John E. Brady
In a previous article it was stated that a patent cannot be properly be granted protecting the poduct of mere mechanical skill as distinguished from invention. Difficulty is frequently experienced in distinguishing between the two, and the supreme test for determining whether a particular device is the result of mechanical skill is not whether an ordinary mechanic could make the device if it were suggested to him,, but whether he would make it without suggestions save those which are prompted by his skill and knowledge of his art. For example, if a man constructs out of iron a machine which had previously been made out of wood, he does not thereby become an inventor in a legal sense, because everybody knows that any constructor can build a machine out of iron instead of wood. But, suppose that gunpowder had just recently been discovered and that the man who invented it had applied for and obtained a patent upon it. He might have claimed: "I combine saltpetre, sulphur and charcoal in a certain way, and produce a startling result," and it would be no answer, if an action for infringement were brought, for the infringer to say that every chemist could make gunpowder after he had been shown how. For. if every chemist did not have the knowledge as well as the skill, the originating of the powder constituted invention. Woodman vs. Stimpson, 3 Fisher's patent Rep. 98.
There seems to be no general affirmative rule by which to determine the presence or absence of invention in every case. In fact, the term "invention" cannot be defined in such manner as to afford any substantial aid in ascertaining whether a particular device discloses an exercise of the inventive faculty or not. But there are a number of negative rules declaring certain circumstances under which an inven-tion cannot be claimed, which have been adopted as guides by the courts, and each of these rules applies to a large number of cases.
It is deducible from the authorities that it is not invention, the subject being the same, to find a new position for and old device, unless there is a substantial difference in the manner of its operation and some new and useful result is produced. The new machine may be an unquestioned improvement upon the prior art and may supersede the old machine in the market; it may work faster and better in the new position and yield a larger product;; nevertheless, if it be in fact the old machine, working substantially in the old way and producing substantially the same result, there is nothing upon which to predicate patentability. Thus, the placing of an electric burglar alarm on the outside of a safe instead of on the inside, as has been done long before the granting of the patent for the alleged invention, did not require invention, but disclosed mechanical skill merely and the device in the new position was not patentable. Holmes Electric Protection Company vs. Metropolitan Burglar Alarm Company, 33 Fed. Rep. 254.
It is no invention to use an old machine for a new process. The inventor of a machine is entitled to all the uses to which it can be put, including uses of which he had conceived no idea at the time of his invention. Robert vs. Ryer, 91 UU. S. 150. Parallel with this rule is the doctrine that the application of an old process to a new and analogous purpose does not involve invention, even though the new result had not before been contemplated. To illustrate: In 18S3 a patent was issued to Alfred A. Cowles for an "insulated electric conductor" and a number of years later a subsequent owner of the right to use the patented insulator brought an action to restrain what was considered an infringement. Paraphrasing the language of the court, it seems that, although the art of insulating electric wires is almost as old as the art of conducting electricity -for practical purposes by means of wires, it was not until electricity began to be used for lighting purposes that it became necessary that insulating material should be non-combus-tile. The result of the introductions of electricity for lighting purposes was that the insulating material then in use was frequently melted or set on fire and conflagrations from this cause became so common that insurance companies refused to issue policies on buildings in which the usual method of insulating wires was employed. Mr. Cowles was the first to discover that paint was the required insulator, it being practically non-combustile, and he accordingly applied for and obtained a patent upon his new process, which consisted of applying a coat of paint to a wire covered with cotton braid and then applying a second braiding directly upon the fresh paint so as to force the paint into the first braided covering and render it non-inflammable. It appeared at the trial that Edwin Holmes, referred to by the court as the "manufacturer of an electric burglar alarm," as early as 1860, had begun to cover his wires by a process similar to that of Cowles, the only difference lying in the fact that he allowed the paint to dry before putting on the second covering of braid. At that time there was no necessity for a non-combustile insulation and Holmes stated that it had not been his idea to produce such a one and that his method was no better adapted for electric light conduction than the paraffine coated-wire. It was held, however, that
Cowles had done nothing more than apply an old process to a new and analogous purpose and that, for that reason, the patent which he had been granted was void. Ansonia Brass & Copper Company vs. Electric Supply Company, 144 U. S. 11.
As a general rule, a change in the size of a machine or the parts thereof does not constitute invention, but is classed with the output of mechanical skill. It is a rule, however, which, like most other rules of law, has its exceptions. In the Edison Electric light patent, granted in 1880, the one difference between Edison's carbon filament and the earlier carbon burners of Sawyer and Man was that Edison had reduced the diameter of his filament to one-half the value of those previously made. But this reduction increased the resistance of the burner four-fold and reduced its -radiating surface two-fold, thus increasing the ratio of resistance to radiating surface eight-fold. "That eight-fold increase of proportion," says Walker, in his work on the law of patents, p. 29, "enabled the resistance of the conductor of electricity from the . generator to the burner, to be increased eight-fold, without any increase of percentage of loss of energy in the conductor, or decrease of percentage of development of heat in the burner; and thus enabled the area of the cress-section of that conductor to be reduced eight-fold, and thus to be made with one-eighth of the amount of copper or other metal which would be required" if the reduction of diameter of the burner had not been made. Former carbons had been found not to possess lasting qualities. While carbon burners continued to break down, even after Edison's invention, still the improvement which he made caused them to be more stable than they had ever been before. The device was held to have displayed inventiveness, the court remarking in the course of its opinion, that the difference between carbons that lasted one hour and carbons that lasted hundreds of hours was precisely the difference between failure and success. Edison Electric Light Company vs. U. S. Electric Light Company, 52 Fed. Rep. 300.
In passing upon the question of the presence of invention, simplicity in the appearance of the device is immaterial. The proposition is illustrated in the case of Colgate vs. The Western Union Telegraph Company, 15 Black, 365, which was an action founded upon letters patent granted to George B. Simpson in May, 1867, as inventor of "an improvement in insulating submarine cables." In the opinion is an interesting outline of the efforts of the inventor to obtain a patent for his invention, which covered a period of nearly twenty years, the first application being made in January, 1848, and the letters being finally issued in May, 1867. The claim of the patent was "the combination of gutta percha and metallic wire, in such a form as to encase a wire or wires. or other conductors of electricity, within the non-conducting substance, gutta percha, making a submarine telegraph cable, at once flexible and convenient." It was admitted by the defendant company that it had used submarine cables, in the insulation of which gutta percha was employed, but it was contended as a defense that it had long been known that resins and gums, as a genus of articles, were electric insulators, and that, therefore, it did not require invention, when gutta percha became known, to cover wire with it for the purpose of insulating the wire. But it was held that there was invention in the discovery of the fact that gutta percha was non-conductor particularly suitable for submarine cables. It was very easy, after the discovery had been made, to say that it was a natural conclusion that gutta percha would be an insulator from the known insulating properties of gums and resins generally. But it was also a fact that experienced men had groped about, experimenting first with one device and then with another, in fruitless effort to secure a practical means of crossing watercourses with lines of telegraph wires, until it was at length found that gutta percha was the needed insulator.-"Electric World."