215 U.S. 161 (1909), 27, Steward v. American Lava Company

Docket Nº:No. 27, 28
Citation:215 U.S. 161, 30 S.Ct. 46, 54 L.Ed. 139
Party Name:Steward v. American Lava Company
Case Date:November 29, 1909
Court:United States Supreme Court

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215 U.S. 161 (1909)

30 S.Ct. 46, 54 L.Ed. 139



American Lava Company

No. 27, 28

United States Supreme Court

November 29, 1909

Argued November 10, 11, 1909




A patent cannot be sustained when the theory and method are introduced for the first time in unverified amended specifications.

The patent for a tip for acetylene gas burners, and for the process of burning acetylene gas, held to be void by the court below and by this Court because the tip was not new, the description too indefinite, the amended specification, which were unverified, brought in new matter and the claim for processes so called were only claims for the functions of the described tip.

155 F. 731 and 155 F. 740 affirmed.

The facts are stated in the opinion.

HOLMES, J., lead opinion

MR. JUSTICE HOLMES delivered the opinion of the Court.

These are bills in equity, brought by the petitioners to restrain the infringement of letters patent No. 589,342, issued to the assignee of Edward J. Dolan, and dated August 31, 1897. The patent was held invalid by the Circuit Court of Appeals for the Sixth Circuit. American Lava Co. v. Steward, 155 F. 731 and 740. It had been sustained by the Circuit Court of Appeals for the Second Circuit, Kirchberger v. American Acetylene Burner Co., 128 F. 599, and a writ of certiorari was granted by this Court to the first-mentioned circuit court of appeals.

The patent, so far as it comes in question here, is for a tip for acetylene gas burners and for the process of burning

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acetylene gas in the mode set forth. The court below held that the tip was not new, that the description was too indefinite, that the amended specifications brought in entirely new matter not sworn to, and that the claims for processes, so called, were only claims for the functions of the tip described.

A few words as to the conditions and knowledge at the time of the alleged invention will help to make the discussion plain. Acetylene gas began to be produced on a large scale for commercial purposes about 1895. It is very rich in carbon, and therefore has great illuminating power, but, for the same reason, coupled with the relatively low heat at which it dissociates and sets carbon free, it deposited soot or unconsumed carbon, and soon clogged the burners then in use. It was possible to secure a complete consumption of carbon by means of the well known Bunsen burner. This consists of a tube or cylinder pierced on the sides with holes for the admission of the air, into one end of which a fine stream of gas is projected through a minute aperture, and from the other end of which it escapes and then is burned. A high pressure is necessary for the gas in order to prevent its burning back. The ordinary use of the Bunsen burner is to develop heat, and to that end a complete combustion, of course, as desired. But, with an immediately complete combustion, there is little light. The yellow light of candles and gas jets is due to free particles of carbon at a red heat, but not yet combined with oxygen, or, as we commonly say, consumed. On the appearance of acetylene gas, inventors at once sought to apply the principle of the Bunsen burner with such modifications as would produce this result. In doing so, they found it best to use duplex burners -- that is, burners the outlets of which were inclined toward each other so that the meeting of the two streams of gas formed a flat flame, and to let in less air.

In this state of things, Dolan filed his application on February 18, 1897. The object was said to be

to provide a burner the use of which will result in perfect combustion of the gas, and the production of a flame which will afford the greatest

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possible degree of light from a given amount of gas consumed.

A duplex burner on the Bunsen plan was described, but with no indication of any patentable device. The drawings were merely diagrams, and, with reference to what is to follow, we may mention that two of them show two sets of air holes, one above the other, and that the specification even now expressly allows "two or more" [30 S.Ct. 48] sets. The claims were rejected on April 6, 1897, and in the same month Dolan changed his attorney. On May 20, a new specification and new claims were filed by the new attorney, but not sworn to by...

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