Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926)

*726 David P. Wolhaupter, of Washington, D. C., and Robert B. Killgore, of New York City, for appellant.

Robert J. Fisher, of Washington, D. C., and R. W. Barrett, of New York City, for appellees.

Before ROGERS, HOUGH, and MACK, Circuit Judges.

HOUGH, Circuit Judge (after stating the facts as above).

While not disagreeing with the court below in its estimate of Burford's earlier achievement, we shall affirm the result because of lack of patentable subject matter.

A patentee, to merit a patent, must disclose a new and useful art, machine, manufacture, or composition of matter. Plainly there is before us neither a machine nor a composition of matter; the latter, if for no other reason than that no claim is made therefor. Underwood v. Gerber, 149 U.S. 224, 13 S. Ct. 854, 37 L. Ed. 710.

Consequently this patent is for either a manufacture or an art, and plaintiff asserts that he has produced a manufacture a word which he wishes used to mean anything made by the hand of man, which is neither of the other things enumerated by the statute. International, etc., Co. v. Sievert, 213 F. 225, 129 C. C. A. 569.

But this effort at definition requires the court first to inquire whether the subject-matter of the patent is any other of the statutory list, for, if so, it must be assigned to that category and not to the catch-all of "manufactures." This inquiry is one of fact, concerning which opinions may differ; but, after rather prolonged consideration of this patent, we believe that it discloses an art, which, if it be novel, is not the kind of art protected by the patent acts.

What Guthrie shows is how to compress into small space a lot of information about freight tariffs; he is really giving advice as to how to make indices, as one might advise concerning dictionaries or directories; and the patentee substantially calls his work by the latter name, when (ut supra) he lauds it as completely describing a given tariff "as far as is practicable in a directory."

A new method, art, or process of making directories, dictionaries, encyclopædias, or other compendious statements of written information, may be both new and useful; but the patent law is prosaically practical, it can never get away from the necessity of means, and unless patentable means of expressing or using the new idea are shown there can be no valid patent.

The nonpatentability of a system i. e., a connected view of the principles of some department of knowledge or action has been sufficiently shown in Hotel Security Checking Co. v. Lorraine, 160 F. 467, 87 C. C. A. 451, 24 L. R. A. (N. S.) 665; Berardini v. Tocci (D. C.) 190 F. 329, affirmed 200 F. 1021, 118 C. C. A. 659, and the earlier cases there fully cited.

Undoubtedly one may invent (i. e., come upon or discover) a system, and by very crude means, aided by the doctrine of equivalents, practically appropriate the business begotten by the system for the statutory term; of this the early telephone patents are the classic example. But what gives the breath of life to such a patent is not the system or the good advice contained in the disclosure, but the means shown and described. Indices are a good example of this truth; the first "card index" was plainly patentable, not because it was perhaps an excellent index, but because the means of making possibly a very poor index were novel. Vide Library Bureau v. Macey, 148 F. 380, 78 C. C. A. 194.

In this case, however, no means are suggested for making a consolidated index, except the employment of symbols. There was a time, say that of Cadmus, when the alphabet was patentable; but we decline to see anything now patentable in suggesting that a railway be called A or canned goods C.

The patentee may and does call what he produces a manufacture, to wit, a book of so many leaves and a given amount of print thereon; but the question is not what an interested party calls it, but what is it, and we consider the only possibly novel part of it, what might be called the plot of the work *727 i. e., the story revealed, and that can be copyrighted, but not patented.

Whether a thing is a manufacture or not is sometimes a close question, of which Cincinnati Traction Co. v. Pope, 210 F. 443, 127 C. C. A. 175 is an excellent instance. There a "time limit transfer ticket" was held patentable, because it was "not a method at all, but a physical tangible facility." Such a ticket is a form, made once and used any time; it may truthfully be called a physical facility, as much so the punch that cancels it. But no such summary description is possible of this index. It is never finished, until the railway business itself ends; what is made to-day may be useless in a month or so, not because of new inventions, but because the method of doing business may change. The only thing constant about this index is the method or art of compiling it; i. e., advice as to how to compile, which is not patentable.

Thus as a question of fact we consider this patent as disclosing merely advice as to how to make an index, and the means (if any) disclosed for doing it as not patentably novel.

The decree is affirmed, with costs.