Roberts v. Ryer, (C. D. 1876, 439; 10 O. G., 204; 91 U. S., 150, 157,) that

it is no new invention to use an old machine for a new purpose. The inventor of a machine is entitled to all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.

In Pennsylvania Railway v. Locomotive Truck Company, (C. D., 1884, 168; 27 O. G., 207; 110 U. S., 490, 494,) the adoption of a truck for locomotives which allowed a lateral motion was held not to be patentable, in view of the fact that similar trucks had been used for passenger cars. All the prior cases are cited, and many of them reviewed, and the conclusion reached that

the application of an old process or machine to a similar or analogous subject, with no change in the manner of application and no result substantially distinct in its nature, will not sustain a patént, even if the new form of result had not before been contemplated..

The principle of this case was expressly approved and adopted in that of Miller v. Foree, (C. D., 1885, 512; 33 O. G., 1497; 116 U. S., 22,) and has been frequently applied in the administration of patent law by the circuit courts. (Crandal v. Watters, C. D., 1882, 148; 21 O. G., 945; 20 Blatchf., 97; ex parte Arkell, 15 Blatchf., 437; Blake v. San Francisco, C. D., 1885, 223; 34 O. G., 380; 113 U. S., 679; Smith v. Elliott, 1 O. G., 331; 9 Blatchf., 400; Western Electric Co. v. Ansonia Co., C. D., 1885, 320; 31 O. G., 1305; 114 U. S., 447; Spill v. Celluloid Manufacturing Co., 22 Blatchf., 441; Sewall v. Jones, C. D., 1876, 256; 9 O. G., 47; 91 U. S., 171.)

On the other hand, if an old device or process be put to a new use which is not analogous to the old one, and the adaptation of such process to the new use is of such a character as to require the exercise of inventive skill to produce it, such new use will not be denied the merit of patentability. That, however, is not the case here, since the Cowles process has been substantially used' by Holmes for the same purpose of insulating an electric wire, and the discovery of its incombustible fea. ture involved nothing that was new in its use or method of application.

The utmost that can be said for Cowles is that he produced a somewhat more perfect article than Holmes, but as was said by this Court in Smith v. Nichols (21 Wall., 112, 119)

a mere carrying forward, or new or more extended application of the original thought, a change only in form, proportions, or degree, the substitution of equivalents, doing substantially the same thing in the same way by substantially the same means with better results, is not such invention as will sustain a patent.

It was held in this case that where a textile fabric, having a certain substantial construction, and possessing essential properties, had been long known and in use, a patent was void when all that distinguished the new fabric was higher finish, greater beauty of surface, the result of greater tightness of weaving, and due to the observation or skill of the workman, or to the perfection of the machinery employed. (See,

also Morris v. McMillin, C. D., 1884, 472; 29 O. G., 951; 112 U. S., 244; Busell Trimmer Co. v. Stevens, C. D., 1890, 586; 53 O. G., 2044; 137 U. S., 423, and cases cited.)

The decree of the circuit court is, therefore, affirmed.

Mr. Justice Field dissented.

[U.S. Circuit Court of Appeals-Ninth Judicial Circuit.]

REGAN VAPOR-ENGINE COMPANY v. PACIFIC GAS-ENGINE COMPANY ET AL.

Decided January 30, 1892.

58 O. G., 1695.

1. FUTURE INVENTION-CONTRACT TO ASSIGN SAME.

An instrument purporting to assign an invention yet to be made does not operate as an assignment of such invention when made, but is a mere executory contract.

2. ASSIGNMENT OF SUCH CONTRACT.

An indorsement of such an instrument assigning and transferring all "right, title, and interest in and to the above agreement" passes only the written instrument itself, with such right of action thereon as had not at the time of the indorsement become vested in the indorser. (Reversing Regan Vapor-Engine Co. v. Pacific Gas-Engine Co., C. D., 1891, 569; 57 O. G., 1886.)

APPEAL from the Circuit Court of the United States for the Northern District of California.

Mr. J. H. Miller for the appellant.

Mr. John L. Boone for the appellees.

Before DEADY, HANDFORD, and MORROW, Judges.

DEADY, J.:

On May 12, 1890, the appellant brought suit against the appellees in the Circuit Court of the United States for the Northern District of California for an alleged infringement of reissued Letters Patent numbered 11,068, for a gas-engine, issued to the appellant, as the assignee of Daniel Reagan, the inventor, on April 1, 1890.

The appellees pleaded in abatement that the Pacific Gas-Engine Company, one of the appellees, was the owner of all rights under said patent for the Pacific coast. To this plea a replication was filed. The case was then referred to the master, who reported against the plea. Exceptions were taken to the report, which were sustained, and the bill was dismissed. The plaintiff appeals to this court.

On May 15, 1886, Regan and Garratt entered into an agreement wherein they stated that we "do hereby license and grant and convey

each to the other" throughout certain States and Territories, the license to Garratt being for the Pacific coast

all such inventions and improvements, whether patented or not, which may be hereafter made by either of us.

in gas-engines and the mechanism by which they are operated.

This agreement was never recorded in the Patent Office, nor was it even recordable. It forms the basis of the appellees' claim to be the owner of patent numbered 408,356, issued to Regan on August 6, 1889, and upon which this suit is brought. On September 10, 1889, Regan assigned to Sanford S. Bennett, in consideration of $3,000, the undivided one half of said patent for the whole United States, which assignment was duly recorded on September 17, 1889. On October 22, 1889, Regan and Bennett, for a valuable consideration, assigned to the appellaut the entire patent for the United States. On December 21, 1889, M. M. Barrett, one of the defendants, took an assignment from Garratt of all his right, title, and interest in the Regan-Garratt agreement of May 15, 1886. At this time Barrett had full knowledge of appellant's claim to Patent No. 408,356. On May 6, 1890, Barrett assigned the interest acquired from Garrett to the Pacific Gas Engine Company.

On March 3, 1890, the appellant surrendered its patent under section 4916 of the Revised Statutes, and had a reissue on April 1, 1890. It is numbered 11,068 and grants to the Regan Vapor-Engine Company, its successors or assigns, the exclusive right to make, use, and vend the said invention for the term of seventeen years.

The lower court decided that the Regan-Garratt agreement of May 15, 1886, operated as an assignment of an invention which Regan three years afterward, on August 6, 1889, made and secured a patent for, as well as the patent issued on April 1, 1890, the same being a reissue thereof, and which was issued to and in the name of the appellant. Accordingly a decree was entered which in effect decides that the appellant has no title to the patent in suit for the Pacific coast and that the Pacific Gas Engine Company has.

The agreement of May 15, 1886, is not the assignment of a patent, though it contains language-"grant and convey"-sufficient for that purpose, if there was anything to assign. It may be good as an agreement to sell and assign a future invention; but it cannot operate as a sale or assignment of such an invention even when made. No one can sell that which he hath not. (Comyn's Dig., tit. "Grant," D.) A man cannot grant all the wool that shall grow upon his sheep that he shall buy afterward, for there he hath it not actually or potentially. (Bac. Abr., tit. "Grant," D.)

Chancellor Kent says, (2 Comm., 468:)

The thing sold must have an actual or potential existence, and be specific or identified, and capable of delivery; otherwise it is not strictly a contract of sale, but a special or executory agreement. But if the article intended to be

sold has no existence there can be no contract of sale.

Benjamin, in his work on Sales, (s. c. 78,) says:

In relation to things not yet in existence, or not yet belonging to the vendor, the law considers them as divided into two classes, one of which may be sold, while the other can only be the subject of an agreement to sell-of an executory contract. Things not yet existing, which may be sold, are those which may be said to have a potentialexistence-that is, things which are the natural product or expected increase of something already belonging to the vendor. Aman may sell the crop of hay to be grown on his field, the wool to be clipped from his sheep at a future time, the milk that cows will yield in the coming month, and the sale is valid. But he can only make a valid agreement to sell, not an actual sale, where the subject of the contract is something to be afterward acquired, as the wool of any sheep, or the milk of any cows that he may buy within the year, or any goods to which he may obtain title within the next six months.

A man may make a valid agreement to sell an invention not yet made by him, but he cannot make a valid sale thereof.

Curtis on Patents (sec. 160) says:

The statutes, however, which authorize the assignment of an invention before the patent has been obtained appear to embrace only the cases of perfected or completed inventions. There can, properly speaking, be no assignment of an inchoate or incomplete invention, although a contract to convey a future invention may be valid, and may be enforced by a bill for specific performance. But the legal title of an invention can pass to another only by a conveyance which operates upon the thing invented after it has become capable of being made the subject of an application for a patent.

Mr. Robinson, in his work on Patents, (vol. 2, sec. 771,) says:

A contract for the transfer of inventions not yet in being is valid as a contract, but is not an assignment. The subject-matter of an assigumont is an existing invention, not only conceived as an idea of means, but actually reduced to practice, and thus invested with the inchoate or perfected right to that monopoly which must always pass with the invention in this form of conveyance. An inten-led or incomplete invention rests merely in purpose and expectation. It does not clothe the proposed inventor with any special privileges or entitle him to any special rights in the monopoly which, if his purposes were accomplished, he might be able to secure, The transfer of such future inventions is a mere exeentory contract to assign them if they happen to be made.

To this general rule there appears to be one exception, and that is where a patentee assigns a patent already issued, together with all future improvements thereon. It has been held that such assignments pass the title to the future improvements.

But that is not this case. Here there is no assignment of a patent with any improvements thereon. The document which constitutes the basis of appellees' claim is at most an attempted assignment of any independent inventions to be thereafter made by either of the contracting parties in gas engines.

The case of Littlefield v. Perry (7 O. G., 964; 21 Wall., 226) is cited in support of this doctrine. This case is very different from the one in hand. There the patentee had assigned a subsisting patent, with all future improvements thereon. Subsequently he made and patented an improvement on the same and used it without the consent of 12692 PAT-21

his assignee. The assignee sued for infringement, and the court held the assignor was estopped by his deed. The case arose between the assignee and the patentee and not two persons claiming to be the assignees of the same thing. Between the two cases there is no analogy.

The evidence is satisfactory that the plaintiff took the assignment of this patent for a valuable consideration in good faith and without notice of the Regan-Garratt contract, and it is so admitted in the examination before the master by counsel for the appellees.

Whatever effect the Regan Garratt contract may have in equity, as against Regan or those claiming under him with notice thereof, upon these facts it appears the legal title to the invention is in the appellant, and the defendant's plea that it is the owner or assignee of the patent for any part of the United States must be found not true.

A point is sought to be made for the appellees on the language of the assignment by Regan and Bennett to the appellant under the decision in Turnbull v. Plow Company, (7 O. G. 173; 6 Biss. 225) on rehearing, (C. D. 1883, 121; 9 Biss., 334; 14 Fed. Rep., 108.) In that case the patentee assigned for the counties of Warren and Henderson, in the State of Illinois. Subsequently to this assignment the patentee assigned "all his right, title, and interest in the patent in the State of Illinois." The first assignment was not recorded in time to prevent the second assignment from prevailing against it. The second assignment being merely a quitclaim, the court held, in a suit by the first assignee for infringement, that under the circumstances it only conveyed such interest as the patentee then actually had left in him, which was the State of Illinois less the two counties disposed of by the first assignment.

This case was decided on the language of the assignment and not upon the record of the same or the want thereof. Judge Drummond held, in analogy to conveyances of real property, that the subsequent assignment of the patentee's "right, title, and interest" could not be construed to pass an interest which had already been assigned to another, and which, in fact, he did not then have. He says:

Where a man assigns all the right which was conveyed to him by Letters Patent the meaning is that the assignment takes with it everything that the Letters Patent conveyed. It is certainly different from an assignment which declares merely that he assigns all the interest which he, at the time he makes the assignment, has in the Letters Patent, provided, as in this case, he had previously assigned a part of the interest which he had to another person. (C. D. 1883, 122; 14 Fed. Rep., 110.)

But the facts of that case are very different from the one under consideration. The assignments under which the appellant claims are not mere quitclaims. The one from Regan to Bennett is of—

one undivided half of all the right, title, and interest granted to him (Regau) in and to said invention by said Letters Patent

and in the one from Regan and Bennett to the appellant the assignors do

bargain, sell, convey, and assign

and all their right, title, and interest

the said patents, and each of them

*

in and to said patent.