curtis, 4th ed. § 14.
In Robinson on Patents, vol. 1, § 167, it is said:
"While an art cannot be practiced except by means of physical
agents, through which the force is brought in contact with or is
directed toward its object, the existence of the art is not
dependent on any of the special instruments employed. It is a
legal, practical invention in itself. Its essence remains
unchanged, whatever variation takes place in its instruments, as
long as the acts of which it is composed are properly
performed."
And Walker on Patents, 4th ed. § 3, states that valid process
patents may be granted for
"operations which consist entirely of mechanical transactions,
but which may be performed by hand or by any of several different
mechanisms or machines."
It is undoubtedly true, and all the cases agree, that the mere
function or effect of the operation of a machine cannot be the
subject matter of a lawful patent. But it does not follow that a
method of doing a thing, so clearly indicated that those skilled in
the art can avail themselves of mechanism to carry it into
operation, is not the subject matter of a valid patent. The
contrary has been declared in decisions of this Court. A leading
case is
Cochrane v. Deener, 94 U. S.
780, in which this Court sustained a process patent
involving mechanical operations, and in which the subject was
discussed by Mr. Justice Bradley, speaking for the Court. On page
94 U. S. 787
that learned Justice said:
"That a process may be patentable, irrespective of the
particular form of the instrumentalities used, cannot be disputed.
. . . Either may be pointed out, but if the patent is not confined
to that particular tool or machine, the use of the others would be
an infringement, the general process being the
Page 214 U. S. 384
same. A process is a mode of treatment of certain materials to
produce a given result. It is an act or a series of acts performed
upon the subject matter to be transformed and reduced to a
different state or thing. If new and useful, it is just as
patentable as is a piece of machinery. In the language of the
patent law, it is an art. The machinery pointed out as suitable to
perform the process may or may not be new or patentable, whilst the
process itself may be altogether new, and produce an entirely new
result. The process requires that certain things should be done
with certain substances, and in a certain order; but the tools to
be used in doing this may be of secondary consequence."
This clear and succinct statement of the rule was recognized and
applied (Mr. Justice Bradley again speaking for the Court) in the
case of
Tilghman v. Proctor, 102 U.
S. 707. In the course of the opinion, the learned
Justice tersely says:
"A machine is a thing. A process is an act, or a mode of acting.
The one is visible to the eye -- an object of perpetual
observation. The other is a conception of the mind -- seen only by
its effects when being executed or performed. Either may be the
means of producing a useful result."
That this Court did not intend to limit process patents to those
showing chemical action or similar elemental changes is shown by
subsequent cases in this Court.
In
Westinghouse v. Boyden Power Brake Co., 170 U.
S. 537, the opinion was written by the same eminent
justice who wrote the opinion in
Risdon Iron & Locomotive
Works v. Medart, 158 U.S.,
supra, and, delivering the
opinion of the Court, he said (p.
170 U. S.
557):
"These cases [
158 U. S. 158 U.S. 68, and
Wicke v. Ostrum, 103 U. S. 461] assume, although
they do not expressly decide, that a process, to be patentable,
must involve a chemical or other similar elemental action, and it
may be still regarded as an open question whether the patentability
of processes extends beyond this class of inventions."
And added these significant words:
"Where the process is simply the function or operative
effect
Page 214 U. S. 385
of a machine, the above cases are conclusive against its
patentability; but where it is one which, though ordinarily and
most successfully performed by machinery, may also be performed by
simple manipulation, such, for instance, as the folding of paper in
a peculiar way for the manufacture of paper bags, or a new method
of weaving a hammock, there are cases to the effect that such a
process is patentable, though none of the powers of nature be
invoked to aid in producing the result.
Eastern Paper Bag Co.
v. Standard Paper Bag Co., 30 F. 63;
Union Paper-Bag
Machine Co. v. Waterbury, 39 F. 389;
Travers v. American
Cordage Co., 64 F. 771. This case, however, does not call for
an expression of our opinion upon this point, nor even upon the
question whether the function of admitting air directly from the
train pipe to the brake cylinder be patentable or not, since there
is no claim made for an independent process in this patent, and the
whole theory of the specification and claims is based upon the
novelty of the mechanism."
And the same learned Justice wrote the opinion of the Court in
Carnegie Steel Co. v. Cambria Iron Co., 185 U.
S. 403, and sustained a process patent. If, by any
construction, that process could be said to involve a "chemical or
other similar elemental action," no stress was laid upon that fact.
This Court, speaking through Mr. Chief Justice Waite, sustained a
patent in the
Bell Telephone Cases, 126 U. S.
1, for a method of transmitting electrical undulations
similar in form to the vibrations of the air accompanying vocal
sounds, and at the same time the patent for the apparatus by which
the method was operated was sustained.
In
Leeds & Catlin Co. v. Victor Talking Machine
Company, decided at this term,
213 U.
S. 301,
213 U. S. 318,
this Court said:
"A process and an apparatus by which it is performed are
distinct things. They may be found in one patent; they may be made
the subject of different patents."
We therefore reach the conclusion that an invention or discovery
of a process or method involving mechanical operations,
Page 214 U. S. 386
and producing a new and useful result, may be within the
protection of the federal statute, and entitle the inventor to a
patent for his discovery.
We are of opinion that Golding's method was a substantial
improvement of this character, independently of particular
mechanisms for performing it, and the patent in suit is valid as
exhibiting a process of a new and useful kind.
As to the infringement, little or no question was made in case
No. 606. In case No. 66 the circuit court held that there was some
evidence of infringement -- enough at least, to warrant the decree
sustaining the patent and awarding an accounting. With this
conclusion we agree. It follows that the decree of the Circuit
Court of Appeals for the Third Circuit (No. 66) should be reversed,
and that of the Circuit Court of Appeals for the Sixth Circuit (No.
606) should be affirmed, and the cases remanded to the Circuit
Courts of the United States for the Eastern District of
Pennsylvania and the Northern District of Ohio, respectively, for
further proceedings consistent with this opinion.
Decrees accordingly.