1. The decision of the Commissioner of Patents in the allowance
and issue of a patent creates a
prima facie right only,
and, upon all the questions involved therein, the validity of the
patent is subject to examination by the courts.
2. A combination, to be patentable, must produce a different
force, 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; otherwise it is only an aggregation of
separate elements.
3. A combination, therefore, which consists only of the
application of a piece of rubber to one end of the same piece of
wood which makes a lead pencil is not patentable.
Page 92 U. S. 348
MR. JUSTICE HUNT delivered the opinion of the Court.
This is an appeal from a decree of the United States Circuit
Court for the Southern District of New York, dismissing the bill of
complaint, which was filed to restrain the infringement by the
respondent of certain letters patent, and for an accounting and
damages.
These patents relate to the manufacture of combined pencils and
erasers.
1. The first was granted to Hymen L. Lipman, March 30, 1858; and
was extended for a farther term of seven years from the 30th of
March, 1872.
The material parts of the specification are as follows:
"I make a lead pencil in the usual manner, reserving about
one-fourth of the length, in which I make a groove of suitable
size, A, and insert in this groove a piece of prepared india-rubber
(or other erasive substance), secured to said pencil by being glued
at one edge. The pencil is then finished in the usual manner, so
that, on cutting one end thereof, you have the lead, B, and on
cutting at the other end you expose a small piece of india-rubber,
C, ready for use, and particularly valuable for removing or erasing
lines, figures &c., and not subject to be soiled, or mislaid on
the table or desk."
"In making mathematical, architectural, and many other kinds of
drawings, in which the lines are very near each other, the eraser
is particularly useful, as it may be sharpened to a point to erase
any marks between the lines; and, should the point of the rubber
become soiled or inoperative from any cause, such cause is easily
removed by a renewed sharpening, as in the ordinary lead
pencil."
The claim is as follows:
"I do not claim the use of a lead pencil with a piece of
india-rubber or other erasing material attached at one end for the
purpose of erasing marks, but what I do claim as my invention, and
desire to secure by letters patent, is the combination of the lead
and india-rubber, or other erasing substance, in the holder of a
drawing pencil, the whole being constructed and arranged
substantially in the manner and for the purposes set forth."
The drawings forming part of the specification exhibit a
continuous sheath of uniform size, with interior grooves of
different sizes, the eraser groove being larger than the lead
groove.
Page 92 U. S. 349
2. The second patent is for an improvement upon the invention of
Lipman, and was granted to Joseph Reckendorfer, the complainant,
the 4th of November, 1862, and reissued on the 1st of March,
1872.
The material parts of the specification are as follows:
"My invention is intended to provide a means whereby articles of
greater size or diameter than the lead may be securely held in the
head of a pencil of otherwise ordinary or suitable construction,
without making the body of the pencil cumbrous or inconvenient. To
this end, my invention consists:"
"
First, of a pencil composed of a wooden sheath and
lead core, having one end of the sheath enlarged and recessed to
constitute a receptacle for an eraser or other similar article, as
hereinafter stated."
"
Second, of a pencil, the wooden case of which
gradually tapers from the enlarged and recessed head towards its
opposite end for the whole or a portion of the length, as
hereinafter set forth."
"The receptacle for the eraser or other article is formed in the
head, without too much weakening the wood, owing to the form of the
sheath, while for the same reason the end of the pencil which
contains the ordinary lead is not cumbrous nor clumsy, but can be
readily held between the fingers, just as an ordinary pencil
is."
Having thus described his invention, Reckendorfer claims:
"1st, a pencil composed of a wooden sheath and lead core, having
one end of the sheath enlarged and recessed to constitute a
receptacle for an eraser or other similar article, as shown and set
forth."
"2d, a pencil the wooden case of which gradually tapers from its
enlarged and recessed head towards its opposite end for the whole
or a portion of its length, substantially as shown and
described."
The points we propose here to discuss are two:
"
First, is the article patented by the plaintiff and
his assignor, and for the infringement of which patents this action
is brought, a patentable invention within the laws of the United
States?"
"
Second, is it within the power of the courts to
examine and determine this question?, or is the decision of the
Commissioner of Patents when, by issuing a patent, he decides that
the invention is patentable, final and conclusive on the point?
"
Page 92 U. S. 350
The plaintiff contends that the decision of the commissioner is
conclusive upon the point of invention, and that the question, as
distinct from that of want of novelty, is one not open to the
judgment of the court. In the natural order of things, this
question is the first one to be examined, for if it shall appear
that the contention of the plaintiff is correct in this respect,
the question in regard to the patentability of the instrument now
before us will not arise. The point will have been decided for us,
and by a controlling authority.
The "act to revise, consolidate, and amend the statutes relating
to patents and copyrights," passed July 4, 1836, 5 U.S.Stat. 118,
is the act regulating this case.
By the sixth section thereof it is enacted
"That any person having invented or devised any new and useful
art, machine, manufacture, or composition of matter, not known or
used by others before his invention or discovery thereof, and not
at the time of his application for a patent in public use or on
sale with his consent or allowance as the inventor or discoverer,
and shall desire to obtain an exclusive property therein, may make
application in writing to the commissioner, expressing such desire,
and the Commissioner, on due proceedings had, may grant a patent
therefor. . . . He shall make oath that he believes himself to be
the first inventor or discoverer thereof, and that he does not know
or believe that the same has ever before been used."
Looking at this section alone, it may be safely said no one is
entitled to a patent unless (1) he has discovered or invented an
art, machine, or manufacture; (2) which art, machine, or
manufacture, is new; (3) which is also useful; (4) which is not
known or patented as therein mentioned. It is not sufficient that
it is alleged or supposed, or even adjudged, by some officer, to
possess these requisites. It must, in fact, possess them; and that
it does possess them the claimant must be prepared to establish in
the mode in which all other claims are established; to-wit, before
the judicial tribunals of the country.
The seventh section of the act (p. 120) provides that on the
filing of any such application &c., and the payment of the duty
required by law, the commissioner shall make, or cause to be made,
an examination of the alleged new invention or
Page 92 U. S. 351
discovery, and if, on such examination, it shall not appear to
the commissioner that the same has been invented or discovered by
any other person in this country prior to the alleged discovery, or
patented or described in any foreign publication, or been in public
use or on sale with the consent of the applicant, and if he shall
be of the opinion that the same is sufficiently useful and
important, the commissioner shall issue a patent therefor.
Before the commissioner is authorized to issue a patent, it must
appear to him that the claimant is justly entitled to a patent;
i.e., that his art, machine, or manufacture, possesses all
the qualities before mentioned. The commissioner must also be
satisfied that, if it possesses these qualities, it is sufficiently
useful and sufficiently important to justify him in investing it
with the
prima facie respect arising from the governmental
approval. These restrictions are wise and prudent; are intended to
secure at least a probable advantage to those who deal with the
favorites of the government; for they may justly be so termed who
receive the exclusive right of making or using or vending
particular arts or improvements.
It is nowhere declared in the statute that the decision of the
commissioner, as to the extent of the utility or importance of the
improvement, shall be conclusive upon that point; but, in the
section just quoted, it is placed in the same category with the
want of novelty and the other requisites of the statute; and it is
expressly conceded by the appellant that the judgment of the
commissioner on the question of novelty is not conclusive, but that
that point is open to examination. On that subject the practice of
the courts is uniform in holding it to be subject to inquiry.
The plaintiff's counsel, in his brief, put his argument in this
form: "The commissioner, then, passes on these questions: 1. Did
the applicant himself make the invention? This question is settled
by his oath." This is true to the extent and for the purpose of
issuing a patent, and to this extent only. When the patentee seeks
to enforce his patent, he is liable to be defeated by proof that he
did not make the invention. The judgment of the commissioner does
not protect him against the effect of such evidence. 2. The counsel
says, "Was the invention
Page 92 U. S. 352
new? This question is solved by the examination required by the
act." To the same extent only. The defense of want of novelty is
set up every day in the courts, and is determined by the court or
the jury as a question of fact upon the evidence adduced, and not
upon the certificate of the commissioner. 3. The counsel says
again,
"Is the invention sufficiently useful and important? This the
commissioner settles for himself by the use of his own judgment. It
is a question of official judgment."
These questions are all questions of official judgment, and are
all settled by the judgment of the commissioner. His judgment goes
to the same extent upon each question. He determines and decides
for the purpose of issuing or refusing a patent. When the patent is
sought to be enforced, the questions, and each of them, are open to
judicial examination. We see many reasons why all the questions of
invention, novelty, and prior use should be open to examination in
each case, and such we believe to be the course of the authorities
and practice of the courts.
A reference to some of the most recent cases and to those
decided by this Court will be sufficient. A review of all the cases
in this Court and the various circuit courts where this question
has been alluded to will not be profitable.
In
Hotchkiss v.
Greenwood, 11 How. 248, a patent had been granted
for a "new and useful improvement in making door and other knobs,
of all kinds of clay used in pottery and of porcelain," by having
the cavity in which the screw, or shank, is inserted, by which they
are fastened, largest at the bottom of its depth, in form of a
dovetail, and a screw formed therein by pouring in metal in a fused
state. The precise question argued in this Court and decided was of
the patentability of this invention, and it was held not to be
patentable. The only thing claimed as new was the substitution of a
knob made of clay or porcelain for one made of wood. This, it was
said, might be cheaper or better, but it was not the subject of a
patent. The counsel for the defendants, in their points, there
say,
"The court now is called upon to decide whether this patent can
be sustained for applying a well known material to a use to which
it had not before been applied, without any new mode of using the
material, or any new mode of manufacturing the article
Page 92 U. S. 353
sought to be covered by the patent."
Mr. Justice Nelson delivered the opinion of the Court to the
effect already stated. Mr. Justice Woodbury dissented, not upon the
question of the power of the Court to pass upon the validity of the
patent, but rather in regard to the manner in which the facts were
submitted to the jury.
In
Stimpson v.
Hardman, 10 Wall. 117, it was decided that the
engraving or stamping of the figure upon the surface of a roller
for pebbling leather by pressure, where the use previously had been
of a smooth roller, required no invention; that it was a change
involving mechanical skill merely, and not patentable. MR. JUSTICE
CLIFFORD dissented from the majority of the Court, but expressly
says that the question of patentability is for the decision of the
jury, and not for the court, upon a bill of exceptions. The
majority of the Court held that the question could be considered
upon a bill of exceptions, and no one claimed that the decision of
the commissioner concluded the question.
In
Hailes v. Van
Wormer, 20 Wall. 353, the question of the
patentability of certain improvements in stoves was largely
discussed in this Court upon appeal from the Circuit Court for the
Northern District of New York. It was held that if a new
combination produces new and useful results, it is patentable,
though all the constituents of the combination were known and in
use previous to the combination, but the results must be the
product of the combination, not a mere aggregate of several
results, each the complete product of one of the combined elements.
It was held that the facts there present did not create a
compliance with this principle, and the judgment that the
plaintiff's bill be dismissed was affirmed.
In
Rubber Tip Pencil Co. v.
Howard, 20 Wall. 498, the same principle was
affirmed. In delivering the opinion, the Chief Justice says,
"The question which naturally presents itself for consideration
at the outset of this inquiry is whether the new article of
manufacture claimed as an invention was patentable as such; if not,
there is an end of the case, and we need not go farther."
He makes a careful examination of the claim, and concludes that
there is nothing patentable in the character of the invention. The
decree of the court below dismissing the bill was unanimously
affirmed upon that ground.
Page 92 U. S. 354
In
Smith v.
Nichols, 21 Wall. 115, an elaborate opinion to this
same effect was delivered by MR. JUSTICE SWAYNE, and concurred in
unanimously by the court. The only question discussed is the
patentability of the invention.
Hicks v.
Kelsey, 18 Wall. 670, is a similar case. To this
rule, the case of
Lyman v.
Osborne, 11 Wall. 516, cited by the defendant, is
no exception. The remarks there made are chiefly upon the subject
of reissues, and are in accordance with the principles above set
forth. Even as to reissues, their conclusiveness is limited to
questions of fact, and is accompanied by the statement that they
are reexaminable in court, when it is apparent upon the face of the
patent that the commissioner has exceeded his authority, or there
is such a repugnance between the old and the new patent that it
must be held as a matter of legal construction that the new patent
is not for the same invention as that embraced and secured in the
original patent. Pp.
78 U. S.
543-544.
We do not attach much significance to the fact that the
fifteenth section of the Act of 1836 allows the defendant to plead
the general issue, and to give in evidence, upon thirty days'
notice, special matter tending to prove the various matters therein
referred to. The statute in that respect was intended to create an
easy system of pleading, and to relieve from any doubt the
admissibility in that form of the defenses specified. The argument
that because permission is given to prove under the general issue,
that the specification does not contain the whole truth, or that it
intentionally and deceitfully contains too much, or that the
patentee was not the first discoverer, or that it had been in prior
use, it follows that proof that there is no invention or discovery
at all, or that the invention has no importance, cannot be made, is
quite unsound. Proof that there is no invention or discovery
strikes at the root of the whole claim. The patent is based on an
affirmative fact, of which this is the direct negative. It needed
no statute to aid or justify this defense. It is provable when it
exists under any general denial, like the fact of not guilty or
nonassumpsit in cases where guilt or a promise is first to be
established.
Upon the proposition that the decision of the commissioner on
the question of invention, its utility and importance, is
conclusive,
Page 92 U. S. 355
and that the same is not open to examination in the courts, we
are unanimously of the opinion that the proposition is unsound. His
decision in the allowance and issue of a patent creates a
prima
facie right only, and, upon all the questions involved
therein, the validity of the patent is subject to an examination by
the courts.
We come, then, to the questions, does the article patented by
Lipman, and improved by Reckendorfer, involve an invention? or is
it a product of mechanical skill or a construction of convenience
only?
The article presented is for the performance of mechanical
operations, to produce mechanical results, and is a mechanical
instrument as much as a brush, a pen, a stamp, a knife, a file, or
a screw. Whether it is styled a manufacture, a tool, or a machine,
it is an instrument intended to produce a useful mechanical result;
and the question presents itself, does it embody any new device, or
any combination of devices producing a new result?
In the first place, what is not claimed by the specification of
Lipman is to be observed. "I do not claim," he says, "the use of a
lead pencil with a piece of rubber attached at one end." Of course
he does not claim a lead pencil as his invention, nor the use of a
strip of india-rubber for erasure. Each of these articles had been
in long and general use. But he claims as his invention "the
combination of the lead and india-rubber in the holder of a
drawing-pencil," in the manner set forth. There is nothing peculiar
in the manner set forth. The claim is simply of the combination of
the lead and india-rubber in the holder of a drawing-pencil; in
other words, the use of an ordinary lead pencil, in one end of
which, and for about one-fourth of its length, is inserted a strip
of india-rubber, glued to one side of the pencil. The pencil is to
be made in the "usual manner,"
i.e., he takes an ordinary
lead pencil, and in this he makes "a groove of suitable size,"
giving no idea of what he deems a suitable size; and in this groove
he inserts a piece of prepared india-rubber, which is glued to one
edge of the pencil. "The pencil is then finished in the usual
manner; so that, in cutting one end thereof, you have the lead, B,
and on cutting the other end you expose a small piece of
india-rubber,
Page 92 U. S. 356
C, ready for use." It is evident that this manner of
making or applying the instrument gives no aid to the patent. It
must rest where the patentee claims to place it -- that is, on the
combination.
This combination consists only of the application of a piece of
rubber to one end of the same piece of wood which makes a lead
pencil. It is as if a patent should be granted for an article, or a
manufacture as the patentee prefers to term it, consisting of a
stick twelve inches long, on one end of which is an ordinary
hammer, and on the other end is a screw-driver or a tack-drawer,
or, what you will see in use in every retail shop, a lead pencil,
on one end of which is a steel pen. It is the case of a garden
rake, on the handle end of which should be placed a hoe, or on the
other side of the same end of which should be placed a hoe. In all
these cases, there might be the advantage of carrying about one
instrument instead of two, or of avoiding the liability to loss or
misplacing of separate tools. The instruments placed upon the same
rod might be more convenient for use than when used separately.
Each, however, continues to perform its own duty, and nothing else.
No effect is produced, no result follows, from the joint use of the
two.
A handle in common, a joint handle, does not create a new or
combined operation. The handle for the pencil does not create or
aid the handle for the eraser. The handle for the eraser does not
create or aid the handle for the pencil. Each has and each requires
a handle the same as it had and required, without reference to what
is at the other end of the instrument, and the operation of the
handle of and for each is precisely the same, whether the new
article is or is not at the other end of it. In this and the cases
supposed, you have but a rake, a hoe, a hammer, a pencil, or an
eraser, when you are done. The law requires more than a change of
form, or juxtaposition of parts, or of the external arrangement of
things, or of the order in which they are used, to give
patentability. Curtis on Pat., sec. 50;
Hailes v.
Van Wormer, 20 Wall. 353. A double use is not
patentable, nor does its cheapness make it so. Curtis, secs. 56,
73. An instrument or manufacture which is the result of mechanical
skill merely is not patentable. Mechanical skill is one thing;
invention is a different thing. Perfection
Page 92 U. S. 357
of workmanship, however much it may increase the convenience,
extend the use, or diminish expense, is not patentable. The
distinction between mechanical skill, with its conveniences and
advantages and inventive genius, is recognized in all the cases.
Rubber Tip Pencil Co. v. Howard and other cases,
supra; Curtis, sec. 72
b.
The combination, to be patentable, 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. An instance and an illustration are found in the
discovery that, by the use of sulphur mixed with india-rubber, the
rubber could be vulcanized, and that without this agent the rubber
could not be vulcanized. The combination of the two produced a
result or an article entirely different from that before in use.
Another illustration may be found in the frame in a saw mill which
advances the log regularly to meet the saw, and the saw which saws
the log; the two cooperate and are simultaneous in their joint
action of sawing through the whole log; or in the sewing machine,
where one part advances the cloth and another part forms the
stitches, the action being simultaneous in carrying on a continuous
sewing. A stemwinding watch key is another instance. The office of
the stem is to hold the watch, or hang the chain to the watch; the
office of the key is to wind it. When the stem is made the key, the
joint duty of holding the chain and winding the watch is performed
by the same instrument. A double effect is produced or a double
duty performed by the combined result. In these and numerous like
cases, the parts cooperate in producing the final effect, sometimes
simultaneously, sometimes successively. The result comes from the
combined effect of the several parts, not simply from the separate
action of each, and is therefore patentable.
In the case we are considering, the parts claimed to make a
combination are distinct and disconnected. Not only is there no new
result, but no joint operation. When the lead is used, it performs
the same operation and in the same manner as it would do if there
were no rubber at the other end of the pencil; when the rubber is
used, it is in the same manner
Page 92 U. S. 358
and performs the same duty as if the lead were not in the same
pencil. A pencil is laid down and a rubber is taken up, the one to
write, the other to erase; a pencil is turned over to erase with,
or an eraser is turned over to write with. The principle is the
same in both instances. It may be more convenient to have the two
instruments on one rod than on two. There may be a security against
the absence of the tools of an artist or mechanic from the fact
that the greater the number, the greater the danger of loss. It may
be more convenient to turn over the different ends of the same
stick than to lay down one stick and take up another. This,
however, is not invention within the patent law, as the authorities
cited fully show. There is no relation between the instruments in
the performance of their several functions, and no reciprocal
action, no parts used in common.
We are of the opinion that for the reasons given, neither
the patent of Lipman nor the improvement of Reckendorfer can be
sustained, and that the judgment of the circuit court dismissing
the bill must be affirmed.
MR. JUSTICE STRONG dissenting.
I dissent from so much of the opinion of the majority of the
Court as holds that the instrument or manufacture described in the
patents exhibits no sufficient invention to warrant the grant of a
patent for it.
MR. JUSTICE DAVIS and Mr. JUSTICE BRADLEY also dissented.