Argument for the plaintiff in error.

Mr. B. R. Curtis, for the plaintiff in error:

1. As to the construction of the patent. The claim is not one of any kind of movable press-block, combined and operating in any way, with any kind of fixed block, to accomplish any purpose. But it is a claim of such a movable press-block as is described, and such a movable fixed block as is described, arranged as described, and combined and operating in the particular way described, for the purpose of effecting the particular result indicated.

The patentee declares the sole purpose of the invention to be, "welding up and re-forming the ends of railroad rails, when they have become exfoliated or shattered;" and in describing the manner of constructing and using the machine, he shows it to be designed for that purpose, and for that purpose only. At the conclusion of the claim he again declares the object of the machine to be "the difficult operation of welding and renewing the ends of such rails" (i. e., railroad rails) "after they have been damaged."

So far as respects the result to be effected, it is clearly shown to be, that single, special, and peculiar result of so placing and holding railroad rails, as greatly to facilitate the operation of renewing the ends of such rails by welding.

It is equally clear, that what the patentee intended to include in his claim was not any press-block or any fixed block, but the pressblock and the fixed block which he has described.

I. Because the patentee, at the beginning of his specification, after stating that he has invented a new and useful improvement, says: "And I do hereby declare that the following is a full, clear, and exact description of the construction and operation of the same.” When he comes to make his claim, it is but just to the patentee to believe that he does not intend to claim as his own anything which is entirely outside of what he has described as his invention.

II. Because the language of the claim itself is not extended to any movable or any press-block, but is clearly limited to "the movable press-block E" "and the block D'-thus identifying the two elements of the combination as being such a press-block and such a raised fixed block as he had previously described, and had shown on the drawings by the designation of those letters.

Nor is the mode of arranging, combining, and operating these elements, which was intended to be claimed, left in any doubt. The patentee, in the specification, declares "that the following is a full, clear, and exact description of the construction and operation of the same." He gives also a clear description of his particular mode of arranging, combining, and operating the movable and the fixed block. And when he arrives at the claim, after saying he

Argument for the plaintiff in error.

claims the movable block, in combination with the fixed block, he adds, “in the manner herein described and set forth." Specifications are entitled to a liberal construction, (Winans v. Denmead, 15 Howard, 341, and cases there cited,) though there is no necessity for special liberality here.

Then the blocks E and D, and the described mode of arranging, combining, and operating them, have peculiar characteristics. The specification says of block D that it is a "solid block, making a part of the anvil, with its side shaped to the side of the rail, while placed in its natural position." And again, "close to these (i. e., close to the recesses C C in the improved anvil') IS CAST a raised block D, nearly as high as the rail, and with its farthest edge also shaped to fit the side of the rail, when it lays across the anvil in its natural position." It thus appears that this block D is a solid projecting part of the "improved anvil;" it is cast with it; as the specification declares, it is "a solid block, making a part of the anvil." Its outer face is shaped to correspond with one side of the rail when laid upon the anvil; and its office is, not merely to resist the pressure exerted on the rail by the movable block, but to resist the force exerted upon the rail by the hammer in welding, and thus preserve the shape of the rail. Three characteristics are here set forth, and each is essential to enable the block D to perform its appropriate functions in the combination.

The specification describes block E as a movable press-block, held down to the anvil by dovetail tongues on the anvil, and grooves on the movable press-block. Again, "Next this (i. e., next the block D) I attach to the face of the anvil, by dovetail tongues and grooves, or in any other convenient manner, what I call a movable pressblock E, with a similar but reverse-shaped edge, lying opposite the other, so as to inclose the rail between the two, as in the jaws of a vice." Here, too, are three characteristics, and each is also essential to enable the block E to enter usefully into the improved combination.

Then as respects the described mode of combining and working the blocks D and E. The specification declares that the block D is cast on and makes part of the anvil; and that the block E is held down to the anvil by dovetailed grooves and tongues. The two blocks are thus kept in certain relations to each other by and through the anvil, which thus forms one of the essential means of combining and operating them. They are connected with the anvil; and through that connection they are enabled to operate in combination, each performing its appropriate function, in harmony, with the other, and their combined operation produces the specific

Argument for the plaintiff in error.

desired result of holding and so supporting the rail on the anvil that it can be welded without destroying its peculiar form.

But, first, the block E must be moved on the anvil; and these means of motion must be such that the entire face of the block E shall be kept parallel with the entire opposite face of the block D, so as to exert the same pressure on every part of both faces of the rail; and, second, the means of movement must be such that when the block E has been advanced to its forward position, so as to grasp the rail and press it against the block D, the machinery shall hold E rigidly in position, not allowing it to be forced at all out of its position, otherwise the heavy blows necessary to weld the iron would destroy the shape of the rail. And a third result is to produce the desired backward and forward movements and this rigidity, by simple and sufficient means, readily worked, either by hand or power.

All these necessities are met by means of the tongues and grooves and the two eccentric cams, which cams, by a half revolution of a crank, advance the entire face of the block E parallel to the opposite face of the block D, until the rail is grasped, thus exerting the same pressure on every part of both faces of the rail, holding E rigidly in that position by the strength of the machine, so as perfectly to support every part of the rail against the force of the welding hammer, and by reversing the crank half a revolution, relieving the rail and placing the blocks E and D in position to receive another rail on the anvil.

What is the thing patented? The thing patented is described by its title to be "a new and useful improvement in the common anvil or swedge-block, for the purpose of welding up and reforming the ends of railroad rails when they have exfoliated or have become shattered," &c. By the description which the patentee declares describes "his improvement," it appears to be an improved anvil ; one of the parts of which is the block D, having the characteristics before described; another part of which is the block E, having the characteristics before described; and these two parts are combined and operated in the manner described to produce the effects indicated.

The result of the whole is, that the patentee claims to have taken the common anvil or swedge-block, and to have improved it by his new combination; and that the combination consists in this, viz: That he has raised on the anvil a block, D, making a part of the anvil, having a face upon it suited to receive the side of the rail, and press equally on it, so as not only to grasp, but support every part of that face of the rail under the blows of the welding hammer; that he has combined with this projecting block D, which is

Argnment for the plaintiff in error.

part of the anvil, another block, E, which is at the same time attached to the anvil and is movable thereon; that this block E is so attached to the anvil as to be effectually a part of it when the anvil is used as an anvil, to resist the welding blows of the hammer, and to be movable when the objects to be accomplished require it to be moved ; that while this block E is thus an effectual part of the anvil, it is also an effectual and sufficient support of the rail while undergoing the welding blows of the hammer; and in combination with the block D, not only grasps the rail and holds it on the anvil, but supports every part of the two faces of the rail, and keeps them from being forced out of shape by the blows upon the upper surface of the rail in welding its parts.

2. It is obvious that to compare any prior machine with this machine, it is necessary to see if any prior machine was adapted to accomplish the same, or an analogous result, by substantially the same means. Perhaps this is not the strictest possible abstract statement of the true inquiry. This is a patent for means, and viewed abstractly, the sole inquiry is, whether the patented means are substantially the same as previously existing means. But the application of the patent law rarely admits of such abstraction of means from ends. A new use of an existing machine is not patentable. A modification of an existing machine, whereby it is rendered capable of a new use, is patentable. One of these propositions is just as true as the other. Neither proposition can be safely applied, without careful regard to the facts of the case it is to govern. And, without going upon debatable ground, it is safe to assert, that if there was no prior machine which could accomplish the same, or an analogous result, by the use of substantially the same means, the machine is new, under our patent law. The practical results of inventions afford the reasons for the patent laws. They are designed to encourage progress in the useful arts; and therefore to disregard the practical results attained by a patentee would be to lose sight of the final cause of the system. And it is also true, and the more one is conversant with this peculiar subject the more impressed he will be with the truth, that means and ends are inseparably connected, and that it is not one of the cases ordinarily arising under the patent law that a new and highly useful end has been attained by the application of means already well known and before applied to an analogous end. It is a possible case; and therefore I stand on this proposition, that if there was no machine, prior to that of the patentee, which could accomplish the same useful purpose, or one substantially analogous to it, by the use of substantially the same means, then his patent is valid. Now, in looking at

Argument for the plaintiff in error.

the rulings excepted to, two well-settled rules are to be kept in mind:

I. The question whether any machine, proved, or admitted to have existed before the patentee's invention, was substantially the same as the thing patented, was a question of fact for the jury.

II. The patent is prima facie valid, and the burden of proof is on the defendant. Consequently the defendant was required by law to satisfy the jury, not only that the machine he relies on did exist before the patentee's invention, but that some one of them could accomplish the same useful purpose, or one substantially analogous to it, by the use of substantially the same elements, combined and arranged in substantially the same manner as he described and claimed in his specification.

As to the admission of the plaintiff. Upon such an admission as was made, the patent cannot be declared void, as a conclusion of law, unless it is a conclusion of law that after movable press-blocks, in combination with faces of various shapes, had been used for various purposes, there was no field of invention left unoccupied; or if any such field was left, that the claim of the patentee is not within that field.

Now the first of these is manifestly not a conclusion of law. The law cannot determine it to be impossible to make a new combination to produce a new and useful effect because the principal elements have already been combined. A patent for a combination is for an entirety, formed out of the described elements, combined and arranged by the described means and operating in the described manner, to produce the described effect. Though all the elements had previously been combined in some way, to produce some effect, yet if the patentee modified one or more of the elements, to suit his new design, and combined the elements by dif ferent means, and so as to operate in a different way, to produce a new and useful result, it is a new combination, and the subject of a patent.

It is manifestly possible there was a field of invention which could be occupied by a combination of the same elements used here, provided the patentee should modify those elements to adapt them to his new use, and should combine and operate them in a different way, so as to produce a new and useful result; and it must be a question of fact and not of law whether he has so done. If he has, he has made a patentable invention; and as a patent has been granted to him, after examination by the proper public officers, it is presumed he has made an invention, until the contrary is shown. Notwithstanding the admission, as there was a