EVANS et al. v. SUESS ORNAMENTAL GLASS CO. et al., 83 F. 706

WOODS, Circuit Judge, after making the foregoing statement, delivered the opinion of the court. We are not able to perceive that the conclusion of the circuit court was erroneous. The chief feature of novelty, as asserted in the briefs for appellants, and especially at the oral argument, was, in the language of the second claim, “in removing the flexible pattern from the glass,- together with the glass-chipping compound thereover, while the glass-chipping compound is in a liquid condition.” That step in the process is fairly anticipated in the prior art.

In the Shaw patent, No. 15,532, which was for a method of lettering and ornamenting glass, patterns, preferably of tin-foil or lead-foil, were placed upon the bade surfaces of plates of glass coated with the white of eggs, by which the patterns were held, while over the whole surface of the patterns and glass was brushed the color desired for the background, after the drying of which the patterns were removed, “so as to leave the designs with clean surfaces and smooth and sharply defined outlines.” And so in patent No. 154,032, granted to Carl Erederici, in the year 1873, for improvement in processes of preparing glass for etching, a pattern upon a pane of glass to which a thin layer or film of beeswax, or equivalent material, has been applied, is stripped off, after the film is set, in such a manner that the parts from which the pattern has been removed may be exposed to the sand-blast or etching liquid, while the remainder of the surface will be- protected by the wax or other material, by which means, according to the specification, it is practicable to 'produce designs with sharp and clearly defined contours.

The asserted distinction that in the processes described in those patents the paint is said to be dry, and the film or wax to be set, before the patterns are to be lifted, while in the process of the Evans patent the glue or chipping compound is to be in a liquid state when the pattern is removed, is not important, or, to say the least, not controlling, upon the question of invention. “Dry,” “set,” and “liquid,” as used, are relative terms, and signify no more than sufficiently dry, sufficiently set, or sufficiently liquid, as determined by practice and experiment, to contribute most effectively to the desired result.

When asked, in reference to the patent in suit, how rapidly does the glue set, an expert witness for the appellants answered that that could not be stated accurately, since the time varies greatly, depending upon the temperature, and upon the amount of moisture in the atmosphere; that the extreme ranges of time, he thought from observation, were from 5 minutes to 25 minutes.

Infringement of the earlier processes certainly could not have been evaded simply by removing the patterns before the paint was dry, or the wax set; nor of the patent in suit by postponing the removal until the chipping compound had ceased to be, in a strict sense, liquid. See, also, letters patent No. 63,328, granted on March 26, 1867, to C. O. Strumme, and No. 405,283, granted on June 18, 1889, to Thomas J. Thompson.

We are constrained to repeat and emphasize the observation that an assignment of error which is predicated upon the opinion of the court, or upon a reason given by the court for its ruling or decree, is not available. Caverly’s Adm’r v. Deere & Co., 24 U. S. App. 617, 13 C. C. A. 452, and 66 Fed. 305; Russell v. Kern, 34 U. S. App. 90, 16 C. C. A. 154, and 69 Fed. 94; Clark v. Decre & Mansur Co., 25 C. C. A. 619, 80 Fed. 534. It is something done by the court,- — a ruling, judgment, order, or decree, — and not a reason therefor, which may be assigned as error.

A sufficient assignment in this case would have been simply that the court erred in dismissing the bill. Though not required to do so, we have given the same attention to the merits of the case as if that had been the specification of error. To do this has involved more than the usual labor, especially in the study of the expert testimony adduced on either side. Our conclusion is that the judgment below should be affirmed.