Several objections were taken by the defendant to the introduction of testimony, but with the exception of those relating to the action against Snow, they are so clearly untenable as not to require notice. If this action was to be regarded as an action simply to charge the defendant as the maker of the note, the record in the case of Snow would not have been admissible against the defendant. Assuming that it was incumbent upon the plaintiff to show that the defendant was not authorized to make the note for Snow, 19 Barb. 74, this record, to which the defendant was a stranger, was not admissible to prove that fact, or as having any tendency to prove it, though it might have been otherwise if seasonable notice had been given to the defendant, that his authority to make the note for Snow was denied in that suit, and requiring him to maintain his authority on the trial: 2 Cow. & Hill's Notes 817. If the record was inadmissible, the parol evidence of the grounds on which the decision proceeded was equally 80. Nor was the record necessary to authorize the introduction of proof of what the defendant testified to on that trial, showing his want of authority. What he said in the witness-box was admissible against him, as declarations made at any other time would be, without reference to his oath, or to the issues in the record. But resting the plaintiff's right of recovery, as I do, upon the warranty, the record was admissible to show that the plaintiff had been subjected to the expenses of an action in attempting to enforce the contract against the principal whom the defendant undertook to bind. These expenses, the action being brought in good faith, were a legitimate item of damages in the present action: Randell vs. Trimen, 37 L. & E. 275; s. c. 86 Eng. C. L. R. 786; Collen vs. Wright, 40 Eng. L. & E. 182; and the parol evidence was admissible to rebut a possible inference that the nonsuit was granted on account of some formal defect in the prosecution of the action. It is always competent to show by parol the grounds or which a verdict or judgment was rendered, when the grounds become material and do not appear in the record: Wood vs. Jackson, 8 Wend. 10, 45; Doty vs. Brown, 4 Comst. 71, 75.

The judgment should be affirmed.

United States Circuit Court.-Southern District of New York

WILLIAM T. G. MORTON vs. THE NEW YORK EYE INFIRMARY.

At common law an inventor has no exclusive right to his invention. Such right is the reature of the statute by which alone the right claimed in any given case must be determined.

In its strict sense a discovery is not patentable.

The discovery of the use of ether in surgical operations, though of inestimable benefit to the human race, was merely the discovery of a more perfect effect of the action of well-known agents, operating by well-known means upon wellknown subjects, and as such was not legally entitled to be patented.

Motion for a new trial.

Mr. Cozzens and Mr. Keller for the motion.

Mr. Owen and Mr. B. D. Silliman, contrà.

The opinion of the Court was delivered by

SHIPMAN, J.-This is an action at law brought to recover damages for the infringement of a well-known patent. The case came on to be heard at a prior term of this Court before a jury, and after some testimony had been taken tending to show an infringement by the defendants, the Court, having doubts as to the validity of the patent, arrested the hearing of the evidence, and directed the counsel to argue the question of law arising on the face of the specification. This question is-as will be at once obvious to any one familiar with the law of patents who reads the specification is the subject-matter of the alleged invention patentable? The question, after argument, was decided in the negative, and the patent declared void. The same question is now again presented, on a motion for a new trial, before full Court. The point is one of substance and not of form. It was discussed as such, and will be so decided. Any criticisms which we may make on the language of the specification will be made only for the purpose of dealing with the subject which that language envelops; and if at any time we appear to discard the phraseology of the instrument, it will not be because we complain of its terms, but only

for the reason that we desire to strip the alleged invention and present it naked for consideration. As various parts of the specification were referred to on the argument as having a bearing on the single point raised, it is proper to give the whole instrument, which is in the following words :—

The Schedule referred to in these Letters Patent, and making part of the same.

"To all persons to whom these presents shall come:

"Be it known that we, Charles T. Jackson and William T. G. Morton, of Boston, in the county of Suffolk, and State of Massachusetts, have invented or discovered a new and useful improvement in surgical operations on animals, whereby we are enabled to accomplish many, if not all, operations such as are usually attended with more or less pain and suffering, without any, or with very little, pain to, or muscular action of, persons who undergo the same; and we do hereby declare that the following is a full and exact description of our said invention or discovery.

"It is well known to chemists that when alcohol is submitted to distillation with certain acids, peculiar compounds, termed ethers, are formed, each of which is usually distinguished by the name of the acid employed in its preparation. It has also been known that the vapors of some, if not all, of these chemical distillations, particularly those of sulphuric ether, when breathed or introduced into the lungs of an animal, have produced a peculiar effect on its nervous system; one which has been supposed to be analogous to what is usually termed intoxication.

"It has never (to our knowledge) been known, until our discovery, that the inhalation of such vapors (particularly those of sulphuric ether) would produce insensibility to pain, or such a state of quiet of nervous action as to render a person or animal incapable, to a great extent, if not entirely, of experiencing pain while under the action of the knife, or other instrument of operation of a surgeon calculated to produce pain. This is our discovery; and the combining it with, or applying it to, any operation of surgery, for the purpose of alleviating animal suffering, as well as of enabling a

VOL. XI.-43

surgeon to conduct his operation with little or no struggling of muscular action of the patient, and with more certainty of success, constitutes our invention. The nervous quiet and insensibility to pain produced on a person is generally of short duration; the degree or extent of it, or time which it lasts, depends on the amount of ethereal vapor received into the system, and the constitutional character of the person to whom it is administered. Practice will soon acquaint an experienced surgeon with the amount of etheric vapor to be administered to persons for the accomplishment of the surgical operation or operations required in their respective cases. For the extraction of a tooth, the individual may be thrown into the insensible state, generally speaking, only a few minutes. For the removal of a tumor, or the performance of the amputation of a limb, it is necessary to regulate the amount of vapor inhaled to the time required to complete the operation. Various modes may be adopted for conveying the etheric vapor into the lungs. 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. A more effective one is to take a glass, or other proper vessel, like a common bottle or flask. 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 downwards, or so as to allow air to pass into the vessel), a valve on the outside of the neck opening upwards, 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 towards 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 ouside of the neck. The air thus breathed, by passing in contact with the sponge, will be charged with the etheric 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.

"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. We sometimes combine a narcotic preparation, such as opium or morphine, with the ether. This may be done by any ways known to chemists by which a combination of etheric and narcotic vapors may be produced. After a person has been put into the state of insensibility as above described, a surgical operation may be performed upon him without, so far as repeated experiments have proved, giving to him any apparent or real pain, or so little in comparison to that produced by the usual process of conducting surgical operations as to be scarcely noticeable. There is very nearly, if not entire, absence of all pain. Immediately, or soon after the operation is completed, a restoration of the patient to his usual feelings takes place, without, generally speaking, his having been sensible of the performance of the operation.

"From the experiments we have made, we are led to prefer the vapors of sulphuric ether to those of muriatic or other kind of ether, but any such may be employed which will properly produce the state of insensibility without any injurious consequences to the patient.

"We are fully aware that narcotics have been administered to patients undergoing surgical operations, as we believe always by introducing them into the stomach. This we consider in no respect to embody our invention, as we operate through the lungs and airpassages, and the effects produced upon the patient are entirely or so far different as to render the one of very little, while the other is of immense, utility. The consequences of the change are very considerable, as an immense amount of human or animal suffering can be prevented by the application of our discovery.

"What we claim as our invention is the herein before-described means by which we are enabled to effect the above highly important improvement in surgical operations, viz., by combining therewith the application of ether or the vapor thereof substantially as abovo specified.