A patent cannot be sustained when the theory and method are
introduced for the first time in unverified amended
specifications.
The patent for a tip for acetylene gas burners, and for the
process of burning acetylene gas, held to be void by the court
below and by this Court because the tip was not new, the
description too indefinite, the amended specification, which were
unverified, brought in new matter and the claim for processes so
called were only claims for the functions of the described tip.
155 F. 731 and 155 F. 740 affirmed.
The facts are stated in the opinion.
MR. JUSTICE HOLMES delivered the opinion of the Court.
These are bills in equity, brought by the petitioners to
restrain the infringement of letters patent No. 589,342, issued to
the assignee of Edward J. Dolan, and dated August 31, 1897. The
patent was held invalid by the Circuit Court of Appeals for the
Sixth Circuit.
American Lava Co. v. Steward, 155 F. 731
and 740. It had been sustained by the Circuit Court of Appeals for
the Second Circuit,
Kirchberger v. American Acetylene Burner
Co., 128 F. 599, and a writ of certiorari was granted by this
Court to the first-mentioned circuit court of appeals.
The patent, so far as it comes in question here, is for a tip
for acetylene gas burners and for the process of burning
Page 215 U. S. 162
acetylene gas in the mode set forth. The court below held that
the tip was not new, that the description was too indefinite, that
the amended specifications brought in entirely new matter not sworn
to, and that the claims for processes, so called, were only claims
for the functions of the tip described.
A few words as to the conditions and knowledge at the time of
the alleged invention will help to make the discussion plain.
Acetylene gas began to be produced on a large scale for commercial
purposes about 1895. It is very rich in carbon, and therefore has
great illuminating power, but, for the same reason, coupled with
the relatively low heat at which it dissociates and sets carbon
free, it deposited soot or unconsumed carbon, and soon clogged the
burners then in use. It was possible to secure a complete
consumption of carbon by means of the well known Bunsen burner.
This consists of a tube or cylinder pierced on the sides with holes
for the admission of the air, into one end of which a fine stream
of gas is projected through a minute aperture, and from the other
end of which it escapes and then is burned. A high pressure is
necessary for the gas in order to prevent its burning back. The
ordinary use of the Bunsen burner is to develop heat, and to that
end a complete combustion, of course, as desired. But, with an
immediately complete combustion, there is little light. The yellow
light of candles and gas jets is due to free particles of carbon at
a red heat, but not yet combined with oxygen, or, as we commonly
say, consumed. On the appearance of acetylene gas, inventors at
once sought to apply the principle of the Bunsen burner with such
modifications as would produce this result. In doing so, they found
it best to use duplex burners -- that is, burners the outlets of
which were inclined toward each other so that the meeting of the
two streams of gas formed a flat flame, and to let in less air.
In this state of things, Dolan filed his application on February
18, 1897. The object was said to be
"to provide a burner the use of which will result in perfect
combustion of the gas, and the production of a flame which will
afford the greatest
Page 215 U. S. 163
possible degree of light from a given amount of gas
consumed."
A duplex burner on the Bunsen plan was described, but with no
indication of any patentable device. The drawings were merely
diagrams, and, with reference to what is to follow, we may mention
that two of them show two sets of air holes, one above the other,
and that the specification even now expressly allows "two or more"
sets. The claims were rejected on April 6, 1897, and in the same
month Dolan changed his attorney. On May 20, a new specification
and new claims were filed by the new attorney, but not sworn to by
Dolan, and on these, with no material change, the patent was
granted. In this specification, as in the former, though in
different words, it is said that,
"in order to prevent the deposit of carbon with the burner or at
the burner top, and thereby insure a perfect combustion and a
smokeless flame at the point where the same is formed, I provide a
series of inclined air passages, a, a, which lead into the enlarged
passage, E, above the point at which the contracted opening, C, is
provided.
*"
The inclined air
Page 215 U. S. 164
passages are the holes in the sides of the Bunsen burner, E is
the cylinder, or tube, and the contracted opening, C, is the point
at which the gas enters the tube. This device, and nothing else, is
pointed out as the means for preventing the clogging of the tips. A
preference is stated for a burner in duplex form.
In the new specification, however, it was said that the
operation "seems to be" that the gas draws in on all sides an
envelop of air through the openings
a, etc., so far
stating the Bunsen principle, but adding that "the result of this
arrangement seems to be to so cool the outside of the flame as to
prevent any deposit of carbon at the point of egress." And another
paragraph was as follows:
"The structure of my burner is such that, if all of the burner
were cut off in a horizontal plane immediately above the outlet C
[the point where the gas enters the upper chamber], the general
shape and condition of the flame would not be modified, but, in
this case, an immediate combustion would occur at the outlet. Under
the conditions of this burner, the point where the gas reaches its
kindling temperature is carried upward, but the general shape of
the escaping gas body is not materially modified."
It was stated earlier that
"the result here accomplished would not be accomplished in an
ordinary air-mixing burner, in which the air was mingled generally
with the body of the gas,"
and that,
"in my burner, an absolutely unobstructed passage is provided
for the escape of the original jet of gas forced by the constricted
opening C. By reason of this fact, it is substantially necessary to
have two jets if a flame of considerable candle power is
desired."
The claims allowed and in controversy here are as follows:
"1. The process of burning acetylene gas, which consists in
projecting a small cylinder of gas, in surrounding the same with an
envelop of air insufficient to cause combustion of all the gas, and
in finally supplying the gas with an additional amount of oxygen by
allowing the stream of gas to expand
Page 215 U. S. 165
above the burner-tip into contact with the air, thereby burning
the same, substantially as described."
"2. The process of burning acetylene gas, which consists in
projecting toward each other two cylinders of acetylene gas, in
surrounding the same with envelops of air insufficient to produce
combustion of all the gas, and in finally causing the cylinders of
gas to impinge upon each other, and produce a flat flame,
substantially as described."
"3. The combination in an acetylene burner of the block A,
having the minute opening C, the cylindrical opening E, opening
without obstruction to the atmosphere, and the air passages
a, substantially as described."
The ground upon which these claims are maintained is the theory
indicated in one of the passages that we have quoted, to the effect
that the gas emerges to the air surrounded by a mainly unmixed flow
of air carried with it from the cylinder containing the holes
a, a, and that this so cools the outside of the flame as
to prevent a deposit of carbon. If this theory is not true, and if
all there is to the Dolan tip or burner is to provide for a mixture
of air with the gas in the cylinder sufficient to secure complete
combustion of all that is burned near the point of emergence, but
insufficient to burn all the gas, the patent must fail. For this
latter contrivance was well known, and if the shortness of the
Dolan tip, which we are about to mention, has no other effect than
to diminish the amount of air received, it does nothing new.
Moreover, unless the theory of the cooling envelop so dominates the
specification as to explain what is doubtful and ambiguous in it,
the claim would not be for what now is said to be the
characteristic of the Dolan tip. The characteristic of the Dolan
tip now is said to lie in the fact that the cylinder is very short,
as, it is said, it must be for it to be true that the shape of the
flame would not be modified by cutting it off. The shortness of the
cylinder is supposed to prevent the mixing of the air, and to
produce the result desired.
But this theory of cooling not only is disputed in the
Page 215 U. S. 166
testimony and treated as speculative and highly doubtful by the
courts below, but is discredited by the patent itself. The fourth
claim is for a combination in an acetylene burner of two
"air-mixing" burners. The theory was not that upon which Dolan was
working, or in which he even now believes. He was a witness in the
case, and testified that it was his lawyer's contrivance, and
while, of course, a mechanical device may be patentable although
the true theory of it is not understood, here the words relied upon
to show that the cylinder was to have this characteristic shortness
also were the insertion of the lawyer, and would have had little
importance apart from that newly adopted point of view. We should
regret to be compelled to decide a case by the acceptance or
rejection of a theoretic explanation upon which it still is
possible that authorities in science disagree. But the uncertainty
indicated even by the language of the patent is important in
determining whether it describes a new invention in terms
sufficiently precise to be upheld.
As we have said, the only passage indicating, even by
indirection, the length of the cylinder, if that does, is the
paragraph stating that, if the burner were cut off, the general
shape and condition of the flame would be the same, which is
thought to reproduce more exactly a suggestion in Dolan's
specification as to a funnel-shaped flame, said by him to result
from the issue of gas with pressure through a small opening. But if
the relative shortness of the cylinder had been understood to be an
essential thing, the patent naturally would have said so. It is
suggested that the shortness is implied by the word "tip" in the
patent, but the patent equally is said to relate to an improvement
in burners, and the length of burners depends on the principle
involved. In fact, all that directly bears upon length is the
statement, which we have not yet mentioned, that the contracted
opening for the gas into the cylinder is at or near the
longitudinal center of the block constituting the tip. As the block
may be longer or shorter, with no limits fixed, while the cylinder
extends from the longitudinal center to the outlet
Page 215 U. S. 167
where the gas is burned, obviously, the length of the cylinder,
or one-half the block, may be greater or less, so far as we are
informed by this portion of the patent. And when this is taken with
the language as to mixing, in the fourth claim, with the allowance
of two or more sets of air holes, one above another, with the
uncertain statement of the theory ("the operation seems to be,"
"the result seems to be"), and with the statement of the air holes
alone as the feature that prevents the deposit, it seems to us
impossible to say that sufficient instructions are given on the
supposed vital point. Again, no proportions are indicated; the
number, size, and position of the air holes, except that they enter
the cylinder above the gas, are left at large; and, if the
plaintiffs' theory is the true one, the public are told little more
than to try experiments until they find a burner that works. The
plaintiffs say that a burner with a distance of four fifths of an
inch or over between gas and discharge orifice is a Bunsen burner,
and that, for the burner to be effective for illuminating purposes,
the distance should be only a few millimeters. But, if experiment
had proved the contrary, we cannot doubt that they equally would
have claimed the successful burner as the one Dolan had
contrived.
If, as now is said, a rat-tail flame is the mark of Dolan's
burner, the words "funnel shaped," in the original application,
were not apt to describe it, and did not purport to indicate a
test. They were used merely to show how the perfect combustion was
achieved which is the declared object throughout. The cause
assigned was not peculiar to Dolan's tip. The amendment in the
passage as to the unaltered shape of the flame when the burner is
cut off goes on to say that "of course" the shape, though
cylindrical as it issues from the round hole, increases in
diameter, "approximating in some degree to the form of an inverted
cone." This of itself almost excludes the notion that the rat-tail
shape is the test, and no reader would draw that or any similar
notion from the specification as a whole.
Page 215 U. S. 168
We appreciate the difficulties that would beset an attempt to
make the directions more precise, but it certainly was possible to
indicate with greater clearness the specific object to be attained,
and that, in any ordinary burner, the tip must be very short.
Vacillation in theory led to uncertainty of phrase. If, however, we
are wrong, then it appears to us plain that Dolan's attorney
introduced not merely the theory, but the mode of applying it, for
the first time in the amended specification -- or, in other words,
then for the first time pointed to an invention the essence of
which was to have so short a chamber or cylinder as to prevent the
mixing of the air taken into it, and to emit the current of gas
surrounded by the greater part of such air as an envelop or film.
Of course, Dolan desired to produce the result which the patented
article is said to produce, but, beyond that desire, his
specification did not give a hint of the means by which it now is
said to be achieved. It spoke, it is true, as we have said, of
producing a hollow-shaped funnel flame by reason of the gas' being
forced through contracted openings at very great pressure. But this
did not disclose the invention, and was dropped in the amendment.
He made no claim for a process and disclosed no invention of a
device. This being so, the amendment required an oath that Dolan
might have found it difficult to take, and for want of it the
patent is void. Rev.Stat. ยง 4892;
Railway Co. v. Sayles,
97 U. S. 554;
Eagleton Manufacturing Co. v. West, Bradley & Carey
Manufacturing Co., 111 U. S. 490;
Kennedy v. Hazelton, 128 U. S. 667;
De La Vergne Refrigerating Machine Co. v. Featherstone,
147 U. S. 209,
147 U. S.
229.
The patent was held void below on the further ground that it had
been anticipated. We turn to this last because the question is
complicated with the theory that we have mentioned. If the Dolan
patent had unreservedly committed itself to the notion of a cooling
envelop with a contrivance made very short for the purpose of
securing that result, the argument in defense of it would be that
the leading earlier patents proceeded upon the opposite theory of
mixture, and admitted, if
Page 215 U. S. 169
they did not contemplate, a longer tube, however similar
otherwise they might be. They at least exhibit the state of the art
at the date of the supposed invention, and show within what narrow
and precise limits Dolan had to move if he was to produce anything
new. So much may be said to be undisputed, and we have mentioned
some of the facts that cannot be denied. But, on the view that we
have taken of Dolan's specification, they anticipate all that he
can be said to have disclosed to the public. We think it
unnecessary to go over much of the disputed ground, and shall
mention but two of the patents put in evidence. The most important
of these is one issued in France to Bullier. This also was for a
tip (
bec) for acetylene gas. This tip was structurally
similar to Dolan's, admitting the gas through a very small orifice
and having the same slanting air passages entering the cylinder
above and around the gas and, in one drawing, at least, entering it
very near its upper end. Bullier definitely adopted the theory of
mixture and stated the proportions -- 40 percent of air to 60
percent of gas -- and, after stating his preference for a duplex
burner, he added that, in this manner, the illuminating portion of
the flames is relatively far from the orifice by reason of the air
introduced, and that, for the same reason, the combustion of the
carbon is complete between the orifice and the point where the
flame flattens, the flame as it issues from the orifices being blue
and not illuminating. In this way, he said, he avoided any deposit
of carbon. The degree of mixture is affected by the length of the
cylinder or tube, and, when mixture is desired, naturally a longer
tube would be employed than when it is to be prevented. The
drawings, which are admitted to be only diagrams, indicate a longer
cylinder than Dolan's, and although Bullier does not state the
length, it will be perceived, without more, that if the plaintiffs'
theory and construction of their patent were adopted, the
distinction insisted upon by them might be held to exist.
Otherwise, the anticipation is complete. It is significant that
some of the plaintiffs manufacture under a Bullier license in
France.
Page 215 U. S. 170
The other patent to be mentioned is another French one, to
Letang. He also states, as means to prevent clogging, the removal
of the outlet opening sufficiently far from the point of ignition,
and the cooling of the burner by a current of air. This current was
produced by separate plates above the gas nozzle so arranged that a
certain quantity of air would be carried along by the gas. It would
seem from the diagram that the distance intended to exist between
the nozzle and the flame was very short. We do not dwell upon the
earlier patents in more detail because we believe that we have said
enough to show that the plaintiffs' cannot be sustained.
Decrees affirmed.
MR. JUSTICE McKENNA dissents.
* The following are copies of Dolan's Fig. 1 and Fig. 2.
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