in distilling, the introduction, and the advantage of that introduction, of superheated steam into contact with the oils to be distilled during the process. He also describes, though in short terms, the article produced, the main feature of which he declares to be its freedom from the offensive odor which, before his invention, seemed to be an inseparable quality of those oils; and he mentions some of the more important uses to which this deodorized oil is applicable in the arts. It is fairly to be inferred from this statement that if all which is described as new in these specifications is really so, the inventor has a right to a patent for three inventions : 1. For a modification or improvement in the distilling apparatus. 2. For a new process or mode of distilling heavy hydrocarbon oils, by which they are deprived of their offensive odors. 3. For the product of this new process of distillation, namely, the deodorized heavy hydrocarbon oils fitted for use in the arts. When a man supposes he has made an invention or discovery useful in the arts, and therefore the proper subject of a patent, it is nine times out of ten an improvement on some existing article, process, or machine, and is only useful in connection with it. It is necessary, therefore, for him in his application to the Patent Office to describe that upon which he engrafts his invention, as well as the invention itself, and in cases where the invention is a new combination of old devices he is bound to describe, with particularity all these old devices, and then the new mode of combining them, for which he desires a patent. It thus occurs that in every application for a patent the descriptive part is necessarily largely occupied with what is not new, in order to an understanding of what is new. The act of Congress, therefore, very wisely requires of the applicant a distinct and specific statement of what he claims to be new, and to be his invention. In practice, this allegation of the distinct matters for which he claims a patent comes at the close of the schedule or specification, and is often accompanied by a disclaimer of any title to certain matters before described, in order to prevent conflicts with pre-existing patents. This distinct and formal claim is, therefore, of primary importance in the effort to ascertain precisely what it is that is patented to the appel. lant in this case. In this part of his application he makes two separate claims, the second of which relates to a modification of the distilling apparatus, and is not in dispute here. Turning our attention to the first claim, we are compelled to say that the language is far from possessing that precision and clearness of statement with which one who proposes to secure a monopoly at the expense of the public ought to describe the thing which no one but himself can use or enjoy without paying him for the privilege of doing so. It is as follows: I claim the above-described new manufacture of the deodorized heavy hydrocarbon oils suitable for lubricating and other purposes, free from the characteristic odors of hydrocarbon oils, and having a slight smell like fatty oil, from hydrocarbon oils, by treating them substantially as is herein before described. The word manufacture in this sentence is one which is used with equal propriety to express the process of making an article or the article so made. "The manufacture of hydrocarbon oils," means primarily the making of hydrocarbon oils. It may mean the thing made also. Are there other words in the sentence calculated to throw light on the meaning of this one? I claim the above-described new manufacture of hydrocarbon oils them substantially as herein before described. * by treating It seems to us that the most natural meaning of these words is that— "I claim this new mode of manufacturing hydrocarbon oils by treating them as herein before described." This is the meaning which would first suggest itself to the mind. If the product is meant, the words "by treating them substantially as herein before described " are useless. They are not only useless, but embarrassing, for by the well-settled rules of construing all instruments some importance must be attached to them; and if they are to be regarded at all, they must either refer to the process of making the oils for which the applicant is claiming a patent, or they are intended to limit his claim for a patent for the product to that product only, when produced by treating the oils in the manner before described. The counsel for appellant disclaim this latter construction, and allege that the patent covers the oil described, by whatever mode it may be produced. It is necessary to insist on this view, because it is made to appear in the case that the oils sold by defendants were produced by a process very different from that described by appellant. We can see no reason why the applicant for the patent, if he had in his mind a claim for the article produced should have intended so to limit his claim. If the article was the discovery which he sought the exclusive right to make, use, and sell, he was entitled to that monopoly, however produced. If, however, he had in his own mind only a claim for the process of manufacture by which the article was made, then his reference to the mode of treating the oils from which it came was evidently proper and intelligible. But the language in the specifications aids us in construing the claim. In the sentence next preceding this claim he says: It will also be evident to those skilled in the art that my invention will be used, if the above-mentioned process be worked, to produce the deodorized heavy oils above described from distilled hydrocarbon oils, &c. It is very clear that what he here calls his invention is a thing which produces the deodorized oils, and not the oil itself. So, again, he says: From the above it will be obvious that my invention consists in producing heavy hydrocarbon oils, suitable for lubricating and other purposes, and free from the characteristic odor, by distilling from them the volatile matter from which objectionable odors Again, he says: In carrying on my new manufacture of deodorizing heavy oils with this apparatus, I place the oil to be deodorized in the still and heat it by the fire beneath to the required temperature to commence the operation, the steam being shut off from the coil, and the outlet-cock being opened to admit of the expulsion of any water from within the coil. Here the word "manufacture" is used in the sense of the word "process," a word which could be substituted for it without a shade of change in the meaning. As it can here mean nothing else but process, we have a definition of the meaning to be attached to it in other parts of the same paper, if that meaning were otherwise doubtful. But apart from these verbal criticisms, all of which are just, and tend strongly to show what was the invention claimed by appellant, it is impossible to read the four printed pages of specifications in which appellant minutely describes his invention without observing that they are almost wholly directed to the apparatus, the mode of using it, and the peculiar process of distillation, by which the more volatile parts of the heavy oils, which contain the offensive odors, are separated from the main body of the oil, pass over in that process, and leave the remainder free from this great drawback in its use in the arts. Why should this be so if the applicant for the patent was only looking to the products as his invention, the deodorized heavy hydrocarbon oils? If the oil alone was to be patented, by whatever process made, this elaborate description of one particular process was unnecessary. A strong appeal is made by counsel to give the appellant the benefit of a liberal construction in support of the patent. Cases are cited in which this court has held that rather than defeat a patent where it appears that a valuable invention has really been made, this court, giving full effect to all that is found in the application on which the Patent Office acted, will uphold that which was really invented, and which comes within any fair interpretation of the patentee's assertion of claim. We are not disposed to depart from this rule in the present case. There is no question here but that the patent is good for the second claim, for the superheating coil, with its steam-pipe, &c. And we are all of opinion that it is good for the process of distillation described in the specifications, by which the heavy hydrocarbon oils are deodorized. It is, therefore, a valid patent for two important matters well set forth and described. If the patentee is also entitled to a patent for the product of this distillation, and has failed, as we think he has, to obtain it, the law affords him a remedy by a surrender and reissue. When this is done, the world will have fair notice of what he claims-of what his patent covers-and must govern themselves accordingly. The growth of the patent system in the last quarter of a century in this country has reached a stage in its progress where the variety and magnitude of the interests involved require accuracy, precision, and care in the preparation of all the papers on which the patent is founded. It is no longer a scarcely-recognized principle struggling for a foot-hold, but it is an organized system, with well-settled rules, supporting itself at once by its utility and by the wealth which it creates and commands. The developed and improved condition of the patent law, and of the principles which govern the exclusive rights conferred by it, leave no excuse for ambiguous language or vague descriptions. The pub. lic should not be deprived of rights supposed to belong to it without being clearly told what it is that limits these rights. The genius of the inventor constantly making improvements in existing patents, a process which gives to the patent system its greatest value, should not be restrained by vague and indefinite descriptions of claims in existing patents from the salutary and necessary right of improving on that which has already been invented. It seems to us that nothing can be more just and fair, both to the patentee and to the public, than that the former should understand and correctly describe just what he has invented and for what he claims a patent. In consistency with these views we are of opinion that the applicant in this case has described and claimed a patent for the process of deodorizing the heavy hydrocarbon oils, and that he has not claimed as his invention the product of that process. The judgment of the circuit court is affirmed. Mr. Justice CLIFFORD dissenting: I dissent from the opinion and judgment in this case upon the ground that the invention, when the claim is properly construed, is an invention of the described new manufacture, and not merely for the process, as decided by a majority of the court. [United States Circuit Court-District of Massachusetts.] AUGUSTUS H. WONSON vs. SUMNER GILMAN ET AL. In Equity.-Before SHEPLEY, J.-Decided April 13, 1877. The patent of A. H. Wonson for an improved paint to prevent the fouling of ships' bottoms by the adhesion of barnacles, sea-weeds, &c., is for a paint composed of a soluble vehicle or medium, oxide of copper (of which the other salts of copper are not considered the equivalents), and such earthy or mineral matters as separate the particles of the oxide and retard its solution, and such patent is not infringed by the use of a paint containing in place of the oxide of copper arsenite of copper. SHEPLEY, J.: OPINION OF THE COURT. The patent in this case, so far at least as Division B is concerned, was sustained by the court in the case of Tarr et al. vs. Folsom (1 Holmes, 312). It was there decided to be for an improved paint to prevent the fouling of ships' bottoms by the adhesion of barnacles, sea-weeds, and other substances, a paint which can be applied with a brush like ordinary paint, and which is compounded of, first, a suitable vehicle or medium; second, the oxide of copper, yielding a poisonous solution in water; third, such earthy and mineral matters as separate the particles of the oxide and retard such solution. That case did not necessarily involve, nor does the present case, any decision as to Division A, for, if the defendants infringe in this case, the infringement is of Division B, as defendants use the suitable vehicle, and also earthy and mineral matters which retard the solution of the poisonous ingredient, and if that poisonous ingredient be an oxide of copper, then they use all the elements of the combination in Division B. The real question presented in this case is one of infringement only, and the solution of that question is dependent upon the other question, whether the poisonous substance which is used as an ingredient in the defendant's paint can, within the limitations of complainant's patent, and within the terms also of the contracts between the parties, be properly classed as an oxide of copper, or as such an equivalent of the oxide of copper as is not disclaimed in the patent or licensed to be used by the contract between the parties. Certain agreements between the parties, which are in evidence, con. tain stipulations that the defendants shall not be prevented thereby from "the making, compounding, using, or vending of any paint wherein metal, copper, or the sulphurets, sulphates, or sulphides of copper are ingredients, whether with or without a suitable basis, and whether used alone or with any other preservative ingredients except only the oxide of copper." By the terms of the patent, and according to the principles upon which the complainant's patent, in view of the state of the art, was sustained in Tarr et al. vs. Folsom, the patent is limited to the use of oxide of copper, and does not embrace, as equivalents for the oxide, any of the salts of copper, however poisonous. The defendants use as the poisonous ingredients in their paint the arsenite of copper, prepared by precipitating the copper from a solution of the sulphate, chloride, or nitrate of copper with arsenite of soda. Inasmuch as the salt of copper used by defendants, which was gener. ally the sulphate of copper, was a substance composed, according to the old nomenclature in chemistry, of oxide of copper on the one side and sulphuric acid on the other, or, according to the new nomenclature, as sulphuric acid in which two atoms of hydrogen have been replaced by copper, the salt being expressed as one whole, consisting of copper, oxygen, and sulphur, it necessarily results that as oxide of copper according to the old notation, or oxygen and copper according to the new, can be found by analysis of the sulphate of copper, so in like manner these same elements can, by analysis, be found in the basic arsenite of copper prepared by precipitating the copper from a solution of the sulphate of copper with arsenite of soda. |