1. Reissued letters patent must be for the same invention as
that which formed the subject of the original letters, or for a
part thereof when divisional reissues are granted. They must not
contain any thing substantially new or different.
2. Original letters for a process will not support reissued
letters for a composition unless it is the result of the process
and the invention of the one involves the invention of the
other.
3. Letters granted for certain processes of exploding
nitroglycerine will not support reissued letters for a composition
of nitroglycerine and gunpowder or other substances, even though
the original application claimed the invention of the process and
the compound. They are distinct inventions.
4. The last clause of sec. 53 of the Act of July 8, 1870, 16
Stat. 205; Rev.Stat., sec. 4916, relates merely to the evidence to
which the Commissioner of Patents may resort, but does not increase
his power as to the invention
for which a reissue may be granted. Whether said clause relates
to any other than letters granted for machines is a question not
considered in this case.
5. Reissued letters patent No. 4818, for a new and useful
improvement in compounds containing nitroglycerine, and reissued
letters patent No. 4819, for a new and useful improvement in
nitroglycerine compounds, granted March 19, 1872, to the United
States Blasting Oil Company, assignee of Alfred Nobel, are for a
different invention from that described or suggested in original
letters patent No. 50,617, granted to said Nobel Oct. 24, 1865, for
a new and useful improved substitute for gunpowder, upon which they
are founded, and which they are intended, in part, to supersede.
They are therefore void.
6. When there is a demurrer to the whole bill, and also to part,
and the latter only is sustained, the proper decree is to dismiss
so much of the bill as seeks relief in reference to the matters
adjudged to be bad, overrule the demurrer to the residue, and
direct the defendant to answer thereto.
This is an appeal from a decree dismissing, upon demurrer, a
bill filed by the Giant Powder Company against the California
Powder Works and others, charging them with the infringement of
three certain letters patent belonging to the complainant, and
praying for an injunction and a decree for damages. These letters,
for certain alleged inventions of one Alfred Nobel, of Hamburg, in
Germany, relating to the use of nitroglycerine in the manufacture
of dynamite and other explosive compounds, are all reissues; two of
them bearing date the nineteenth day of March, 1872, and numbered
respectively
Page 98 U. S. 127
4818 and 4819; and the third bearing date the seventeenth day of
March, 1874, and numbered 5799. No. 4818 is for the mixture of
gunpowder with nitroglycerine; No. 4819 is for the mixture of
rocket powder with nitroglycerine; and No. 5799 is for a mixture of
nitroglycerine with porous or absorbent substances, forming what is
called dynamite, or giant powder. The bill sets out the substance
of the original and intermediate letters as well as those sued on,
and of some of them makes profert. A consent order was made in the
cause, that the complainant should file, as parts of the bill,
copies of the several letters mentioned and described therein, of
which profert was so made. The bill also sets forth by way of
schedule a copy of the original application of Nobel filed in the
Patent Office on the sixteenth day of September, 1865.
From the statements of the bill and the documents thus annexed
to and made part thereof, it appears that Alfred Nobel, on the day
last aforesaid, by his attorney, filed in the Patent Office a paper
describing certain alleged discoveries and inventions made by him
in reference to the use of nitroglycerine as an explosive agent and
as a component in explosive compounds. Having in this document
referred to the well known property of nitroglycerine, and the
nitrates of ethyl and methyl, nitromannite, &c., whereby they
cannot be exploded in open space by the application of fire, he
proceeds to point out how he succeeds in effecting their explosion.
He says:
"A chief point of my invention consists in overcoming this
difficulty. According as nitroglycerine is to be used for firearms
or for blasting, I adopt two different methods for promoting its
explosion,
viz.:"
"
1st Method. By mixing it with gunpowder, guncotton, or
any other substance developing a rapid heat, nitroglycerine being
an oil, fills the pores of gunpowder, and is heated by the latter
to the degree of its explosion. Gunpowder treated in this way can
take up from ten to fifty percent of nitroglycerine, and develops a
greater power with a lesser quickness of explosion. Where the only
object in view is to reduce the quickness of explosion of
gunpowder, I mix it with or make it absorb common nonexplosive oil
from one to ten percent of its weight. "
Page 98 U. S. 128
"
2d Method. When nitroglycerine is to be used for
blasting, where quickness of explosion is of great importance, I
submit it to the most rapid source of heat known,
viz.,
that developed by pressure. To effect this, I make use of the
pressure developed by heating a minute portion of nitroglycerine,
or by the detonation of any other violently exploding substance.
Nitroglycerine being a liquid, if it cannot escape, as for instance
in a bore, receives and propagates the initial pressure through its
whole mass, and is by that pressure instantaneously heated; hence
the first impulse of explosion decomposes the rest. There are many
means of obtaining this impulse of explosion, such as:"
"1. When nitroglycerine in tubes is surrounded by gunpowder, or
vice versa."
"2. By the spark or heat developed by a strong electric current
when the nitroglycerine is enclosed on all sides, so as not to
afford an escape to the gas developed."
"3. By a capsule,"
&c., six different methods of producing explosion of
nitroglycerine being pointed out, accompanied by drawings for
showing the manner in which they were employed.
He then claims as his invention:
1. The use of gunpowder or similar substances, when mixed with
nitroglycerine or analogous substances.
2. The reduction of the quickness of explosion of gunpowder by
mixing it with oily explosive, or nonexplosive substances.
3. The effecting the detonation of nitroglycerine or analogous
substances (which can be ignited without exploding) by the heat
developed by pressure, promoting an impulse of explosion which
decomposes the rest.
4. The exclusive use of nitroglycerine and the class of
substances described above, or mixtures of such as far as their
application may be classed under any of the methods indicated in
this memorandum.
He then describes a new method of preparing or manufacturing
nitroglycerine, and claims to be the inventor of that.
The bill further states, that after filing the above application
Nobel's agent (one Howson) filed certain amendments thereto,
striking out a portion of the original, and on the twenty-fourth
day of October, 1865, upon such amended application,
Page 98 U. S. 129
letters patent were granted to Nobel for the term of seventeen
years, numbered 50,617; and profert is made of the same in the
bill, and they are set out in the record.
By reference to the specification of these letters, which are
accompanied with drawings, they appear to be for a process, to-wit,
the process of using nitroglycerine, or its equivalent, as a
substitute for gunpowder, by exploding it in the manner pointed
out. Having explained the nature of nitroglycerine, nitrate of
ethyl, methyl, and nitromannite, as in the original paper, the
specification then points out how nitroglycerine may be exploded
after being confined in a hole drilled in the rock when to be used
for blasting, or in a case when to be used for other purposes. Four
distinct modes of doing this are enumerated: first, by exploding
gunpowder in contact with the liquid; secondly, by passing an
electric spark through a fine wire immersed in it; thirdly, by
inserting in it a thin case containing lime water; and, fourthly,
by a fuse. The drawings show the manner in which the wire is
arranged for passing an electric spark through the fluid.
The bill then states that on the 13th of April, 1869, the above
patent was surrendered, and four new divisional patents were issued
for the same inventions for which the original patent was granted,
numbered respectively reissues 3377, 3378, 3379, 3380; the first,
No. 3377, being for the method of exploding nitroglycerine by
detonation; the second, No. 3378, being for the application and use
of percussion caps and other exploders to create the detonation
necessary to explode the nitroglycerine; the third, No. 3379, being
for the improved mode of manufacturing nitroglycerine; and the
fourth, No. 3380, being (as stated in the bill) for the new
explosive compounds invented by Nobel,
viz., the mixture
of gunpowder and nitroglycerine, and the mixture of guncotton and
nitroglycerine, and the mixture of rocket powder and
nitroglycerine.
These four reissued patents are not referred to by way of
profert in the bill, but the above description of their purport is
sufficient for the purpose of understanding their character.
The bill then states that on the nineteenth day of March, 1872,
the said reissue 3380 was surrendered, and two new divisional
patents for the same inventions were issued in lieu
Page 98 U. S. 130
thereof, numbered respectively reissues 4818 and 4819; the
former being for the mixture of gunpowder with nitroglycerine, and
the latter for the mixture of rocket powder with nitroglycerine;
and each patent securing to the patentee the exclusive right of
making, using, and vending the explosive compound therein described
respectively. These are two of the patents on which the suit is
brought, and profert is made of them in the bill, and they are set
out in the record. By reference thereto, it appears that in reissue
4818 the patentee claims:
1. The utilization as explosives of nitroglycerine and the
analogous liquid substances before mentioned (nitrate of ethyl,
&c.), by combining therewith gunpowder, guncotton, or other
similar substances developing a rapid heat or combustion,
substantially as described.
2. The combination of gunpowder with nitroglycerine,
substantially as and for the purposes described.
3. The combination of guncotton with nitroglycerine,
substantially, &c.
In reissue 4819 the claim is for the mixture of nitroglycerine
and rocket powder.
The remainder of the bill is taken up in setting forth the other
patent sued on, and various assignments by which the complainant
deduces its title to the patents, with the allegation of
infringement and prayer for relief.
To this bill the defendant demurred, as well to the whole bill
for want of equity as to the relief sought in respect of the
different patents taken separately; also for multifariousness,
misjoinder of defendants, &c.
The demurrer having been sustained and a final decree entered
dismissing the bill, the Giant Powder Company brought the case
here.
Page 98 U. S. 133
MR. JUSTICE BRADLEY, after stating the facts, delivered the
opinion of the Court.
The main defense relied on by the counsel of the defense, on the
demurrer, is, that it is apparent that the reissued patents
numbered 4818 and 1819 are not for the same invention as that which
was described in the original letters patent numbered 50,617, for a
portion of which they purport to be reissues.
It is apparent, they say, that the original patent was for a
process, to-wit, a mode or different modes of exploding
nitroglycerine, whereas the reissues are for manufactured compounds
or mixtures, namely, mixtures of nitroglycerine with gunpowder,
guncotton, and rocket powder. It is contended that a process and a
mixture are the subjects of different inventions; that a patent
granted for one cannot, by its surrender, be the basis of a
reissued patent for the other. If this position is sound, and the
matter can be examined on demurrer, it was not error to dismiss the
bill as to all relief sought in reference to the two reissues in
question.
Page 98 U. S. 134
We have no doubt that the question may be examined on demurrer;
for the bill sets forth in full both the original patent and the
reissues, so that they may be examined and compared together. If it
were a case in which the identity or nonidentity of the inventions
in the original and reissued patents was a complicated question,
the court might require the defendants to answer in order to have
the benefit of evidence on the subject. But in ordinary cases, the
court itself will compare them. Whether a patent is for a process
or a composition is especially a question of construction, and is
for the court to decide, and whether a patent for a process is the
same invention as a patent for a composition is certainly a mere
question of law. We feel no hesitation, therefore, in approaching
the consideration of the questions presented by the pleadings.
Upon due examination of the patents in question, it cannot well
be doubted that the original patent, No. 50,617, granted on the
24th of October, 1865, was for a process, or rather for different
processes and appliances for producing the explosion of
nitroglycerine; nor can it be doubted that the reissued patents,
Nos. 4818 and 4819, granted in 1872, are for compounds and
mixtures; in other words, for compositions of matter. In the
specification of the original patent, the inventor says:
"My invention consists in the use as a substitute for gunpowder
of nitroglycerine, or its equivalent, substantially in the manner
described hereafter, so that the said liquid, which, when exposed,
cannot be wholly decomposed and exploded, shall by confinement be
subjected to heat and pressure, by which its total and immediate
decomposition and explosion is effected."
He then proceeds:
"In order to enable others to make and use my invention, I will
now proceed to describe the method of carrying it into effect. On
reference to the accompanying drawing which forms a part of this
specification, Fig. 1 is a view, partly in section, of one
apparatus by means of which I render nitroglycerine, or its
equivalent, available as a substitute for gunpowder; and Fig. 2 is
a plan view. There is a class of explosive substances comprising
nitroglycerine, the nitrates of ethyl and methyl, and nitromannite,
which have long been known, but have never been practically applied
as explosive
Page 98 U. S. 135
agents."
He then describes the behavior of these substances, when, being
in an unconfined state, they are subjected to appliances of flame
and contusion, no explosion being thereby produced; and then shows
how, when they are in a confined state, their complete explosion
may be produced by the processes which he describes; adding,
"The chief point of my invention consists in overcoming the
difficulty of suddenly igniting the entire mass of the materials
mentioned, so that the same can be practically used as explosive
agents."
He then shows how nitroglycerine may be best prepared and
manufactured for the purposes of use as an explosive agent. Then he
describes the four several methods or appliances for producing the
explosion desired, which have already been referred to, concluding
with this formal claim:
"I claim as my invention and desire to secure by letters patent
the use of nitroglycerine or its equivalent substantially in the
manner and for the purposes described."
The only equivalents of nitroglycerine referred to or pointed at
in the specification are the cognate substances of nitrate of ethyl
and methyl and nitromannite. It is to be presumed that these are
referred to when the patentee uses the expression, "nitroglycerine
or its equivalent."
Now in all this specification there is not a hint of any new
mixture or new composition of matter having been invented by the
patentee. The only thing that approaches it is the method which he
describes of preparing the pure nitroglycerine. The whole invention
set forth, described, and claimed consists of methods or processes
of exploding the substance so as to render it a useful exploding
agent. The technical form of the claim, it is true, is in
appearance a little broader, being for the use (generally) of
nitroglycerine as an exploding agent, but these general terms are
properly limited by those which follow, namely, "substantially in
the manner and for the purposes described." If any other method of
exploding nitroglycerine should be discovered different from the
processes invented and described by the patentee, it could be
employed without infringing his patent. According to our view,
therefore, the patent is for those processes and methods as applied
to the use of nitroglycerine, or its equivalent, as an explosive
agent.
Page 98 U. S. 136
Inasmuch as the reissued patents in question, numbered 4818 and
4819, are for compounds of nitroglycerine with various other
substances, it is impossible not to say that they are for an
entirely different invention from that secured, or attempted to be
secured, by the original patent.
If the patent had been not for the mode or process of exploding
nitroglycerine, but for the process of compounding nitroglycerine
with gunpowder and other substances, inadvertently omitting to
claim the exclusive use of the substances so produced, the case
would have been one of very different consideration. That was the
case with Goodyear's patent, which was issued in 1844, and claimed
only the process of vulcanizing india-rubber. In 1849 it was
surrendered, and two new patents issued in lieu thereof -- one for
the process, and the other for the composition. In 1852, the
validity of these reissues came up for consideration in the third
circuit, in the case of
Goodyear v. Day, which was argued
by Mr. Choate, Mr. Webster, and other eminent counsel. Mr. Justice
Grier disposed of the objections as follows:
"We now come to the objections which have been made to the
reissued or amended patents of 1849. The first objection is that
the patents of 1844 and 1849 are not for the same invention. This
objection is not founded in fact. Both patents are for precisely
the same invention or discovery. They both describe, in nearly the
same words, the best mode of manufacturing india-rubber, by
exposing it to a high degree of heat in connection with sulphur and
white lead; by which treatment the substance is endowed with new
and valuable qualities which it did not possess before. The
discovery is the same; the mode of manufacturing the compound is
the same. The first patent had set forth the nature and extent of
the invention defectively. There is no reason to doubt the bona
fides and propriety of the reissue. It is apparent on the face of
the papers, even if the action of the commissioner on that point
was not conclusive."
Again, he adds:
"The fourth objection is 'that the latter patent claims more
than was contained in the original.' If the latter patent is for
precisely the same invention, art, or discovery as that described
in the first, the objection that it claims more is a mistake of
fact. If the last patent differs from the first only in stating
more clearly
Page 98 U. S. 137
and definitely the real principles of the invention, so that
those who wish to pirate it may not be allowed to escape with
impunity through the imperfection of the language used in the
first, there has arisen one of the cases for which it was the
intention of the act of Congress to provide, and the objection is
worthless in point of law."
This case is partially reported in 2 Wall. Jr. 283, but the
opinion of Mr. Justice Grier is not stated in full. In another
case, arising on the original patent of Goodyear, reported in 2
Wall. Jr. 356, Mr. Justice Grier used this expression: "The product
and the process constitute one discovery." The product in
Goodyear's invention was the direct result of the process. They
were parts of one invention, and, except in imagination, could no
more be separated from each other than the two sides of a sheet of
paper, or than a shadow from the body that produces it.
The present case is entirely different. The processes which the
patentee described as his invention in the original patent, No.
50,617, had no connection with the compounds or mixtures which are
patented in the reissued patents. They were not processes for
making those compounds, and in describing them the compounds were
not mentioned. The invention of the one did not involve the
invention of the other. The two inventions might have been made by
different persons, and at different times.
We think, therefore, that the conclusion is irresistible, that
the two reissued patents, numbered 4818 and 4819, are for a
different invention from that described or suggested in the
original patent No. 50,617, upon which they are founded, and which
they are intended, in part, to supersede.
These reissues being granted in 1872, were subject to the law as
it then stood, being the Act of July 8, 1870, the fifty-third
section of which (reproduced in sec. 4916 of the Revised Statutes)
relates to the matter in question. It seems to us impossible to
read this section carefully without coming to the conclusion that a
reissue can only be granted for the same invention which formed the
subject of the original patent of which it is a reissue. The
express words of the act are, "a new patent for the same
invention," and these words are copied from the act of 1836, which
in this respect was substantially
Page 98 U. S. 138
the same as the act of 1870. The specification may be amended so
as to make it more clear and distinct; the claim may be modified so
as to make it more conformable to the exact rights of the patentee;
but the invention must be the same. So particular is the law on
this subject, that it is declared that "no new matter shall be
introduced into the specification." This prohibition is general,
relating to all patents, and by "new matter" we suppose to be meant
new substantive matter, such as would have the effect of changing
the invention, or of introducing what might be the subject of
another application for a patent. The danger to be provided against
was the temptation to amend a patent so as to cover improvements
which might have come into use, or might have been invented by
others, after its issue. The legislature was willing to concede to
the patentee the right to amend his specification so as fully to
describe and claim the very invention attempted to be secured by
his original patent, and which was not fully secured thereby, in
consequence of inadvertence, accident, or mistake, but was not
willing to give him the right to patch up his patent by the
addition of other inventions, which, though they might be his, had
not been applied for by him, or, if applied for, had been abandoned
or waived. For such inventions, he is required to make a new
application, subject to such rights as the public and other
inventors may have acquired in the mean time. This, we think, is
what the present statute means, and what indeed was the law before
its enactment under the previous act of 1836. If decisions can be
found which present it in any different aspect, we cannot admit
them to be correct expositions of the law.
The counsel for the complainant refers us to, and places special
reliance on, the last clause of sec. 53 of the act of 1870, where
it is said:
"But where there is neither model nor drawing, amendments may be
made upon proof satisfactory to the commissioner that such new
matter or amendment was a part of the original invention, and was
omitted from the specification by inadvertence, accident, or
mistake."
But this clause relates only to the evidence which may be
employed by the commissioner in ascertaining the defects of the
specification. It does not authorize him to grant a reissue for a
different
Page 98 U. S. 139
invention, or to determine that one invention is the same as
another and different one; or that two inventions essentially
distinct constitute but one. In this case, it is not necessary for
us to decide, and we express no opinion as to the precise meaning
and extent of the final clause of sec. 53, to which we have
referred; as whether it relates to all patents, or only to patents
for machines. But as it relates to the matter of evidence alone, it
cannot enlarge the power of the commissioner in reference to the
invention for which a reissue may be granted. That power is
restricted, by the general terms of the section, to the same
invention which was originally patented. Conceding that the
commissioner had a right, in this case, by virtue of the clause in
question, to examine the original application of Nobel, as it stood
before it was amended, in order to ascertain what his invention
really was, it would only show that he described, in that paper,
two different inventions -- one for a composition and another for a
process distinct from the composition. It would not prove that the
two inventions were the same, and it would not authorize the
commissioner, on a reissue, to add the one to the other as a part
thereof.
The complainant insists, however, that the present reissues are
for the same invention which was patented in the reissued patent,
No. 3380, granted in April, 1869, and that the latter reissue was
granted before the passage of the act of 1870. But this fact does
not help the complainant. The law relating to reissues was
substantially the same under the act of 1836 as it is under the act
of 1870. As before remarked, the former act as well as the latter
restricted the power of the commissioner, in granting reissues, to
"the same invention" which was the subject of the original patent.
It has been repeatedly so held by this Court, as the following
cases will show:
Burr v.
Duryee, 1 Wall. 531;
Seymour v.
Osborne, 11 Wall. 516;
Gill v.
Wells, 22
id. 1;
The Wood
Paper Patent, 23 Wall. 566.
Since, therefore, the reissues in question are not for the same
invention for which the original patent was granted, it follows
that they are void; and the bill must be dismissed so far as
relates to the said reissued patents numbered respectively 4818 and
4819.
Page 98 U. S. 140
As nothing is shown, however, in the statements of the bill
which affects the validity of the third patent sued on, the bill
should not have been dismissed as a whole, but only as to the said
reissues 4818 and 4819. For this error the decree must be reversed,
and the cause remanded with directions to enter a decree in
conformity with this opinion, dismissing the bill as to all relief
sought therein in respect of, or in reference to or founded upon,
the said reissued patents numbered respectively 4818 and 4819, and,
as to the residue of the bill, overruling the demurrer and
directing the defendants to answer in accordance with the rules and
practice of the court.
So ordered.
