The complete specification was in the following terms: "My invention relates to the manufacture of an illuminant appliance in the form of a cap or hood to be rendered incandescent by gas and other burners so as to enhance their illuminating power. For this purpose I employ a compound of oxide of lanthanum and zirconium or of these with oxide of yttrium, which substances in a finely divided condition when they are heated by a flame give out a full, large, almost pure white light without becoming volatilized or producing scale or ash even after being kept incandescent for many hours, but remain efficient without deterioration even when they are long exposed to the air. "The proportions in which the substances are compounded may be varied within certain limits. I have found the following proportions very suitable : 60 per cent. zirconia or oxide of zirconium, 20 per cent. oxide of lanthanum, 20 per cent. oxide of yttrium. "The oxide of yttrium may be dispensed with, the composition being then : 50 per cent. zirconia, 50 per cent. oxide of lanthanum. "Instead of using the oxide of yttrium, ytterite earth, and instead of oxide of lanthanum, cerite earth containing no didymium and but little cerium may be employed. "For applying the substances mentioned as an illuminant I use a fine fabric, preferably of cotton previously cleansed by washing with hydrochloric acid; I saturate this fabric with an aqueous solution of nitrate or acetate of the oxides, and gently press it until it does not readily yield fluid, so that in stretching or opening out the fabric the fluid does not fill up its meshes. The fabric is then exposed to ammonia gas, and when it has been dried it is cut into strips and folded into plaits. One method of giving the desired shape to the cap or hood is to draw a fine platina wire through the meshes of the net and bend it to the form of a ring so as to give the fabric the shape of a tube, the edges of which are then sewn together with an impregnated thread. The cap or hood thus formed can be supported on cross-wires in the chimney of the lamp. The platina wire ring may be attached to a somewhat stronger platina wire to form a supporting stem by which the net can be secured to a holder on the burner-tube, the net itself being at such a height that the platina ring is an inch or more above the burner. "On igniting the flame, the fabric is quickly reduced to ashes, the residuum of earthy matters nevertheless retaining the form of a cap or hood. "For part of the zirconia a mixture of magnesia and zirconia may be employed with a little loss of intensity of the light." It was next pointed out that the form and construction of the fabric could be varied to suit the burner. Modes of coating with a fresh solution of the salts, and of strengthening the connection of the fabric to the supporting wire were mentioned. The claim was for : "The manufacture substantially as herein described, of an illuminant appliance for gas and other burners, consisting of a cap or hood made of fabric impregnated with the substances mentioned and treated as set forth." In the trial of the action for infringement it was proved that the term "rare earths" at the date of the patent was applied to denote earths consisting mainly of oxides of a group of metals known as the "cerium group;" some of the salts of these metals produced a precipitate with potassium sulphate, others not. Two subgroups were thus distinguished: the "cerium," consisting of the metals cerium, lanthanum, didymium, and samarium, the salts of which produce a precipitate; the other subgroup, called the "yttrium,” consisting of the metals, yttrium, erbium, terbium, and others, did not yield a precipitate. But it was extremely difficult to separate the members of these respective subgroups from each other. The usual sources from which these metals were obtained were: "gadolinite," in which members of both groups were frequently found; "samarskite," which did not contain any of the "cerium" group; and "cerite," not containing the "yttrium” group. The alleged infringement consisted in making mantles of zirconia and erbia, lanthana not being used. "Cerite" earth, mentioned as substitute for lanthana, did not contain erbia. Before the date of the patent no means had been devised successfully for producing light by heating in burning gas substances like those used in Welsbach's invention, which created a new industry. It was held at the trial that the claim was for the whole process by which the illuminating appliance, the hood, was produced, and was not confined to the precise proportions of salts mentioned, but was a much wider claim than one for the use of oxides of zirconium and lathanum as described, and that it had been infringed. On appeal to the Court of Appeal the decision was upheld. Kay, L.J. (p. 572): "Up to the time when this patent was taken out, nothing like the mode of appliance which this patentee invented had ever been used. In that sense it is what is called a 'pioneer' patent. Somebody has adopted the word 'pioneer,' but what is meant is this: that it was the very first time that this mode of applying this substance to a gasflame or any practical mode of doing it had been discovered." Smith, L.J. (p. 578): "This patent is not a patent simply for the use of zirconium and lanthanum; it is a far greater claim than that, and I will read just three lines of my brother Wills' judgment, because he most tersely states what in reality this patent is for. He says: 'Welsbach certainly discovered for the first time a method (or process) by which a skeleton, frail but durable, of the resistant earthy oxides mentioned by him could be produced which would give practically a means of obtaining light by incandescence, which would surpass the economy of the best methods known of getting illumination from gas. His specification claims the whole process by which he arrived at that result.' That, in short and apt language, describes what his patent is for." Notes. In the Welsbach &c., Co. v. The Daylight Incandescent Mantle Co. (17 R. P. C. 141), the above case was distinguished. In the latter case the alleged infringement consisted of the use of zirconia with per cent. of cerium. It was held by the Court of Appeal that this use was not within the claim. Per Romer, L.J. (p. 146): "It is probable that the patentee in this case might with safety have enlarged his claim. But he is bound by that claim. . . . I agree that the Court ought to take a broad view, and ought not to hold that ingredients substantially differ merely because they have different chemical names, and only differ in minor or comparatively unimportant respects from the substances mentioned." P. 147: "It appears to me impossible so to hold in accordance with any principle applicable to the construction of specifications. The fact is that no one, at the date of the specification, had the slightest idea that half per cent. of cerium, or any such quantity of cerium, could be of the slightest use in itself, or with zirconia, for the purposes of the patentee. That it was of use was a remarkable and astonishing discovery of later time, and one not contemplated by the patentee or covered by his specification. In this context it is important to bear in mind the proportions given by the patentee in his specification in which substances must or should be used. I quite agree that in a patent of this kind the Court should not tie down the patentee too strictly to the exact proportions given by him." 1896. RIEKMANN V. THIERRY, 14 R. P. C. 105. Want of Invention—Ingenuity—Analogous Use-Construction of Claim. In 1891 a patent (No. 18,331) was granted to Messrs. Thierry for “an improvement in eyelets." The complete specification began with a statement relating to deficiencies in existing eyelets, and continued: "The object of our invention is to provide a permanent facing for the flange of an eyelet, this facing being of any desired colour, and giving a neat finish to the eyelet. For this purpose, instead of varnishing or otherwise treating the surface of the metal, we fix on the flange, which is the visible part of the eyelet, a casing of celluloid or similar material, such as xylonite, which may be of any desired colour, and which is moulded so as to present a neat rounded 392 facing of the flange. The accompanying drawing is a magnified section of an eyelet with its flange encased with celluloid according to our Thierry's eyelet (Fig. 7) and alleged we do not claim as of our invention. invention. E is the tubular stem or A long description then followed of the modes of manufacture of the eyelet. The claim was for : "A metal eyelet ha ving its flange embedded in celluloid or like material, forming a facing. A facing layer over the flange and a fixing layer under the flange, substantially as described." In an action for infringement the chief defence was that of want of novelty. Four specifications were alleged as disclosing the invention. Of these,2 Figs. 1 and 2 show hooks of metal coated with celluloid according to Smidt's specification (No. 16,238 of 1889) in cross-section and outside view respectively; Figs. 3 and 4 show similar drawings of studs from Smidt's specification (No. 13,402 of 1890); and Figs. 5 and 6 show crosssections of studs of Joyce's American specification (No. 259,867 of 1882). Smidt (1889) also showed an eyelet with a celluloid facing, but one not turned over the edge. Evidence was given at the trial to show that the patentees had much difficulty and made many experiments in perfecting their invention; but The learned judge found that the patent was valid. Held, that there was not sufficient ingenuity shown in the invention of the eyelet to support a patent. Lord Halsbury, L.C. (at p. 614): "I think this patent is bad for lack of invention. The mode of covering a metal stud and coating it with either celluloid, or as the patentees say, some other similar substance, appears to me to be ingenious and useful, and for aught I know to the contrary it 1 The drawing is reproduced in part and reduced as much as is necessary in Fig. 7. Only those are here sketched that are nearest to invention in question. 3 In all these drawings of cross-sections, as here shown, the celluloid is shown by shading in straight lines, and the metal foundation left clear. might have been the subject of a patent. That, however, is expressly disclaimed, and, indeed, I think it is important before considering what the invention claimed is to consider what is disclaimed. . . . It comes to this—any eyelet of any metal, if covered with celluloid or any similar material, is within the patent. My Lords, it appears to me that there is no invention in applying to eyelets either celluloid or any other similar material. Whether there is or is not invention such as will support a patent is a question of fact and degree, and the state of facts and degree in one case can never be any guide in another.' The Lord Chancellor then discussed the facts and decisions in Hinks v. The Safety Lighting Co. (ante, p. 254) and Brook v. Aston (ante, p. 45), and continued: "I refer to these two cases only as illustrative of the proposition that no smallness or simplicity will prevent a patent being good, while mere novelty of manufacture, or usefulness in the application of known materials to analogous uses, will not necessarily establish invention within the meaning of the patent laws." (At p. 116): "Looking at what is claimed, and much more at what is not claimed, it is very difficult to stop short of saying that all eyelets if covered with celluloid or other plastic materials are within. the patent, and if so any button, stud, or hook, which was ever covered with a plastic material would be, equally with the eyelet, an invention whenever it was first so covered; but, whether it would be good subject-matter of a patent or not, it is not new, and therefore, to my mind, there is no invention, though this may be an improved eyelet, and there may, and I think there is, ingenuity in the process of covering it." Lord Davey (at p. 121): "The respondents' Counsel now tells us that the invention is the eyelet itself, which he says is a new and useful article, and therefore patentable, and he likens it to a combination of old matters producing a new and useful result. And if I understand him correctly he argued that no patent could be held to be bad if the subject of it was a new and useful article. If he meant only that a new and useful article in the production of which there is invention is the proper subject of a patent, I suppose nobody will disagree with him. But if he means that an article which is new to the market is therefore proper subject-matter for a patent, irrespective of the question whether the production of it was the result of invention, I do not agree, and I am of opinion that it is not the law." His lordship then quoted the rule in Harwood v. G. N. Ry. Co. (as given, ante, p. 207, note 1), and continued: "It is not enough that the purpose is new or that there is novelty in the application, so that the article produced is in that sense new, but there must be some novelty in the mode of application. By that I understand that in adapting the old contrivance to the new purpose there must be difficulties to be overcome, requiring what is called invention, or there must be some ingenuity in the mode of making 1 Quoted by Ridley, J., in Brooks v. Lamplugh, 14 R. P. C. 615. 2 His lordship probably alluded to the decision of Jessel, M.R., as the patent was there held invalid for insufficiency and want of novelty (ante, p. 257). |