* nothing but that very machine. But the "process" ii on which this decision was rendered was as follows: "I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor, or discoverer." A majority of the court held this to be a claim for the use of electro-magnetism for the purpose specified, without regard to the means, or manner, of making the application, and as such to be unwarranted by law. Nor did they consider that the case of Neilson v. Harford, if properly understood, afforded any support to such a claim. Speaking of Neilson's apparatus they say: "Undoubtedly the principle that hot air will promote the ignition of fuel better than cold, was embodied in this machine. But the patent was not supported because this principle was embodied in it. He would have been equally entitled to a patent, if he had invented an improvement in the mechanical arrangements of the blowing apparatus, or in the furnace, while a cold current of air was still used. But his patent was supported, because he had invented a mechanical apparatus by which a current of hot air, instead of cold, could be thrown in. And this new method was protected by his patent. The interposition of a heated receptacle in any form, was the novelty he invented." Taney, C. J., thus sums up the provisions of the acts of Congress relating to patents: "Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means be uses in a manner so full and exact, that any one skilled in the science to which it appertains can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result be describes. If this cannot be done by the means he describes, the patent is void. If it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy, known or unknown, before his invention; or by machinery acting altogether upon mechanical principles. In either case, he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from these described." So in Le Roy v. Tatham, 14 How. 166. The patentee had discovered that lead recently set would, under heat and pressure in a close vessel, reunite perfectly after a separation of its parts, and had applied his discovery to the manufacture of lead pipe. It was held that he was not entitled to a patent for this newly-discovered property of lead, but that he was entitled to a patent for the process of making lead pipe by means of this principle, and that he was bound to describe his process fully in his specification. The language of the court would indicate that in this case also the inventor would be limited to the process described. It was held, however, that the patentee had claimed the machinery employed, and the decision rested on the question of its novelty. See same case, 22 How. 132. Both these cases were decided by a bare majority of the court, Judges Nelson, Wayne, and Grier dissenting, and Judge Curtis not sitting, he having been of counsel. See Wyeth v. Stone, 1 Story, 273; Blanchard v. Sprague, 2 Story, 164; Stone v. Blanchard, 3 Sumn. 585; Earle v. Sawyer, 4 Mass. 6; Sickles v. Borden, 3 Blatchf. 535; Foote v. Silsby, 2 Blatchf. 265; Burr v. Duryea, 1 Wall. 531; Evans v. Eaton, Peters, C. C. 341; Smith v. Ely, 5 McLean, 91; Parker v. Hulme, 1 Fish. 44; Smith v. Downing, 1 Fish. 64; Detmold v. Beeves, 1 Fish. 127; Wintermute v. Redington, 1 Fish. 239; Morton v. N. T. Eye and Ear Infirmary, 5 Blatchf. 116, 2 Fish. 320. Nor is a patent valid for a mere effect or result, apart from the means by which it is produced. Whittemore v. Cutter, 1 Gal. 480; Carver v. Hyde, 16 Pet. 519; Corning v. Burden, 15 How. 268; Burr v. Cowperthwait, 4 Blatchf. 163; Sickles v. The Falls Co. 4 Blatchf. 508.

• 257 jj may be one which may be carried out by a variety of machines. And if the "process" be effectually covered by the patent, it will prevent this use of any of those machines; but not any other use of them. (o) And it would seem that one jj * patent may embrace both the new process and the new product, when the result of a new process is a new manufacture or composition of matter. (oo) It is also held that two patents may be issued to the same person, one for the process, and the other for the result of the process. (op)

(o) The distinction between a process and a machine is thus set forth by Grier, J., in Corning v. Burden, 16 How. 262. "A process eo nomine is not made the subject of a patent in our act of Congress. It is included under the term 'useful art.' An art may require one or more processes or machines in order to produce a result, or manufacture. The term machine includes every mechanical device, or combination of mechanical powers and devices, to perform some function, and produce a certain effect or result. But when the result is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called processes. A new process is usually the result of discovery; a machine, of invention. The arts of tanning, dyeing, making water-proof cloth, vulcanizing india-rubber, melting ores, and numerous others, are usually carried on by processes as distinguished from machines. One may discover a new and useful improvement in the process of tanning, dyeing, etc., irrespective of any particular form of machinery, or mechanical device; and another may invent a labor-saving machine, by which the operation or process may be performed; and each may be entitled to his patent. As, for instance, A has discovered that, by exposing india-rubber to a certain degree of heat, in mixture or connection with certain metallic salts, he can produce a valuable product or manufacture; he is entitled to a patent for his discovery as a process or improvement in the art, irrespective of any machine or mechanical device. B, on the contrary, may invent a new furnace, or stove, or steam apparatus, by which the process may be carried on with much saving of labor and expense of fuel; and he will be entitled to his patent for his machine, as an improvement in the art. Yet A could not have a patent for a machine, or B for a process; but each would have a patent for the means and method of producing a certain result or effect, and not for the result or effect produced. It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result, that it is patentable; and it will include all methods or means which are not effected by mechanism or mechanical combinations." See Whitney v. Eramett, Baldwin, 312; Howe v. Abbott, 2 Story, 104; Goodyear v. Railroads, 2 Wall Jr. 860; French v. Rogers, 1 Fish. 133; Smith 0. Downing, 1 Fish. 64; Crane v. Price, Webst. Pat. Cas. 411. When the process is one which requires the use of old mechanism, care must be taken not to claim the mechanism itself as the subject of the patent Thus, in Kay v. Marshall, 1 My. & Cr. 878, the plaintiff had discovered, that by macerating flax before spinning, the spinning-rollers could be placed much nearer together than when dry flax was used, and thereby a much stronger and finer thread be produced. The real invention was the new process of spinning with wet flax instead of dry; but the inventor took out a patent for a new machine, and there being no novelty in the mechanism employed, his patent was declared void. See also Le Hoy v. Tatham, 14 How. 156.

(oo) Goodyear v. Railroads, 2 Wall. Jr. 360; Goodyear v. Wait, 8 Fish. 242.

(op) Rubber Company v. Goodyear. 9 Wall. 788.

Section V. Of Interference

When each of two or more persons claims to be the first inventor of the same thing, an "interference" is declared to exist between them. Then a trial is had before the examiner, as to which of them was actually the first inventor. And there may be an interference although one of the parties * has kk already obtained a patent; because, although the commissioner cannot cancel a patent which has been issued, he may give a patent to him whom he finds to be the first inventor, and thus place them in an even position before the public and the courts. But two inventors or patents do not interfere unless they claim, wholly or partially, the same invention. (oq)