1. Product claims of Patent No. 1,889,429, to Weigand and
Venuto,
"1. Substantially pure carbon black in the form of commercially
uniform, comparatively small, rounded, smooth aggregate having a
spongy or porous interior. 2. As an article of manufacture, a
pellet of approximately one-sixteenth of an inch in diameter and
formed of a porous mass of substantially pure carbon black,"
held bad for indefiniteness. P.
317 U. S.
232.
2. A patentee may not broaden his claims by describing the
product in terms of function. P.
317 U. S.
234.
3. An invention must be capable of accurate definition, and it
must be accurately defined, to be patentable. P.
317 U. S.
237.
125 F.2d 255, 126 F.2d 3, reversed.
Certiorari, 316 U.S. 657, to review the reversal of a judgment,
37 F. Supp. 779, dismissing a suit for infringement of a
patent.
MR. JUSTICE JACKSON delivered the opinion of the Court.
Respondent sued for infringement of patent No. 1,889,429, issued
to Weigand and Venuto, relating to carbon black in aggregated form
and a process for its conversion
Page 317 U. S. 229
to that form. Its complaint was particularized to apply only to
claims 1 and 2 of the patent, which are product claims, and not
process claims. The District Court found these claims invalid as
lacking novelty and invention, and because they failed to define
the product asserted to have been invented in such clear, definite,
and exact terms as required by patent law. It also found no
infringement. 37 F. Supp. 779. The Circuit Court of Appeals held to
the contrary on each of these propositions and reversed. 125 F.2d
255. The importance of the questions in the case prompted us to
grant certiorari. 316 U.S. 657.
Carbon black has been manufactured from natural gas since the
1870's. At present, the most extensive of its many uses is as a
binder in automobile tires. [
Footnote 1] The particles of carbon black in its original
form are extremely fine and dispersable. They are smaller than the
length of a light wave, having a diameter of about one-millionth of
an inch. One pound of them is said to present surfaces sufficient
to cover 12 or 13 acres. Unprocessed carbon black weighs but ten
pounds or less per cubic foot.
The fineness and dispersability of the substance causes it to
raise in clouds of dust when handled, with consequent losses,
discomfort to workmen, and difficulties in manufacturing processes.
Since 1915, when carbon black first came to be widely used in the
manufacture of rubber, many attempts have been made to cope with
the dust problem. In many cases mixing rooms were segregated at
great expense from other parts of rubber factories, and the mills
where the carbon black was mixed into the rubber were enclosed to
confine the clouds of dust.
Efforts were made to prevent, as well as to control, the dust.
Compressing the carbon black to force out the
Page 317 U. S. 230
air and increase its density met with some, but only
indifferent, success. Attempts were made to prevent dust by the use
of binders in the carbon black to make the particles adhere. These
were not satisfactory, since the binders were unwanted and
sometimes injurious substances, and, at best, foreign matter to
rubber formulas. Wetting and drying the carbon black also proved
unsatisfactory, since this caused the particles to adhere in such
manner that the aggregate product was not sufficiently friable
(
i.e., breakable) and dispersable when mixed with other
substances.
Weigand and Venuto experimented extensively, and the patent in
litigation is the outcome. They mixed carbon black with a liquid
such as water; displaced the water with another liquid such as
gasoline which was substantially immiscible with the first and had
a greater ability to wet the carbon particles; agitated the mixture
until the water was substantially free from carbon, and finally
removed the gasoline by evaporation. As it apparently must in order
to assert invention and infringement, respondent argues that
Weigand and Venuto solved the problem of carbon-black dust by a
product consisting of carbon black aggregates formed without the
use of any binder, sufficiently hard and flowable to prevent the
formation of dust, yet sufficiently friable and dispersable for use
as a component in the manufacture of rubber and other products.
Manufacture was undertaken, one Glaxner being employed to put
into use the process taught by this patent. He soon bettered his
instruction by devising a simpler and much less expensive process
employing but one liquid. His process was the subject of another
patent, [
Footnote 2] and at
once superseded that of the patent in suit, which thereupon became
obsolete. Several other processes to achieve
Page 317 U. S. 231
very similar results, including those used by the petitioner,
have also been developed and patented. [
Footnote 3] Commercial success of respondent's process was
short-lived, and the really impressive commercial success has been
achieved since the development of the Glaxner process. [
Footnote 4]
The product claims which respondent says the petitioner's
product infringed, regardless of the process by which it was made,
read as follows:
"1. Sustantially [
sic] pure carbon black in the form of
commercially uniform, comparatively small, rounded, smooth
aggregates having a spongy or porous interior. 2. As an article of
manufacture, a pellet of approximately one-sixteenth of an inch
in
Page 317 U. S. 232
diameter and formed of a porous mass of substantially pure
carbon black."
Section 4888 of the Revised Statutes, 35 U.S.C. § 33, requires
that the applicant for a patent "shall particularly point out and
distinctly claim the part, improvement, or combination which he
claims as his invention or discovery." As the Court recently stated
in
General Electric Co. v. Wabash Corp., 304 U.
S. 364,
304 U. S.
369:
"Patents, whether basic or for improvements, must comply
accurately and precisely with the statutory requirement as to
claims of invention or discovery. The limits of a patent must be
known for the protection of the patentee, the encouragement of the
inventive genius of others, and the assurance that the subject of
the patent will be dedicated ultimately to the public. The statute
seeks to guard against unreasonable advantages to the patentee and
disadvantages to others arising from uncertainty as to their
rights. The inventor must"
"inform the public during the life of the patent of the limits
of the monopoly asserted, so that it may be known which features
may be safely used or manufactured without a license and which may
not."
"The claims 'measure the invention.' . . . In a limited field,
the variant must be clearly defined."
The District Court found that the claims did not meet these
requirements, and the Circuit Court of Appeals held that they did.
Much testimony was directed to this question at the trial, and it
has been discussed in the briefs and argument in this Court.
Petitioner seeks reversal on the grounds of anticipation and
noninfringement. The scope and sufficiency of the claims in suit
necessarily present themselves as preliminary problems in the
resolution of these ultimate issues. The courts, in determining the
questions of invention and infringement brought to them by
respondent, no less than the parties litigant, need and may insist
upon the precision enjoined by the statute.
Page 317 U. S. 233
To sustain claims so indefinite as not to give the notice
required by the statute would be in direct contravention of the
public interest which Congress therein recognized and sought to
protect.
Cf. Muncie Gear Works v. Outboard Marine & Mfg.
Co., 315 U. S. 759.
Here, as in many other cases, it is difficult for persons not
skilled in the art to measure the inclusions or to appreciate the
distinctions which may exist in the words of a claim when read in
the context of the art itself. The clearest exposition of the
significance which the terms employed in the claims had for those
skilled in the art was given by the testimony of Weigand, one of
the patentees, whom respondent called as its witness. Weigand was
employed as Director of Research of the Columbian Carbon Company,
whose stock respondent owned, and for whom respondent acted as sole
selling agent. His testimony in this respect was given principally
upon cross-examination, but it was in no wise impeached or
contradicted, and is borne out by that of other witnesses. From it,
we learn that "substantially pure" refers not to freedom from ash
and other impurities, but rather to freedom from binders;
"commercially uniform" means only the degree of uniformity demanded
by buyers; "comparatively small" is not shown to add anything to
the claims, for nowhere are we advised what standard is intended
for comparisons; "spongy" and "porous" are synonymous, and relate
to the density and gas content of aggregates of carbon black.
Although sponginess or porosity is not a necessary attribute of a
friable substance, it does contribute to the friability of
aggregates of carbon black. It is of value only in that regard. A
spongy or porous aggregate of carbon black may be so friable as to
permit of the formation of dust; and, on the other hand, it is
conceivable that it might not be sufficiently friable to mix
satisfactorily with other substances such as those used in the
manufacture of rubber products. The correct degree of friability
can be ascertained
Page 317 U. S. 234
only by testing the performance of the product in actual
processes of manufacture of products of which carbon black is a
component. A "pellet" of carbon black is "a spheroidal shaped
aggregate that has substance and strength to it." For "strength"
"we have this rough and ready test: does it survive under gentle
rubbing of the fingers. I would not say that is an adequate test to
predicate rubber behavior on, but it is a rough and ready test;"
and if it responds to that test it is a pellet within the meaning
of the claim. Finally, what on first impression appears to be
reasonable certainty of dimension disappears when we learn that
"approximately one-sixteenth of an inch in diameter" includes a
variation from approximately 1/4th to 1/100th of an inch.
So read, the claims are but inaccurate suggestions of the
functions of the product, and fall afoul of the rule that a
patentee may not broaden his claims by describing the product in
terms of function. Holland Furniture Co. v. Perkins Glue Co.,
277 U. S. 245,
277 U. S.
256-258;
General Electric Co. v. Wabash Corp.,
supra, at
304 U. S.
371-372.
Respondent urges that the claims must be read in the light of
the patent specification, [
Footnote
5] and that, as so read, they are sufficiently definite.
Assuming the propriety of this
Page 317 U. S. 235
method of construction,
cf. General Electric Co. v. Wabash
Corp., supra, at
304 U. S.
373-375, it does not have the effect
Page 317 U. S. 236
claimed, for the description in the specification is itself
almost entirely in terms of function. It is therefore unnecessary
to consider whether the rejection of certain claims [
Footnote 6] by the Patent Office might, in
turn, deprive the specification of any curative effect in this
regard.
Cf. Schriber-Schroth Co. v. Cleveland Trust Co.,
311 U. S. 211;
Exhibit Supply Co. v. Ace Patents Corp., 315 U.
S. 126.
The statutory requirement of particularity and distinctness in
claims is met only when they clearly distinguish what is claimed
from what went before in the art, and clearly circumscribe what is
foreclosed from future enterprise. A zone of uncertainty which
enterprise and experimentation may enter only at the risk of
infringement claims would discourage invention only a little less
than unequivocal foreclosure of the field. Moreover, the claims
must be reasonably clear-cut to enable courts to determine whether
novelty and invention are genuine. Congress has provided that a
patent may be awarded only for a new and useful manufacture "not
patented or described in any printed publication in this or any
foreign country, before his invention or discovery thereof."
R.S.
Page 317 U. S. 237
§ 4886, 35 U.S.C. § 31. While we do not find it necessary to
consider questions of novelty and invention, in the view we take of
the claims in suit, a mere reading of prior art patents shows how,
if they are read with the liberality and inclusiveness claimed for
those in suit, they describe products, if not identical, at least
of confusing similarity. [
Footnote
7] Whether the vagueness of the claim has its source in the
language employed or in the somewhat indeterminate character of the
advance claimed to have been made in the art is not material. An
invention must be capable of accurate definition, and it must be
accurately defined, to be patentable.
Cf. General Electric Co.
v. Wabash Corp., supra, at
304 U. S.
372-373.
We are of opinion that the claims in litigation are bad for
indefiniteness, and have no occasion to consider questions of
novelty, invention, and infringement. The judgment below is
Reversed.
[
Footnote 1]
Carbon black is also used as an ingredient in various rubber,
wax, and resin compositions, phonograph records, paints and
lacquers, printers' ink, and carbon paper.
[
Footnote 2]
Glaxner, Re. No. 21,379.
[
Footnote 3]
Billings & Offutt, Re. No.19,750; Nos. 2,039,766, 2,120,540,
2,120,541; Price, No. 2, 127, 137; Heller & Snow, No.
2,131,686; Offutt, No. 2,134,950; Grote, Re. No. 21,390.
[
Footnote 4]
Commercial success may be gauged by reference to the following
statistics on the sales of pounds of carbon black aggregates:
----------------------------------------------------------------------
Sales by petitioner
Sales by --------------------------------------
Sales by
respondent "Extrusion "Sayre" "Cabot" Cabot Co.
Year process"* process** process*** "Cabot"
process
----------------------------------------------------------------------
1929 20,000
1930 164,000
1931 194,000 (Total gross sales price, about $2,000.)
1932 281,000 (In this year, the Weigand and Venuto process
was
superseded by the Glaxner process, which made
possible the elimination of a price premium.)
1933 800,000 8,000,000
1934 3,300,000 2,000 23,000,000
1935 15,000,000 84,875 3,656,294 39,000,000
1936 30,000,000 7,031,000 18,135,756 62,000,000
1937 44,000,000 26,205,000 680,363 11,928,742 58,000,000
1938 53,000,000 29,858,000 3,747,538 11,298,887 45,000,000
1939 97,000,000 48,578,000 17,752,439 11,533,200 73,000,000
----------------------------------------------------------------------
* In this process, carbon black mixed with water is forced
through small apertures, dried, and broken into short
cylinders.
** This process, like the Glaxner process, employs but one
liquid, water, and agitation.
*** This is a "dry" process, employing only agitation to cause
the particles of carbon black to adhere. It is the subject of a
number of patents, the first of which was applied for by Billings
and Offutt on July 18, 1932, and issued as No. 2,120,540.
Manufacture is under license of the Cabot company, patent
owner.
[
Footnote 5]
This states in pertinent part that:
"The main object of our invention is to secure carbon black
having the desired dispersive properties, greater density, freedom
from dust, freedom from gritty particles, less absorbed or occluded
gases, reduced oil absorption than the ordinary powder form, and
capable of considerable handling without crushing or dusting."
"
* * * *"
"This process, if carried out under certain conditions, causes
the carbon black to form into pellets which are hard enough to
stand any ordinary shipment or handling without dusting, flying, or
breaking down, and which, at the same time, are easily crushed by
moderate pressure, as between the fingers or by the pressures
commonly employed in the rolls of rubber compounding machinery,
printers ink mixers, and the like. The crushed particles have
substantially their original softness, and the material disperses
freely, without leaving any particles of undispersed carbon in the
material."
"While the pellet form is a very convenient form of the carbon
black, the shape of the particles is not the most important
characteristic of this novel carbon black."
"
* * * *"
"The pellets are very porous, of substantially spherical or
globular form, have a smooth somewhat lustrous outer surface which
is not easily broken by handling, are more compact than untreated
carbon, are fragile under light pressure, any may be easily reduced
to soft minute particles which cannot be told from the original
particles except that possibly they have a more unctuous feel. They
somewhat resemble lead shot, and may be rolled in the hand without
dirtying or dusting. Apparently, the outer surface portion or shell
of each pellet is slightly more compact than the inner part, but
still porous."
"In shipping or storing, we find that approximately twice the
number of pounds of these pellets can be placed in a container of a
given size than is the case with the untreated carbon black"
"
* * * *"
"There are various factors which enter into the process, and
these may be varied to get the pellets harder or softer or larger
or smaller. Among these factors are the thickness of the paste, the
amount of gasoline used, the adding of the gasoline in bulk or a
little at a time, speed of agitation, temperature, type of gasoline
used, and character of the carbon black."
"
* * * *"
"If small pellets are desired, a lesser amount of gasoline or
other liquid should be used in respect to the amount of water and
carbon, and greater agitation should be employed. To secure large
pellets, we use a larger amount of gasoline and slower agitation.
In practice, we do not consider a size larger than one-quarter of
an inch desirable. There are many kinds, grades or varieties of
carbon black, and often identification of the particular kind or
grade is difficult. With our improved process, the different kinds
or grades may be made into pellets of different sizes, so that
identification is facilitated -- for instance, very small pellets
may be made for printers ink, and larger ones for rubber, etc."
[
Footnote 6]
To meet objections of the examiner, the following product claims
were withdrawn in course of prosecution of the application:
"4. A pellet formed of (substantially pure) [added by amendment]
soft carbon black particles, the pellet being sufficiently hard to
withstand ordinary shipment or handling, but readily breaking down
to a fine state of subdivision upon the application of slight
pressure."
"8. Soft carbon black particles cohering in small masses of
substantially uniform size, and having smooth outer surfaces."
"2. Carbon black in the form of pellets of sponge-like or porous
structure."
"7. A carbon black pellet formed of soft carbon black, the
pellet having sufficient hardness to withstand ordinary shipment or
handling without dusting, but sufficiently fragile to permit
reduction to the original fine state of subdivision upon the
application of light pressure."
[
Footnote 7]
The prior Knowlton and Hoffman patent, No. 1,286,024, stated in
the specification that,
"Instead of using the lampblack in its natural condition, we
prepare and treat the fine powder so as to cause its concretion
into friable grains or small lumps, dry and substantially free from
dust, and, in this form, incorporate it with the rubber on the
roller mill . . . , the friability of the lumps or grains
permitting a uniform distribution of the filler throughout the
rubber."
Claim No. 7 of this patent is:
"The method of compounding rubber with lampblack which consists
in mixing the lampblack with water and a binder, producing a
granular condition, evaporating the water, and incorporating the
dry, granular lampblack with rubber on a heated mixing mill."
Claim No. 10 of the prior Coffin and Keen patent, No. 1,561,971
is:
"As a new article of manufacture, dried pulverulent material in
the form of very small individually dried friable globular masses
composed of lightly cohering particles of the material."