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December 9, 1942


The opinion of the court was delivered by: SMITH

This is a suit for the infringement of Patent No. 1,687,510, issued on the application of Marvin Pipkin, who, prior to the issuance thereof, assigned all right, title and interest therein to the plaintiff. The patent covers an article of manufacture therein identified as an "Electric Lamp Bulb". This suit is directed to a similar article of which the defendant Jewel Incandescent Lamp Company is the manufacturer, and the defendant Nulite Electric Company is the distributor. The defendants deny infringement and challenge the validity of the patent.

The invention of the patent relates to a frosted glass bulb of the type in common use in incandescent lamps, but is directed particularly to an improvement therein, to wit, an interior mat surface "characterized by the presence of rounded as distinguished from sharp angular crevices." The advantages of the frosted interior, as well as the disadvantages of the frosted exterior, had been generally recognized prior to the present invention and, therefore, do not require recitation here; but, it had also been recognized that the frosted interior, although otherwise advantageous, impaired the strength of the bulb. The primary object of the invention was to overcome this defect without destroying the diffusive qualities of the mat surface. The improvement accomplished this desired result.

 The determination of the ultimate issues requires a determination of the scope of the allowed claims, which, in the opinion of the Court, is narrow. The invention is defined in claim 1, which is typical, as follows: "A glass electric lamp bulb having its interior surface frosted by etching so that the maximum brightness of an ordinary incandescent lamp comprising such a bulb will be less than twenty-five per cent of that of said lamp with a clear bulb, said interior bulb surface being characterized by the presence of rounded as distinguished from sharp angular crevices to such an extent that the strength to resist breakage by impact is greater than twenty per cent of that of a clear bulb." When the allowed claims are read and interpreted in the light of the rejected claims and the prior art, both of which are hereinafter discussed, it is evident that the invention of the patent, measured by the claims, is restricted to a glass bulb possessing an interior mat surface "characterized by the presence of rounded as distinguished from sharp angular crevices." There is no other feature, except those which are exclusively functional, to which the patentee lays claim.

 It is conceded that the described improvement, to wit, the interior mat surface "characterized by the presence of rounded as distinguished from sharp angular crevices", is the unavoidable result of a chemical etching process which had been in common use in the glass industry for many years prior to the present invention. This result, like many chemical phenomena, is so inherent in the process that it is difficult, if not impossible, to alienate the defined surface from the process which produces it. The claims of the patent in suit, as well as the disclosures of the prior art references, must be read in the light of this fact if their full import is to be appreciated.

 The claims in suit, although directed to an improvement in an article of manufacture, to wit, the interior mat surface, are so drafted as to necessarily embrace the chemical process by which the defined result is produced. The process and the result are so interrelated that they are inseparable. It follows that the claims, although they appear to be directed to a structure, are anticipated by earlier disclosures of the process incorporated into them either by implication or otherwise. Red River Refining Co. v. Sun Oil Co., D.C., 29 F.Supp. 636, affirmed 3 Cir., 112 F.2d 575. The language of Judge Kirkpatrick in the cited case is particularly applicable here. It is therein stated, at page 641 of 29 F.Supp., that: "Many descriptive terms used in product claims necessarily imply a reference to processes, and thus it sometimes occurs that what appears to be a product claim is in reality for a process. While these claims may be dealt with as general product claims, disclosures of prior processes which anticipate the process incorporated into them and which will produce identical products, necessarily anticipate even though they do not specifically describe or claim the products." There is in each of the claims in suit an explicit reference to the etching process as the only means by which the result may be produced. The purported invention is not, as the plaintiff contends, an article of manufacture "however produced", but an improvement therein resulting only from the application of the identified process, and no other. Cf. Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 493, 23 L. Ed. 952.

 It clearly appears from the prior art publications that long before the present invention extensive studies had been made of the chemical etching process which had been in common use in the glass industry. The results of these studies had been widely published, and there was available to Pipkin, at the time of his invention, a fund of pertinent knowledge. It had been discovered and published that the primary treatment of glass with etching solutions of well known formulae produced a mat surface characterized by the presence of microscopic hexagonal or octagonal depressions and acute angular interstices. It had also been discovered and published that the secondary treatment of such a mat surface with dilute hydrofluoric acid reduced the acute angles and produced concave interstices, thereby imparting a smooth finish. The process of multiple etching, recommended by Pipkin in his specifications, as well as the results of its application, defined by Pipkin in his claims, had been studied and publicly revealed as early as 1887, if not earlier. These conclusions are amply supported by the relevant prior art publications *fn1" relied upon by the defendant. Those which are apposite are worthy of special consideration.

 Reinitzer, Contributions to the Knowledge of Glass Etching, Die Glashutte, published in 1887, presents such an exhaustive study of the subject matter that it is difficult to select any part of the text as particularly applicable without detracting from the full significance of its disclosures. This is equally true of Tillotson, On the Relation Between the Physical Properties and Chemical Composition of Glass Etch Figures, The Journal of Industrial and Engineering Chemistry, published in 1917. These papers disclose the multiple etching process recommended by Pipkin in his specifications and describe, in language almost identical with that of his claims, the mat surface claimed by him as the essential feature of his invention, the unavoidable result of the process. It seems evident, if these disclosures are accorded their comprehensive significance, that there is no patentable feature which distinguishes the mat surface defined by Pipkin from that described by both Reinitzer and Tillotson.

 It is particularly significant that Reinitzer, in 1887, and Tillotson, in 1917, not only revealed that the multiple etching process imparted to the glass a smooth mat surface, but recognized that such a surface possessed definite diffusive qualities of utility, a functional characteristic embodied in each of the claims in suit. It is of further significance that each of them taught that the physical characteristics of the mat surface, and consequently the diffusive qualtities inherent therein, were dependent upon and controllable in the successive steps in the process.

 There are but three of the prior art patents relied upon by the defendants which are particularly relevant: The Kennedy Patent (No. 733,972), the Wood Patent (No. 1,240,398) and the Correll Patent (British -- No. 166,133). The Webb Patent (No. 122,696) and the Archer Patent (No. 152,059) are relevant only because of their disclosure that the etching of the interior surface of hollow glassware had been practiced as early as 1871. The Harrison Patent (No. 1,299,936) is irrelevant because its disclosures are too remote.

 It is unnecessary, however, to amplify the disclosures of Kennedy by incorporating therein the earlier teachings of others. It was convincingly demonstrated at the trial of this cause that a bulb frosted according to the method of Kennedy was comparable in strength to the bulb defined by Pipkin in his claims. It is apparent, unless the earlier teachings are totally disregarded, if the method as demonstrated is followed, that the mat surface of the respective bulbs are identical, whether frosted according to the teachings of Kennedy or the recommendations of Pipkin. If the method of Kennedy is followed, as it was in the demonstration, the unavoidable result is the bulb defined by Pipkin in his claims. The success of the demonstration must be attributed to the use of hot water in the rinsing operation. It seems obvious that the rinsing, as thus carried out, is equivalent to washing with a hot solution of dilute hydrofluoric acid; the etching solution remaining on the etched surface becomes the active ingredient of the rinse.

 The plaintiff, in an effort to avoid anticipation, argues that the demonstration was a departure from the method of Kennedy in that the rinsing of the mat surface was carried out in hot water and not in cold water. It must be conceded that Kennedy made no recommendation as to the temperature of the rinsing water, but it appears from the prior art publications that rinsing with hot water, rather than cold water, had been common practice. Reinitzer, at page 74, acknowledged, without asserting any claim to originality, the importance of temperature to the etching process, especially where a smooth finish was desired. The art under discussion is so akin to the field of chemistry that it is inconceivable that glass technologists, prior to Kennedy, had not recognized the influence of temperature in the etching process.

 The patent to Wood, granted Sept. 18, 1917, was directed to a "Method of Making Light Diffusing Screens", and defines the invention in claim 2 thereof, which is typical, as follows: "The method of making a light diffusing screen, which consists in forming in a glass surface by mechanical abrasion a multiplicity of irregular pits separated by a plain surface relatively wide as compared with the depth of the pits, and then smoothing it and enlarging these pits into contiguous concave depressions by the application of acid to the pitted surface of said glass, and then removing the acid therefrom, each of said depressions forming the surface of a concave lens." This patent, although directed to a method, describes in detail a smooth mat surface, equivalent to that defined by Pipkin, resulting from its application. There is no critical distinction, unless the descriptive language used can be so ...

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