EVANS et al. v. SUESS ORNAMENTAL GLASS CO. et al., 86 F. 779

WOODS, Circuit Judge. The petition for rehearing assumes that the opinion of the court in this case was framed on the theory that, if a particular step of the Evans process did not have the novelty asserted for it in argument, the process, as a whole, must for that reason be held to lack novelty. The familiar doctrine was not overlooked, though not restated, that a process consisting of different steps, like a combination of different mechanical elements, may be new and patentable, though every step by itself be old.

But when a process has no novelty unless it can be found in a particular step, and it proves to be wanting there, the entire process necessarily lacks patentability. The argument at the hearing was understood to proceed mainly on that theory, and on that theory, as the opinion of the court shows, the appeal was decided.

Counsel who has come into the case since a rehearing was asked has been allowed to support the petition by a further brief, the scope of which will be indicated by the following quotations: “The fifth step in the Evans process was absolutely new with him, and was not shown, described, or even suggested in the prior art. The broad idea of the use of ‘glue or similar adhesive and contracting matter’ was not new with Evans.

The quotation just made is taken from the Stremme patent of 1867, which patent of all the prior art, utterly indefinite as it is, comes the nearest to suggesting the fifth step of the Evans method or process.” “It remains that in the art of, and for the purpose of, chipping glass, ripping off a pattern with the glue thereover, and leaving glue to do the chipping upon strict lines, was new with Evans.” “Thompson, like Stremme, practiced hand painting ‘in covering the glass where the same is not to be chipped with a covering of paint or varnish.’ * * * It plainly appears In Thompson’s cross-examination that two things characterized his experiments, viz. ‘cutting through the glue along the edge of the pattern,’ and ‘simply lifting the tin foil, paper, or other covering (?) from the part of the glass which was not to be chipped.’ ” “This patent (Erederiei) shows a suggestion, but only a suggestion, towards that which was subsequently accomplished by Evans.

Erederiei advises the use of a tin-foil pattern, over which a film of beeswax is spread. Then the pattern is removed, whether successfully or not does not appear. Then Erederiei proposes that the parts of the glass not covered by the beeswax shall be ground, blasted, or frosted. The sum and substance of this patent is, as stated in its single claim: ‘The within-described process for preparing the surface of a piece of glass, stone, or other material for the sand-blast,’ etc.

Does this, or anything herein contained, even suggest the removal of a pattern, with glue thereon, at a particular stage of the jellying of the glue?” “Does this Shaw patent even remotely suggest the removal of a pattern, with glue thereon, at a particular stage of the jellying of the glue? Oar further contentions, not heretofore stated or not at least heretofore presented as we now present them, are these: (

a) That an absolutely new result, sounding in the stripping or ripping of the pattern from the glass during a convenient period, which period is naturally and necessarily of a longer or shorter duration, according to the circumstances of temperature or convenience, is found in the patent sued upon; and (

b) that the stripping, as described, (1) constitutes a new step in the process of chipping glass; (2) per se makes a new process; (3) would per se have been patentable; and (4) certainly lends patentable novelty to the first and second claims of the patent sued upon. Whether the pattern is to be stripped off five minutes or twenty-five minutes after it is coated with glue is utterly immaterial to any proper question in this case.

The circuit court finds but two possible elements of novelty, namely, ‘The material of the pattern and the condition of the chipping compound when the pattern is lifted off.’ No contention is made as to' the material of the pattern.

The opinion of this court quotes from the second claim of the patent sued upon, * * * and adds the erroneous statement that ‘this step in the process is clearly anticipated in the prior art.’ • Where, how, when, by whom?” “We respectfully submit that this court has been certainly led into a serious error as to the fact in saying that ‘dry, set, and liquid as used (in this case) are relative terms, and signify no more than sufficiently dry, sufficiently set, or sufficiently liquid, as determined by practice and experiment, to contribute ihost effectively to the desired result.’ ” “A careful review of this record must satisfy the court that the patentee, Evans, was the first to tell the public to rip (not lift, cut, or dig) the pattern off at all in any process having for its object the chipping of glass;. second, that he was the first to tell the public to rip the pattern off with the glue thereover; third, that he was the first to tell the public at what stage of the jellying of the glue to rip this pattern off; fourth, that bj this new process he was the first to tell the public how to do this ripping, and leave sharp, fine, strict, and precise lines of ornamentation.” “If there was in this record no other fact than the one now to be referred to, to sustain our contentions of fact and allegations of error in the conclusions arrived at by the court, it would be sufficient.

Thompson’s testimony and Thompson’s patent constitute the main, not to say the sole, reliance of the defense.

If his abandoned experiments had been pursued with brains and ability lie might possibly have staggered up to the Evans process, but the resultant of his unsuccessful and abandoned experiment was his patent, which, far from even suggesting the ripping off of the pattern with liquid glue thereon, returns to the old, slow, tedious, inaccurate, and impracticable method of trying to cut out the pattern with a needle or sharp tool.” Instead oí Evans having been the first to tell the public to rip the pattern off, in distinction from lifting, cutting, or otherwise removing it, the word “rip” does not appear in the patent or in Evans’ testimony, where he was asked to explain the method of removal.

The words used in the specification are “remove” and “raise,” and in the claims “lift” and “remove.” He was not the first to tell the public to rip, lift, or remove the pattern “with the glue thereover.” In that he was distinctly anticipated by Thompson, and also, but perhaps not so clearly, by BLremme. He was not only not the first to tell, he did not himself tell, the public “at what stage of the jellying of the glue” to remove the pattern.

The claims of tlie patent say, “While such chipping compound is in a liquid condition.” The specification says, “Such raising of the pattern must be effected while the chipping compound there-over is in a semiliquid condition,” while according to counsel it is utterly immaterial “whether the pattern is to be ripped off five minutes or twenty-five minutes after it is coated with glue,” the necessity being simply “a convenient period, — longer or shorter, according to circumstances of temperature or convenience.” Nothing more than this could be necessary to justify this court in saying, as it did, that “dry,” “set,” and “liquid,” as used in.the patents of Shaw, Frederici, and Evans, are relative terms, meaning in each ease that condition which should be found by experience to contribute most effectively to the desired result.

That result is the same in each patent, namely, “smooth and sharply-defined outlines,” or, as it is expressed in the brief, “strict and precise Hues of ornamentation.” In that particular it is manifestly impossible that Evans should have been an inventor.

He could not have been first to tell “how to do this ripping, and leave sharp, fine, strict, and precise lines of ornamentation,” unless the force of the proposition is in the word “ripping,” because, confessedly, Thompson did the same tiling by cutting through the glue, and ‘fiby simply lifting” the pattern from the part of the glass which was not to be chipped.

His testimony shows that sometimes the cutting of the glue was imperfect, and when that was so, or when the glue was in such condition as to flow together behind the knife, as must often have occurred, the lifting of the pattern, it is evident, had the same effect in his process as in that of Evans. There is conceded to be a suggestion of the same thing in Stremme’s patent, and. as explained in our first opinion, it is distinctly shown by Frederici and Shaw. Those patents cannot be excluded from consideration because they belong to the art of sand-blasting.

That is not only a kindred art; it is embodied in the Evans process, and necessarily was known to him. His testimony shows that he not only knew about it, but had for years been engaged in sand-blasting, and was familiar with its processes.

In the practice of that art he had used patterns made of oiled paper, and for this reason, if no other, counsel could not but concede that “no contention is made as to the material of patterns.” Knowing just how patterns covered with wax, set or semiset, or with paint, dry or semidry, could be lifted from the glass so as to limit the effect of the sandblast to smooth and sharply-defined outlines, Evans cannot be credited with invention because his pattern is covered with glue,, and when lifted leaves a like outline and limitation to the chipping effect of the glue, which remains upon the parts of the glass not covered by the pattern.

The lifting of the pattern, and thereby cutting a film of glue, is not different from the lifting of a pattern, and thereby cutting a film of beeswax, paint, paste, mucilage, white of egg, or other semifluid or viscous substance. It is plainly a mistake to attribute to Evans, as a new idea, that the edges of the pattern could be used to cut or sever a semiliquid chipping compound, so that the portion thereof left on the figure would dry within the lines of the figure, and in drying pull or-chip interiorly from such lines.

The drying and pulling are completely shown by Stremme and Thompson, — by Thompson from lines as sharp and precise as by Evans, and the cutting of the liquid by lifting the pattern is shown by Thompson, and also by Frederici and Shaw. The petition is therefore denied.