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U.S. Supreme Court

Smith v. Goodyear Dental Vulcanite Company, 93 U.S. 486 (1876)

Smith v. Goodyear Dental Vulcanite Company

93 U.S. 486


1. Where the claim for a patent for an invention which consists of a product or a manufacture made in a defined manner refers in terms to the antecedent description in the specification of the process by which the product is obtained, such process is thereby made as much a part of the invention as are the materials of which the product is composed.

2. Whether the single fact that a device has gone into general use and displaced other devices previously employed for analogous uses establishes in all cases that the later device involves a patentable invention, it may always be considered as an element in the case, and, when the other facts leave the question in doubt, it is sufficient to turn the scale.

3. Hotchkiss v. Greenwood, 11 How. 248, decides that employing one known material in place of another is not invention if the result be only greater cheapness and durability of the product. It does not decide that the use of one material in lieu of another in the formation of a manufacture can in no case amount to invention or be the subject of a patent.

4. In the present case, the result of the use, in the manner described in the specification, of hard rubber in lieu of the materials previously used for a plate for holding artificial teeth or such teeth and gums is a superior product, having capabilities and performing functions which differ from anything preceding it and which cannot be ascribed to mere mechanical skill, but are to be justly regarded as the results of inventive effort as making the manufacture of which they are attributes a novel thing in kind, and consequently patentable as such.

5. A patent is prima facie evidence that the patentee was the first inventor, and casts upon him who denies it the burden of sustaining his denial by proof.

6. The presumption arising from the decision of the Commissioner of Patents granting the reissue of letters patent that they are for the same invention which was described in the specification of the original patent can only be overcome by clearly showing, from a comparison of the original specification with that of the reissue, that the former does not substantially describe what is described and claimed in the latter.

7. Upon consideration of the history of this invention, the Court holds 1. that

Page 93 U. S. 487

there was no abandonment by the patentee of his original application; 2. that the application upon which the patent was finally allowed was a mere continuation of the original, and not a new and independent one; 3. that the invention was never abandoned to the public; 4. that reissued letters patent No. 1904, dated March 21, 1865, for an alleged "improvement in artificial gums and palates," are valid.

This was a bill in equity filed by the appellees against the appellant for an infringement of reissued letters patent No. 1904, for "improvement in artificial gums and palates," granted March 21, 1865, to the appellees, as assignees of John A. Cummings. The bill prayed for an injunction, discovery, account, and assessment of damages.

The original letters patent No. 43,009, for said improvement, were granted to said Cummings, and bear date June 7, 1864.

A decree was entered in favor of the complainants; whereupon the defendant appealed to this Court, and assigns the following errors:

First, the decree of the court below is erroneous in adjudging that John A. Cummings was the original and first inventor of the improvement described and claimed in the reissued letters patent No. 1904, dated March 21, 1865.

Second, in adjudging that the reissued letters patent No. 1904, dated March 21, 1865, is a good and valid patent.

Third, in adjudging that the defendant had infringed the said reissued letters patent No. 1904, and upon the exclusive rights of the complainants under the same.

Fourth, in awarding an account of profits and a perpetual injunction against the defendant, according to the prayer of the bill.

The history of the invention and the facts bearing upon the questions involved are fully set forth in the opinion of the Court.

Page 93 U. S. 489

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