Letters patent No. 90,284, issued to Joshua Merrill May 18,
1869, for improved manufacture of deodorized heavy hydrocarbon
oils, construed and held to be good for the superheating coil, with
its steam pipe, &c., referred to in the second claim of the
specification, and for the described process by which the oil is
deodorized, but not for the product of that process.
This is a suit by Joshua Merrill for an infringement of letters
patent No. 90,284, issued to him May 18, 1869, for improved
manufacture of two deodorized heavy hydrocarbon oils. The court
below found that there was no infringement by the respondents and
dismissed the bill, whereupon the complainant appealed here.
MR. JUSTICE MILLER delivered the opinion of the Court.
The appellant in this case, who was complainant in the circuit
court, obtained a patent in May, 1869, for a new and useful
invention which relates to the heavy hydrocarbon oils, and he sued
the appellees, who were defendants in that court for an
infringement of his patent.
The defendants were dealers in oils, and not manufacturers of
them. If the appellant's patent was for a new oil, the product of a
mode of treating the oils of that character which he describes in
his application, the defendants may be liable, for they bought and
sold, without license or other authority from him, an oil which is
proved to be almost if not quite identical with the one which he
produced. If, however, appellant's patent is only for the mode of
treating these oils invented and described by him -- in other
words, for his new process of making this new article of
hydrocarbon oil -- then it is clear the defendants have not
infringed the patent, because they never used that process, or any
other, for they manufactured none of the oils which they bought and
sold.
Page 94 U. S. 569
The counsel for appellant here maintain that his patent is for
the new article, and is not for the process, though he describes it
fully, by which that article is produced. The appellees insist with
equal earnestness that the patent is exclusively for the process by
which the new oil is made.
The issue thus presented must be decided solely upon a correct
construction of the plaintiff's patent and the accompanying
specifications in which, as required by the act of Congress, he
makes the statement of his invention.
No such question could have arisen if appellant had used
language which clearly and distinctly points out what it is that he
claims in his invention.
We use the word "claim" as distinct from "description." It must
be conceded that the appellant's specification describes with
minuteness and precision both the instrumentality and the process
by which he makes the oil in question. And in regard to a part of
the apparatus which he uses, he makes a distinct claim for its
invention, and that is not in dispute here. He also describes with
fullness and accuracy the process of distillation by which he
produces this oil. He gives the temperature to be used, the mode of
heating, the degree of rapidity or delay to be used in distilling,
the introduction, and the advantage of that introduction, of
superheated steam into contact with the oils to be distilled during
the process.
He also describes, though in short terms, the article produced,
the main feature of which he declares to be its freedom from the
offensive odor which, before his invention, seemed to be an
inseparable quality of those oils, and he mentions some of the more
important uses to which this deodorized oil is applicable in the
arts.
It is fairly to be inferred from this statement that if all
which is described as new in these specifications is really so, the
inventor has a right to a patent for three inventions:
1. For a modification or improvement in the distilling
apparatus.
2. For a new process or mode of distilling heavy hydrocarbon
oils by which they are deprived of their offensive odors.
3. For the product of this new process of distillation -- namely
the deodorized heavy hydrocarbon oils fitted for use in the
arts.
Page 94 U. S. 570
When a man supposes he has made an invention or discovery useful
in the arts and therefore the proper subject of a patent, it is,
nine times out of ten, an improvement of some existing article,
process, or machine, and is only useful in connection with it. It
is necessary, therefore, for him, in his application to the Patent
Office, to describe that upon which he engrafts his invention, as
well as the invention itself, and in cases where the invention is a
new combination of old devices, he is bound to describe with
particularity all these old devices and then the new mode of
combining them for which he desires a patent. It thus occurs that
in every application for a patent, the descriptive part is
necessarily largely occupied with what is not new in order to an
understanding of what is new.
The act of Congress therefore very wisely requires of the
applicant a distinct and specific statement of what he claims to be
new and to be his invention. In practice, this allegation of the
distinct matters for which he claims a patent comes at the close of
the schedule or specification, and is often accompanied by a
disclaimer of any title to certain matters before described in
order to prevent conflicts with pre existing patents.
This distinct and formal claim is therefore of primary
importance in the effort to ascertain precisely what it is that is
patented to the appellant in this case.
In this part of his application, he makes two separate claims,
the second of which relates to a modification of the distilling
apparatus and is not in dispute here. Turning our attention to the
first claim, we are compelled to say that the language is far from
possessing that precision and clearness of statement with which one
who proposes to secure a monopoly at the expense of the public
ought to describe the thing which no one but himself can use or
enjoy, without paying him for the privilege of doing so. It is as
follows:
"I claim the above described new manufacture of the deodorized
heavy hydrocarbon oils, suitable for lubricating and other
purposes, free from the characteristic odors of hydrocarbon oils
and having a slight smell like fatty oil, from hydrocarbon oils, by
treating them substantially as is hereinbefore described."
The word "manufacture" in this sentence is one which is used
with equal propriety to express the process of
Page 94 U. S. 571
making an article, or the article so made. "The manufacture of
hydrocarbon oils" means primarily the making of hydrocarbon oils.
It may mean the thing made, also. Are there other words in the
sentence calculated to throw light on the meaning of this one?
"I claim the above described new manufacture of hydrocarbon
oils, . . . by treating them substantially as hereinbefore
described." It seems to us that the most natural meaning of these
words is that "I claim this new mode of manufacturing hydrocarbon
oils, by treating them as hereinbefore described." This is the
meaning which would first suggest itself to the mind. If the
product is meant, the words "by treating them substantially as
hereinbefore described" are useless. They are not only useless but
embarrassing, for by the well settled rules of construing all
instruments, some importance must be attached to them, and if they
are to be regarded at all, they must either refer to the process of
making the oils for which the applicant is claiming a patent or
they are intended to limit his claim for a patent for the product
to that product only, when produced by treating the oils in the
manner before described.
The counsel for appellant disclaim this latter construction, and
allege that the patent covers the oil described, by whatever mode
it may be produced. It is necessary to insist on this view, because
it is made to appear in the case that the oils sold by defendants
were produced by a process very different from that described by
appellant.
We can see no reason why the applicant for the patent, if he had
in his mind a claim for the article produced, should have intended
so to limit his claim. If the article was the discovery which he
sought the exclusive right to make, use, and sell, he was entitled
to that monopoly, however produced.
If, however, he had in his own mind only a claim for the process
of manufacture by which the article was made, then his reference to
the mode of treating the oils from which it came was evidently
proper and intelligible.
But the language in the specifications aids us in construing the
claim. In the sentence next preceding this claim, he says:
"It will also be evident to those skilled in the art that my
Page 94 U. S. 572
invention will be used, if the above mentioned process be
worked, to produce the deodorized heavy oils above described from
distilled hydrocarbon oils,"
&c. It is very clear that what he here calls his invention
is a thing which produces the deodorized oils, and not the oil
itself. So again he says:
"From the above it will be obvious that my invention consists in
producing heavy hydrocarbon oils, suitable for lubricating and
other purposes, and free from the characteristic odor, by
distilling from them the volatile matter from which objectionable
odors arise."
Again he says:
"In carrying on my new manufacture of deodorizing heavy oils
with this apparatus, I place the oil to be deodorized in the still,
and heat it by the fire beneath to the required temperature to
commence the operation, the steam being shut off from the coil, and
the outlet cock being opened to admit of the expulsion of any water
from within the coil."
Here the word "manufacture" is used in the sense of the word
"process" -- a word which could be substituted for it without a
shade of change in the meaning. As it can here mean nothing else
but process, we have a definition of the meaning to be attached to
it in other parts of the same paper if that meaning were otherwise
doubtful.
But apart from these verbal criticisms -- all of which are just,
and tend strongly to show what was the invention claimed by
appellant -- it is impossible to read the four printed pages of
specifications in which appellant minutely describes his invention
without observing that they are almost wholly directed to the
apparatus, the mode of using it, and the peculiar process of
distillation by which the more volatile parts of the heavy oils,
which contain the offensive odors, are separated from the main body
of the oil, pass over in that process, and leave the remainder free
from this great drawback in its use in the arts. Why should this be
so if the applicant for the patent was only looking to the products
as his invention -- the deodorized heavy hydrocarbon oils? If the
oil alone was to be patented, by whatever process made, this
elaborate description of one particular process was
unnecessary.
A strong appeal is made by counsel to give the appellant the
benefit of a liberal construction in support of the patent. Cases
are cited in which this Court has held that rather than
Page 94 U. S. 573
defeat a patent where it appears that a valuable invention has
really been made, this Court, giving full effect to all that is
found in the application on which the Patent Office acted, will
uphold that which was really invented and which comes within any
fair interpretation of the patentee's assertion of claim.
We are not disposed to depart from this rule in the present
case. There is no question here but that the patent is good for the
second claim -- for the superheating coil, with its steam pipe,
&c. -- and we are all of opinion that it is good for the
process of distillation described in the specifications, by which
the heavy hydrocarbon oils are deodorized. It is therefore a valid
patent for two important matters, well set forth and described. If
the patentee is also entitled to a patent for the product of this
distillation, and has failed, as we think he has, to obtain it, the
law affords him a remedy by a surrender and reissue. When this is
done, the world will have fair notice of what he claims, of what
his patent covers, and must govern themselves accordingly.
The growth of the patent system in the last quarter of a century
in this country has reached a stage in its progress where the
variety and magnitude of the interests involved require accuracy,
precision, and care in the preparation of all the papers on which
the patent is founded. It is no longer a scarcely recognized
principle, struggling for a foothold, but it is an organized
system, with well settled rules, supporting itself at once by its
utility and by the wealth which it creates and commands. The
developed and improved condition of the patent law and of the
principles which govern the exclusive rights conferred by it leave
no excuse for ambiguous language or vague descriptions. The public
should not be deprived of rights supposed to belong to it without
being clearly told what it is that limits these rights. The genius
of the inventor, constantly making improvements in existing patents
-- a process which gives to the patent system its greatest value --
should not be restrained by vague and indefinite descriptions of
claims in existing patents from the salutary and necessary right of
improving on that which has already been invented. It seems to us
that nothing can be more just and fair both to the patentee and to
the public than that the former should understand,
Page 94 U. S. 574
and correctly describe just what he has invented and for what he
claims a patent.
In consistency with these views, we are of opinion that the
appellant in this case has described and claimed a patent for the
process of deodorizing the heavy hydrocarbon oils, and that he has
not claimed as his invention the product of that process.
Decree affirmed.
MR. JUSTICE CLIFFORD dissenting.
I dissent from the opinion and judgment in this case upon the
ground that the invention, when the claim is properly construed, is
an invention of the described new manufacture and not, as decided
by a majority of the Court, merely for the process.