Slawson v. Grand Street/Opinion of the Court

by William Burnham Woods

United States Supreme Court

107 U.S. 649

Slawson  v.  Grand Street

The appellant insists that the dismissal of a bill because the inventions described in the patents were not patentable, when no such defense was set up in the answer, is of doubtful propriety, and is a practice unfair to the complainants. The practice was sanctioned by this court in the case of Dunbar v. Myers, 94 U.S. 187. In that case the defense set up in the answer was want of utility in the patented invention; that the patentees were not the first inventors, etc. The circuit court rendered a decree for the complainant for a large sum. When the case came to this court the decree was reversed, with directions to the court below to dismiss the bill on the ground, not set up in the answer, that the improvement described in the patent sued on did not embody or require invention and was not patentable, and the patent was therefore void. And in the case of Brown v. Piper, 91 U.S. 44, this court, speaking by Mr. Justice SWAYNE, said: 'We think this patent was void on its face,' (because the improvement described therein was not patentable,) 'and that the court might have stopped short at that instrument, and, without looking beyond it into the answers and testimony, sua sponte, if the objection was not taken by counsel, well have adjudged in favor of defendant.' We think the practice thus sanctioned is not unfair or unjust to complainants in suits brought on letters patent. If letters patent are void because the device or contrivance described therein is not patentable, it is the duty of the court to dismiss the cause on that ground whether the defense be made or not. It would ill become a court of equity to render money decrees in favor of a complainant for the infringement of a patent which the court could see was void on its face for want of invention. Every suitor in a cause founded on letters patent should, therefore, understand that the question whether his invention is patentable or not, is always open to the consideration of the court, whether the point is raised by the answer or not.

We have considered the alleged improvements described in letters patent set out in complainant's bill, and agree with the conclusion reached by the circuit court that neither of them involves invention, and that both the letters patent are, therefore, void. A glance at the specification and claim of the patent granted to the complainant, Slawson, shows that the invention described therein consists simply in the placing, in the ordinary fare-box used on street cars and omnibuses, of a glass panel opposite to the glass panel next the driver, usually inserted in such boxes. The patent does not cover the fare-box; it does not cover the insertion in the side of the fare-box next the driver of a glass panel, nor a combination of these two elements. It consists merely in putting an additional pane of glass in the fare-box opposite the side next the driver, so that the passengers can through it see the interior of the box. Such a contrivance does not embody or require invention. It requires no more invention than the placing of an additional pane of glass in a show-case for the display of goods, or the putting of an additional window in a room opposite one already there. It would occur to any mechanic engaged in constructing fare-boxes that it might be advantageous to insert two glass panes,-one next the driver and the other next the interior of the car. But this would not be invention within the meaning of the patent law. Hotchkiss v. Greenwood, 11 How. 237; Phillips v. Page, 24 How. 167; Dunbar v. Myers, ubi supra. It is not a combination of the fare-box, having one glass panel with an additional glass panel, but is a mere duplication of the glass panel. Doubtless, a fare-box with two glass panels, arranged as described in the patent, is better than a fare-box with only one. But it is not every improvement that embodies a patentable invention. This rule was fairly illustrated in the case of Stimpson v. Woodman, 10 Wall. 177, in which it was held that where a roller, in a particular combination, had been used before without particular designs on it, and a roller, with designs on it, had been used in another combination, it was not a patentable invention to place designs on the roller in the first combination, and that such a change, with the existing knowledge in the art. involved simply mechanical skill, which is not patentable.

In Brown v. Piper, ubi supra, it was said that when the invention was simply the application by the patentees of an old process to a new subject, without any exercise of the inventive faculty, and without the development of any idea which could be deemed new and original in the sense of the patent law, it was not patentable; and it was held that the application of a process for preserving meats and fruit, which had previously been used for preserving other perishable substances, was not patentable.

A case much in point was decided by this court at the present term,-Atlantic Works v. Brady, [ante, 225,]-in which Mr. Justice BRADLEY said: 'The design of the patent laws is to reward those who make some substantial discovery or invention which adds to our knowledge and makes a step in advance in useful arts. It was never their object to grant a monopoly for every trifling device, every shadow of a shade of an idea which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures.' And it was held that the placing of a screw for dredging at the stem of a screw-propeller, when the dredging had been previously accomplished by turning the propeller stern foremost and dredging with the propelling screw, was not a patentable invention. These authorities, and others that might be cited, are adverse to the appellant's case, and clearly show that the contrivance covered by the patent issued to him does not embody a patentable invention. The same authorities apply with equal force to the patent for lighting the interior of the fare-box at night by using the head-light of the car for that purpose. The elements of the contrivance, namely, the fare-box, the head-light, and the reflector, are all old. What is covered by the patent is simply the making of an aperture in the top of the fare-box, and turning the rays of the head-lamp through it into the box by means of a reflector. In other words, it is the turning of the rays of light to the spot where they are wanted by means of a reflector, and taking away an obstruction to their passage. The facts of general knowledge of which we take judicial notice (Taylor, Ev. § 4, note 2; Brown v. Piper, ubi supra) teach us that devices similar to this are as old as the use of reflectors. The new application of them does not involve invention. We are of opinion that there was nothing patentable in the contrivance described in the second patent.

The result of our views is that the decree of the circuit court was right and must be affirmed.

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