NATIONAL ENAMELING & STAMPING CO. et al. v. NEW ENGLAND ENAMELING CO.

(Circuit Court of Appeals, Second Circuit. December 4, 1906.)

No. 174.

1. PATENTS-CONSTRUCTION OF CLAIMS-REFERENCE TO SPECIFICATION.

The claim in a patent is the measure of the invention, and, while the specification may be referred to for the purpose of explaining any ambiguity in the claim, it cannot be referred to for the purpose of expanding or changing the claim.

[Ed. Note. For cases in point, see Cent. Dig. vol. 38, Patents, § 241.] 2. SAME-VALIDITY-ENAMELED METAL WARE.

The Claus patent. No. 527,361, for an improvement in enameling metal ware, claims 4 and 6, which cover as a new article of manufacture a metallic article having a coat of enamel of "an intensely alkaline nature" and "a mottled coat of alkaline enamel," respectively, and claim 8, which covers an enamel for surfaces having "a preponderance of alkaline constituents," each closing with the words "substantially as described," are void because they do not describe or cover the invention, if any, made by the patentee, since neither the completed enamel or "dip" of claim 8, niade from the ingredients and by the process described in the specification, nor the burned enamel on the completed article as so made are alkaline, nor do they contain a preponderance of alkaline constituents. Claims 5 and 7, covering as a new article of manufacture a steel article having a single coat of mottled enamel, and in the latter claim also metallic oxides extending from the outer surface of the enamel inwardly, are also void for lack of novelty, in view of the prior art.

Appeal from the Circuit Court of the United States for the Southern District of New York.

For opinion below, see 139 Fed. 643.

William Houston Kenyon, Robert N. Kenyon, and Walter F. Rogers (Steinhardt & Goldman, solicitors), for appellant.

Arthur v. Briesen and Louis Marshall (Guggenheimer, Untermeyer & Marshall, solicitors), for appellee National Enameling & Stamping Co.

Walter D. Emonds, for appellee Lalance & Grosjean Mfg. Co.

Before WALLACE and COXE, Circuit Judges, and HOLT, District Judge.

HOLT, District Judge. This suit was brought to restrain the alleged infringement of United States patent 527,361, dated October 9, 1894, granted to Hubert Claus for an improvement in enameling metal ware. The patent contains 13 claims. Claims 1 to 7, inclusive, are for the finished enameled article as a new article of manufacture. Claim 8 is for the enamel itself as prepared, and before it is applied to the surface of the metal. Claims 9 to 13, inclusive, are process claims. The court below held that claims 1, 2, and 3 were invalid, that claims 4, 5, 6, 7, and 8 were valid and infringed, and that claims 9, 10, 11, and 12 were not infringed. Claim 13 was not involved in this suit. The defendant's appeal brings up for review the portion of the decree which held that claims 4, 5, 6, 7, and 8 were valid and infringed.

The art of enameling metal is old. Many different formulas and substances are used to form the enamel, but the usual process is substantially as follows: Certain ingredients, usually a mixture of silica or sand, and of other substances having a fluxing property to produce glass when mixed with sand and subjected to heat, are mixed together mechanically. This mixture is called by enamelers the "mix." The mix is then subjected to a high degree of heat and fused, resulting in a vitrified or glassy mass. This is called the "frit." The frit is then put in a mill and ground fine, with a mixture of clay and water, resulting in a liquid paste. This is called the "dip." The metal article to be enameled is then dipped in the paste, dried, and subjected to a very high temperature in an oven or muffle. In some cases more than one dipping and burning takes place. The result is, if the operation is successful, a metal article with its surface covered with an adherent coat of metal.

Prior to about 1892 iron ware had been commonly used for enameling. It was until then cheaper than steel. About that time improved processes in the manufacture of steel were adopted, which resulted in making steel cheaper than iron. It is claimed by the complainants in this case that before Claus made the invention described in his patent there were no means known of successfully producing commercially satisfactory single-coated mottled steel enameled ware, that Claus' invention accomplished that result, and that Claus' patent was taken out for that invention.

The claims in the Claus patent involved in this appeal are as follows: "4. As a new article of manufacture, a metallic article having a coat of enamel of an intensely alkaline nature permeated by metallic oxides, substantially as described.

"5. As a new article of manufacture, a steel or homogeneous iron article having a single coat of mottled enamel on a partly oxidized metallic surface, substantially as described.

"6. As a new article of manufacture, a metallic article having a mottled coat of alkaline enamel and within said enamel metallic oxides extending from the outer surface of the enamel inwardly, substantially as described.

"7. As a new article of manufacture, a steel or homogeneous iron article having a mottled coat on a partly oxidized metallic surface and having metallic oxides extending from the outer surface of the enamel inwardly, substantially as described.

"8. An enamel for surfaces having therein a preponderance of alkaline constituents together with metallic oxides, substantially as described."

It will be observed that none of these claims is for a process, or for a formula, or for a mix. The first four of them are for a new article of manufacture; the fourth and sixth being for a metallic article of a certain kind, the fifth and seventh being for a steel or homogeneous iron article of a certain kind. Homogeneous iron is an equivalent term for steel. The fourth is for a metallic article having a coat of enamel of an intensely alkaline nature permeated by metallic oxides; the fifth is for a steel article having a single coat of mottled enamel on a partly oxidized metallic surface; the sixth is for a metallic article having a mottled coat of alkaline enamel and within said enamel metallic oxides extending from the outer surface of the enamel inwardly; and the seventh is for a steel article having a mottled coat on a partly oxidized metallic surface, and having metallic oxides extending from the outer surface of the enamel inwardly-each of these claims ending

with the qualification, so frequently used in patents, "substantially as described." It will be observed that the fourth and sixth of these claims apply to any metallic article whatever, whether made of steel or of any other metal capable of being enameled, and entirely irrespective of the use to which the article is to be put. They would apply equally to a metallic sign or a cuspidor or a culinary utensil. The kind of article described in these two claims is metallic, having a certain coat of enamel; that is, in the fourth claim, such a coat of an intensely alkaline nature permeated by metallic oxides, in the sixth claim, a mottled coat of alkaline enamel, and within said enamel metallic oxides. The fifth and the seventh claims refer to a steel or homogeneous iron article. In neither of these claims is the alkalinity of the enamel made the test, but the claim in the fifth is for a steel article having a single coat of mottled enamel on a partly oxidized metallic surface, and in the seventh is a steel article having a mottled coat on a partly oxidized metallic surface, and having metallic oxides extending from the outer surface of the enamel inwardly. The eighth claim is for an enamel for surfaces having therein a preponderance of alkaline constituents, together with metallic. oxides, substantially as described. It will be observed that in three of these claims the alkalinity of the enamel is made an essential part of the invention. In the fourth claim it is described as an enamel of an intensely alkaline nature, in the sixth claim as a coat of alkaline enamel, and in the eighth claim as an enamel having therein a preponderance of alkaline constituents. It is therefore important, in construing this patent, to ascertain, in the first place, what is meant by these terms respecting alkalinity, as used in the claims in the patent. The description of the invention shows, in substance, that Claus, the inventor, was a man without much knowledge of chemistry; that he had invented a mix for an erramel composed of ingredients, some of which contained alkaline ingredients, and others acid ingredients; that he supposed that chemically the alkaline ingredients largely preponderated in the mix; and that such a preponderance of the alkaline ingredients continued throughout the various changes which the ingredients in the mix were subjected to by being fused into the frit, and in the frit, after it had been ground and reduced to a pasty condition, being burned in the muffle, so as to produce the adherent enamel on the finished product. He specifies in his description of the process in the patent a particular formula, as follows: By weight, 130 parts feldspar, 125 parts borax, 70 parts quartz, 25 parts soda, and 17 parts saltpetre. The patent states, after giving this formula, that:

"It will be observed that certain alkaline ingredients, notably feldspar, are greatly in preponderance, thus imparting to the mass an intensely alkaline characteristic which, as above pointed out, is essential."

The proof shows, however, that chemically most of these substances are neither purely alkaline nor purely acid, but they contain various constituents, some of which are alkaline, some of which are acid, some of which constitute a nonalkaline base, and some of which are volatile constituents which disappear when the mix is subjected to the heat of the fluxing process. For instance, 130 pounds of feldspar, which Claus. refers to in his patent as notably an alkaline ingredient, is composed of 21.92 pounds of potash, an alkaline constituent, of 23.78 pounds of

alumina, a nonalkaline base, and of 84.30 pounds of silica, an acid constituent. One hundred and twenty-five pounds of borax is composed of 20.32 pounds of soda, an alkaline constituent, 45.74 pounds of boric oxide, an acid constituent, and 58.94 pounds of water, a volatile constituent, which evaporates and disappears in the fluxing process. The following table shows the actual chemical constitution of the mix described in the Claus patent:

It is apparent from a review of this patent that Claus applied the term "enamel" to the ingredients of the enamel at every stage of the manufacture. At certain places in the patent he applies it to the mix: in others to the frit; in others to the dip; and in others to the completed enamel on the manufactured article after the entire process is finished. The question, in construing the meaning, in clauses 4, 6, and 8 of this patent, of the references to alkalinity, is what Claus meant by the expression "an article of manufacture having a coat of enamel of an intensely alkaline nature," or "an article of manufacture having a mottled coat of alkaline enamel," or "an enamel for surfaces having therein a preponderance of alkaline constituents." It is proved that chemically the mix specifically described in Claus' patent does not have a preponderance of alkaline constituents. It has, as shown in the above table, 64.78 pounds of alkaline constituents, 200.04 pounds of acid constituents, and 23.78 pounds of alumina, which is not alkaline; and, as I understand, it is not claimed that the frit, or the dip, or the enamel burned on the surface of the completed article, chemically has any larger preponderance of alkaline constituents. But it is claimed that Claus was a practical enameler; that in the enameling art such substances as feldspar, borax, soda, and saltpetre are commonly designated as alkaline substances, being substances commonly used in various preparations which have a fluxing property when combined with sand or silica in the manufacture of glass or of glassy material; that there is a large preponderance of such materials over silica in his mix; and that,

therefore, his claims in this patent should be interpreted as meaning, so far as the description refers to the alkalinity of the enamel, an enamel made from a mix containing a large preponderance of such alkaline ingredients as feldspar. But in my opinion the difficulty with this theory of construction is that Claus did not apply for any patent for the formula described in his patent, or for a mix made of alkaline ingredients, or of such ingredients as feldspar. What he claims in claim 4 is a new article of manufacture (that is, a metallic article having a coat of enamel of an intensely alkaline nature), and in claim 6 a new article of manufacture (that is, a metallic article having a mottled coat of alkaline enamel), and in claim 8 an enamel for surfaces having therein a preponderance of alkaline constituents. I think that the language in all three of these claims, so far as it relates to the test of alkalinity in the enamel, must relate, in the fourth and sixth claims, to the burned enamel on the completed article of manufacture, and in the eighth claim to the enamel in the condition of the dip as it is prepared to be applied to the surface of the metal to be enameled. The rule is fundamental, in the construction of patents, that the claim in the patent is the measure of the invention. The specification may be referred to to explain any ambiguity in the claim, but it cannot be referred to for the purpose of expanding or changing the claim. Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 24 L. Ed. 344; McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800. The requirement of the patent law that a patentee shall claim in his patent the exact invention is not only to enable the public to use it after the term of the patent has expired, but is also for the purpose of enabling any one to determine what the invention is, which is protected by the patent, and what processes which are not protected by the patent may be used in the same manufacture. A person who discovers a new and useful invention does not obtain a monopoly under the patent laws unless he claims his invention in his patent. Even if he describes his invention in the specifications, and then claims as his invention something he has not invented, his patent is good for nothing. In this case, if a man wished to go into the business of making enameled ware, and examined the Claus patent to see what it claimed and what he would infringe, he would find in the claims under consideration, assuming the Claus patent to be valid, that his manufactured article, when completed, must not have upon it a coat of enamel of an intensely alkaline nature, or a mottled coat of alkaline enamel, and he would find that, in preparing his enamel, when it was ready to be applied to the surface of the metal, it must not have therein a preponderance of alkaline constituents. But in many patents taken out before 1893, and in common practice, the enamel, when prepared for the dip, and on the completed articles, had no preponderance of alkaline constituents. So far as Claus' claims under consideration are concerned, they would not be infringed by any other manufacturer using the very formula described in the Claus patent, or any other formula in which there was a preponderence of such articles as feldspar, or of articles which may have been commonly known in the business as alkaline, but which in fact did not contain a preponderance of alkaline constituents in a chemical sense.