Plastic Fireproof Construction Co. v. City & County of San Francisco

97 F. 620, 1899 U.S. App. LEXIS 3333

• Court: U.S. Circuit Court for the District of Northern California
• Decided: October 20, 1899
• Status: Published

Opinion

HANFORD, District Judge

(after stating the facts). The motion which has been argued by counsel, and submitted to the court for decision, requires me to decide whether, in view of the admitted facts and uncontradicted evidence, the first claim of Mr. Brown’s patent is valid for any purpose whatever. It is for the court to construe the patent, and in doing so it is necessary to give consideration to the drawings and specifications, and the claim set forth in ike patent itself, as well as the declarations of the patentee in the lile wrapper; and I must aiso give effect to the disclaimer which has been made here during the progress of this trial. It is obvious that this first claim of the Brown patent has reference to the production of a particular artificial substance. If it might be regarded as a pateutable invention at all, it would have to be classed as one oí a secondary character, as distinguished from inventions of a primary character. Therefore the claim must be limited to the particular article specified, and it is necessary to keep in mind ¡hat this patent was granted for an invention perfected in the year 1881. Now, what is the article which was at that time produced by the combination of materials according to the formula which at that time Mr. Brown had perfected? Referring to the specifications in the patent, and Mr. Brown's affidavit in the file wrapper, we find that it is an artificial slate, to be used for the same purposes for which natural slate may be used. Natural slate is a metamorphic clay rock. In the quarry and in masses it has cleavage planes, so that it can be readily divided into thin plates or slabs, which are very solid and fine grained, and which may be easily worked and smoothed; and it is therefore useful as a top covering, where such covering is required to be thin, smooth, and water-tight. It is especially valuable for roofing, and in the manufacturing of mantels, billiard tables, and other similar objects. “Whet slate has a fine grain, and makes hones. A tough kind (hornblende slate) is used for flagging aud sidewalks. A soft kind, containing carbon (drawing slate or graphic slate), is used for pencils. Polishing slate has a peculiarly fine grain, and is found in Bohemia. It is used in slips and in powder. Slate clay consists of alumina and silica, and, from the absence of fluxes, makes a refractory fire brick." Slate is also made Into tablets for use in schools, and wherever it is convenient for writings and drawings intended to be expunged. 8 Knight, Mech. Diet. p. 2199. See-, also, Stand. Diet. According to the evidence introduced upon this trial, slate, except when usecl as tablets, and for such purposes as tablets may be used, is only valuable as an exterior or top covering in the roofing of a building, or for side walls, or for the top of a table, or in any place where an even-surfaced, close-grained, bard, durable, noncombnstible, and nonabsorbing substance is desirable. It is used for a top or an outside covering, where thin slabs or strips may be put in place as shingles- and tiles are laid. That is the use of natural slate, and, to produce a substitute for natural slate in a form convenient for use, Mr. Brown perfected his formula for a combination of an interstitial metallic web, with plastic material molded into plates or slabs, with smooth surfaces and uniform planes, so as to be portable after the hardening process, and adapted to be laid in place and joined as rna,y he required in the construction of roofs, and the sheathing of buildings, and any similar purposes. It is so stated in the specifications of this patent, and also in Mr. Brown’s affidavit, which was made for the purpose of obviating the objections to his application with the broad claims which he originally presented. In his specifications he says;

“My invention relates to improvements in roofing and slieathing buildings and other structures, and the object thereof is to obtain an artificial slate of durable and incombustible quality fo take the place of, and to be used for the same purpose as, natural slate.”

I do not find in the patent any suggestion of an idea to provide a new material, having additional tensile strength, which might he used for bridge timbers or the framework of large structures. It was the shell, the outer covering, the top covering, of buildings or other structures, which was in this inventor’s mind, as shown by his declarations all through the record in the patent office. The connection in which he uses the word “slate” in this first claim of the patent shows that he had in mind something in the nature of a slab or strip having uniform planes, and of definite dimensions, — not any particular size, but whatever dimensions might be required in materials to be laid in place, in connection with other similar slabs or strips, to form a covering. Instead of using words which would carry the idea of a claim to a new substance in mass, like slate in a quarry, he uses the article “an,” — “an artificial slate.” This I think fairly implies, as one of the expert witnesses seems to have understood it, that the claim is for material having form and dimensions. In his specifications he speaks of it being molded in form so that afterwards, when the slate has been molded, it may be laid in place. From this description it must be inferred that the manufactured article would be portable, and in shape to be put in place somewhere, instead of being constructed as a continuous, solid formation, constituting a substantial part of a large structure. The kind of interstitial metallic web referred to in the first claim, which the patentee had in mind at the time when he claims to have made the invention, was woven wire. He had no knowledge at that time of expanded metal. And, in the face of the evidence which has been introduced upon this trial, it is now admitted by the plaintiff that there was in fact no originality or invention in the combination of sheets of woven wire with a body material of cement or other plastic substance at that time. Therefore he was in error in supposing that he had made a discovery, or created a new article of manufacture. The combination of materials which he at that time made did not constitute a patentable invention, because in that he had been anticipated. Mr. Brown is not the inventor of expanded metal. After that material had been discovered and described in the Golding patent, there could be no invention in the mere adoption of it as a substitute for a metallic mesh of wire. The expanded metal produced no new result. All that may be said in its favor is that for certain purposes it produces a better result. By the use of expanded metal in place of wire a superior article of artificial slate can be produced, but the mere carrying forward and application of old ideas by the use of the newest and best materials does not require the exercise of the inventive faculties in the human mind. This case seems to come fairly within the rule laid down by the supreme court in the case of Railway Co. v. Rowley, 155 U. S. 621-631, 15 Sup. Ct. 224. The decision of that case appears to rest mainly upon a principle stated in the opinion by Mr. Justice Shiras in the following words:

“A more carrying forward of tlie original thought, a change only in form, proportion, or degree, doing the same thing in the same way, by substantially the same means, with hotter results, is not such an invention as will sustain a patent. Roberts v. Ryer, 91 U. S. 150; Belding Mfg. Co. v. Challenge Corn-Planter Co., 152 U. S. 100, 14 Sup. Ct. 492.”

Having given in brief my opinion upon the questions argued in this case, I feel constrained thereby to instruct the jury, according to the defendant’s request, as follows: Gentlemen of the Jury: The court instructs the jury to render a verdict in favor of the defendant and against the plaintiff, because the first claim of the patent in suit is void for want of novelty. It will not be necessary for you to retire to render your verdict. The form of the verdict has been prepared by the clerk. It only requires the signature of your foreman to complete it. You may choose a foreman, and let him sign this verdict.