Opinion of the court.

give their license, consent, and permission to any other person than the said E. V. Bunn to construct or use, the improved planing-machine aforesaid, within the said city of Louisville, or within the district of country within ten miles of said city.

"2d. That the said E. V. Bunn, his executors, administrators, and assigns, shall not nor will, during the times aforesaid, construct or use more than ten machines as aforesaid within the limits above mentioned, nor construct or use any such machines, nor sell and dispose of any plank or other thing dressed and prepared in such machine anywhere else within the United States, and the territories thereof; it being declared to be the true intent and meaning of these presents that not more than ten planing-machines in the whole shall be constructed and used, by virtue of the license, consent, and permission herein given. "3d. It is understood and agreed that the said William W. Woodworth has entered and filed, at the Patent Office at Washington, a disclaimer of that part of said patent for the planing-machine which claims the reduction of materials, boards, and plank to an equal width and thickness by circular saws; and a lien is retained and renewed on this assignment for the security of the payment of the fifteen hundred dollars, the consideration and purchase-money to be paid to said Woodworth.

66

Signed, sealed, and delivered this 21st day of June, 1843. [SEAL.] "W. W. WOODWORTH, "Administrator of W. Woodworth, deceased.

"The words 'to him in hand paid by the said' were erased, and the word 'ten,' and the words 'in the name of said Woodworth, administrator aforesaid, or in his own name,' were interlined before the execution of the foregoing instrument, in presence of D. E. Sickles."

The cause was argued by Latrobe and Staples, for the complainants, Woodworth and Bunn, and by Bibb, for the defendants.

Mr. Justice NELSON delivered the opinion of the court.

The objection taken, that the administrator could not apply for an extension of the patent granted to Woodworth, his intestate, under the eighteenth section of the Patent Law, has been disposed of in the previous case of Wilson v. Rousseau et al., and need not be further noticed.

Another objection taken to the right of the complainants to maintain the suit, is that Woodworth was not the first and original inventor of the planing-machine, against the using of which the defendant was enjoined.

Syllabus.

Without going into the proofs in the case, which are very voluminous, it will be sufficient to state that, after fully considering all the evidence produced bearing upon the question, the court is satisfied that the weight of it is decidedly against the objection, and in favor of the allegation in the bill, that Woodworth was the original inventor of the machine.

It is objected, also, that the specifications accompanying the patent were not sufficiently full and explicit, so as to enable a mechanic of ordinary skill to build a machine. The court is not satisfied, according to the proof in the case, that the objection is well founded, and it cannot be relied on as affording sufficient ground for the dismissal of the bill.

A further objection was taken, that W. W. Woodworth, one of the complainants, was improperly joined with E. V. Bunn, the assignee of the exclusive right in Louisville and ten miles around it. The court is of opinion that the interest of Woodworth in the assignment, as appears from the record, is sufficient to justify his being made a party jointly with the assignee.

Some other objections were taken to the maintenance of the suit on the argument, which it is not material to notice particularly. They have all been considered, and, in the judgment of the court, afford no sufficient ground for the dismissal of the bill and the dissolving of the injunction.

We think the court erred, and that the decree dismissing the bill, as to the defendant James Wilson, and dissolving the injunction, should be reversed, and that a perpetual injunction should issue.

JAMES WOOD, PLAINTIFF IN ERROR, v. WILLIAM A. UNDERHILL AND ASCHEL H. GEROW, DEFENDANTS.

(5 Howard, 1.)

1. In order to obtain a patent, the specification must be in such full, clear, and exact terms as to enable any one skilled in the art to which it appertains to compound and use the invention, without making any experiments of his

own.

2. If the patent be for a new composition of matter, and no relative proportions of the ingredients are given, or they are stated so ambiguously and vaguely that no one could use the invention without first ascertaining, by experiment, the exact proportion required to produce the result, it would be the duty of the court to declare the patent void.

3. But the sufficiency of the description in patents for machines, or for a new composition of matter, where any of the ingredients do not always possess exactly

Statement of the case.

the same properties in the same degree, is generally a question of fact, to be determined by the jury.

4. Where a patent was obtained for a new improvement in the mode of making brick, tile, and other clay ware, and the process described in the specification was to mix pulverized anthracite coal with the clay, before moulding it, in the proportion of three-fourths of a bushel of coal-dust to one thousand brick, some clay requiring one-eighth more, and some not exceeding half a bushel, this degree of vagueness and uncertainty was not sufficient to justify the court below in declaring the patent void.

5. The court should have left it to the jury to say, from the evidence of persons skilled in the art, whether the description was clear and exact enough to enable such persons to compound and use the invention.

THIS case was brought up by writ of error from the Circuit Court of the United States for the Southern District of New York.

It appeared that, in the year 1836, Wood took out amended letters patent for "a new and useful improvement in the mode of making brick, tile, and other clay ware," and filed the following specification of his invention:

"Be it known, that I, the said James Wood, have invented a new and useful improvement in the art of manufacturing bricks and tiles. The process is as follows: Take of common anthracite coal, unburnt, such quantity as will best suit the kind of clay to be made into brick or tile, and mix the same, when well pulverized, with the clay before [it] is moulded. That clay which requires the most burning will require the greatest proportion of coal-dust. The exact proportion, therefore, cannot be specified; but, in general, three-fourths of a bushel of coaldust to one thousand brick will be correct. Some clay may require one-eighth more, and some not exceeding a half-bushel. The benefits resulting from this composition are the saving of fuel, and the more general diffusion of heat through the kiln, by which the whole contents are more equally burned. If the heat is raised too high, the brick will swell, and be injured in their form. If the heat is too moderate, the coal-dust will be consumed before the desired effect is produced. Extremes are therefore to be avoided. I claim as my invention the using of fine anthracite coal, or coal-dust, with clay, for the purpose of making brick and tile as aforesaid, and for that only claim letters patent from the United States.

"Dated 9th November, 1836."

"JAMES WOOD.

In July, 1842, he brought a suit against the defendants in error, for a violation of this patent.

And at the trial the defendant objected to the sufficiency of the specification, "because no certain proportion for the mixture is point

Argument for the plaintiff in error.

ed out, but only that such quantity of coal must be taken as will best suit the kind of clay to be made into brick or tile; but that clay which requires most burning will require the greatest quantity of coal-dust. The exact proportion cannot, therefore, be specified; but, in general, three-fourths of a bushel of coal-dust to one thousand brick will be correct. Some clay may require one-eighth more, and some not exceeding half a bushel; so that there is no fixed rule by which the manufacturer can make the mixture, but that must be ascertained by experiments upon the clay; and the claiming clause in the specification is only for the abstract general principle of mixing anthracite coal-dust with clay, for the purpose of making brick, without any practical rule as to the proportions, which is too vague and uncertain to sustain a patent," which objection was sustained by the court. The plaintiff excepted. And the verdict and judgment being against him, the case was brought up here upon this exception.

The cause was argued by Silliman, for the plaintiff in error, and Rowley, for the defendants.

Silliman, for the plaintiff in error, made the following points:
The plaintiff insists-

1. That he has, in his specification, given a general rule by which every kind of clay may be much better burned than by any previous process; and that the general proportions specified are, with some exceptions, the very best that can be used.

That a patent may properly be granted for a beneficial general rule, although there might be some exceptions to it not provided for.

2. That if it is necessary to entitle the plaintiff to a patent for a most beneficial invention for burning clay of the qualities usually found, that he should also discover the means of burning, to best advantage, clays of qualities not usually found, that his patent should not therefore be deemed void on its face; but he should be permitted to prove, by persons conversant with the business, that they could instantly determine, on inspection of clays of uncommon qualities, whether they required more or less than the usual burning, and how much more or less, so as to regulate the variation of proportions in such manner as to burn to the best advantage.

3. The plaintiff should have been permitted to show, under his specification, by experts, that any kind of clay of which bricks can be made, however varied the qualities, can be better burnt under his general rule than by any previous process; and if such is the fact, the plaintiff should be entitled to a patent for the discovery, if he had

Argument for the defendants in error.

given the general rule only, and had taken no notice of those exceptions, in which some uncommon kinds of clay can be best burned with a greater or less proportion of coal than that specified in the general rule.

4. The judge, in his decision, adopts all the errors of the defendants' objection, which states that there is no fixed rule by which the manufacturer can make the mixture, but that must be ascertained by experiments upon the clay. Suppose this to be so, and that the inventor has only furnished a guide by which such experiments can be successfully made, and that the subject, on account of the variable qualities of the materials, does not admit of greater certainty, and that by the simplest and cheapest experiments the manufacturer, in consequence of the plaintiff's invention, will be able to burn his bricks much better in less than half the time, and at less than half the cost of burning, by any other process, is not the inventor entitled to a patent for an invention practically so useful?

The fact that not a single brick has, for some years past, been burned, except according to the plaintiff's specification, is pretty good evidence that the manufacturers have been able to discover something from plaintiff's specification.

5. The objection, as adopted by the court, declares that the claiming clause in the specification is only for the abstract general principle of mixing anthracite coal-dust with clay, for the purpose of making bricks and tiles, without any practical rule as to the proportions, which is too vague and uncertain to sustain a patent. Suppose this objection true in point of fact, and that no information had been intentionally suppressed, and that the qualities of clay varied so much that the proportions most useful could only be ascertained by an experiment on each bed of clay, it might, nevertheless, be a very useful invention, for which the inventor should be in some measure compensated by a patent. But this part of the objection is not true in fact; for the claiming clause is of the invention of using fine anthracite coal, or coal-dust, with clay, for the purpose of making brick and tile "as aforesaid." These words, "as aforesaid," refer to the general rule of three-fourths of a bushel of coal for a thousand bricks, with the exceptions or variations previously expressed.

6. The judgment should be reversed, with costs, including the costs in the Circuit Court.

Rowley, for the defendants in error.

The patentee's specification is uncertain and insufficient. It furnishes no rule for making bricks, without the manufacturer's first