Julia P. Hotchkiss, Executrix of John G. Hotchkiss, deceased, John A. Davenport, and John W. Quincy, Plaintiffs in error, v. Miles Greenwood and Thomas Wood, Partners in Trade under the name of M. Greenwood & Co., 11 How. 248

Mr. Justice NELSON delivered the opinion of the court. This is a writ of error to the Circuit Court of the United States for the District of Ohio. The suit was brought against the defendants for the alleged infringemehtbf 'a patent for a new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain.

The improvement consists in making the knobs of clay or porcelain, and iii fitting them for their application to doors, locks, and furniture, and various other uses to which they may be adapted; but more especially in this, that of having the cavity in the knob in which the screw or shank is insertad, and by which it is fastened, largest at the bottom and in the form ■ of dovetail, 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 manufacturing of knobs, as stated in the foregoing, specifications, of potter’s clay, or any kind of clay ' used in pottery, and shaped and finished by moulding, turning, burning, and glazing; and also of porcelain.” On the trial evidencé was given on the part of the plaintiffs tending to prove the originality and usefulness of the invention, and also the. infringement by the defendants; and 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 used before, and had been used and applied to the fastening of the shanks to metallic knobs.

And upon the evidence being closed, the counsel for the plaintiffs prayed’ the court to instruct the jury that, although the clay knob, in the form in which it was patented, may have been before known and used, and also the shank and spindle by which it is attached may have been before known and used, yet, if such shánk and spindle had never before been’attached in this mode to a knob of potter’s clay, and it required skill and invention to attach the same to a knob of this description, so that they would be firmly united, and make a strong and substantial article, and which, when thus made, would become'an

article much better and cheaper than the knobs made of metal or other materials, the patent was valid, and the plaintiffs would be entitled to recover.

The court refused to give, the instruction, and charged the jury that, if knobs of the same, form and for the same purposes Us that claimed by the patentees, made of 'metal or other material, had been before known and used; and if the spindle and shank, in the form used by them, had been before known and used, and had been attached to the metallic knob by means óf a cavity in. the form of dovetail and infusion of melted metal, the same as the mode claimed by the patentees, in the attachment of the shank and spindle to their knob; and the knob of clay was simply the substitution of one material for another, the spindle and shank being the same as before in common use, and also the mode óf connecting them by dovetail to the knob the same as before in common use, and no more ingenuity or skill required, to construct the knob in this way than that possessed by an ordinary mechanic acquainted with the business, the patent was invalid, and the plaintiffs were not entitled to a verdict.

This instruction, it is claimed, is erroneous, and one. for which, a new trial should be granted.

The instruction assumes, and, as was admitted on the argument, properly assumes, that knobs of metal, wood, &ci, connected with a shank and spindle, in the mode and by the means used by the patentees in their manufacture, had been before known, and were in public use at the date of the patent; and hence the only novelty which could' be claimed on their part was the adaptation of this old contrivance to knobs of potter’s clay or porcelain ; in other words, the novelty consisted in the substitution of the clay knob in the pláce of one made .of metal or wood, as the case might be.

And iff order, to appreciate 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 part of the discovery. If it was, a very different question would arise; as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

The novelty would consist in the new composition made practically useful for-the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and none the less so, within the meaning of- the patent law, because the means employed to adapt the new composition tp a useful purpose was old,, or well 'known. But in the case before us, the knob is. not new, nor the metallic shank and spindle, nor the dovetail' form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein.

All these were well known, and in common use; and the. only thing new is the substitution of a knob of a different material from that her^tofofe used in connection with this arrangement. Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well-known mode, an

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 fact, that the material of yrhich the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the. superiority of the material, and which is not new, over that previously employed in', making the knob. But this, of itself, can never be the subject of a patent.

No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one ; or, in the sense of the patent law, can entitle the manufacturer to a patent. The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

I remember having tried an action .in the Circuit in the District of Connecticut some years since, brought upon a patent for an improvement in manufacturing buttons. The foundation of the button was wood, and the' improvement consisted in covering the face with tin, and which was bent over the rim so as to be firmly secured to the wood. • Holes were perforated in the centre, by which the button could be fastened to the garment. It was a cheap and useful

article for common wear, and in a good deal of demand. . On the trial, the defendant produced a button, which hád been, taken off a coat on which it had been worn before the Revolution, made precisely in' the same way, except the foundation was bone. The case was given up on the part of the plaintiff. Now the new.article was better and cheaper than the old one;, but I.did not then suppose, nor do I now, that this could make any difference, unless it was the result of some new contrivance or arrangement-in the manufacture, Certainly it could'not, for the reason that the materials with which it was made were of a superior, quality, or better adapted to the uses to. which the

article is. applied. It seemed to be supposed, on -the argument, that this mode of fastening the shank to the clay knob produced a new and peculiar effect upon^the.article, beyond that p.roduced^when applied to the metallic knob, inasmuch as-the fused metal.by. which the shank was fastened to the knob prevented the shank'. from acting immediately upon the knob, it being inclosed and firmly held by the metal; that for this reason the clay or porcelain knob was not so liable to crack op be broken, but was made firm and strong, and more durable.

This is doubtless true; But the peculiar effect thus referred to is not distinguishable from that which would exist in the case of the wood knob, or one of bone or ivory, or of other materials that might be mentioned.

Now if the foregoing view of the improvement claimed ■ in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury; for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention.

In other words, the improvement is the work of the skilful mechanic, not that of the inventor. We think, therefore, that the judgment is, and must be, affirmed.