The Supreme Court “patent case of the week” for this week is Carver v. Hyde, 41 U.S. 513 (1842). Readers of this case will find it interesting for several reasons. First, the language used by the Court sounds very similar to modern day Doctrine of Equivalents cases. Second, from a functional claiming perspective, it includes a statement that one cannot patent a desired result: “Now the end to be accomplished is not the subject of a patent. The invention consists in the new and useful means of obtaining it.” Carver v. Hyde, 41 U.S. 513, 519 (1842). Third, the patent was written in a problem-solution format. And, fourth, to some degree the Court looked to the advantages and object of the invention stated in the specification. The Court also looked to the “summing” section of the patent; but, that summing section is the modern day equivalent of the”claims” section.
The Carver v. Hyde case, along with other authority, was later cited by the Court for the proposition that the end or purpose sought to be accomplished is not the subject of a patent. Rather, an invention is the new and useful means of obtaining that end:
The use and purpose sought to be accomplished by the Hall patent was the radial expansion of the dress form, but it is well settled by the authorities that the end or purpose sought to be accomplished by the device is not the subject of a patent. The invention covered thereby must consist of new and useful means of obtaining that end. In other words, the subject of a patent is the device or mechanical means by which the desired 228*228 result is to be secured. Carver v. Hyde, 16 Pet. 513, 519; LeRoy v. Tatham, 14 How. 156; Corning v. Burden, 15 How. 252; Barr v. Duryee, 1 Wall. 531; Fuller v. Yentzer, 94 U.S. 288.
Knapp v. Morss, 150 U.S. 221, 227-28 (1893).
It is interesting to contrast that statement from Knapp v. Morss with modern day subject matter eligibility analyses, where courts characterize detailed claim language as being “directed to” abstract ideas. For example, one could imagine that a modern day subject matter eligibility analysis would begin by characterizing the Knapp v. Morss claim as being directed to “radial expansion of a dress form”– exactly what the Knapp v. Morss court instructed was not the invention in that case.
You can read Carver v. Hyde below:
41 U.S. 513 (____)16 Pet. 513
ELEAZER CARVER, PLAINTIFF IN ERROR,
JOSEPH A. HYDE AND OTHERS, DEFENDANTS IN ERROR.
Supreme Court of United States.
The case was submitted to the Court, on printed arguments, by Dexter, for the plaintiff in error; and by Messrs. Fletcher and Phillips, for the defendants.
Mr. Chief Justice TANEY delivered the opinion of the Court.
This case is brought here by writ of error, directed to the Circuit Court of the United States for the district of Massachusetts. It is an action by the plaintiff in error against the defendants, to recover damages for the infringement of a patent right, obtained by the plaintiff on the 16th of November, 1839. The patent is in the usual form, and the questions before us depend upon the construction of the specification, which is in the following words,
“Be it known, that I, Eleazer Carver, of Bridgewater, in the county of Plymouth, and state of Massachusetts, have invented a certain improvement in the manner of forming the ribs of sawgins, for the ginning of cotton; and I do hereby declare that the following is a full and exact description thereof.
“In the cotton-gin, as heretofore known and used, the fibres of the cotton are drawn by the teeth of circular saws, through 514*514 a grating formed of a number of parallel bars, or ribs, having spaces between them sufficient to allow the saws to pass, carrying the fibres of the cotton with them, (which are then brushed off by a revolving brush,) but not wide enough to let the seeds, and other foreign substances, pass through. Above the saws the ribs come in close contract, thus forming a shoulder at the top of the space between them. Various forms have been given to the bars or ribs, with a view to procure a free passage of the cotton; but the cotton-gin, as heretofore made, has been always subject to the inconvenience of the grate becoming choked by hard masses of cotton and motes, or false seeds, collecting in the upper part of the spaces between the ribs, and impeding the action of the saws, and also preventing the mass of cotton which is drawn by the saws up to the top of the spaces, but not drawn through them, from rolling back freely, so as to pass again over the saws, as it should do.
“My improvement, which I am about to describe, is intended to obviate these difficulties; and it consists in giving a new form to the ribs composing the grate. Instead of making the ribs of a bar of iron of equal thickness throughout, so that the upper and under surfaces shall be parallel, I so form the rib, that at the part where the saws pass through, carrying the cotton with them, the space, or depth between the upper and outer surface, and the lower, or inner surface, shall be grater than the thickness of the rib in other parts has heretofore been, or needs to be, and so great as to be equal to the length of the fibre of the cotton to be ginned, so that the fibre shall be kept extended between the ribs for about its full length, while it is drawn through them by the saws. This mill, of course, requires, either that the rib should be as thick at that part as the length of the fibre, or that the rib should be forked, or divided, about that part, so that the upper, or outer surface, and the under, or inner surface, shall diverge to that distance of each other, instead of being parallel as formerly, when the rib was made of one bar of uniform thickness. This under, or inner surface, then takes a new direction upwards, and slopes towards the upper, or outer surface, until the two surfaces meet above the periphery of the saw. This last described part of the under surface is fastened against the framework of the gin. The operation of this improvement is, that those fibres of 515*515 the cotton which are so firmly caught by the teeth of the saws as to be disengaged from the mass of the cotton to be ginned, are drawn out to their full length, and pass clear through the grate, and are then brushed off by the revolving brush, while the fibres that are drawn into the grate, but not caught by the teeth of the saws firmly enough to be carried quite through, are disengaged, and pass up to where the under surface meets the upper surface, above the saws, and finding no obstruction there, pass back out of the grate without choking it, and roll down again with the mass of unginned cotton, and are caught below by the saws, and carried up again, and so on until all the fibres are drawn through.”
The specification then proceeds to describe the invention more particularly, by referring to and explaining the drawings annexed to it, showing the advantages of his improvement, the manner of arranging the ribs in the gin, and the mode of inserting and fastening them in the framework. This description could not be comprehended without an exact drawing; nor is it necessary, in order to understand the questions of law in dispute between the parties. It is therefore omitted. After giving this description, the specification states the improvement, of which the patentee claims to be the inventor, as follows.
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