36 F. 110 | U.S. Cir. Ct. | 1888
This is a bill in equity to restrain the infringement of a patent, and to recover damages and profits. The patent sued on was granted to John H. Stevens, assignor of the complainant, (the Celluloid Manufacturing Company,) on the 19th day of December, 1882, and purported to be for certain new and useful improvements in the manufacture of pyroxyline, or nitro-cellulose. The principal improvement consists in the employment of certain substances as solvents or converting agents of pyroxyline or nitro-cellulose, in manufacturing compounds of that substance. The principal solvent heretofore used has been camphor, or a solution of camphor in alcohol. The patentee, in the specification, says:
“Heretofore the best compounds of pyroxyline, as well as the preferred solvents, have had camphor as an ingredient; and it was the object of my experiments to find new menstrua which are in themselves such active solvents of pyroxyline as to render the use of camphor unnecessary, and I have succeeded in this respect to the extent hereinafter set forth. My new group of active liquid solvents or converting agents comprises oil of spearmint, nitrate of methyl, butyric ether, valeric ether, benzoic ether,” etc.; naming 22 different substances.
The specification then proceeds to give directions'as-to the quantity of these ingredients to be used, and the manner of using them, stating, among other things, that they may be used in connection with each other, or with camphor or alcohol, or singly by themselves. The claim of the patent is in these words:
*111 “Wliat I claim herein as new and desire to secure by letters patent is: As an improvement in the art of manufacturing compounds of pyroxyline or ni-tro-ceilulose, the use of tho hereinbefore specified new group of active liquid solvents or converting agents, substantially as described.”
Tho patent being set forth in the bill by way of proferí, the defendant demurred, and for canse of demurrer stated that the alleged invention in the patent set forth and claimed is not a patentable invention for which letters patent could lawfully issue. It is argued, among oilier things, that the thing patented is neither an art, machine, manufacture, or composition of matter, but only a principle of nature, namely, the quality or power which certain substances have of dissolving pyroxyline; that the patentee professes to have discovered this power in these substances, and claims the exclusive right to use it, which is contrary to the well-settled rule that a principle cannot be patented; that the claim is quite as ohjectional as that of Prof. Morse to the exclusive use of electro-mag-netism for making or printing intelligible characters at a distance, which was rejected by the supreme court of the United States. To this it may be answered that natural principles and forces (so far as they are used) may form constituent elements of a process of manufacture which is clearly patentable. Morse discovered a certain method or process by which he could utilize the force of electro-magnetism in transmitting intelligible signs to a distance. Of this process he was entitled to a monopoly, even though tho particular instrumentalities might bo varied; but ho was not entitled to a monopoly of the force itself applied by other processes essentially different from his. The application of ibis rule was illustrated in Neilsou’s patent for the use of the hot blast in smelting. The effect of a hot blast in smelting iron ore is due to a principle of nature; but file mode of employing it by heating it in a receptacle between the blowing apparatus and the furnace was held to be patentable. Neilson v. Harford, Webst. Pat. Cas. 275, 371, 8 Mees. & W. 806. The use of a> new material in a process has been held patentable when a better or. cheaper result is produced, as pit coal instead of charcoal in smelting iron, (Dudley's Patent, Webst. Pat. Cas. 14;) and anthracite instead of pit coal, (Crane v. Price, Jd. 375, 5 Scott, N. R. 338, 4 Man. & G. 586; Curt. Pat. §§ 16, 18.) In certain cases, it is true, the substitution of one material for another in the same implement or machine has been held not to he patentable, where it was clear that the alteration required no invention, but merely the exercise of mechanical skill and judgment. Such was the ease of Hotchkiss v. Greenwood, 11 How. 248, where porcelain doorknobs (which were old) were affixed to the shank or spindle in the same manner as metallic knobs, the court held that this substitution was not a patentable invention. So in another case, tried before Justice Nelson, a patent was granted for covering a wooden button with tin, when the same thing had been done to a horn button half a century before, the use of wood instead of horn was held not to bo a pat-' entable invention. Anon., Id. 266. So in Hicks v. Kelsey, 18 Wall. 670, the court held that the substitution of an iron wagon-reach for a. wooden one of the same shape and form was no invention; that the ma
’ Now, we are not willing to say that there was no ingenuity or invention on the part of Mr. Stevens in discovering that the substances named in his patents are solvents of pyroxyline, and good substitutes for camphor. On the contrary, from the language of the specification, we infer that it was the result of much experiment and investigation. It is true that the mere discovery of the qualities possessed by these substances is not patentable; in other words, the qualities themselves canndt be patented. But the patent in question is not granted for the discovery, nor for the solvent quality, of the substances; it is granted for the “use” of the substances “in the art of manufacturing compounds of pyroxyline, substantially as described,” that is, as described and pointed out in the specification. The method there described is that, after the pyroxyline has been reduced to a fine pulp by grinding in some of the known machines, and freed from aqueous moisture in the usual way, and after the addition of any coloring matters or other ingredients desired, the solvents (which are liquid) are to be applied to the pyroxjdine (preferabljr by sprinkling or spraying over the mass) in the proportion of about two or three parts of solvent to two parts of pyroxyline; then left in a tight vessel for 12 hours or thereabouts, in order that the solvents may thorough^ permeate the mass; then to be worked or masticated in heated rolls, and thus formed into a homogeneous compound,'which compound is then pressed into blocks or sheets, and subjected to the seasoning or curing process, as is well understood. The product thus obtained will be susceptible of use in the manufacture of utensils and ornaments of different kinds, in the manner pointed out in the specification. This is the general process of manufacture with the new solvents discovered by the patentee, pointed out in the patent. Such a process is certainly susceptible of security by patent, if it be novel and useful, and if the process is, patentable. The employment of the newly-discovered solvents as a part of the process (being a still narrower claim) is also patentable. And it would seem that the result of the process is a different substance from that produced when camphor is the solvent used. The specification, it is true, intimates and concedes that certain parts of the process, were well known; but exactly what was well known, and what was not, does not appear. No former patents are exhibited in the bill. Perhaps, by the answer of the defendants and proofs taken in the case, it may be-made to appear that every part of the process, as a process, was known and used before, and that the only originality on the part of the patentee was the discovery of the fact that oil of spearmint and the other substances named are solvents of pyroxyline. Should this‘be so, the question would then be fairly presented whether the mere discovery of
The objection that the patent is multifarious, and for that reason void, we do not regard as tenable. We have never understood that the adaptability of many substances or instrumentalities, for effecting the object of an invention, vitiated a patent. The conversion of pyroxyline into a compound suitable for certain purposes by means of applied solvents, manipulated in a certain way, has a unity of purpose and effect sufficient to answer the objection.
We do not deem it necessary to follow the reasons assigned for the demurrer in greater detail. We are satisfied that the demurrer should be overruled, and that the defendants should be required to answer the bill of complaint, and it is so ordered.