MR. JUSTICE REED delivered the opinion of the Court.
Petitioner, General Electric Company, brought this patent infringement suit based on Pacz Patent No. 1,410,499, relating to a tungsten filament for incandescent lamps. The patent, issued March 21, 1922, on an application filed February 20, 1917, contains process and product claims; only the latter are here involved. The District Court for Eastern New York held claims 25, 26 and 27 valid and infringed, and gave petitioner a decree for an injunction and accounting. 17 F.Supp. 901. The Court of Appeals for the Second Circuit held that petitioner's product was anticipated by filaments produced under the teachings of the Coolidge Patent No. 1,082,933, and reversed with directions to dismiss the bill of complaint. 91 F.2d 904. This decision conflicted with that handed down by the Court of Appeals for the Ninth Circuit, Anraku v. General Electric Co., 80 F.2d 958, which held
In incandescent lamps, the tungsten filament, through which the electric current passes, grows more luminous than the carbon filament of the early days of the art. There were faults of "offsetting" and "sagging," however, affecting the efficiency of the first tungsten filaments. "Offsetting" occurs when, during heating in the use of the lamp, the filament forms crystals which extend their boundaries across the entire diameter of the filament, substantially perpendicular to its axis. The crystals in the filament thus come to have an appearance, somewhat analogous to the joints in a bamboo rod. Lateral slipping of the crystals reduces the cross-sectional area at the point of contact of the crystals with the result that the temperature at that point is increased, thus hastening the burnout, and the filament is weakened. "Sagging" is a change of position by the filament during incandescence. It elongates and thus is forced out of the plane it occupied between fixed supports. Sagging has many objections. The sagging filament may touch the glass and end the life of the lamp. In gas-filled lamps, when sagging causes the coils to spread apart, the gas flows in between the coils and unduly cools the filament. Combatting sagging by additional supports is also said to cool the filament, and reduce electrical efficiency.
Pacz undertook to remedy these faults. He carried out many experiments, and his 218th effort, made while he was in the employ of petitioner company, yielded the discovery disclosed by the patent in suit. The specification asserts that by means of his invention "the sagging is substantially eliminated and `offsetting' of the filament is substantially prevented, during a normal or commercially useful life of the lamp." He brings "into intimate
"When the metal reaches the temperature at which extensive grain growth would ordinarily take place, the presence of this material intimately associated with the tungsten particles has a marked effect on the shape and size of the tungsten grains. The ingot of tungsten thus produced, whether it be due to the fact that the grains have not reached the equilibrium grain size or to other causes, is particularly susceptible to grain growth during subsequent heat treatments.
"The probable reason why filaments made according to my invention do not sag, is that the structure is comparatively coarse grained. The coarse grained filament produced by means of my invention does not `offset' so as to cut short the life of the lamp appreciably."
The District Court found that Pacz's patent exhibited novelty and invention; that Pacz produced large crystals early in the life of the lamp; that although coarse-grained and thus non-sagging, filaments meant "offsetting" to the art, where it was "common knowledge" that grains large enough to extend across the filament induced slippage, Pacz procured a particular kind of coarse-grained filament which did not "offset" because of the nature of the boundaries of the grains, their contour being "a very important element."
The Circuit Court of Appeals held that the Pacz product was anticipated by Patent No. 1,082,933, issued December 30, 1913, to William D. Coolidge for a process of producing ductile tungsten for incandescent electric lamp filaments and for the product itself.
"25. A filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device."
We need not inquire whether Pacz exhibited invention, or whether his product was anticipated. The claim is invalid on its face. It fails to make a disclosure sufficiently definite to satisfy the requirements of R.S. § 4888, 35 U.S.C. § 33. That section requires that an applicant for a patent file a written description of his discovery or invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains . . . to make, construct, compound and use the same; . . . and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery." We may assume that Pacz has sufficiently informed those skilled in the art how to make and use his filament. The statute has another command. Recognizing that most inventions represent improvements on some existing article, process or machine, and that a description of the
Pacz did not adequately set out "what he claims to be new." The tungsten filament "made up mainly of a number of comparatively large grains," differentiates the
The claim further states that the grains must be "of such size and contour as to prevent substantial sagging and offsetting" during a commercially useful life for the lamp. The clause is inadequate as a description of the structural characteristics of the grains. Apart from the statement with respect to their function, nothing said about their size distinguishes the earliest filaments, and nothing whatever is said which is descriptive of their contour (termed by the District Court a "very important element"), not even that they are irregular.
A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty
The Circuit Court of Appeals below suggested that "in view of the difficulty, if not impossibility, of describing adequately a number of microscopic and heterogeneous shapes of crystals, it may be that Pacz made the best disclosure possible, . . ." But Congress requires, for the protection of the public, that the inventor set out a definite limitation of his patent; that condition must be satisfied before the monopoly is granted.
The product claims here involved cannot be validated by reference to the specification. Assuming that in a proper case a claim may be upheld by reference to the descriptive part of the specification in order to give definite content to elements stated in the claim in broad or functional terms,
Finally, the product claims may not be saved by a limitation to products produced in accordance with the process set out in the specification. This construction, though possibly of no avail against respondent, might add to the protection afforded petitioner by the process claims, if they are valid, in view of its application to filaments produced abroad. But putting aside questions as to the general propriety of such a construction,
For reasons set out, claims 25, 26, 27 are invalid. The judgment is
MR. JUSTICE CARDOZO took no part in the consideration or decision of this case.
"27. A filament for electric incandescent lamps or other devices, composed of tungsten containing less than three-fourths of one percent of non-metallic material and made up mainly of comparatively large grains of such size and contour as to prevent substantial sagging or offsetting during a normal or commercially useful life for such a lamp or other device."
"Such crystals seem to increase in size in much the same manner as crystals formed in liquid solutions, and, if the crystals become large enough to extend almost or entirely across the filament, adjacent crystals tend to slip along their cleavage planes thereby giving the filament the offset or faulted appearance above referred to." Myers and Hall patent, No. 1,363,162.
"28. A coiled filament composed substantially of tungsten and capable of use in an electric incandescent lamp without either substantial sagging or offsetting during a normal or commercially useful life.
"29. A coiled filament composed mainly of drawn tungsten and capable of use in an electric incandescent lamp without substantial sagging and without substantial offsetting during a normal or commercially useful life."
Indeed, those merely skilled might have suspected the absence of crystals large enough to extend across the entire section of the filament, in view of the efforts of other patentees to avoid such crystals, (Coolidge, No. 1,082,933, p. 2, 1. 13; Myers and Hall, No. 1,363,162, p. 1, 1. 56), and in view of the "common knowledge in the art that where grain boundaries, large enough to extend across the filament, were produced, there would be bound to be slippage" (17 F.Supp. 901, at 903); yet those are the crystals found in respondent's lamps.
See also National Carbon Co. v. Western Shade Cloth Co., 93 F.2d 94, 97:
"It has been said that a claim for a product produced by any process which will produce a like result covers the product only when made by equivalent processes. Pickhardt v. Packard (C.C.), 22 F. 530."