A combination of new materials producing a useful result, or a new combination of old materials, producing a substantial benefit, is patentable. But a mere substitution, in an aheady known combination, of a material which, although Known, yet lias never before been used in the identical conibintition, for the material commonly used, is not f!he subject Of R patent. WhlIt we mean is more fully illustrated in tW&i'se of Hotchkiss VR. Greenwood. The cnse was broug)lt against the defendant for an alleged infringement of a patent for a new an'd useful improvement in making door knobs, &c., and was first tried at the Ohio Circuit, from which an appeal was taken to the U. S. Supreme Court. The improvement consistecl in making the knobs of clay or porcelain, and in fitting them for their application to doors, locks, nnd furniture, and various other uses to which they might be nuapted ; but more especially in this: that of having the cavity in the knob in which the screw or shank is inserted and by which it is fastened, largest at the bottom, and in the form of dove-tail or wedge reversed, and a screw formed therein by pouring in metal in a fused state ; and after referring to drawings of the article thus made, the patentees conclude as follows:—" What we claim as our invention, and desire to secure by Letters Patent, is the manufacture of knobs, as stated in the foregoing specification, of potter's clay or any kind of clay used i n pottery, and shaped and finished by maiding, turning, burning and glazing ; and also by porcelain." On the trial, evidence was given on the part of the plaintiffs, tending to proye the originality and usefulness of the invention ; on the part of the defendants, tending to show the want of originality, and that the mode of fastening the shank to the knob, as claimed by the plaintiffs, had been known and 118ed before, and had been used and applied to the fastening of the shanks to metallic knobs. The Court charged the jury that if knobs of the same form and for the same purposes as that c\aimQd by the patentees, made of metal or other material, had been betoro known and ".od l aud It tho spindle and shank, in the form used by them, had been before known and used and had been attached to the metallic knob by Ibeans of a eayity ill the form of dovetail, and infusion of melted metal, the same as the mode claimed bv the patentees, in their attachment of shank and spindle to their knob, and the knob of clUj was simply the substitution of one material for another, the spindle and sllallk being the same as before in common use, and also tile mode of connecting them by dovetail to the knob, the same as fore in common use, and no more ingenuity or skill .luired to construct the knob in this way than that possessed by an ordinary mechanic acquainted with the business, the patcnt was invalid and the plaintifl's were not entitlecl to a, venlict. This instruction, it was claimed, was erroneous, and one for which a new trial should be granted. But the Supreme Conrt snstained the ruling of the Circuit Court, and affirmed the judgment. The following is a portion of the opinion delivered upon the dcclsion:— Nelson, J.—The instruction assumes and, as was admitted upon the argument, properly a.sumes that knobH of metal, wood, &c., connected with a shank and spindle in the mode and by the means used by the pat.ntees in t\lCir manufacture, had been before known and were in public use at the date of the patent ; and hcnce the only novelty which could be claimed on their part was the adaptation of the old contrivance to knobs of potter's clay or porcelain ; inother words, the neveIty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to apprcciate still more clearly the extent of the novelty claimed, it is proper to add that this knob of potter's clay is not new, and therefore constitutes no pnrt of the discovery. If it was, a very differcnt question would m'ise, as it might very wcIl be argued and successfully urged, that A knob of a new composition of mnttcr to which this old contrivance hnd been applied, and which resulted in n new and useful article, was the proper subject of a patent. The novelty would consist in the new composition made pructicaliy useful for the purposes of life, by the .means and contrivances mentioned. It would be a llew manufacture, arid lione' the less 50 within the meaning of the patent 'law, because the means employed to adapt the new composition' to a" useful purpose was 01U or well known. But in the case before us, the knob is not new, nor ille metallic shank and spindle, nor the dovetail form of t11e cavity in the knob, nor the means by which the me'tallIe' shank is securely fastened therein. All these were \v^ll kuown anl in common nse, and the only tiling new is the substitution of a knob of a different niteril from that heretofore used, in connection with this arrangement. Now it lIIay very well be that, by connecting the clay or porcelain knob with the metallic shank in this well-known mode, nn article is produced better and cheaper than in the case of the metallic or wood knob ; but this does not result from any new mechanical device or contrivance, but from the fnct that the material of which the knob is composed happells to be better adapted to the purposc for which it is made. The improvement consists in the snperiority of the material, which is not new, over that previously employed in making the knob. But t.his, of itself, can ucvcr be the subject of a patent. No olle will pretend that a machine, made in whole or in part of materials better adapted to thc purpose for which the old one is constructed, and for that reason better and cheaper, call be distinguished from the old one or, in the sense of the patent law, can entitle the manufacturer to ii patcnt. The difference is formal and destltnte of ingenuity or inyention. It mny afford evideNce of judgment and skill ill the selection and adaptation of the matel'ials in the manufncture of the instrument for the purposes intanded, but nothing more. Now, if the foregoing view of the improycmcnt claimed in this pntent be correct, it is quite apparent that there was no crror in the snbmission of the questions presented at the trial to the jury, for unless more ingenuity and skill in applying the olu method of fastening the shank and the knob wcre rcquired in the application of it to the clay or porcelain knob tllan is possessed by an ordinary mechanic aequRinted with the bUsiness, thero WRa aD abscnce ?? that deBree of skill and ingenuity which ooatitutes essential elements of 403 very invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor. \Ye think, therefore, that the judgment is and mnst he affirmed. m m
This article was originally published with the title "Journal of Patent Law"