STEWARD v. AMERICAN LAVA COMPANY.

MORITZ KIRCHBERGER v. AMERICAN LAVA
COMPANY.

CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE SIXTH CIRCUIT.

Nos. 27, 28. Argued November 10, 11, 1909.—Decided November 29, 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 specifications, which were unverified, brought in new matter and the claims for processes so called were only claims for the functions of the described tip.

155 Fed. Rep. 731, and 155 Fed. Rep. 740, affirmed.

THE facts are stated in the opinion.

Mr. Charles Neave, with whom Mr. F. P. Fish and Mr. William G. McKnight were on the brief, for petitioners.

Mr. Louis C. Raegener for respondents.

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. 589342, 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 Fed. Rep. 731 and 740; S. C., 84 C. C. A. 157 and 166. It had been sustained by the Circuit Court of Appeals for the Second Circuit, Kirchberger v. American Acetylene Burner Co., 128 Fed. Rep. 599; S. C., 64 C. C. A. 107, 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 acetyVOL. CCXV-11

lene 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 wellknown 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 is 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

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' 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 Dolan, and on these, with no material change, the patent was granted. In this specification, as in the former, though in different words, it is said that "in order to prevent the deposit of carbon within the burner or at the burner top and thereby insure a perfect combustion and a smokeless flame at the point where the same is formed, I provide a series of inclined air passages, a, a, which lead into the enlarged passage, E, above the point at which the contracted opening, C, is provided," The inclined air

1

1 The following are copies of Dolan's Fig. 1, and Fig. 2.

passages are the holes in the sides of the Bunsen burner, E is the cylinder, or tube, and the contracted opening, C, is the point at which the gas enters the tube. This device, and nothing else, is pointed out as the means for preventing the clogging of the tips. A preference is stated for a burner in duplex form.

In the new specification, however, it was said that the operation 'seems to be' that the gas draws in on all sides an envelope of air through the openings a, &c., so far stating the Bunsen principle, but adding that "the result of this arrangement seems to be to so cool the outside of the flame as to prevent any deposit of carbon at the point of egress." And another paragraph was as follows: "The structure of my burner is such that if all of the burner were cut off in a horizontal plane immediately above the outlet C [the point where the gas enters the upper chamber] the general shape and condition of the flame would not be modified, but in this case an immediate combustion would occur at the outlet. Under the conditions of this burner the point where the gas reaches its kindling temperature is carried upward, but the general shape of the escaping gas body is not materially modified." It was stated earlier that "the result here accomplished would not be accomplished in an ordinary air-mixing burner in which the air was mingled generally with the body of the gas," and that "in my burner an absolutely unobstructed passage is provided for the escape of the original jet of gas formed by the constricted opening C. By reason of this fact it is substantially necessary to have two jets if a flame of considerable candle power is desired."

The claims allowed and in controversy here are as follows:

"1. The process of burning acetylene gas, which consists in projecting a small cylinder of gas, in surrounding the same with an envelop of air insufficient to cause combustion of all the gas, and in finally supplying the gas with an additional amount of oxygen by allowing the stream of gas to expand

above the burner-tip into contact with the air, thereby burning the same, substantially as described.

"2. The process of burning acetylene gas, which consists in projecting toward each other two cylinders of acetylene gas, in surrounding the same with envelops of air insufficient to produce combustion of all the gas, and in finally causing the cylinders of gas to impinge upon each other and produce a flat flame, substantially as described.

"3. The combination in an acetylene-burner of the block A having the minute opening C, the cylindrical opening E, opening without obstruction to the atmosphere, and the airpassages a, substantially as described."

The ground upon which these claims are maintained is the theory indicated in one of the passages that we have quoted, to the effect that the gas emerges to the air surrounded by a mainly unmixed flow of air carried with it from the cylinder containing the holes a, a, and that this so cools the outside of the flame as to prevent a deposit of carbon. If this theory is not true and if all there is to the Dolan tip or burner is to provide for a mixture of air with the gas in the cylinder sufficient to secure complete combustion of all that is burned near the point of emergence, but insufficient to burn all the gas, the patent must fail. For this latter contrivance was well known, and if the shortness of the Dolan tip, which we are about to mention, has no other effect than to diminish the amount of air received it does nothing new. Moreover, unless the theory of the cooling envelop so dominates the specification as to explain what is doubtful and ambiguous in it, the claim would not be for what now is said to be the characteristic of the Dolan tip. The characteristic of the Dolan tip now is said to lie in the fact that the cylinder is very short, as, it is said, it must be for it to be true that the shape of the flame would not be modified by cutting it off. The shortness of the cylinder is supposed to prevent the mixing of the air and to produce the result desired.

But this theory of cooling not only is disputed in the testi