Lane v. Levi , 21 App. D.C. 168 ( 1903 )

Mr. Justice Shepard

delivered the opinion of the Court:

1. The appellant is not in a position to avail himself of his first assignment of error, which is founded on the failure of the bill to sufficiently describe the subject-matter of the complainant’s patent of which infringement is charged.

For whilst it would seem that the bill was defective in that respect, the defendant neither demurred nor objected in any form on the preliminary hearing, but admitted the existence of the patent, of the contents of which he was evidently advised, and denied that he was making and vending the composition claimed thereunder by the complainant. Moreover, on that hearing the learned justice who granted the injunction was called upon to consider certified copies of the patent, offered by the complainant, and of the proceedings in the Patent Office, preliminary to its issue, offered on behalf of the defendant. Both of these papers have also been presented for consideration on this-appeal. For these reasons the point will not be considered. Before the final hearing the parties will have ample opportunity to amend if they so desire.

2. Whether the allegations of the bill in respect of the validity of the patent are sufficient to give jurisdiction in equity is likewise an immaterial question on this appeal.

No suggestion of the point was made on the hearing below; nor could it have been made, with any show of reason or consistency, in view of the answer admitting its validity as covering the composition of the complainant, and seeking to avoid its effect by the allegation of substantial differences between the two compositions which relieve that of the defendant of the charge of infringement. 3 Robinson on Patents, Sec. 1189; Walker on Patents, Sec. 673.

3. The only question that is directly involved in this appeal arises under the third and related assignments of error. It is whether, under the facts disclosed by the respective pleadings of the parties, the supporting affidavits, and the proceedings in the Patent Office, the manufacture and sale of the defendant’s composition constitute such an apparent infringement of the complainant’s patent as to warrant the grant of the temporary injunction?

A patentable compound or composition of matter is one that is produced by the intermixture of two or more specific ingredients, and possesses properties pertaining to none of those ingredients separately, thereby accomplishing a new and useful result. The patentee who seeks protection for such a composition must describe with clearness and precision the component parts thereof, the process of their intermixture, and the result. Tyler v. Boston, 7 Wall. 327, 330; 1 Robinson Patents, Sec. 192; 2 Idem, Secs. 500 and 532.

The identity of a composition depends, in general, upon the identity of its ingredients and of their co-operative law, as well as upon the identity of the properties and effect of the composition as a whole. 1 Robinson on Patents, Sec. 300.

The addition, however, of substances that do not, by their interaction, change the properties, effect, or usefulness of the composition, does not destroy its identity. The composition is the same if its properties substantially remain. 1 Robinson on Patents, Sec. 195; Klein v. Russell, 19 Wall. 433.

Nor is a patent for a compound any less infringed through the substitution of one of its ingredients by another substance well known in the arts at the date of the patent, as endowed with the same capacity, and which, therefore, does not change its properties and effect. 1 Robinson on Patents, Sec. 247; Fuller v. Yentzer, 94 U. S. 288, 297; Rowell v. Lindsay, 113 U. S. 97, 102; Fay v. Cordesman, 109 U. S. 408, 420; Hubbell v. U. S., 179 U. S. 77, 82.

On the other hand, it is an undoubted principle of the patent law that the omission of one of a combination of old parts distinctly claimed in the patent is not an infringement.

The combination as claimed is an entirety and disappears with the removal of one of its elements. Prouty v. Ruggles, 16 Pet. 336, 341; Vance v. Campbell, 1 Black, 427; Klein v. Russell, 19 Wall. 433, 465; Dunbar v. Myers, 94 U. S. 187, 202; Rowell v. Lindsay, 113 U. S. 97, 102; Wright v. Yuengling, 155 U. S. 47, 52.

Having made such a claim a patentee is not afterward at liberty to prove that the described part is not essential or material to the operation of his patented combination or composition. Vance v. Campbell, 1 Black, 427, 429; Fay v. Cordesman, 109 U. S. 408, 420. In the case last cited it was said by Mr. Justice Blatchford in words that have since been repeatedly approved: “ The claims of the patent sued on in this case are claims for combinations. In such a claim if the patentee specifies any element as entering into the combination, either directly by the language of the claim, or by such a reference to the descriptive part of the specification as carries such element into the claim, he makes such element material to the combination, and the court cannot declare it to be immaterial. It is his province to make his own claim and his privilege to restrict it. If it be a claim to a combination, and be restricted to specific elements, all must be regarded as material, leaving open only the question whether an omitted part is supplied by an equivalent device or instrumentality. Water Meter Co. v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640.” See also Sargent v. Hall Safe and Lode Co., 114 U. S. 63, 86; Electric Signal Co. v. Hall Signal Co., 114 U. S. 87, 98; Yale Lock Co. v. Sargent, 117 U. S. 373, 378; McClain v. Ortmayer, 141 U. S. 419, 425; Royer v. Coupe, 146 U. S. 524, 530; Wright v. Yuengling, 155 U. S. 47, 52; Hubhell v. U. S., 179 U. S. 77, 82.

The rule that a patentee shall not be heard to say that he has claimed more than is necessary to the successful operation of his combination is even more strictly applied in those cases where, by reason of the narrowness of his invention, the proper authorities of the Patent Office have, by suggestion and reference, induced him to particularity of description both in specifications and claims. Knapp v. Morss, 150 U. S. 221, 229; Hubhell v. United States, 179 U. S. 77, 80.

Applying the test of the foregoing principles to the facts disclosed by the pleadings and accompanying exhibits and records of the Patent Office, we are of the opinion that the injunction pendente lite ought not to have been granted.

The records show that the complainant applied for a patent for a furniture polish, consisting of an intermixture of paraffin oil, refined carbon oil, distilled water, butter of antimony, alkanet root, and oil of mirbane.

The application was first rejected by the primary examiner, whose communication of the fact contains the following : “ The essence of applicant’s invention appears to consist in a composition of two petroleum distillates, c carbon oil ’ and ‘ paraffin oil,’ together with butter of antimony. Butter of antimony is a common ingredient in furniture polishes, as shown. * * * Patent to Tomoor * * * shows it common to employ the two petroleum distillates in a furniture polish. In view of the prior art, therefore, it would seem that applicant’s composition covers merely an aggregation of agents commonly used in furniture polishes, and for this reason the claim is rejected.”

In a subsequent communication the applicant was required to set out definitely whát he meant by “ coal oil ” and “ paraffin oil,” and to give their density in “ Degrees Baume.” He was also required to explain the advantages of distilled water over ordinary water.

After maldng the required amendments and explanations applicant received his patent on February 18, 1902. The description of his process is thus stated therein:

“ In carrying out my invention I employ paraffin oil, refined carbon or coal oil, butter of antimony, and distilled water, thoroughly mixed with a suitable coloring and perfume. These ingredients are combined in the following proportions stated, viz.: distilled water, 11 gallons; paraffin oil (25° gravity, Baume), 80 gallons; coal oil or refined carbon oil (150° fire-test proof, 16° to 18° gravity, Baume), 6 gallons; butter of antimony, 2 pounds. These ingredients are thoroughly mingled by agitation, and then is added a coloring and a perfume consisting of the following ingredients in the proportions stated, viz.: Alkanet root (coloring), 10 ■ pounds; oil of mirbane (perfume), as desired.”

“ The element of coal oil in the compound thins the paraffin oil and cuts and thins the whole composition. The element of water when mixed with the other ingredients forms a perfect cleaner, and after the application a surface is produced of superior gloss of great durability.

“ Distilled water is employed because all foreign matter is-eliminated by distillation, and as it is important that the compound should be as clean and pure as possible. Ordinary wTater will not produce the same results.”

The claims of the patent read as follows:

“ 1. The herein-described composition of matter, consisting of distilled water, paraffin oil, coal oil, butter of antimony, and a coloring of alkanet root, substantially as and for the-purpose specified.

“ 2. The herein-described composition of matter, consisting of distilled water, fourteen gallons, paraffin oil' eighty gallons, coal or refined carbon oil six gallons, butter of antimony two pounds, alkanet root ten pounds, and oil of mirbane as desired, substantially as and for the purpose specified.”

Now it appears from the allegations of the bill that the defendant’s composition contains no “ kerosene or coal oil ” and the analysis of defendant’s composition, given in the affidavit of the chemist, shows no kerosene oil, but states that the boiling point of the liquid after separation of the water indicated an oily base of paraffin oil.

The bill goes on to allege, however, and is supported by the affidavit of the chemist, that “ the kerosene or coal oil is no essential part of his invention and the use of it in the composition has nothing to do with the quality of the compound as a polishing fluid. Its purpose is to thin the alkanet root that is used in a powdered form in order that its coloring material may quickly pass into the compound.” Whilst this may be true it is nevertheless inadmissible, as we have seen, because of the specific statement of a fixed proportion of carbon oil as one of the ingredients of the composition described in the specification without qualification,, and likewise carried into the two claims.

Moreover, it is in direct conflict with the further statement in the specification that “ the element of coal oil in the compound thins the paraffin oil and cuts and thins the whole composition

That the coal oil as described was regarded in the patent office as an essential ingredient of the polish sought to be patented is clearly shown in the statement of the examiner hereinabove quoted.

The polish of the defendant, though resembling that of the patent, cannot be treated as an infringement because of its omission of this ingredient that is a material element of the composition of the patent. It follows that the order granting the injunction must be reversed, with costs, and the cause remanded for further proceedings not inconsistent with this opinion. It is so ordered. Reversed.