General Electric Co. v. Jewel Incandescent Lamp Co., 8331.

• Decision Date: 22 December 1944
• Docket Number: No. 8331.,8331.
• Citation: 146 F.2d 414
• Parties: GENERAL ELECTRIC CO. v. JEWEL INCANDESCENT LAMP CO. et al.
• Court: U.S. Court of Appeals — Third Circuit

146 F.2d 414 (1944)

GENERAL ELECTRIC CO. v. JEWEL INCANDESCENT LAMP CO. et al.

No. 8331.

Circuit Court of Appeals, Third Circuit.

Argued November 18, 1943.

Decided December 22, 1944.

Harrison F. Lyman, of Boston, Mass. (Alexander C. Neave, of New York City, John H. Anderson, of Cleveland, Ohio, and Harry R. Pugh, Jr., of New York City, on the brief), for appellant.

Samuel E. Darby, Jr., of New York City (Paul Kolisch, of New York City, and Kessler & Kessler, of Newark, N. J., on the brief), for appellees.

Before BIGGS, MARIS, and JONES, Circuit Judges.

BIGGS, Circuit Judge.

This is an appeal from a judgment dismissing a complaint alleging infringement of a patent, No. 1,687,510, issued to Marvin Pipkin on August 16, 1928, on an application filed June 29, 1925, for an "Electric-Lamp Bulb." See 47 F.Supp. 818.¹ The patent has two claims and both are in issue.² Pipkin's specification states that the object of his invention "* * * is to produce an inside frosted glass electric light bulb which will be much stronger than those heretofore produced." He discloses a process for obtaining this result by subjecting the interior of the bulb, already etched by hydrofluoric acid, to a strengthening treatment. This consists of treating the interior surface of the bulb with hydrofluoric acid for a second time, the solution then employed being weaker. That the bulb, rendered very fragile by its first treatment with hydrofluoric acid, is greatly strengthened by the second, is not denied. Subjecting glass, already frosted, whether by sand blast or by acid, to a treatment of hydrofluoric acid is old in the art. This is conceded by the plaintiff. The concession is necessary in view of prior publications on the subject.³ In the prior art hydrofluoric acid was put upon glass, already etched or frosted, for the purpose of giving it a fine "satin" finish or "matt". But nothing in the prior art suggested Pipkin's paradox that by destroying more glass the bulb would be strengthened.⁴ Actually, the second treatment with the acid rounds the sharply angular crevices created in the glass by the first etching. If the bulb is then subjected to a blow, it will not fracture as readily for its strength will have been greatly increased. This was the gist of Pipkin's disclosure and it was a very important one for the electric light bulb industry. We must now determine whether the District Court erred in holding the claims invalid.⁵

Pipkin's specification would be appropriate to support process claims. The claims of the patent purport to appropriate a "product." They are very close, however, to being "process" claims. See Red River Refining Co. v. Sun Oil Co., D.C., 29 F. Supp. 636, 641, affirmed by this court, 112 F. 2d 575. Each claim appropriates "A glass electric lamp bulb having its interior surface frosted by etching so that * * *" it will be "characterized by the presence of rounded as distinguished from sharp angular crevices to such an extent * * *"⁶ that the bulb will have the specified degrees of light diffusion and of tensile strength. The italicized portions of the claims can be treated as describing functional characteristics but the claims are product claims and must be so construed. Even if we were to treat the claims as appropriating a process they do not embrace the two steps disclosed and described in Pipkin's specification and it is impossible to read the second step into the claims from the specification.

As product claims there is an insuperable bar to their validity. They appropriate an old product. If the claims of the patent were process claims and appropriated the two step process of Pipkin's specifications they might be held valid under the principle enunciated in Ansonia Brass & Copper Co. v. Electric Supply Co., 144 U.S. 11, 18, 12 S.Ct. 601, 604, 36 L. Ed. 327. In the cited case Mr. Justice Brown stated, "* * * if an old device or process be put to a new use, which is not analogous to the old one, and the adaptation of such process to the new use is of such a character as to require the exercise of inventive skill to produce it, such new use will not be denied the merit of patentability." But it is obvious that the principle quoted cannot be extended for the benefit of a patentee who claims nothing more than a product old in the art. Nor is the plaintiff in the instant case aided by our decision in Gilbert Spruance Co. v. Ellis-Foster Co., 114 F.2d 771, 773. In the patent under consideration in the Gilbert Spruance case Weber achieved a new product and claimed it. In the light of the prior art the claims of Pipkin's patent were rightly held to be invalid.

The judgment is affirmed.

1 The patent was held to be valid and infringed by the...