The opinion of the Court was delivered, by

This suit was brought on a note which the defendant below had given the plaintiff for the price of a patent-right for Howd’s water-wheel. The defence was that the patent was void, having been obtained by Howd the patentee for an alleged improvement which was in fact not his invention, but had been known and in use before his pretended discovery of it. The Court instructed the jury that this defence if established would entitle the defendant to a verdict; and the whole controversy, therefore, was properly made to turn on the validity of the patent.

The Act of Congress requires the inventor, before he shall receive a patent, to describe his invention, and to specify and point out the part and improvement, or combination, which he claims as his own invention. In the present case, Howd, the patentee, described in the schedule the wheel, as improved by himself, the mode of its construction, the materials of which it was composed, and the principles of its operation; and concluded by pointing out particularly what he claimed as his invention. This description is said to be obscure; but it is intelligible enough to show very clearly that Howd did not claim the whole wheel as his invention, but only a part of it, which he alleged was a new and useful improvement upon an old wheel known before.

When this case was here on a former writ of error (4 Harris 347), it was held, that the patent was not to be adjudged void merely because every part of the whole wheel, as described in the schedule, was not the original invention of the patentee. This opinion has our fullest assent. It is certainly not necessary to the validity of the patent, that those parts should be new which the patentee admits to be old; and he does admit everything to be old which he does not claim as new. It is for the parts claimed as his own invention, and as such particularly pointed out, that the patent is issued. It covers no more; and he is not boundfto prove the originality of what is not in it, to make it a protection for what is in it.

*469Another plain deduction from this specification is, that the patentee claims as his invention, more than one improvement of the water-wheel; or, more properly speaking, an improvement capable of being divided into several parts, which might have been invented at different times, and by different persons. “ The application of the water upon the outside of the wheel, and operating upon the principle of reaction,” might be the invention of one man; while “the spouts or chutes giving the water a direction with the motion of the wheel,” might have been discovered by another. Since, then, one of these constituent portions of the improvement patented might be new, and another old, the claim of originality may, in its nature, be partly true and partly false. Supposing it to be so, is the patent void ? Or is it to be held valid and good, because one part of the invention is really original, though it covers other things to which the patentee has no just claim ?

This is not a new question. The Federal Courts have often had it before them. It has been discussed and decided in the Circuit Court of Massachusetts (1 Gallison 480; 1 Mason 188, 447; 2 Mason 112); in the Circuit Court of Pennsylvania (3 Wash. C. C. R. 425), and in the Supreme Court of the United States (3 Wheaton 454); and it has been uniformly held, that if anything be included in a patent which is not new, the patent is void. If what is new be mixed with what is old, the patent is no protection for either. It is a fatal objection to a patent that it covers any substantial or material part of a machine, which the patentee did not invent or discover.

There is, it is true, a certain sense in which it is not necessary that any part of a patented machine should be new. Old materials, or old principles, may be used in combination, so as to produce a new result (4 Wash. C. C. R. 543), and the novelty of the effect makes it a new machine. In this sense it may be said, that there is nothing new under the sun; for the simple elements of all mechanical power are as old as the earth. It is a new combination of these original principles that makes any invention new. A patent may be obtained, not only for a new arrangement of elementary principles, but for a new combination of two or more existing machines. In such a case the patent must stand upon the combination only, and the patentee can have no exclusive right to the separate machines (2 Mason 117). But this patent does not stand upon a combination. Howd claimed the application of the ws.ter on the outside of the wheel as his invention, and also the spouts, or chutes, not because they form together a new combination, but because each one of these things is, in itself, new. He asserts that both are his original inventions; and if the assertion be untrue with respect to either, or to any essential part of either, his patent is wholly void.

*470It is possible that when the judge below submitted it to the jury to say, whether there was anything new in Howd’s claim, he meant to speak of it as a unit, and to say that it was valid if it was new in any degree. But looking at the charge, without the least disposition to be hypercritical, we cannot give it that construction. On the contrary, we think the natural and obvious meaning of the words is, that if any part of what the patentee claimed as his invention was new, the plaintiff might recover. He adopts the plaintiff’s fifth point by answering it in the affirmative, and in effect says, that if there is any thing new or useful in Howd’s wheel, either in the formation of the chutes, the manner in which the wheel is made, or the combination of the chutes and wheel, the patent is valid. This was dividing the asserted improvement into distinct parts, and submitting them, together with some other things not covered by the patent, to the jury to say upon each of them separately, whether there was anything new in either, and directing a verdict for the plaintiff, in case the affirmative was found. If this were the rule, the smallest modicum of originality would sanctify any amount of piracy on other men’s rights. The person who invented the steam-whistle might, upon this principle, have had a valid patent for the locomotive. But such is not the law. If the patentee’s claim, as set forth by himself, was false, his patent was void; and, if false in any material or substantial part, it is the same as if false throughout.

The other assignments of error have not been sustained. That one, which complains that the Court did not give a construction to the patentee’s schedule and summary of his claim, is especially destitute of force. Perhaps it needed a translation, and the judge would no doubt have furnished one, if he had been called on to do so. But, in the absence of a prayer for specific instructions, his silence wa,s no error.

Judgment reversed and venire facias de novo awarded.