CITE:  294 U.S. 20
CMON:  January 1935
PLAIN: Waxman
DEFND: Smith et al.
COURT: United States Supreme Court
DATE:  January 1935
Certiorari to the Circuit Court of Appeals for the Ninth Circuit.
70 F.2d 457, affirmed.

  A method of using materials to perform a function is patentable
  irrespective of the particular form of the mechanism used for the
  method's operation.

Hughes, Van Devanter, McReynolds,  Brandeis, Sutherland, Butler, Stone,
Roberts, Cardozo


In this companion case to No. 102, Smith v. Snow, decided this day, ante,
p. 1, certiorari was granted to review a decree of the Court of Appeals
for the Ninth Circuit, 70 F.2d 457, which affirmed the decree of the district
court and held valid and infringed the first claim of the Smith Patent,
No. 1,262,860, of April 16, 1918, for an improved apparatus and method
for the incubation of eggs.

The issues here, as in the Snow case, are the scope of Claim 1 and its
infringement as rightly construed.  For reasons stated at length in the
opinion in the Snow case, our decision as to the scope of the claim is
the same as in that case.  Petitioner argues that the claim, if thus broadly
construed, is invalid, as an attempt to patent the function performed by
the petitioner's incubator. See Risdon Iron & Locomotive Works v. Medart,
158 U.S. 68, 77. It is said also that the function of the machine involves
merely the application of the natural law that heat units flow from warm
to cooler objects placed in proximity.  But the function which a machine
performs, here the hatching of eggs, is to be distinguished from the means
by which that performance is secured.  It is true that Smith made use of
the difference in temperature of eggs in different stages of incubation, 
and the flow of heat units from one to the other, in achieving the desired
result.  He did this by arrangement of the eggs in staged incubation and
applying to them a current of heated air under the conditions specified
in Claim 1.  By the use of materials in a particular manner he secured
the performance of the function by a means which had never occurred in
nature, and had not been anticipated by the prior art; this is a patentable
method or process.  Corning v. Burden, 15 How. 252, 267, 268; Risdon Iron
& Locomotive Works v. Medart, supra, 77; Cochrane v. Deener, 94 U.S. 780,
788. A method, which may be patented irrespective of the particular form
of the mechanism which may be availed of for carrying it into operation,
is not to be rejected as "functional," merely because the specifications
show a machine capable of using it.  Expanded Metal Co. v. Bradford,
214 U.S. 366, 382-386; Cochrane v. Deener, supra, 787, 788; cf. Holland
Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 255, 256.

Petitioner's incubator differs only in unimportant mechanical details from
the infringing machine in the Snow case.  In it the eggs are set in staged
incubation, at different levels, but in no particular order.  They are
subjected to circulation of heated air, set in motion by fans, which
carries heat units from the warmer to the cooler eggs and maintains the 
air throughout the chamber at substantially uniform temperature. There is
a fresh air intake behind the fans and openings in the ceiling for the
exit of foul air. There is no central corridor, the tiers of egg trays
being placed in or near the center of the chamber. There are no curtains
or similar means of guiding the air currents set in motion by the fans.
Two fans are placed on the side wall at the back of the chamber. They
turn continuously, and are so constructed and operated as to propel
currents of air, which proceed along the sides and the ceiling and floor 
of the chamber to the front wall, where they are deflected in the
direction of the fans and there "drawn" toward them through the central
part of the chamber. Less than 1% of the air passes out through the foul 
air exits in the course of making the described circuits, so that there
is circulation and re-circulation of the air within the chamber. The
evidence supports the finding of the special master and of the two courts
below that the currents of air set in motion by the fans flow
continuously along defined paths.

The petitioner's machine thus employs every essential of the patented
method as it is defined by Claim 1.  Petitioner does not avoid infringement
of respondent's method patent merely by employing it in a machine of
different structure than respondent's, whether more or less efficiently.
Winans v. Denmead, 15 How. 330, 344; Sewall v. Jones, 91 U.S. 171, 184;
Cochrane v. Deener, supra, 789; Carnegie Steel Co. v. Cambria Iron Co., 
185 U.S. 403, 441.