In a suit in equity brought on letters patent No. 348,073,
granted August 24, 1886, on an application filed March 22, 1886, to
John T. Underwood and Frederick W. Underwood, for a "reproducing
surface for type-writing and manifolding," the claim being for
"A sheet of material or fabric coated with a composition
composed of a precipitate of dye matter, obtained as described, in
combination with oil, wax, or oleaginous matter, substantially as
and for the purposes set forth,"
it appeared that letters patent No. 348,072, had been granted to
the plaintiffs August 24, 1886, on an application filed March 22,
1886, the claim of which was for
"The coloring composition herein described for the manufacture
of a substitute for carbon-paper, composed of a precipitate of dye
matter, in combination with oil, wax, or oleaginous matter,
substantially as set forth."
The suit was not brought on No. 348,072. The only difference in
the two patents was that No. 348,073 was for spreading upon paper
the composition described in No. 348,072.
Held that, in
view of earlier patents and publications, there was no novelty in
taking a coloring substance already known and applying it to paper;
that the omission to claim in No. 348,073, the composition of
matter described in it was a disclaimer of it, as being public
property, and that there was no invention in applying it to paper,
as claimed in No. 348,073.
The case is stated in the opinion.
Page 149 U. S. 225
MR. JUSTICE BLATCHFORD delivered the opinion of the court.
This is a suit in equity brought in the Circuit Court of the
United States for the Eastern District of New York by John T.
Underwood and Frederick W. Underwood, against Henry Gerber and
Anton Andreas, founded on the alleged infringement of letters
patent No. 348,073, granted to the plaintiffs August 24, 1886, on
an application filed March 22, 1886, for a "reproducing surface for
typewriting and manifolding."
The specification reads as follows:
"Our invention relates to an improved reproducing surface,
adapted to be employed for obtaining copies of typewriting, or
other printed or written impressions by means of a typewriter or
other printing device, or by the employment of a stylus or other
writing means."
"Our improved transfer surface is spread upon a sheet or
vehicle, and when so applied is adapted to be employed in place of
the articles of trade commonly known and designated as 'carbon
paper' or 'semicarbon paper,' which are employed by typewriters and
others to produce copies of impressions either obtained by a
machine or by a stylus, or other writing means."
"[In carrying out our invention, we employ, in the manufacture
of our improved transfer service, dyewood solutions, or their
active principles, which we filter and precipitate with alkalies
and mineral salts, or with alkalies, acids, and mineral salts, or
with acids or alkalies alone. After the solution has been filtered,
the precipitate is removed from the filtering device and dried. The
precipitate is then mixed with lard oil and wax, or their
equivalents, and the mixture is then ground together in a warm
state. "
Page 149 U. S. 226
"The dye solutions we prefer to employ are obtained from logwood
or haematoxylin, the active principle of logwood, Brazil wood,
sapan wood, peach wood, madder, or its active principle,
alizarine."
"The proportions we find to answer well in producing our
improved surface are as follows: take one pound of extract of
logwood and dissolve the same in one gallon of water, then add to
the solution one pound of soda and one pound of mineral salt, using
one of the salts of iron or copper, preferably sulphate of copper.
The mixture thus obtained is then placed in a filter. After the
solution has been filtered, the precipitate is removed from the
device employed
for filtering, and
then dried,
after which the precipitate is ready for use. To every two
pounds of precipitate thus obtained we add one pound of oil and one
pound of wax, and then grind the mixture, in a warm state, in what
is commonly known as a 'paint' or other suitable grinding mill. The
heated mixture thus obtained is
then applied to tissue
paper, or other suitable paper or fabric by means of a sponge or
other suitable transferring device."
"The paper or fabric to which our improved surface is to be
applied is placed upon a heated table, by preference formed of
iron, and heated by steam; but this may be varied."
"In place of employing oil or wax, or both combined, we can
employ any other suitable oleaginous matter or combination of
oleaginous matter, having equivalent, or approximately equivalent,
properties.]"
The claim is as follows:
"A sheet of material or fabric coated with a composition
composed of a precipitate of dye matter, obtained as described, in
combination with oil, wax, or oleaginous matter, substantially as
and for the purposes set forth."
The answer sets up as defenses want of novelty and
noninfringement. There was a replication, proofs were taken, and
the case was brought to a hearing before Judge Lacombe, who entered
a decree dismissing the bill. His opinion is reported in 37 F. 682.
The plaintiffs have appealed to this Court. Since the appeal was
taken, Frederick W. Underwood
Page 149 U. S. 227
has died, and John T. Underwood and Hannah E. Underwood, as his
executors, have been substituted as co-appellants with the
surviving appellant, John T. Underwood.
Among the proofs introduced by the defendants was a patent, No.
348,072, granted by the United States to the same persons to whom
No. 348,073 was granted, dated August 24, 1886, on an application
filed March 22, 1886, the specification of which states as
follows:
"Our invention relates to the process of producing a transfer
surface adapted to be employed upon a sheet or vehicle to take the
place of the articles of trade commonly known and designated as
'carbon papers' or 'semicarbon papers,' which are employed by
typewriters or others to produce copies of impressions either
obtained by a machine or by a stylus, or other writing means."
Then the specification proceeds in the same words that are
contained in brackets in the foregoing specification of No.
348,073, leaving out the words that are in italics, and changing
the word "paint" to "paint mill."
The claim of No. 348,072 is as follows:
"The coloring composition herein described for the manufacture
of a substitute for carbon paper, composed of a precipitate of dye
matter, in combination with oil, wax, or oleaginous matter,
substantially as set forth."
This suit was not brought on No. 348,072. The defendants have
made the composition of matter described in both of the patents,
and have combined paper with it, as indicated in No. 348,073. The
only difference in the two patents is that No. 348,073 is for
spreading upon paper the composition described in No. 348,072.
The opinion of the circuit court says that in view of the
earlier patents and publications put in evidence, it was difficult
to see what novelty or invention there was in taking a coloring
substance already known, and applying it to paper; that if No.
348,072 had been granted to some person the day before the
plaintiffs applied for No. 348,073, the latter would clearly be
void for want of novelty or invention; that if No. 348,072 were
held by an assignee of the plaintiffs, near or remote, he could not
be held as an infringer of No. 348,073;
Page 149 U. S. 228
that an assignee of No. 348,072 could not be so held except for
the combination of paper with the coloring substance for the
purpose named; that such a combination was old; that the plaintiffs
insisted that their position was the same as if they held a patent
with two claims, one for the composition of matter producing the
coloring substance and the other for the combination of that
substance with paper; that this might be so if they could be
considered as holding both of the patents, but in the suit, they
had abstained from declaring on No. 348,072, or even referring to
it; that its issue was known to the court only through the
defendants, who set it up in defense; that the plaintiffs based
their claim to a monopoly solely upon No. 348,073; that, as that
patent might stand or fall, so the case which they made out upon
their bill must also stand or fall; that the holders of No. 348,073
must submit it to a comparison with No. 348,072, as if the latter
patent were outstanding; that thus at the time when No. 348,073 was
issued, the composition of matter which enters into the combination
with paper was known, and the right to exclude all persons from
making such composition was conferred upon the holder of No.
348,072; that the right to exclude all persons from combining paper
with that composition was conferred upon the holders of No.
348,073, but in view of the state of the art, such a grant was
void; that the combination which No. 348,073 sought to cover was
not patentable; that this suit, being based upon that patent alone,
must therefore fail, and that to the holder of No. 348,072, whoever
he might be, belonged the right to exclude all others from making
the new composition of matter, the only invention which (if the
other issues in the case were decided against the defendants) was
sufficiently novel to warrant the granting of letters patent.
This opinion was filed February 13, 1889, and on March 20, 1889,
the plaintiffs moved the court for leave to amend their bill and to
take further proofs. The court made an order on that day that on
the payment of the defendants' costs on the final hearing, the
plaintiffs should have leave to amend their bill by the insertion
of apt words whereby they
Page 149 U. S. 229
should allege their ownership, and the infringement by the
defendants of letters patent No. 348,072; that on the service of
the amended bill, the defendants should answer, plead, or demur,
and after replication, proofs should be taken, strictly limited to
the questions arising on No. 348,072, and the case should stand for
final hearing on all the issues; but that if the plaintiffs failed
to pay such costs within ten days after taxation, or failed to file
their amended bill within ten days after paying such costs, the
bill should be dismissed. The plaintiffs did not pay such costs or
amend their bill, and the decree of dismissal was entered on April
26, 1889.
We are of opinion that the decree of the circuit court must be
affirmed. There was no patentable novelty or invention, in view of
the earlier patents and publications put in evidence, in applying
an existing coloring substance to paper.
In the English patent granted to Ralph Wedgwood in 1806, there
is described a carbonated paper as follows:
"I make use of a prepared paper, which I call 'duplicate paper.'
This is made by thinly smearing over any kind of thin paper with
any kind of oil, preferring those kinds of oil which are least
liable to oxygenizement, or to be evaporated by heat."
And it is said:
"The ink made use of in this mode of writing consists of carbon,
or any other coloring substance, and finely levigated in any kind
of oil. . . . Or coloring matter, of any kind, and in any other
medium or vehicle, may be used, provided that medium be such as
will admit of the coloring matter's being transferred to the
duplicate and writing paper. Some coloring substances may likewise
be used without any medium or vehicle."
In the English patent granted to Charles Swan and George
Frederick Swan in February, 1856, a black coloring matter is
described, applicable to the purposes of writing, dying, or
staining, and it is said that the inventors employ an extract of
logwood, treated with bichromate of potash or with perchloride of
mercury, subcarbonate of potash, chlorate of potash, and spirits of
ammonia, and also
"the said coloring matter may be obtained in a liquid form by
introducing the salts above mentioned into a liquid extract of
logwood and
Page 149 U. S. 230
straining or otherwise purifying the fluid in any suitable
manner, or the said coloring matter may be obtained in a solid form
by combining the aforesaid salts with a solid preparation of
extract of logwood or by evaporation or distillation from the
liquid coloring matter above described, and the solid coloring
matter may be kept on hand till required, and reduced to a liquid
form by dilution with any suitable proportion of water. And the
coloring fluid obtained in any of the modes hereinbefore set forth,
in the form of an ink, may be converted into a copying fluid by the
addition of any saccharine or other thickening ingredients hitherto
employed or which may be found applicable. It may also be obtained
from the solid coloring matter by any suitable process."
The United States patent granted to Charles Cowan May 4, 1869,
for an improvement in the preparation of copying paper, says:
"I first prepare a mixture of the following ingredients: boiled
linseed oil, two parts; spirits of turpentine, one part; copal
varnish, one part. With this compound I smear the paper thinly and
evenly on one side, and allow it to soak and dry for about half an
hour. Then I apply the coloring matter, which I prepare as follows:
for black, I take ivory black, four parts; pure black lead, four
parts; Prussian blue, one part."
He then gives sundry recipes for different colors, and says: "My
copying paper is applicable to making copies of letters, designs,
or characters of any desired description."
In
Miller v. Brass Co., 104 U.
S. 350,
104 U. S. 352,
it is said:
"The claim of a specific device or combination, and an omission
to claim other devices or combinations apparent on the face of the
patent, are in law a dedication to the public of that which is not
claimed. It is a declaration that that which is not claimed is
either not the patentee's invention or, if his, he dedicates it to
the public."
In
Mahn v. Harwood, 112 U. S. 354,
112 U. S.
360-361, it is said:
"The taking out of a patent which has (as the law requires it to
have) a specific claim is notice to all the world, of the most
public and solemn kind, that all those parts of the art, machine,
or manufacture set out and described in the specification,
Page 149 U. S. 231
and not embraced in such specific claim, are not claimed by the
patentee -- at least not claimed in and by that patent. . . . S o
far as that patent is concerned, the claim actually made operates
in law as a disclaimer of what is not claimed."
As No. 348,073 does not claim the composition of matter,
although it describes it, that composition must be regarded as
disclaimed and as being public property, and there was no invention
in applying it to paper, as claimed in the patent sued on.
Decree affirmed.