WELLS GLASS CO. et al. v. HENDERSON, 67 F. 930

WOODS, Circuit Judge, after making the foregoing statement, delivered the opinion of tlie court. Tlie process of patent No. 412,751 is purely mechanical. The devices and machinery necessary for its accomplishment, consisting of dies, a “bending or conforming device,” a “machine for forming or notching the ends of the bars,” and other familiar appliances, are illustrated by drawings, and minutely described in the specification.

The application for the patent was rejected, in the first instance, on the ground that “the alleged method is, as presented, the necessary function or operation of the mechanism described”; and, notwithstanding the amendments made to the second, third and fourth claims, we are of opinion that the objection was not obviated, and the patent should not have been granted. In the case of Appleton Manuf’g Co. v. Star Manuf’g Co., 9 C. C. A. 42, 60 Fed. 411, 18 U. S.

App. 492, where it was necessary to consider the question of the patentability of mechanical processes, we were unable to deduce from tlie decided cases a definite rule: Tout whatever uncertainty there had been, or lack of harmony, in the decisions and dicta of the Supreme Court on the subject, was removed by the recent opinion of that court in Locomotive Works v. Medart, 15 Sup. Ct. 745. from which we quote the following: “The four claims of tlie patent make no reference to the mechanism exhibited in the drawings, and described in tlie specification.

All claim an improvement in the art of manufacturing, and set forth, in more or less detail, the various steps in that process. That certain processes of manufacture are patentable is as clear as that certain others are not, but nowhere is the iTsiinctlon between them accurately defined. There is somewhat of the same obscurity in the line of demarkation as in that between mechanical skill and invention, or in that between a new

article of manufacture, which is universally held to be patentable, and the function of a machino, which, it is equally clear, is not. It may be said, in general, that processes of manufacture which involve chemical or other similar elemental action are patentable, though mechanism may be necessary in the application or carrying out of such process, while those which consist solely in the operation of a machine sire not.

Host processes which have been held to be patentable require the aid of mechanism in their practical application, but. where such mechanism is subsidiary to the chemical action, the fact that the patentee may bo entitled to a patent upon his mechanism does not impair his right to a patent for the process, since he would lose the benefit of his real discovery, which might be applied in a dozen different ways, if he were not entitled to such patent.

But, if the operation of his device be purely mechanical, no such considerations apply, since the function of the machine is entirely independent of any chemical or other similar action.” This is followed by “a review of some of the principal cases upon the subject of patents for processes,” and after quoting from Corning v.

Burden, 15 How. 252, the statement is added, that, “although the cases are not numerous, this distinction between a process and a function has never been departed from by this court.” It is evident that, in the process for making metallic sash bars described in Henderson’s patent, there is involved no chemical or other elemental action which is separable or distinguishable from the function of the several mechanical devices which are employed to effect the result. The patent is therefore invalid. It is not necessary to pass upon the question of novelty in the second patent.

In view of the prior art, it is clear that, if valid, the patent must be restricted to the particular forms of construction described. Similar forms in bars for uniting glass and other plates in skylights, show cases and windows are shown in earlier patents which are in evidence, and especially in No. 315,958, issued April 14, 1885, to Overman and O’Connor, and No. 370,075, issued September 20, 1887, to Macleod.

If the various forms illustrated in those patents were not, like Henderson’s device, “especially adapted to that class of sashes which contain many small pieces of glass cut in numerous configurations and designs,” it was mainly because of the size of the parts; and once it was perceived to be desirable to use a stronger material than lead in the construction of windows of stained glass, or of clear glass in small pieces, it required no invention to adapt to that purpose the designs of Macleod and others by reducing or otherwise changing their proportions.

Henderson himself, before seeking a patent for a bar with rib and shoulders and adjustable cap, had introduced into public use, and was under contract to furnish the Wells Glass Company, a metallic T-shaped bar; and the idea of putting on the rib of that bar a cap, to make the finish the same and to afford support for the glass on both sides, whether it was Henderson’s own conception, or was, as Schulimann testified, his suggestion, was an expedient which was too obvious to be called invention, even if such a cap or counterpart had never before been employed.

And in the notching, fitting, and bending of the parts, by means of devices which were in common and familiar use, it is difficult to see anything essentially new, or beyond the powers of ordinary mechanical experience and skill.

In addition to the prior art, the file wrapper shows that, pending the application for this patent, Henderson presented an amendment to his specification, whereby he described, and sought to include, a sash bar substantially identical in form and in details of construction with the bars made by the appellants, and that the amendment was not allowed because it proposed “matter not embraced in the statement of invention or specification or drawing, as originally filed.” In response to this, counsel says: “What of it?

Certainly no question in this case is affected thereby. ■That the device of the defendant appellants contains a new and additional invention, supplemental to and built upon the invention of Henderson, does not for a moment take it out from under the Henderson device patent, as an infringement thereof.” This argument proceeds upon an erroneous assumption of fact. The proposed amendment did not describe an invention made up of the device first described, and of additional and supplemental matter severable therefrom.

It was regarded by the patent office as presenting, and was rejected because it presented, and the claim based upon it was for, “an entirely distinct and independent invention from that embraced in the application as originally filed.” Having acquiesced in that ruling, the patentee cannot be heard to insist that the matter so excluded is nevertheless covered by the' patent. It follows that the decree of the circuit court, in so far as it declared patent No. 412,751 to be valid and infringed, and No. 420,510 to have been infringed, is erroneous, and should be reversed, and it is so ordered.