ADDITIONAL STATEMENT OF DR. EMORY A. BRYANT

Hon. WILLIAM I. SIROVICH,

Chairman Committee on Patents,

WASHINGTON, D. C., April 2, 1932.

House of Representatives, Washington, D. C.

MY DEAR SIR: Pursuant to your permission to file a brief in addition to my statements made before your committee on the 30th of March in respect to a revision of the patent laws and the tentative bills before the committee for this purpose (H. R. 10152 to H. R. 10157, inclusive, and H. R. 9448), I have the following to say:

It has been my desire to confine my remarks entirely to discoveries as the word is used in the Constitution, giving to Congress the power as construed by courts having, jurisdiction: "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."

This is a general provision and of necessity should be construed in its broadest sense as has been the case with all of the general provisions of the Constitution.

"2. The common law does not provide a patent system. It is created by statute only, and in the United States by virtue of that clause in the Constitution which confers upon Congress the power above quoted."

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While the words invention " and discovery were used interchangeably previous to the act of July 4, 1836, in this act they were used in their broadest sense; not known or used by others before invention or discovery

thereof."

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If Congress did not intend any change, the question may well be asked, why did Congress change "and" to "or"? Was not this fact in the mind of Justice Grier when he dissented in the Morse case (O'Reiley v. Morse, 15 How. 62) in his opinion as follows:

"A construction of the law which protects such an inventor in nothing but the new-invented machines or parts of machinery used in the exercise of his art, and refuses it to the exercise of the art itself annuls the patent law."

Did not the fact that inventions are a numerous class, while discoveries are very few in comparison, notwithstanding that many inventions are composed of both invention and discovery, have a decided effect upon the thought he had in mind?

Doubtless the cases of Boulton v. Bull (2 H. Bl. 485, 486) and of Neilson v. Harford (Webster, p. 310) were strongly impressed upon Judge Grier at the time he made his statement. At any rate he had in view the broad effect upon the patent laws and principles.

For my illustration of this phase of the patent law and the decisions of the courts, I shall confine myself to the case of Morton v. New York Eye and Ear Infirmary, 5 Blatch. 116, as I am more acquainted with this case and its various angles than I am with O'Reiley v. Morse, 15 How. 62.

That I am not alone in my opinions on this subject I shall quote the following section in full:

"186. The second objection made in the ether case, that no contrivance was necessary or possible for the operation of the principle, is a more serious one. This point, whether a principle must require some contrivance, mechanical or otherwise, for its application, in order to be a basis of a patent, has never, we believe, been decided by the courts, except in the ether case. In that case, the patent did indeed describe a method of administering the ether by means of a sponge; but these directions did not amount to a process. The real art or process discovered was that of producing insensibility by means of ether fumes. Now, if the administration of the ether had required a long process, or any sort of device or apparatus, then a patent for the application of the discovery would have been held valid. Moreover, in such case, the patent would be held to cover not only the particular apparatus or device described by the patentee, but every apparatus or device for the administration of ether to produce insensibility in animals.

Is, then, a patent to be refused in the actual ether case because the art discovered is a simple one? It was none the less an art, the art of producing insensibility in animals. To make the patentability of a discovery depend upon the complexity of the means through which the force discovered operates, is, we

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can not help thinking, to establish a vicious distinction between patentable and nonpatentable discoveries. It will be found in fact, that, as a rule, the more brilliant and useful the discovery, the simpler is its application." (See Merwin Patentability of Inventions, 1883, 536.)

In the above quotation I desire to call to the attention of the committee that part thereof contained between the two parts underscored by myself in respect to "any sort of device or apparatus." I then call your attention to the records of the United States Patent Office in respect to a patent granted to Augustus A. Gould and Wm. T. G. Morton, of Boston, Mass., said Gould assignor to said Morton for Apparatus for Inhaling Ether, etc.

The Patent Office records show that the application (specifications) was signed and sworn to in Boston, Mass., on the 28th day of November, 1846. That the specifications were received in the Patent Office at Washington, D. C., on the 7th day of December, 1846. That the procedure until it reached the examiner required all the time intervening between the 7th of December, 1846, until October 23, 1847, and patent was issued November 13, 1847, No. 5365.

Please remember that the specifications of Morton's application for the patent on his method or process was signed on October 27, 1846, received in the Patent Office, October 29, 1846; examined by Charles S. Page, November 7, 1846. Issue, H. H. Sylvester. Patented November 12, 1846. No. 4848.

The reasons for this delay are of record in the Patent Office files, the difference in time from receiving the specifications to the granting of the patent, as between the two patents is obvious.

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The records in evidence and in the literature from the medical journals of the period show conclusively that an apparatus was used in the administration of Morton's "letheon" (ether) at the first operations held in the Massachusetts General Hospital on October 16 and 17, 1846, that Morton was late in arriving at the hospital, due to the fact that he had some alterations made in his "apparatus," which delayed his arrival on time.

I will now quote from the affidavit of Morton's assistant in his office from September 30, 1846, until the successful administration for Dr. J. Collins Warren, at the Massachusetts General Hospital, October 16, 1846:

"The first successful experiment upon any patient was made on September 30, 1846 (Ebin Frost), by inhaling ether through a folded cloth, and on that occasion a tooth was extracted without pain. We tried repeated experiments with this same means subsequently, and they all resulted in total failures. Doctor Morton said that Doctor Jackson recommended a certain apparatus, which he lent Doctor Morton from his laboratory, consisting of a glass tube of equal size throughout, having a neck, and being about 3 feet long. This likewise was a total failure. So far, all our experiments, with one exception, proving abortive, we found that a different apparatus must be obtained, and it was at this time that Doctor Morton procured from Mr. Wightman, of Cornhill, a conical glass tube, with which, by inserting a sponge saturated with ether in the larger end, we had better success, and our experiments began to assume a more promising aspect. Still our success was not uniform, and far from perfect. At this time Doctor Morton suggested that our failure might be owing to the fact that, in all our experiments so far, the patient had breathed the expired vapor back into the vessel, thus inhaling the same over and over again. He then stated that the expired air should pass off into the surrounding atmosphere, and wished me to make a pattern for an apparatus, by which the air should pass into the vessel, combine with the ether, be inhaled into the lungs, and the expired air thrown off into the room. The idea, thus forced upon him, and communicated to me, was fully elaborated and corresponds most accurately with the apparatus now in use in this country and Europe, and for which Doctor Morton has applied for letters patent." (Affidavit of Grenville G. Hayden, dated March 25, 1847.)

It also appears that Doctor Morton's friend, Augustus A. Gould, M. D., also had some connection with this application and apparatus. (See Letters Patent No. 5365, dated November 13, 1847.)

All authoritative evidence indicates Doctor Morton had been making experiments upon animals with various substances for some time previous to his successful extraction of the tooth of Ebin Frost on September 30, 1946, and that he continuously experimented with various devices and apparatus from that date until October 16, 1846, when the first surgical operation was performed by Dr. J. C. Warren in the Massachusetts General Hospital, and that Morton used such an apparatus when he administered the ether ("letheon ") to Warren's patient (Gilbert Abbott) on the above date. From that date the

advent spread rapidly throughout the United States and Europe, and surgical anæsthesia became a success throughout the world.

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The mode of administering the ether to patients about to be operated upon, both in this country and Europe, was by means of a device or apparatus" of the nature of Doctor Morton's invention, and all authentic evidence goes to prove conclusively this fact. Furthermore, Doctor Morton's "device or apparatus," or a similar one, was used throughout the United States and Europe until Dr. James Y. Simpson, M. D. (later Sir James Y. Simpson) brought out the use of chloroform as a substitute for sulphuric ether in England in the month of November, 1847. Chloroform displaced ether in Europe and was immediately, upon information regarding its use being obtained in the United States, adopted to a greater or less extent in the United States by physicians and surgeons, in order to avoid the use of the patent of Morton. It will be noted that Morton's patent for an inhaler was not issued by the Patent Office in this country until about the time of the advent of chloroform, when the latter began its strenuous attempt to substiute for ether in surgical operations. However, its dangerous properties soon began to develop both in this country and Europe, and ether again took the lead at home and abroad, and has continued its supremacy to this date.

An examination of the specifications of Doctor Morton's patented "apparatus for inhaling ether, etc." of November 13, 1847, discloses all of the essential features and claims for an "ether-inhaling apparatus," advocated by Dr. James Tayloe Gwathmey in his book on "Anesthesia, 1924, p. 71." (From S. G Davis.) In fact, there is no administration of ether to-day that some device or apparatus is not used, from most complicated form and arrangement to one of extreme simplicity, all of which would have, under normal conditions been an infringement upon Morton's patent, had it been held valid by the court in Morton v. New York Ear Infirmary, 1862, and have been allowed the usual extension under the patent statutes.

Again Morton was unfortunate in the matter of extension of his patents through no fault of his own, but solely due to the ignorance or intentional fraud of his attorney, R. H. Eddy, as is shown by the context of the various assignments made out by him as between Jackson and Morton, Morton to himself of a one-quarter interest in them, and Eddy's reassignment of this interest to Morton. This fact is clearly in evidence in the various assignments in the files of the United States Patent Office.

Dr. Oliver Wendell Holmes, M. D., in his letter to Morton under date of November 21, 1846, well says, "Everybody wants to have a hand in a great discovery." Everybody, especially Morton's alleged 'friends," succeeded in "having a hand in a great discovery" as made by Morton. Dr. H. G. Bigelow, M. D., made a "premature publication" of his paper of November 18, 1846, in the Boston Medical and Surgical Journal, followed by others, and extracts of this and newspaper publications were sent to Doctor Booth in London on the 28th of November, 1846, disclosing in a private letter that Morton's fluid used was sulphuric ether. Dr. John Collins Warren wrote a private letter to M. Velpeau, the eminent surgeon of Paris, France, as well as Doctor Fisher, of the same faculty at about the same date, divulging the fact that successful operations in surgery were due to sulphuric ether used by Morton. By the same Royal Mail steamer, Dr. Charles T. Jackson, M. D., wrote his friend, M. Elie de Beaumont, in Paris, to be placed in a packet and read to the Academy of Sciences, Paris, France, and claiming the discovery for himself, without mentioning the name of Doctor Morton. Dr. J. F. Flagg, M. D., a dentist of Boston, who was present at an operation by Dr. J. Mason Warren, M. D., at Broomfield House on November 21, 1846, immediately said that this operation was shown to have been a success under ether administered by Morton, came out in a public press and medical journal in a vicious attack on Morton and his patent and also wrote his brother, Dr. J. F. B. Flagg, M. D., a dentist, what Morton's fluid was composed of, and this gentleman used ether in his office regardless of the patent on November 28, 1946, in Philadelphia, Pa. On the 9th of December, 1846, Dr. P. W. Ellsworth, M. D., of Hartford, Conn., joined in the crusade against the patent and made a claim for the " discovery of both ether and nitrous oxide gas as an anesthetic" for his friend and disciple, Dr. Horace Wells, of Hartford, a dentist, the first of the "jump-up-behinders," which was followed by a letter from Wells to Morton under date of December 10, 1846, making a similar claim to that of Ellsworth. In the issue of the London Lancet of January 9, 1847, one R. H. Collyer, of England, along with Henry Hale Hickman (deceased), was added to the list. Soon after, France added a couple of names as their contribution, and last, but not least, Dr..

Crawford W. Long, M. D., of Georgia, entered the list in the December, 1849, issue of the Southern Journal of Medicine and Surgery, antedating his claim to discovery back to March 30, 1842 (assuming approximately the antedating of the claim of Dr. Charles T. Jackson, M. D., to the fall of 1841 or spring of 1842) and for the purpose of being one of the many referred to by Dr. Oliver Wendell Holmes, in 1877, Dr. P. A. Wilhite, of Anderson, S. C., added his name to the list of those who claimed to "have used ether previous to Doctor Morton, and in this use of ether we find added the name of Dr. John Collins Warren, M. D., of Boston, antedating to 1803, in the treatment of asthma by inhalation. It is a peculiar thing that none of these alleged discoverers discovered that they knew anything about the use of ether in any manner until after Doctor Morton had demonstrated to the world at large that sulphuric ether fumes destroyed the pain of surgical operations, and ether had been adopted as an anesthetic throughout the world.

Such is the reward of a public benefactor in medical annals. Its counterpart may be found in the history of medicine from the most ancient times to the present: Galaleo, Paracelsus, Harvey and his brother, Hunter, Jenner, Mesmer, Hahneman, Bruno, and Keppler are other pioneers of the period and a shining example of their experience for the world of science and progress to look backward in the march of progress in the healing arts, but not for encouragement to future discoverers for a just reward for any liberality to promote the welfare of mankind.

Morton was a victim of professional, religious, prejudice, environment, subtle, overzealous and selfish friends and opponents of the period, forced by governmental sources into a reliance upon his patent to protect his interests before a court which resorted to technicalities to uphold the fear of promoting a monopoly instead of a contract under the patent laws of the country, a condition of judicial mind then existing in this country and Europe.

"The evidence before the court was not impartial. It was dictated by prejudiced professional minds and self-serving interests for the purpose of voiding the patent and at the same time conceal the fact of who the discoverer really was. Even the court was forced to admit "its discoverer is entitled to be classed among the greatest benefactors of mankind."

In view of these facts I suggested to the committee the broadening of section 4886 of the Revised Statutes (U. S. C., title 35. sec. 31) of the bill, H. R. 10156, by amendment inserting the words in line 8, after the word "matter," the following words: "beneficial to mankind," so that the section would read:

"Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, beneficial to mankind, or any new and useful improvements thereof," etc.

The bill itself reintroduces the words "or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tuber propagated plant,” etc., under the act of May 23, 1930, which broadened section 4886 from its original terms under the act of July 4, 1836, and following later amendments.

The exceptions of the "Provided, however," line 21, pages 2 and 3, of H. R. 10156, protects the public from any retroactions in infringements in cases of patents of the past (previous to the enactment of the bill into law) and restricts the same to patents that may be allowed hereafter, both as to applications and patents.

My suggestion of an amendment such as I stated would no doubt assure the validity of a patent wherein the principle and its effect are bound up together are synonymous in other words, and this principle is applied.

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I do not have in mind the validating of the Morton patent for the method or process of administering ether, but would merely place that class of discoveries inside of patentable discoveries for the future, not outside as caused by the court's decision in the Morton case, 1862. (The only decision of its kind.) The "specifications" of the ether patent distinctly refer to an apparatus" or "device" for the administration of the ether in the following words: "Various modes may be adopted for conveying the ethereal vapors into the lungs. * * A more effective one is to take a glass or other proper vessel, like a common bottle or flask, and place in it a sponge saturated with sulphuric ether. Let there be a hole made through the side of the vessel for the admission of atmospheric air, which hole may or may not be provided with a valve opening downward, or so as to allow air to pass into the vessel, a valve on the outside of the neck opening upward, and another valve in the neck and between that last mentioned and the body of the vessel or flask, which latter valve in the neck should open toward the mouth of the neck

or bottle. The extremity of the neck is to be placed in the mouth of the patient, and his nostrils stopped or closed in such manner as to cause him to inhale air through the bottle, and to exhale it through the neck and out of the valve on the outside of the neck. The air thus breathed, by passing in contact with the sponge, will be charged with the ethereal vapors, which will be conveyed by it into the lungs of the patient. This will soon produce the state of insensibility (or nervous quiet required).”

I have left out at the beginning the following: "A very simple one is to saturate a piece of cloth or sponge with sulphuric ether, and place it to the nostrils or mouth, so that the person may inhale the vapors."

In addition, let us eliminate the final words: "or nervous quiet required." Now let us insert the following clause of the specifications: "In order to render the ether agreeable to various persons we often combine it with one or more essential oils having pleasant perfumes. This may be effected by mixing the ether and essential oil and washing the mixture in water. The impurities will subside and the ether, impregnated with the perfume, will rise to the top of the water."

If this simple change be made in the Morton specifications there is absolutely no distinction that can be pointed out between the "application" of Morton's discovery and its application with a "device" or "apparatus" contained in the specification in the case of the two leading cases of England (Neilson v. Harford) or (Hornblower v. Boulton and Watt), in which cases the patent was held valid.

"No successful complete anesthesia' was ever produced that would allow a major surgical operation to be performed with complete insensibility to pain' without the intervention of some device' or apparatus' for the administration of the anesthetic agent (ether), nor was there ever a simple surgical operation with complete anesthesia performed by means of a 'folded towel' a 'handkerchief' or 'cloth"."

That statement was as true in 1846-47 as it is to-day, as may be witnessed any day in the modern equipped hospitals in the administration of ether in surgical operations.

In the ether case the witnesses and the court utilized the wording of the Morton specifications I have set aside or eliminated, and without justification, in order to have a plausible excuse to invalidate the patent, and obscured all the honest facts that would have caused it to have been held valid, and this too in the fact of the fact that the patent had run its full term of 14 years and could not be renewed by its proprietor on account of a technicality of law brought about by means of “ assignments," the terms of which were written out by the same attorney that obtained the patents from the Government for Doctor Morton.

"Neilson discovered that a hot blast is more effective than a cold blast in a furnace. And he described a means of carrying this principle into effect by interposing a receptacle, with a fire underneath it, wherein the blast was heated on its way to the furnace."

Morton discovered by means of a folded cloth saturated with ether it would, to a degree, produce insensibility to pain in the extraction of a tooth-a minor operation. This not proving effective enough to allow time for a major surgical operation while the patient was insensible to pain, he provided, constructed, and used an apparatus with which he could control the ether fumes while administering it to a patient about to undergo a major surgical operation. This was an "application" of the "principle" he had "discovered," through a "mechanical contrivance" which gave the "fumes of ether" more and better "effect" in its administration. He "described" his "method" or "process for so doing as required by law; he "described" how to make his " device," or 64 apparatus," and how to use it as required by law, and he "described" the "effect" that, when used as directed it would produce. Its utility" was never in question by either the witnesses or the The benefit of the "discovery" to mankind was also acknowledged to be "incalculable" in results and in dollars and cents. The real action upon the human system or what caused the same to become insensible to pain was not known in 1846 to surgeons, chemists, or physicians, and to this day mere "theories attempt to explain the mystery of the action of the "ether fumes," and none are universally accepted in science or in medicine. The Patent Offices of the United States and of England decided that the process. or "application of it," was a patentable "discovery" under the laws of both countries. No such application" of the "fumes of ether" had ever been

court.

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