NOVELTY IN PATENTS. 615 



things as, for example, a hammer with a screw-driver inserted in 

 one end of the handle and an awl in the other. The absurdity of 

 granting a patent in such a case is very apparent, and it is no won- 

 der that in the case of Swift vs. Whizen, 3 Fisher's Patent Cases, 357, 

 a decision was given against the patentability of the very aggregation 

 given above as an example. 



A distinction should be made between such aggregations, when the 

 whole is easily divisible into its component parts, and aggregations 

 where the individuality of the component parts is lost. I would revert 

 to the hammer and screw-driver as an example of what I mean by the 

 divisibility of the whole. The hammer can be taken by itself, the awl 

 by itself, and the screw-driver by itself, and used. As an example of 

 what I mean by the loss of individuality, take the combined glass- 

 cutter, screw-driver, can-opener, etc., which have been on sale in the 

 streets of late. Here there is but one invention in reality, and the 

 various parts are merged in one whole. The novelty lies in the new 

 combination of the glass-cutter, can-opener, etc., in such a way that 

 the utility of the parts would be lost by division. 



We have now left to discuss the general rule that a mere alteration 

 in the form, size, material, or proportions of an existing device is not 

 such a change as to produce patentable novelty. This rule is related 

 to the first one given in regard to the substitution of mechanical equiv- 

 alents, but it is much wider in its scope. It is laid down in express 

 terms in the second section of the act of February 21, 1793. This 

 declaratory law was not reenacted in the patent act of 1836, yet ne- 

 cessity and justice compel its recognition. For, as was said in Winans 

 vs. Denmead, 15 Howard, 341 : " It is a principle which necessarily 

 makes part of every system of law granting patents for new inven- 

 tions. Merely to change the form of a machine is the work of a con- 

 structor, not of an inventor ; such a change can not be deemed an 

 invention." 



A very interesting case on this point is reported in 11 Howard, 248 

 (Hotchkiss vs. Greenwood). It relates particularly to the substitution 

 of a new material. In this case a new clay knob was substituted for 

 a metallic knob. It was claimed that there was a patentable novelty. 

 But there was no new mechanical device or contrivance. The knob 

 was not new. The metallic shank and spindle were not new ; nor the 

 dovetail form of the cavity in the knob, nor the means by which the 

 metallic shank was securely fastened therein. The only change was 

 in the substitution of a clay for the former metallic knob. Judge 

 Nelson very properly decided that there was no such novelty in this 

 as to warrant the granting of a patent. " This of itself," said he, 

 " 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 dis- 



