Goodyear v. Wait. Goodyear in the manufacture of hard rubber or vulcanite. The patent is for an improvement in the process of Charles Goodyear in preparing India rubber. (See his patent, reissued in December, 1849, on the surrender of one bearing date in June, 1844.) The improvement consists in thoroughly mixing the rubber with sulphur, in the proportion of from four ounces to a pound of sulphur to a pound of rubber, and then subjecting the same to a high degree of heat, as in the vulcanizing process of the said Charles Goodyear, until the compound shall have acquired the required hard and tough property found in ivory, bone, tortoise-shell, and horn, and the spring-like property, under flexure, found in whalebone. The degree of heat suggested is not less than from 260° to 275° of Fahrenheit's scale, in a steam or other heater, for about six hours or more, that is, until the compound substance has obtained the required degree of hardness. The first patent to Nelson Goodyear was issued May 6th, 1851. It was surrendered and reissued May 18th, 1858, for a defective specification. On the surrender, two patents were issued, one for the process, and the other for the product or new manufacture. The defendant is charged with having been engaged in making, using, and selling a large amount of such hard rubber as is described in the patents, for dental purposes, that is, in the manufacture of plates for artificial teeth, and in the sale of the same, made partly with and from the rubber aforesaid. The first objection taken to the patents is, that they are void for want of authority in the Commissioner to issue them. It rests mainly on the ground, that both the process and the product, which were described in the original patent, both being new, constituted but one invention, and that the claim for either, in a patent, would protect the exclusive right to both. The argument is certainly ingenious, and, in connection with the decision of Judge Grier in the case of Goodyear v. The Railroad, (2 Wallace, Jr., 360,) is entitled to consideration. It was there held, at the Circuit, that the new process of Goodyear v. Wait. Charles Goodyear in vulcanizing India rubber, embraced the new product, and that the claim for the former protected the latter; and it is insisted, on the part of the learned counsel, that the rule applies e converso, that the claim for the product will cover and protect the process, and that, as the claim in the original patent was for the product, which covered and embraced within it the process, there could be no necessity for the surrender and reissue of the two patents. I think the counsel mistaken in supposing that the original patent claimed the product or substance. It was "for combining India rubber and sulphur, &c., for making a hard and flexible substance, &c., substantially as herein set forth". -a claim, I am strongly inclined to think, for a process instead of the product. But this does not affect the force of the argument, which is, that either claim excludes the other. It But the answer to this view seems to me conclusive. must be admitted, as a general proposition, that a new process, producing a useful result or product, is patentable; and further, that a new composition of matter or substance which is useful is also patentable. Indeed, it is conceded that the rule is not applicable to the case of a new process producing an old and useful result. There, the process must be claimed, for the result or product, being old, cannot be. But it is insisted that it is otherwise if the product be new. I doubt the soundness of the distinction, and must hold that the inventor is entitled to the allowance of both claims, in either aspect. As it respects the decision in the case of Goodyear v. The Railroad, I have reason to know that Judge Grier felt considerable embarrassment in making it, from which he would have been relieved if there had been a claim for the product or substance. As to the separate patents, I agree that both claims might properly have been embraced in one patent. But this question is one that is very much left, and reasonably so, to the good sense and discretion of the Commissioner. It is often a nice one, and occasions frequent embarrassment to the Department, as I know from conversations with some of the most eminent men who have filled the place. Goodyear v. Wait. My conclusion on this point is, that the original patent was properly surrendered, in order to amend the claim, and that its reissue in two patents was unobjectionable. The next objection is, that the patents do not describe the invention in such full, clear and exact terms, as to enable any one of ordinary skill in the art, to make the hard rubber without experiment or further invention. This is partly a question of law, and partly one of fact. First, as to the question of law. It must be remembered, that the invention in question is an improvement in the process of preparing India rubber, described in the patent of Charles Goodyear, which had been issued as early as 1844—a process well known to those skilled in the art at the time of the issuing of the original patent to Nelson Goodyear in 1851, and of the two reissues in 1858. The main difference between Charles Goodyear's patent and these consists in the different proportions of the mixture of rubber and sulphur. This new mixture by Nelson Goodyear, when vulcanized, produced a new substance, not only distinct from that of Charles, but applicable to entirely different and distinct uses and purposes. Now, the description must be read in the light derived from the knowledge that existed of the Charles Goodyear patent, his process, and the practical use of the same. In Charles Goodyear's patent, the least amount of sulphur mixed with the India rubber that would be sufficient to produce vulcanization, was regarded as the best proportion. Hence, the quantity did not usually exceed one ounce of sulphur to a pound of rubber. This produced what may be called the soft vulcanized rubber, when compared with the invention in question, and best answered the uses and purposes to which it was applied by its inventor. Nelson Goodyear increased the proportion of sulphur, and produced his new substance, and, after referring to Charles Goodyear's invention, and the improvement desired, to wit, producing the article of hard rubber, declares the improvement to consist "in thoroughly mixing India rubber, or other vulcanizable gum, with sulphur, whether with or without auxiliary ingredients, in the proportion of Goodyear v. Wait. about from four ounces to a pound of sulphur to a pound of the gum, and then subjecting the same to a high degree of artificial heat, as in the vulcanizing process of Charles Goodyear, until the compound shall have acquired the required hard and tough property," &c. The range of heat given in the Charles Goodyear patent is from 212° to 350°, but, for the best effect, approaching as near as may be to 270°. The range given by Nelson Goodyear, in another part of his patent, is not less than 260° or 275° of Fahrenheit. He also states, that much latitude may be taken in the proportional quantity of sulphur, but that a proportion much less than four ounces to a pound of rubber would fail to produce the new sub stance. This question is not a new one in Court. It was very fully considered in the case, on the same patents, of Goodyear v. The New York Gutta Percha and India Rubber Vulcanite Co., decided in October, 1862, (2 Fisher's Patent Cases, 312,) and it was there held, that the description in the patents, both as respects the proportions of sulphur and rubber and the degree of heat to which the compound was to be subjected in order to produce the new substance, was sufficiently full and certain within the requirements of the patent law. The same question had been decided in the same way previously, in the cases pending on the Charles Goodyear patent of 1849. I do not intend to go over the argument again that led me to the conclusion then arrived at; but I will add, that the proofs in the present case, in my judgment, confirm the correctness of the former decisions. As already stated, the proportions of the mixture are about from four ounces to a pound of sulphur to a pound of rubber, which I understand as meaning, that any proportion of sulphur between four ounces and a pound to a pound, of rubber, properly mixed and subjected to the required heat, will produce the substance. What uncertainty is there in this, or what necessity of experiment, on the part of a person of ordinary skill in the art, to make the compound? The inventive faculty is exhausted in the directions given to make the article. All the work that remains to be done is that by Goodyear v. Wait. the hands of the skilful workman. I agree, that if it could be shown that the mixture, as described, when properly reduced to practice, failed to produce the article, the patent could not be upheld. But that is a different question from the one here presented, namely, whether the description is sufficiently clear and certain. I have said that the proofs in this case tend to confirm what was my conclusion on this point when the patents were formerly before me. It appears, that the proportions of the ingredients composing the compound put on the market, by the proprietors of these patents, for dental purposes, were twelve parts in weight of rubber, and six of sulphur, with nine of vermilion, as coloring matter. Thousands of pounds per annum of this compound, have been sold to dentists. throughout the United States, and it was and is regarded by them as the best article in the market, and has been in almost universal use since its application to dentistry. It is the article that has been used by some three thousand licensees, as well as by the infringers, perhaps a still greater number. One of the leading witnesses for the defendant thinks the best proportion to be sixteen ounces of rubber, eight and a half of sulphur, and seven of vermilion, nearly the proportions used by the plaintiffs. Another, Mr. Starr, a dentist of twenty-four years' standing, and familiar with the use of hard rubber for dental purposes, from its first application, thinks a quarter of a pound to a pound of rubber, with nine ounces of vermilion, the best. This adopts the minimum of sulphur given in the patent. Another, Mr. Wildman, a professor in a college of dental surgery, thinks that the proportions of forty-eight parts of rubber, and twenty-four of sulphur, with thirty-six of vermilion (which reduced would be six parts of sulphur, twelve of rubber, and nine of vermilion) are best. This agrees with the plaintiffs' article in common use. In every instance, the proportions are within the limit given by the patentee. It seems to be supposed by many of the experts on the part of the defendant, that because the patentee has given a margin in the proportion of sulphur, it requires invention |