The Royal Baking Powder Company v. Wright, Crossley, and Co.

and given fair notice what the objection to the Plaintiffs' label really was. There is a considerable body of evidence showing the effect of the circular on the Plaintiffs' customers and how it was understood by them, and this evidence is, in my opinion, not shaken by the Defendants' counsel ingeniously extracting 5 from certain of the Plaintiffs' witnesses a statement to the effect that they understood the circular to mean that the Plaintiffs' powder could not be sold in its then label, being the only label in which it was then on the market. Though on the evidence before me I do not propose to hold that Baker, Judkins, and Boyce, who were engaged in selling the Defendants' goods, were 10 expressly authorised by the Defendants to make the representations which they did to the Plaintiffs' witnesses who deposed to them, and whose testimony I believe, yet, seeing that these three persons were supplied with the circular, and had apparently no other authority for their representations, the inference is that the representations express the impression made on them by the 15 circular. This strongly corroborates the view I have expressed as to the true meaning and effect of the circular. The representations made by these three persons were in fact the natural outcome of the circular, and were caused by the issue of the circular.

For these reasons I hold the Plaintiffs entitled to relief. It was agreed that 20 if the Plaintiffs were entitled to recover damages from the Defendants, the amount should be ascertained by inquiry. I therefore direct an inquiry as to the damage sustained by the Plaintiffs by the issue of the circular of the 20th of April 1897. And I grant an injunction restraining the Defendants from further issuing the said circular or otherwise representing that the Plaintiffs 25 are not entitled to sell their powder as "Royal Baking Powder." The

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Defendants must pay the costs of the action up to and including judgment. I reserve the costs of the inquiry directed, with liberty to apply in Chambers as to those costs, and as to payment by the Defendants of the damage to be ascertained by the inquiry.

Both sides agreeing to that course, it was ordered the inquiry should go to the Official Referee, in rotation, at once.

In the Matter of Dellwik's Patent.

Before THE SOLICITOR-GENERAL.-July 27th, 1898.

IN THE MATTER OF DELLWIK'S PATENT.

Application for leave to amend Specification during proceedings for revocation of patent.-Opposition thereto on the grounds, inter alia, that the amendments proposed would make the Specification, as amended, describe and claim an 5 invention different from and larger than that claimed in the original Specification, and that the amendments were intended to include within the scope of the patent an invention described and claimed in the Specification of a subsequent patent owned by the Opponents.-Amendments allowed by the ComptrollerGeneral.

Held, on appeal, by the Law Officer, that the amendments were proper for allowance. Decision of the Comptroller-General upheld.-Scope of disclaimer.

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In 1890, a patent (No. 2110 of 1890) was granted to Carl Dellwik for an invention for " Improvements in the process of treating incandescents for use "with gas lamps or burners."

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On the 20th of August 1896, application was made by The New Incandescent (Sunlight Patent) Gas Lighting Company, Ld., the assignees and registered owners of the patent, for leave to amend the Specification by way of disclaimer. The request for leave to amend was made in pursuance of an Order of the Chancery Division of the High Court of Justice, made by Chitty, J., on the 31st 20 of July 1896, pending a petition for revocation of the patent by The Incandescent Gas Lighting Company."

The amendments were opposed by The Incandescent Gas Lighting Company upon the grounds that, first, the Specification as amended would describe and claim an invention different from that claimed in the original Specification; 25 second, the amendments proposed were not bona fide, but were intended to include within the scope of the patent the invention described and claimed in the Letters Patent of Haitinger, No. 586 of 1891, which last-mentioned Letters Patent were the property of the Opponents; third, the amendments would, if allowed, make the invention larger than that originally described and claimed; 30 fourth, as a matter of discretion, the proposed jamendments ought not to be allowed.

The Comptroller-General, on the 26th of May 1898, allowed the Complete Specification to be amended as follows, the amendments being shown in erased and italic type :

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"The object of my invention is to provide a method by which incandescents "for the creation and distribution of light by means of gas flames can be "treated so as to be made more durable and so that they will supply an "increased illumination in-variable-colours with the same consumption of gas. "Experience has shewn that one of the principal difficulties to be overcome 40 "in the use of incandescents for lighting purposes, has been the comparatively "short life of the incandescents and the continuous decrease of the candle

* See 13 R.P.C. 591,

In the Matter of Dellwik's Patent.

"power thereof, as well as the comparatively small amount of light disseminated 66 'thereby.

"Heretofore incandescents have been usually manufactured from magnesia, "lime, zircon, and other comparatively poor conductors of heat or such-as-I 5" hereinafter-denominate-non-conducting materials.

"Such-non--conducting materials have-been-used to a considerable extent "with-varying success in providing light-by-the-use-of-gas-flames, but-have "not-been-of such definite-and-certain-value as to have been reduced to 66 general-use-My-invention overcomes-many-of-the-difficulties-attending the 10 "use-of-the-simple-materials hereinbefore-referred to, by-so-treating-them "with-a-material-having-the-quality-of-readily conducting the heat-as-to

"eoncentrate-the-effect-of-the-heat-and-thus-to-utilize-the-flame-temperature "of the gas-to-the-greatest-possible-extent; therefore-I-am-able to furnish "the-highest-incandeseenee, the greatest amount-of-light-with-the-least 15 "possible-strain upon the durability-of-the-incandescent:

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"To carry my invention into effect, I take the ordinary incandescent in "whatever form the same may be desired, or may be found of the greatest practical utility and coat a part of the same with oxide of chromium -material "known to have no-deleterious-effect-upon-the-illuminating-power-of--such 20"incandescent and at the same time-which-shall be one-of-the-materials "known-as-a-good-conductor-of-heat.

"It-will-be-observed that I-prefer-to-coat-only-a-part-of-the-incandescent, "and-not-the-entire-area thereof. This I have found in actual practice-to-be "of great moment. Such part-should-be-the-portion-from-which-the-light-is 25" to-be-disseminated and the-part-where-the-greatest-heat-is-centered:—I have "noticed--that--such parts--of--the-incandescents-as--are--outside-the-hotter "sections-of-the-flame-and-give-a-comparatively small amount-of-disseminated "light;-are-more-useful-in-limiting the zone of greatest-heat-than-in-furnishing "illumination.--By-leaving-such-parts-without-the-application-of-the-conting 30"referred-to, they remain in such condition that they-convey the smallest "amount-of-heat from the hotter area-of-the-incandescents-where-the-light-is "disseminated. Whereas, if such parts are coated with the highly conducting "materials,-the-heat-which I intend-to-concentrate-in-a-narrow-space-is "conveyed-and-spread-out-to--such an extent that its greatest-effect-is 35" diminished, if-not-destroyed:-I do not intend-to-state-that-the-luminous "area-cannot-be extended by increasing the heat and the area of--the "incandescents; but-what-I-de-intend-to-state, is that-in-the-case-of-large-or

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"small-incandescents;-not-all-of-the-same-can-be-profitably-or-usefully-coated

"with-the-materials-referred-to:

Although I have-mentioned the use of materials-having-a-high-power-of "eondueting heat, yet, not-all-materials-having-sach-power-can-be-profitably

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or-economically-employed.-Many-of-such-either-by-colour, texture; physical "properties-or-the chemical effects of the heat-upon them produce-a-result-se "injurious or prejudicial to the light-that they are of no-practical-use-For 45" instance, iron, molybdenum or cerium, although they possess the qualities of being good conductors-of-heat, are not such as--can be utilized-for-the purposes-of-my-invention, -because-their-effect upon the light-is-so-deleterious: "Whereas-heavy-metals such as chromium, niobium,--wolfram,--cobalt, copper, platinum;-iridium and some other-elements-are-at-the-same-time good conductors of heat, and, when treated by my process, reinforce the "effect of the light.

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50 66

In the Matter of Dellwik's Patent.

"I have also found that the same effect even if not-in so high a degree, is "obtained-if-the-non--conducting incandescents are coated in the above "described--manner with oxides of the same--group,-but--of-a--higher "incandescent-power,-or-with-a-compound of such non-conducting oxides-and "some-of-the-more conducting ones, for instance, if-an-incandescent-made-of 5 "-lime-or-magnesia -be-coated-in- the above described manner with oxide "of zirconium, yttrium, lanthanium, didymium or others of the same group; "or-with-one-or-more-of-the-same-oxides mixed-up-with-some-of-the-above

"named-highly-conducting oxides.

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"In-the-course-of-my-researches I-have-observed, that I--ean-produce 10 "different-colours of the light-by coating-the--incandescents-with-different oxides, and this at times-may be of very great-value. Thus-for-instance I "import-a-more-or-less-yellow-shade to the light by coating the incandescent with the oxides-of-chromium, wolfram, cobalt-ete.; a red shade by copper, platinum, iridium; a-green-by-didymium-and-se-forth.

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"To-utilize the proper-materials-above-referred-te, I form a solution of "chromium the material or materials--desired and paint or saturate the "incandescent to be treated to such a point, or at such a part as it is intended "or expected that the same shall become highly luminous, and allow the same "to dry. When properly dried, the incandescent must be submitted to a high 20 "degree of temperature for a short time and until the volatile substances "of the solution are expelled and the incandescent coating or covering is "reduced to such a condition that it will endure as long as the incandescent "shall be useful.

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"I find in practice that when properly treated in the manner herein described 25 a much greater candle power is obtained and that the incandescents also "become more durable than if the same materials are used without such "treatment.

"Having now particularly described and ascertained the nature of the said "invention and in what manner the same is to be performed I declare that 30 "what I claim is :-(1) The herein described process of treating incandescents, "made of which-are-non-conductors-of-heat, such-as the oxides of calcium, "magnesium, aluminium, zirconium and--similar-metals of this group, or "compounds of these oxides, by covering or saturating them with a coating of "refractory chromium oxide of a heavy-metal-or-metals.

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"(2)-The-herein-described process of treating incandescents made of oxide-of "ealcium, magnesium, aluminium, silicium-or of similar-metal or metals-of "this-group,-or-of-a-compound of one or more-of-these-oxides, by covering or saturating them-with-a-coating-of-a-more-refractory-oxide-or-oxides-of "the-same--group, such as the--oxide of zirconium, yttrium, lanthanium; 40 "didymium-and-the-like:

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(3)The herein described process-of-treating incandescents-made-of oxide of "ealeium, magnesium,-aluminium,-or-of-similar-metals of the same group or "of-compounds--of-these-oxides,-by-covering or saturating them-with-a "eoating-of-a-refractory-oxide of heavy metals-mixed with other refractory 15 oxides, such as-the-oxides of zirconium, yttrium, lanthanium, and didymium, "one-or-more-oxides of each-group-being used.

"(4)-The-herein described manner-of-producing-differently-coloured-light "by-coating incandescents-with refractory oxides of different-metals.

The Comptroller-General in his decision stated:-"The ground upon which 50 "the amendments are sought is that the Applicants are desirous of disclaiming "all claims made by the Specification other than and except for the use of

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66

In the Matter of Dellwik's Patent.

"chromium in the treatment of incandescents as described. It is, however, urged by the Opponents' Counsel that the main effect of the amendments "would be to alter the invention from a process in which incandescents of a particular class of substances are coated with another particular class of 5 "substances to a process in which incandescents of certain specified substances "are coated with another certain specified substance. It is also urged that as "there is good subject-matter for a patent in the selection of a particular "substance from a class of substances described in another Specification, the "proposed amendments, if allowed, would make the Specification describe a 10 different invention from that originally described, such different invention "forming the subject-matter of Haitinger's patent, No. 586 of 1891, which "is owned by the Opponents. On the other side, the Applicants' Counsel "urges that the Claim 1 in its original form is equivalent to

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"claims in which chromium,' niobium,' wolfram,' 'cobalt,' 'copper,' 15 "platinum,' 'iridium,' &c. may respectively be substituted for a heavy "metal or metals,' and that therefore there would be no alteration in the "character of the invention, but only excision of a part. He referred to "Cochrane's case (Griffin's Pat. Cas., page 304) in support of his contention. "It will be convenient, in the first instance, to consider the proposed amend20"ments of the claims. It appears to me that the Applicants' Counsel is "correct in his contention that the amendments in Claim 1 are by way of "disclaimer only, and I cannot therefore refuse to allow them. It is admitted by the Opponents' Counsel that no objection can be taken to the excision "of Claims 2 and 3. Claim 4 is a claim for a method of producing 25"differently coloured lights. It seems to me that the amendments proposed "to be made in this claim would make it a claim for a different invention "than that at present claimed. The Counsel for the Applicants is willing "to omit this claim, and there can be no objection to this being done. He "is also willing, instead of substituting the words of suitable colours' in 30 lines 32 and 33 of page 2 for the words 'in variable colours,' to excise "the latter words. This excision I allow. As regards the proposed excision on page 2 of lines 34 to 38, and so much of line 39 as ends with the "word heat,'* I think that as this passage contains the only explanation "to be found in the Specification of what is meant by the expression the 35"ordinary incandescent in line 50, the excision should not be made. I "allow the remaining amendments proposed. They are, in my opinion, all consequential on the amendments which I propose to allow in the claims."

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The Opponents appealed.

Terrell, Q.C., and A. J. Walter appeared for the Appellants; Bousfield, Q.C., 40 M.P., Roger Wallace, Q.C., and Ward Coldridge appeared for the Respondents. Terrell, Q.C., for the Appellants.-The application for leave to amend is made under Section 19, which limits the amendment absolutely to disclaimer. The amendments sought to be made are not by way of disclaimer, but are for the purpose of altering the invention contained in Dellwik's patent so as 45 to cover the invention contained in the subsequent patent of Haitinger. The Respondents pick out two substances, one from each of two classes of substances, which were well known before, and put them together and get a new result. Such selection constitutes invention and is not disclaimer. Haitinger's invention was the selection of substances, and the Respondents wish to get his 50 invention into their patent.

Bousfield, Q.C., for the Respondents.-Our object is to cut this Specification down to the actual thing upon which cur business is founded, and to throw

*Ante, page 682, line 40 to page 683, line 5.