OF THE

Supreme Court of the United States,

AT

JANUARY TERM, 1847.

1*] *JAMES WOOD, Plaintiff in Error, | have invented a new and useful improvement

V.

in the art of manufacturing bricks and tiles. The process is as follows: Take of common

WILLIAM A. UNDERHILL and Aschel H. anthracite coal, unburnt, *such quantity [*2

Gerow, Defendants.

Patent would be void where letters on their face not explicit enough to enable one skilled in similar art to make composition patented without experiment-statement of general rule and exceptions.

In order to obtain a patent, the specification must be in such full, clear, and exact terms as to enable any one skilled in the art to which it appertains to compound and use the invention, with out making any experiments of his own.

as will best suit the kind of clay to be made into brick or tile, and mix the same, when well pulverized, with the clay before [it] is molded; that clay which requires the most burning will require the greatest proportion of coal dust; the exact proportion, therefore, cannot be specified; but, in general, three fourths of a bushel of coal dust to one thousand brick will be correct. Some clay may require one eighth more, and some not exceeding a half bushel. The benefits resulting from this composition are the saving of fuel, and the more general diffusion of heat through the kiln, by which the whole If the patent be for a new composition of mat-contents are more equally burned. If the heat ter and no relative proportions of the ingredients are given, or they are stated so ambiguously and is raised to high, the brick will swell, and be vaguely that no one could use the invention with- injured in their form. If the heat is too moderout first ascertaining, by experiment, the exact ate, the coal dust will be consumed before the proportion required to produce the result, it would be the duty of the court to declare the patent void. desired effect is produced. Extremes are thereBut the sufficiency of the description in patents fore to be avoided. I claim as my invention for machines, or for a new composition of matter, the using of fine anthracite coal, or coal dust, where any of the ingredients do not always possess exactly the same properties in the same degree, is, with clay, for the purpose of making brick and generally, a question of fact to be determined by tile as aforesaid, and for that only claim letters the jury. patent from the United States.

Where a patent was obtained for a new improvement in the mode of making brick, tile, and other clay ware, and the process described in the specification was, to mix pulverized anthracite coal with the clay before moulding it, in the proportion of three fourths of a bushel of coal dust to one thousand brick, some clay requiring one eighth more, and some not exceeding half a bushel, this degree of vagueness and uncertainty was not sufficient to justify the court below in declaring the patent void.

The court should have left it to the jury to say, from the evidence of persons skilled in the art, whether the description was clear and exact enough to enable such persons to compound and

use the invention.

"Dated 9th November, 1836.”

"James Wood.

In July, 1842, he brought a suit against the defendants in error, for a violation of this patent.

And at the trial the defendant objected to the sufficiency of the specification, "because no certain proportion for the mixture is pointed out, but only that such quantity of coal must be taken as will best suit the kind of clay to be made into brick or tile; but that clay which requires most burning will require the greatest quantity of coal dust; the exact proportion cannot, therefore, be specified; but, in general, three fourths of a bushel of coal dust to one thousand brick will be correct. Some clay may require one eighth more, and some not exceeding half a bushel; so that there is no fixed rule by which the manufacturer can make the mixture, but that must be ascertained by experiments upon the clay; and the claiming clause in the specification is only for the abstract general principle of mixing anthracite coal dust with clay, for the purpose of making brick, without any practical rule as to the proportions, which is too vague and uncertain to sustain a patent;" which objection was sustained by the

court. The plaintiff excepted; and the verdict | of mixing anthracite coal dust with clay, for and judgment being against him, the case was brought here upon this exception.

The cause was argued by Mr. Silliman for the plaintiff in error, and Mr. Rowley for the defendants.

Mr. Silliman, for the plaintiff in error, made the following points:

The plaintiff insists

1. That he has in his specification given a 3*] general rule by which *every kind of clay may be much better burned than by any previous process. And that the general proportions specified are, with some exceptions, the very best that can be used.

the purpose of making bricks and tiles, without any practical rule as to the proportions, which is too vague and uncertain to sustain a patent. Suppose this objection true in point of fact, and that no information had *been [*4 intentionally suppressed, and that the qualities of clay varied so much that the proportions most useful could only be ascertained by an experiment on each bed of clay, it might, nevertheless, be a very useful invention, for which the inventor should be, in some measure, compensated by a patent. But this part of the objection is not true in fact, for the claiming clause is of the invention of using fine anthracite coal, or coal dust, with clay, for the purpose of making brick and tile "as aforesaid.” These words "as aforesaid" refer to the gen

a thousand bricks, with the exceptions or variations previously expressed.

That a patent may properly be granted for a beneficial general rule, although there might be some exceptions to it not provided for. 2. That if it is necessary to entitle the plain-eral rule of three fourths of a bushel of coal for tiff to a patent for a most beneficial invention for burning clay of the qualities usually found, that he should also discover the means of burning, to best advantage, clays of qualities not usually found; that his patent should not, therefore, be deemed void on its face, but he should be permitted to prove by persons conversant with the business, that they could instantly determine, on inspection of clays of uncommon qualities, whether they required much more or less, than the usual burning, and how much more or less, so as to regulate the variation of proportions in such manner as to burn to the best advantage.

6. The judgment should be reversed with costs, including the costs in the Circuit Court. Mr. Rowley, for the defendant in error: The patentee's specification is uncertain and insufficient. It furnishes no rule for making bricks, without the manufacturer's first making a series of experiments. The most it does is to prescribe in about what manner the trials are to be conducted; which is not enough to sustain his patent. The King v. Arkwright, Dav. Pat. Cases, 106, per Buller, J.; Turner v. Winter, 1 Term R. 606, per Ashurst, J.; Boulton v. Bull, 2 H. Bl. 484, Buller J.; Harmer v. Playne, 11 East, 101, Lord Ellenborough; The King v. Wheeler, 2 Barn. & Ald. 345, Abbott, Ch. J.; Godson on Patents, 85; Lowell v. Lewis, 1 Mason's R. 182, Story, J.; Langdon v. DeGroot, 1 Paine's R. 203; Phillips on Patents, 83, 267, 268, 283, 284, 289.

3. The plaintiff should have been permitted to show, under his specification, by experts, that any kind of clay of which bricks can be made, however varied the qualities, can be better burnt under his general rule than by any previous process; and if such is the fact, the plaintiff should be entitled to a patent for the discovery, if he had given the general rule only, and had taken no notice of those exceptions, in which some uncommon kinds of clay can be best burned with a greater or less pro- The question presented in this case is a narportion of coal than that specified in the gen-row one, and may be disposed of in a few eral rule. words.

Mr. Chief Justice Taney delivered the opinion of the court:

vention to consist in using fine anthracite coal, or coal dust, with clay, for the purpose of making brick or tile; and for that only he claims a patent. And the only question presented by the record is, whether his description of the relative proportions of coal dust and clay, as given in his specification, is upon the face of it too vague and uncertain to support a patent.

4. The judge in his decision adopts all the The plaintiff claims that he has invented a errors of the defendants objection, which states new and useful improvement in the art of manthat there is no fixed rule by which the manu-ufacturing bricks and tiles; and states his infacturer can make the mixture, but that must be ascertained by experiments upon the clay. Suppose this to be so, and that the inventor has only furnished a guide by which such experiments can be successfully made, and that the subject, on account of the variable qualities of the materials, does not admit of greater certainty, and that by the simplest and cheapest experiments the manufacturer, in consequence of the plaintiff's invention, will be able to burn his bricks much better in less than half the time, and at less than half the cost of burning, by any other process, is not the inventor entitled to a patent for an invention practically so useful?

The fact that not a single brick has for some years past been burned, except according to the plaintiff's specification, is pretty good evidence that the manufacturers have been able to discover some thing from plaintiff's specifi

cation.

5. The objection, as adopted by the court, declares that the claiming clause in the specification is only for the abstract general principle

The degree of certainty which the law requires is set forth in the act of Congress. The specification must be in such full, clear, and exact terms as to enable any one skilled in the art to which it appertains to compound and use the invention; that is to say, to compound and use it without making any experiments of his own. In patents for machines the sufficiency of the description must, in general, be a question of fact to be determined by the jury. And this must also be the case in compositions of matter, where any of the in- [*5 gredients mentioned in the specification do not always possess exactly the same properties in the same degree.

But when the specification of a new composition of matter gives only the names of the substances which are to be mixed together, without stating any relative proportion, undoubtedly it would be the duty of the court to declare the patent to be void. And the same rule would prevail where it was apparent that the proportions were stated ambiguously and vaguely. For in such cases it would be evident, on the face of the specification, that no one could use the invention without first ascertaining by experiment the exact proportion of the different ingredients required to produce the result intended to be obtained. And if the specification before us was liable to either of these objections the patent would be void, and the instruction given by the Circuit Court undoubtedly right.

But we do not think this degree of vagueness and uncertainty exists. The patentee gives a certain proportion as a general rule; that is, three fourths of a bushel of coal dust to one thousand bricks. It is true he also states

Order.

This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of New York, and was argued by counsel; on consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby reversed, with costs; and that this cause be, and the same is hereby remanded to the said Circuit Court, with directions to award a venire facias de novo.

STEPHEN SEWALL, Appellant,

V.

HENRY V. CHAMBERLAIN. Appeal-dismissal-amount in dispute.

the demand of the complainant is susceptible of Where the prayer of a bill in equity shows that definite computation, and that there can be no recovery over the sum of two thousand dollars, the appeal to this court will be dismissed, on motion, for want of jurisdiction.

that clay which requires the most burning will require the greatest proportion of coal dust, and that some clay may require one eighth more than the proportions given, and some not more than half a bushel instead of three fourths. The two last mentioned proportions may, however, be justly considered as exceptions to HIS was an appeal from the Circuit Court of the United States for the Southern Disthose cases only where the clay has some pe-trict of Alabama, sitting as a court of equity. culiarity, and differs in quality from that or- The facts in the case are sufficiently set dinarily employed in making bricks. Indeed, forth in the opinion of the court. in most compositions of matter, some small Mr. Dargan moved to dismiss the appeal difference in the proportions must occasionally for want of jurisdiction. be required, since the ingredients proposed to be compounded must sometimes be in some degree superior or inferior to those most commonly used. In this case, however, the general rule is given with entire exactness in its terms; and the notice of the variations, mentioned in the specification, would seem to be designed to guard the brick maker against mistakes, into which he might fall if his clay was more or less hard to burn than the kind ordinarily employed in the manufacture.

the rule he has stated; and as applicable to THI

It may be, indeed, that the qualities of clay generally differ so widely that the specification of the proportions stated in this case is of no value; and that the improvement cannot be used with advantage in any case, or with any clay, without first ascertaining by experiment the proportion to be employed. If that be the case, then the invention is not patentable. Because, by the terms of the Act of Congress, the inventor is not entitled to a patent unless his description is so full, clear, and exact as to enable anyone skilled in the art to compound and use it. And if, from the nature and character of the ingredients to be used, they are not susceptible of such exact description, the inventor is not entitled to a patent. But this does not appear to be the case on the face of this specification. And whether the fact is so 6*] or not is a question to be decided *by a jury, upon the evidence of persons skilled in the art to which the patent appertains.

The Circuit Court, therefore, erred in instructing the jury that the specification was too vague and uncertain to support the patent, and its judgment must be reversed.

Mr. Justice Wayne delivered the opinion of the court:

This cause having been regularly docketed, the appellee now moves the court to dismiss the appeal, on the ground that the amount in controversy is not large enough to bring the case within the appellate jurisdiction of the Supreme Court.

We have examined the record and find it to be so. By the averments in the complainant's bill, it seems that the subject matter in controversy between himself and the defendant relates to the foreclosure of a mortgage given to the complainant by one Stephen Chandler, upon a lot of land in the city of Mobile, to secure the payment of a promissory note made by Chandler in his favor, bearing date 6th August, 1824, for $485, payable on the first of March thereafter, which was not paid at maturity, for the collection of which the complainant made the defendant his attorney and agent; also to the purchase of the premises, under a decree for its sale, by the defend- [*7 ant, for one hundred and fifty dollars. decree of foreclosure was for the sum of six hundred and twenty dollars ninety-one cents, and the complainant avers that the lot was a valid and sufficient security for the payment of his debt.

The

may be "referred to a master, to compute and | Mississippi, on a certificate of division in opinreport the amount found due your orator by ion between the judges thereof. the foreclosure decree, with the interest thereon, and also to compute the report the value of the mortgaged lot, and its value at the time it was sold and conveyed by the defendant to one Samuel P. Bullard (who is admitted by the complainant to be a bona fide purchaser of the lot from the defendant, without any notice of the complainant's equity), and that the defendant may be decreed to pay, either the amount of the said decree of foreclosure, and interest on the value of said lot of land, or the amount received by the defendant from the sale to Bul lard, if the same were sold for its fair and full value, with all the profits and increase since made by the use of the money, or legal interest thereon, without any deduction of commissions for agency."

From this prayer, the complainant's demand is susceptible of definite computation, and as his recovery could not be extended to an amount above his first or alternative prayer, if the recovery in either case must be below the sum of two thousand dollars, as it would have to be upon his own showing, this court cannot have appellate jurisdiction of the cause. We shall direct the dismission of the appeal.

Order.

This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of Alabama, and was argued by counsel; on consideration whereof, and it appearing to the court here that the matter in dispute does not exceed the sum or value of two thousand dollars, exclusive of costs, it is, therefore, now here ordered and decreed by this court, that this appeal be, and the same is hereby dismissed for the want of jurisdiction.

N. and J. DICK AND COMPANY

V.

HARDIN D. RUNNELS.

Sufficiency of certificate of reason for want of service of notice.

The only question involved was the construction of a part of the 30th section of the Judiciary Act of 1789, 1 Statutes at Large, 88, which part is as follows. After providing for taking the testimony of persons "who shall live at a greater distance from the place of trial than one hundred miles," the section proceeds thus: "Provided, that a notification from the magistrate, before whom the deposition is to be taken, to the adverse party to be present at the taking of the same, and to put interrogatories, if he think fit, be first made out and served on the adverse party, or his attorney, as either may be nearest, if either is within one hundred miles of the place of such caption, allowing time for their attendance after notified, not less than at the rate of one day, Sundays exclusive, for every twenty miles' travel.”

By the 30th section of the Judiciary Act of 1789, (1 Statutes at Large, 88) depositions may be taken in certain cases and notice thereof must we served on the adverse party or his attorney, provided either of them is within one hundred miles of the place where such deposition is taken. A certificate of the person before whom the deposition was taken, that neither the adverse party nor his attorney lived within one hundred S*1 miles of such place, and that, therefore, no notice was made out, is sufficient. It is not necessary for him to state that they were not .actually within one hundred miles. If they had been temporarily within that distance, and the -certifying officer did not know it, the certificate would still have been good.

If either of the two facts, viz., that the party resided within one hundred miles, or that he was temporarily within that distance, and that the magistrate knew it, were established by parol proof, the certificate would then be irregular and

void.

On the trial of the cause, in June, 1838, the plaintiff's counsel offered in evidence a deposition, attached to which was a certificate in these words, viz.:

"And I, the said Paul Bertus, recorder of the first municipality, and acting mayor of the city of New Orleans aforesaid, do certify that the deposition of the said William Christy was taken as aforesaid, because he, the witness, lives at New Orleans aforesaid, a greater distance than one hundred miles from Jackson, the place of trial of the suit or matter of controversy aforesaid, and I caused no notification of the time and place of the taking of said deposition to be made out and served upon Hardin D. Runnels, the adverse party, or his counsel, to be present at the taking of said deposition, and to put interrogatories, if he or they thought proper, because neither the said Hardin D. Runnels nor his counsel live within one hundred miles of the place of caption to this deposition, being the place where the same is taken; and I do further certify, that the deposition was taken down by the witness, and signed by him in my presence, after being duly sworn; and I do further certify, that I am not of counsel or attorney to either of the parties aforesaid, or interested in the event of the cause or controversy aforesaid.

"In testimony whereof I have hereunto set my hand and seal, the day and year first before written. [Seal.]

(Signed)

"Paul Bertus, "Recorder No. 1, Mayor pro tem."

the defendant's counsel to exclude the deposi*And thereupon a motion was made by [*9 tion, on the ground "that the commissioner taking said deposition did not certify that neither the said defendant or his attorney was within one hundred miles of New Orleans, the place of taking the deposition, at the time of taking the same."

Upon which question the judges were opfied to the Supreme Court of the United States; posed in opinion, which is ordered to be certiwhich is done accordingly.

Mr. Bibb, counsel for the defendant, submitted the case to the court.

Mr. Justice McLean delivered the opinion of the court:

The only point raised in this case is, whether