HOSKINS v. MATTHES, 108 F. 404

After the foregoing statement of the case, GROSSCUP, Circuit Judge, delivered the opinion of the court, as follows: The Hoskins and Spinks patent can lay no claim to invention in the conception that there can be an artificial substitute for billiard-chalk, for that was the expressed object of both the Peple and Wiggins patents; nor in the conception of compacting into blocks or cakes the material used, whatever it may have been, for such molding and compressing was described in the Peple patent; nor in the conception of any treatment of the material used, either as to proportions or mode of intermixture, for there can not be found, either in tRe Claims, or tlie description, any mention of proportion, or mode of intermixture.

The patent must be sustained, if it be sustained at all, upon the claim that the inventors, for the first time, in the manufacture of artificial billiard-chalk, employed pulverized silica in its natural or commercial condition; and that any use, by another, of pulverized silica, in the composition of billiard-chalk, no matter what may be the proportions, or however mixed, makes such chalk an infringement. The claim, in short, is that the adaptability of pulverulent silica, in connection with binding or coloring matter, to the uses of artificial billiard-chalk, is a patentable discovery.

Upon the maintenance of this claim the case seems to stand or fall. Silica is said to be the commonest of materials. It is found almost universally in nature; in sand stone, free sand, rock quartz and clay. It has been used in many arts; in some of them expressly on account of its gritty quality. It is spoken of in the Peple patent as a desirable ingredient to be mixed with other ingredients in the making of artificial billiard-chalk. Its quality of grittiness seems to have been within common knowledge — so much so, that the adjectives “silicious” and “gritty” are almost synonymous words.

It may be conceded that common knowledge, of this general character, does not, alone, amount to anticipation of the adaptability of silica as a base for billiard-chalk. Silica might ’be known to be abrasive, but not to the degree, or in the way, that is suitable to this art. It may have needed further information — possibly in the nature of discovery — to select and utilize silica as the base of artificial billiard-chalk. But, on examination of the whole art, we feel compelled to hold that ¡the gist of such information was already at hand, both in the Peple patent, and in the Italian chalk.

The object of Peple was to obtain a chalk that, by reason of its grittiness, would cause the billiard-cue to take hold of the ball, and, on account of its color,, save the table from the appearance of chalk marks. His objective was twofold: a quality, that would answer the purpose of the billiard cue, and a color harmonizing with the green of the billiard table. He selected what he calls “chrome-green,” and pointed out that, should the color be non-coincident with that of the billiard cloth— probably an over green — it might be harmonized by the admixture of finely ground silica.

The evidence does not satisfactorily show what substance Peple had in mind, in the use of the word “chrome-green,” but in his own words, whatever it was, it had a gritty and silicious quality, and must have readily intermixed with free silica; otherwise free silica would not have been designated as a material to modify the color. . The patent does not point out silica as a base for the billiard-chalk, but, unmistakably, it so clearly suggests it, that the next step taken was not a long one. The next step was the analysis of the Italian chalk by Hoskins, who was a chemist.

It was made at the suggestion of Spinks, who. had just returned from Paris, where the Italian chalk had been used by expert billiardists. Spinks, like the others, was enamored of it; bul it was rare and expensive, and on that account could not be brought into general use. It occurred lo Hpinks, however, that that need not stand in the way; for as artificia] billiard chalk was already well known, might not the ingredient of tliis new Italian chalk be ascertained, and made the base for an artificial chalk. Several analyses were made.

Though these; did not closely agree, the chalk was found, in each instance, to contain a large; percenlage of silica. One put the silica at thirty-five, another at thirty-three, and the Iasi: (the free silica) at nine per centum. In the first and second it is not clear whether the reference was to free silica, or to silica combined and uncombined, but, in any event, (hese analyses pointed out, both the presence of silica, and its function in the chalk: for in none of the ingredients, other than silica, is there a suggestion of (he grittiness or abrasiveness desired.

It is no answer to say that the analysis previous to the taking-out of the patent (the last analysis having been made after the patent was obtained) did not show silica in its free state, and that the presence of combined silica is not a suggestion of free silica as a base for the chalk. The analyses were not the only things known to Hoskins and Bpinks. They had, constructively, the Peple patent.

They had before them, therefore, within the meaning of the law, grittiness as a desideratum; as well as the knowledge that this quality was possessed by silica, and that there was no other ingredient in the it alian chalk possessing it. It: took no invention, from premises so simple, to infer that the presence of silica in the Italian chalk was what gave to it its utility as a billiard-chalk. It. is true, that as far as we know, the Italian chalk had not yet been analyzed by others.

But the analysis is what any chemist could have1 done, and the suggestion that, it be analyzed, in view of all that had gone before, is not, in our opinion, an inventive act. It led to no new kind of article; for artificial billiard-chalk was old. It was not, in any just sense, an independent discovery in nature, subsequently utilized in one of the arts; for, in substance, it was nothing but a chemical search into a chalk already in the art, for the ingredients that gave to .such chalk its excellence. It was research, lmt not patentable discovery.

We do not hold that Hoskins and Hpinks have not: discovered a new artificial chalk. Ho other chalk, artificial or natural, seems to run so high in silica. But if their chalk is, on that account, patentable, it is not because of the use of pulverized silica, in any proportion, but because of the particular proportions employed. Had the description and claims proceeded upon some designated treatment oi* process, we might have found a way to sustain their validity. But the patent is ambitious far beyond this. It seeks to exclude the use, by others, of pulverized silica in any proportion.

It surveys a field that includes any silicate “having a frictional property and capable of being pulverized and compacted.” 'To sustain this would he to hold that the use of pulverized silica in a billiard-chalk, independently of the proportions employed, was a discovery properly embodied in appellant’s (latent. This the state of the art will not justify. The decree of the Circuit Court is, accordingly, affirmed.