The invention claimed in reissued patent No. 6,954 granted
February 29, 1876, to Joseph Olmstead, assignor by mesne
assignments to the appellants, was substantially anticipated by the
invention described in letters patent in Great Britain granted to
the Earl of Dundonald July 22, 1852, and also by letters patent
granted there to Felig M. Baudouin, April 3, 1857.
A claim in a patent for a process does not cover a condition in
the material used in the process which is not referred to and
described in the specification and claim, within the requirements
of Rev.Stat. § 4888.
Reissued patent No. 6,954 for a process in insulating telegraph
wires being void, it follows that reissued patent No. 6,955 for the
product of the process is also void.
The case was a suit in equity, brought by the appellant, the
Western Electric Manufacturing Company, against the Ansonia Brass
and Copper Company to restrain the infringement of two reissued
letters patent, numbered 6,954 and 6,955 respectively, granted to
the appellant as the assignee of Joseph Olmstead, both dated
February 29, 1876, for improvements in
Page 114 U. S. 448
insulating telegraph wires. The reissues are divisions of
original letters patent No. 129,858, dated July 23, 1872. The
descriptive specifications of the two patents were identical. They
differed only in the claims, the first being for a process, and the
second for the product of the process.
The specification of both patents, after stating that Olmstead
had invented a new and useful improvement in insulating telegraph
wires, proceeded as follows:
"The method of insulating now in use consists in braiding over
the wires a fibrous covering, after which it is dipped in wax, for
the purpose of filling and closing its pores, and, after a
subsequent scraping to remove the surplus wax, it is ready for use.
This method is, however, objectionable inasmuch as it leaves the
covering in a very rough and soft condition, and fails to secure
perfect insulation."
"In my improved method, after the wire has received its coating,
I dip it in paraffine or wax, after which, instead of scraping off
the surplus coating, I pass the whole through a suitable machine
which compresses the covering and forces the paraffine or wax into
the pores and secures perfect insulation. By so compressing, the
covering the paraffine or wax is forced into the pores, and the
surface becomes and appears polished. Wire insulated in this manner
is entirely impervious to the atmosphere, of greater durability,
and less cumbersome than any heretofore made."
The claim of the process patent No. 6,954 was as follows:
"The method of insulating telegraph wire by first filling the
pores of the covering and subsequently compressing this covering,
and thereby polishing its surface, substantially as described."
The claim of the product patent No. 6,955 was "an insulated
telegraph wire, the covering of which has its pores filled and its
surface polished, substantially as described."
The defendant denied in its answer that Olmstead was the first
and original inventor of the improvement described in the patents
or of any substantial or material part thereof or that the same was
patentable or the subject matter of invention, and
Page 114 U. S. 449
that the alleged invention had been previously patented by
letters patent of Great Britain, granted to Thomas Earl of
Dundonald, dated July 22, 1851, and by letters patent of Great
Britain, granted to Felix M. Baudouin, dated April 3, 1857. The
defendant also denied infringement.
The circuit court, on final hearing, dismissed the bill, and the
plaintiff appealed.
MR. JUSTICE WOODS delivered the opinion of the Court. He stated
the facts in the foregoing language and continued:
It is clear that the two patents must stand or fall together. If
the patent for the process is invalid, so must be the patent for
the product. What we have to say will refer to the process
patent.
The alleged invention described in the patent is not for
insulating telegraph wires, for that art long antedated the
original patent. The specification disclaims as a part of the
invention the braiding of a fibrous covering over the wire, and
then dipping it in wax for the purpose of filling and closing the
pores, and the subsequent scraping of the surplus wax from the
wire. The patent does not cover the material in which the wire,
after it has received its fibrous coating, is dipped, which may be
either paraffine, wax, or bitumen, or any other suitable material.
The three substances mentioned had long been used for that purpose.
Nor does the patent specify or cover any device by which the
process is to be carried on. Any suitable machine may be used.
The process described by the patent consists therefore simply in
this: after the wire has received its fibrous coating and been
dipped in paraffine, wax, or other suitable substance, the
compressing and forcing of the paraffine, wax, or other substance,
without scraping off any part of it, into the pores of the fibrous
material by some suitable means. We think this process was not new.
It was substantially anticipated both by the process described
Page 114 U. S. 450
in the patent of Dundonald and in that of Baudouin, the first
dated January 22, 1852, and the other April 3, 1857. Dundonald
describes his process thus:
"I also employ a bituminous material to cover and thus insulate
the conducting wires of electric telegraphs, which are intended to
be placed underground. For this purpose I employ the said bitumen,
either simple or compounded, of a flexible description, and pass
the wire through it when it is in a melted state, then causing the
wire to pass through some die or orifice, which will deprive it of
all the superfluous bitumen. . . . The encasement of this wire with
bitumen may also be affected by covering it with a filamentous
material which has been previously saturated with melted bitumen,
and then passing the wire so covered through a heated die or
orifice so as to melt or soften the bitumen upon the filamentous
material, and press the whole of the coating against the wire in
such a way as to cause it to form one compact continuous covering
of the wire, and thus insure its insulation."
The patent of Baudouin describes his process as follows:
"My invention relates to the preparation of conductors of
electricity for electric telegraphs, being wires insulated to
prevent the loss or deterioration of the electric currents used for
that purpose, and also in the machinery for the preparation of
manufacture of such conductors. I coat the wires with bituminous or
such like fatty matters that are not liable to become hard or
crack, but, on the contrary, are constantly acted on by the
temperature of the atmosphere. Coatings of this material in
themselves are insufficient to maintain the proper protection and
insulation for telegraph conductors, but when combined with other
materials, such as paper, woven fabrics of cotton, silk, wool, or
hemp, in a particular manner are well adapted for the purpose."
I prefer to use three ribbons and bobbins for this purpose, the
first covering of the wire being enveloped by the second in such
manner that the helical junction of the first ribbon is covered by
the second, and the second by the third. The wire is passed through
a bath of hot bitumen, and has the superfluous matter removed by
passing through suitable dies or parts
Page 114 U. S. 451
to scrape and smooth its surface and render it of uniform
thickness. The first and second ribbons are also passed through
bituminous or other suitable matter to render them more impervious
to electricity. The coated and lapped wire is passed through
suitable dies to remove superfluous matter, to smooth down the
lapping of the ribbons, and to compress and cause their proper
adhesion.
"The coated and lapped wire passes through dies or smoothing
holes both in entering and leaving the rotating frame. These dies
or smoothers have a rotary motion, the better to enable them to
wipe and smooth the coated wire."
It is plain that these patents anticipate the process set out in
the specification of the Olmstead process patent. They all three
describe the compressing of the wax, paraffine, or bitumen coating
of a wire covered with the fibrous material, so as to attain the
same result -- namely the insulation of the wire.
The Olmstead patent therefore covers an old process applied to
the same subject, with no change in the manner of applying it and
with no result substantially distinct in its nature. It cannot,
therefore, be a valid patent.
Pennsylvania Railroad Co. v.
Locomotive Truck Co., 110 U. S. 490;
Vinton v. Hamilton, 104 U. S. 485.
The fact that in the process described in the Olmstead patent
the surplus wax or paraffine is not scraped off, but all that
adheres to the wire is compressed against it and forms part of the
covering, is relied on to distinguish that process from those of
Dundonald and Baudouin. But the Dundonald process does not differ
in this respect from that of Olmstead, for in the Dundonald
process, the whole of the coating is pressed against the wire and
is left to form the covering, and as to the Baudouin process, the
difference consists merely in the use of a greater quantity of wax
or paraffine to form the coating. This may be an improvement upon
the Baudouin process, but it does not involve invention.
So far as the present case is concerned, another answer to this
contention of the appellant is that in this respect the defendant
follows the Baudouin and not the Olmstead process by scraping off
the superfluous coating material.
Page 114 U. S. 452
It was insisted in argument by appellant's counsel that one of
the features of the process described in the Olmstead patent was
the allowing of the wax or paraffine covering to cool before
compressing it upon the wire, and as this was not done in the
Dundonald or Baudouin process, they did not anticipate the Olmstead
process. But neither the specification nor claim of the Olmstead
patent mentions, as a part of the process, the cooling of the wax
or paraffine coating before compressing it upon the wire. The
appellant's counsel, however, contends that it must be considered a
part of the process because the polished appearance of the surface
of the covering described in the specification is the result of
allowing the paraffine or wax to cool before compressing it upon
the wire. But clearly a patentee cannot claim the benefit of an
element of his invention thus vaguely and indefinitely hinted at.
The law in force when the patent of Olmstead was issued, Act of
July 8, 1870, Rev.Stat. § 4888, requires that
"Before any inventor shall receive a patent for his invention or
discovery, he shall file in the Patent Office a written description
of the same, and of the manner and process of making, constructing,
compounding, and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art or science to
which it appertains, or with which it is most nearly connected, to
make, construct, compound, or use the same, and he shall
particularly point out and distinctly claim the part, improvement,
or combination which he claims as his invention or discovery."
It is clear that if the patentee intended to include the cooling
of the wax or paraffine before compressing it upon the wire, he has
failed to describe in his specification that element of his
invention as required by the statute. Instead of describing the
process, he mentions a quality of the product and asks the court to
infer the process from that quality. Such a vague and inverted
method of description is not a compliance with the statute. That
part of the alleged invention is not even referred to in the most
distant manner in the claim. It has been held by this Court
that
"the scope of letters patent should be limited to the invention
covered by the claim, and though the claim may be illustrated,
Page 114 U. S. 453
it cannot be enlarged by the language in other parts of the
specification."
Railroad Co. v. Mellon, 104 U.
S. 112. The element of the process under consideration
cannot, therefore, be held to be covered by the patent. The
contention that the patentee intended to include it in his process
is evidently an afterthought.
The result of the views expressed is that both the patents sued
on are void.
Decree affirmed.
