Dissenting Opinion: Shiras, Brewer, JJ.

as descriptive of an invention which, from its novelty and priority in the art to which it belongs, is not to be construed as inhering only in the particular means described, in the letters patent, as sufficient to exemplify the invention and bring it into practical use.

Thus in the case of Winans v. Dormead, 15 How. 330, 341, the patent was for a new form of the body of a car for the transportation of coal, thus avoiding certain practical difficulties or disadvantages in such cars as previously made. To the argument on behalf of the infringer, that the claim of the patent was confined to a single form, and only through and by that form to the principle which it embodies, this court said, per Mr. Justice Curtis :

"It is generally true that when a patentee describes a machine, and then claims it as described, he is understood to intend to claim, and does by law actually cover, not only the precise form he has described, but all other forms which embody his invention; it being a familiar rule that to copy the principle or mode of operation described is an infringement, although such copy should be totally unlike the original in form or proportions. It is not sufficient to distinguish

this case to say that here the invention consists in a change of form, and the patentee has claimed one form only. Patentable improvements in machinery are almost always made by changing some one or more forms of one or more parts, and thereby introducing some mechanical principle or mode of action not previously existing in the machine, and so securing a new or improved result. And in the numerous cases in which it has been held that to copy the patentee's mode of operation was an infringement, the infringer had got forms and proportions not described, and not in terms claimed. If it were not so, no question of infringement could arise. If the machine complained of were a copy, in form, of the machine described in the specification, of course, it would be at once seen to be an infringement. It could be nothing else. It is only ingenious diversities of form and proportion, presenting the appearance of something unlike the thing patented, which give rise to questions; and the property of inventors would be valueless

Dissenting Opinion: Shiras, Brewer, JJ.

if it were enough for the defendant to say: Your improvement consisted in a change of form; you describe and claim but one form; I have not taken that, and so have not infringed.

"The answer is: My infringement did not consist in a change of form, but in the new employment of principles or powers, in a new mode of operation, embodied in a form by means of which a new or better result is produced; it was this which constituted my invention; this you have copied, changing only the form. Where form and substance are inseparable it is enough to look at the form only. Where they are separable-where the whole substance of the invention may be copied in a different form, it is the duty of courts and juries to look through the form for the substance of the invention for that which entitled the inventor to his patent, and which the patent was designed to secure; where that is found there is an infringement; and it is not a defence that it is embodied in a form not described and in terms claimed by the patentee. Patentees sometimes add to their claims an express declaration to the effect that the claim extends to the thing patented, however its form or proportions may be varied. But this is unnecessary. The law so interprets the claim without the addition of these words."

McCormick v. Talcott, 20 How. 402, 405, was also a case of a mechanical patent, and it was said by Mr. Justice Grier, who delivered the opinion of the court: If the patentee "be the original inventor of the device or machine, called the divider, he will have a right to treat as infringers all who make dividers operating on the same principle and performing the same functions by analogous means or equivalent combination, even though the infringing machine may be an improvement of the original and patentable as such."

In Morley Sewing Machine Co. v. Lancaster, 129 U. S. 263, there was also a question of an alleged invention of a primary character, and wherein the invention was embodied in a mechanical combination; and it was held that, in a pioneer patent, such as that of Morley, the patentee, the special devices set forth by Morley were not necessary constituents

Dissenting Opinion: Shiras, Brewer, JJ.

of the claims; that his patent was to receive a liberal construction, in view of the fact that he was a pioneer in the construction of an automatic button sewing machine, and that his patent was not to be limited to the particular devices or instrumentalities described by him.

In that case extended and approving reference was made to the case of Proctor v. Bennis, 36 Ch. Div. 740, which was a case of an invention embodied in a mechanical contrivance, and the following language of Lord Justice Bowen was quoted:

"Now I think it goes to the root of this case to remember that this is, as was described by one of the counsel, really a pioneer invention, and it is by the light of that, as it seems to me, that we ought to consider the question whether there have been variations, or omissions, and additions, which prevent the machine which is complained of from being an infringement of the plaintiff's. With regard to the additions and omissions, it is obvious that additions may be an improvement, and that omissions may be an improvement, but the mere fact that there is an addition, or the mere fact that there is an omission, does not enable you to take the substance of the plaintiff's patent. The question is not whether the addition is material, or whether the omission is material, but whether what has been taken is the substance and essence of the invention."

These were cases wherein the discovery or invention was made effective through machines or mechanical combinations, and wherein it was held that the merit of the process or method was not to be confined, in the case of a pioneer patent, to the mere form described in the specification as sufficient to make the invention practically operative.

Neilson's patent, Web. P. C. 275, was a noted case, in which the true distinction was drawn between a mere principle, as the subject of a patent, and a process by which a principle is applied to effect a new and useful result. The Court of Exchequer, in answering the objection that Neilson's patent was for a principle, said:

"It is very difficult to distinguish it from the specification

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of a patent for a principle, and this at first created in the minds of some of the court much difficulty; but after full consideration, we think the plaintiff does not merely claim a principle, but a machine embodying a principle, and a very valuable one. We think the case must be considered as if the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention consists in this by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which was before of cold air, in a heated state to the furnace."

And when the case came before the House of Lords, Lord Campbell said:

"After the construction first put upon the patent by the learned judges of the Exchequer, I think the patent must be taken to extend to all machines, of whatever construction, whereby the air is heated intermediately between the blowing apparatus and the blast furnace. That being so, the learned judge was perfectly justified in telling the jury that it was unnecessary for them to compare one apparatus with another, because, confessedly, that system of conduit pipes was a mode of heating air by an intermediate vessel between the blowing apparatus and the blast furnace, and, therefore, it was an infringement of the patent." Web. Pat. Cas. 715.

Very applicable to the present case is the doctrine of Tilghman v. Procter, 102 U. S. 707. It was there held, overruling the case of Mitchell v. Tilghman, 19 Wall. 287, that a patent may be validly granted for carrying a principle into effect; and if the patentee suggests and discovers not only the principle, but suggests and invents how it may be applied to a practical result by mechanical contrivances and apparatus, and shows that he is aware that no particular sort or modification of form of apparatus is essential to obtain benefit from the principle, then he may take his patent for the mode

Dissenting Opinion: Shiras, Brewer, JJ.

of carrying it into effect, and is not under the necessity of confining himself to one form of apparatus.

Having discussed the previous cases, particularly that of Neilson and of O'Reilly v. Morse, 15 How. 62, Mr. Justice Bradley said:

"Whoever discovers that a certain useful result will be produced in any art by the use of certain means is entitled to a patent for it, provided he specifies the means.' But everything turns on the force and meaning of the word 'means.' It is very certain that the means need not be a machine, or an apparatus; it may, as the court says, be a process. 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. . Perhaps the process is susceptible of being applied in many modes and by the use of many forms of apparatus. bound to describe them all in order to exclusive right to the process, if he is really its inventor or discoverer. But he must describe some particular mode, or some apparatus, by which the process can be applied with at least some beneficial result, in order to show that it is capable of being exhibited and performed in actual experience."

The inventor is not secure to himself the

The Telephone cases, 126 U. S. 1, 532, 533, 535, contain an apt illustration of these principles. Mr. Chief Justice Waite in discussing the case, said:

"In this art, or, what is the same thing under the patent law, this process, this way of transmitting speech, electricity, one of the forces of nature, is employed; but electricity, left to itself, will not do what is wanted. The art consists in so controlling the force as to make it accomplish the purpose. It had long been believed that if the vibrations of air caused by the voice in speaking could be reproduced at a distance by means of electricity, the speech itself would be reproduced and understood. How to do it was the question. Bell discovered that it could be done by gradually changing the intensity of a continuous electric current, so as to make it