In order to obtain a patent, the specification must be in such
full, clear, and exact terms as to enable anyone skilled in the art
to which it appertains to compound and use the invention without
making any experiments of his own.
If the patent be for a new composition of matter, and no
relative proportions of the ingredients are given, or they are
stated so ambiguously and vaguely that no one could use the
invention without first ascertaining, by experiment, the exact
proportion required to produce the result, it would be the duty of
the court to declare the patent void.
But the sufficiency of the description in patents for machines,
or for a new composition of matter, where any of the ingredients do
not always possess exactly the same properties in the same degree,
is generally a question of fact to be determined by the jury.
Where a patent was obtained for a new improvement in the mode of
making brick, tile, and other clay ware, and the process described
in the specification was to mix pulverized anthracite coal with the
clay before moulding it, in the proportion of three-fourths of a
bushel of coal dust to one thousand brick, some clay requiring
one-eighth more, and some not exceeding half a bushel, this degree
of vagueness and uncertainty was not sufficient to justify the
court below in declaring the patent void.
The court should have left it to the jury to say, from the
evidence of persons skilled in the art, whether the description was
clear and exact enough to enable such persons to compound and use
the invention.
It appeared that in the year 1836, Wood took out amended letters
patent for "a new and useful improvement in the mode of making
brick, tile, and other clay ware," and filed the following
specification of his invention:
"Be it known that I, the said James Wood, have invented a new
and useful improvement in the art of manufacturing bricks and
tiles. The process is as follows:"
"Take of common anthracite coal,
Page 46 U. S. 2
unburnt, such quantity as will best suit the kind of clay to be
made into brick or tile, and mix the same, when well pulverized,
with the clay before [it] is moulded; that clay which requires the
most burning will require the greatest proportion of coal dust; the
exact proportion, therefore, cannot be specified, but in general
three-fourths of a bushel of coal dust to one thousand brick will
be correct. Some clay may require one-eighth more, and some not
exceeding a half-bushel. The benefits resulting from this
composition are the saving of fuel, and the more general diffusion
of heat through the kiln, by which the whole contents are more
equally burned. If the heat is raised too high, the brick will
swell and be injured in their form. If the heat is too moderate,
the coal dust will be consumed before the desired effect is
produced. Extremes are therefore to be avoided. I claim as my
invention the using of fine anthracite coal or coal dust with clay
for the purpose of making brick and tile as aforesaid, and for that
only claim letters patent from the United States."
"JAMES WOOD"
"Dated 9 November, 1836"
In July, 1842, he brought a suit against the defendants in
error, for a violation of this patent.
And at the trial the defendant objected to the sufficiency of
the specification
"because no certain proportion for the mixture is pointed out,
but only that such quantity of coal must be taken as will best suit
the kind of clay to be made into brick or tile, but that clay which
requires most burning will require the greatest quantity of coal
dust; the exact proportion cannot, therefore, be specified; but in
general three-fourths of a bushel of coal dust to one thousand
brick will be correct. Some clay may require one-eighth more, and
some not exceeding half a bushel, so that there is no fixed rule by
which the manufacturer can make the mixture, but that must be
ascertained by experiments upon the clay, and the claiming clause
in the specification is only for the abstract general principle of
mixing anthracite coal dust with clay for the purpose of making
brick, without any practical rule as to the proportions, which is
too vague and uncertain to sustain a patent,"
which objection was sustained by the court. The plaintiff
excepted. And the verdict and judgment being against him, the case
was brought here upon this exception.
Page 46 U. S. 4
MR. CHIEF JUSTICE TANEY delivered the opinion of the Court.
The question presented in this case is a narrow one, and may be
disposed of in a few words.
The plaintiff claims that he has invented a new and useful
improvement in the art of manufacturing bricks and tiles, and
states his invention to consist in using fine anthracite coal, or
coal dust, with clay, for the purpose of making brick or tile, and
for that only he claims a patent. And the only question presented
by the record is whether his description of the relative
proportions of coal dust and clay, as given in his specification,
is upon the face of it too vague and uncertain to support a
patent.
The degree of certainty which the law requires is set forth in
the act of Congress. The specification must be in such full, clear,
and exact terms as to enable anyone skilled in the art to which it
appertains to compound and use the invention -- that is to say, to
compound and use it without making any experiments of his own. In
patents for machines, the sufficiency of the description must, in
general, be a question of fact to be determined by the jury. And
this must also be the case in compositions of matter, where any
of
Page 46 U. S. 5
the ingredients mentioned in the specification do not always
possess exactly the same properties in the same degree.
But when the specification of a new composition of matter gives
only the names of the substances which are to be mixed together,
without stating any relative proportion, undoubtedly it would be
the duty of the court to declare the patent to be void. And the
same rule would prevail where it was apparent that the proportions
were stated ambiguously and vaguely. For in such cases it would be
evident on the face of the specification that no one could use the
invention without first ascertaining by experiment the exact
proportion of the different ingredients required to produce the
result intended to be obtained. And if the specification before us
was liable to either of these objections the patent would be void
and the instruction given by the circuit court undoubtedly
right.
But we do not think this degree of vagueness and uncertainty
exists. The patentee gives a certain proportion as a general rule
-- that is, three-fourths of a bushel of coal dust to one thousand
bricks. It is true he also states that clay which requires the most
burning will require the greatest proportion of coal dust, and that
some clay may require one-eighth more than the proportions given,
and some not more than half a bushel instead of three-fourths. The
two last-mentioned proportions may, however, be justly considered
as exceptions to the rule he has stated, and as applicable to those
cases only where the clay has some peculiarity and differs in
quality from that ordinarily employed in making bricks. Indeed, in
most compositions of matter, some small difference in the
proportions must occasionally be required, since the ingredients
proposed to be compounded must sometimes be in some degree superior
or inferior to those most commonly used. In this case, however, the
general rule is given with entire exactness in its terms, and the
notice of the variations, mentioned in the specification, would
seem to be designed to guard the brickmaker against mistakes into
which he might fall if his clay was more or less hard to burn than
the kind ordinarily employed in the manufacture.
It may be indeed that the qualities of clay generally differ so
widely that the specification of the proportions stated in this
case is of no value, and that the improvement cannot be used with
advantage in any case or with any clay without first ascertaining
by experiment the proportion to be employed. If that be the case,
then the invention is not patentable, because, by the terms of the
act of Congress, the inventor is not entitled to a patent unless
his description is so full, clear, and exact as to enable anyone
skilled in the art to compound and use it. And if, from the nature
and character of the ingredients to be used, they are not
susceptible of such exact description, the inventor is not entitled
to a patent. But this does not appear to be the case on the face of
this specification. And whether the fact is so or not is a question
to be decided
Page 46 U. S. 6
by a jury upon the evidence of persons skilled in the art to
which the patent appertains. The circuit court therefore erred in
instructing the jury that the specification was too vague and
uncertain to support the patent -- and its judgment must be
Reversed.
Order
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States of the Southern
District of New York, and was argued by counsel. On consideration
whereof it is now here ordered and adjudged by this Court that the
judgment of the said circuit court in this cause be and the same is
hereby reversed with costs, and that this cause be and the same is
hereby remanded to the said circuit court with directions to award
a
venire facias de novo.