second, claims defining the functions of the structural elements were properly rejected for the obvious reason that functions, as such, are not patentable; and third, the claims in suit, as finally framed, differed from those previously rejected only in their embodiment of both structural elements and functions.
There was nothing which distinguished the mat surface defined by Pipkin from the mat surface described by those who preceded him, except the functions ascribed to it in the particular article of manufacture, to wit, diffusion of light and resistance to breakage. The novelty of the invention, if any, lay, not in the structural elements, but in their function. The critical observation of Justice Reed in the case of General Electric Co. v. Wabash Appliance Corp. et al., 304 U.S. 364, at page 371, 58 S. Ct. 899, at page 903, 82 L. Ed. 1402, is apposite: "But the vice of a functional claim exists not only when a claim is 'wholly' functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conventiently functional language at the exact point of novelty." It is well established that the patentability of a claim directed to an article of manufacture must be found in the structural elements therein defined and not in the functions to which claim is asserted. Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 48 S. Ct. 474, 72 L. Ed. 868; B.B. Chemical Co. v. Cataract Chemical Co., 2 Cir., 122 F.2d 526; In re Fischer, 91 F.2d 219, 24 C.C.P.A., Patents, 7344; George K. Hale Mfg. Co. v. Hafleigh & Co. et al., 3 Cir., 52 F.2d 714; Heidbrink et al. v. McKesson, 6 Cir., 290 F. 665; Walker on Patents, Deller's Edition, page 795, § 168, et seq.
If, as the plaintiff contends, the claims in suit are directed to an article of manufacture, "however produced", their disclosures are insufficient to meet the requirements of the statute, R.S. § 4888, 35 U.S.C.A. § 33. The statute requires the inventor to define his 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, to "particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery." The reasons which underlie the statutory requirements are succinctly stated in the case of General Electric Co. v. Wabash Appliance Corp. et al., supra, 304 U.S. at page 369, 58 S. Ct. at page 902, 82 L. Ed. 1402, as follows: "The limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others, and the assurance that the subject of the patent will be dedicated ultimately to the public. The statute seeks to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their rights. The inventor must 'inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.'"
The invention is defined in each of the claims in suit as follows: "A glass electric lamp bulb having its interior surface frosted by etching * * *, 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." The absence of satisfactory objective criteria is apparent. The claims fail to fix the critical limits with the exactitude required by the statute. The term "extent", used, as it must be, to define measure or degree, is so vague that the critical limits can be determined only upon independent experiment. It follows that the claims in suit are indefinite and, therefore, void. General Electric Co. v. Wabash Appliance Corp. et al., supra; The Incandescent Lamp Patent, 159 U.S. 465, 16 S. Ct. 75, 40 L. Ed. 227; B.B. Chemical Co. v. Cataract Chemical Co., supra; Allen-Bradley Co. v. Erie Resistor Corp., 3 Cir., 104 F.2d 150, and cases therein cited. The pronouncement of the Court in the case of General Electric Co. v. Wabash Appliance Corp. et al., 304 U.S. at page 369, 58 S. Ct. 899, at page 902, 82 L. Ed. 1402, when paraphrased, fits the instnat case. It was there said: "Patentees may reasonably anticipate that claimed inventions, improvements, and discoveries, turning on points so refined as the granular structure of products [here the configuration of a mat surface], require precise descriptions of the new characteristic for which protection is sought. In a limited field the variant must be clearly defined."
The indefiniteness of the claims in suit is apparent upon attempt to compare the accused structure with their teachings. Satisfactory comparison is impossible because of the lack of a precise definition of the invention. The testimony of Charles Douglas Spencer, a physicist called as a witness on behalf of the plaintiff, would seem to support this conclusion. The witness compared the accused structure, not with the teachings of the patent, but with a structure manufactured by the plaintiff. Such a comparison, however, even though the structures are identical, will not support a charge of infringement. An allegation of infringement can be sustained only by proof of encroachment upon the claims of the patent. S.S. Kresge Co. v. Davies, 8 Cir., 112 F.2d 708; Magnavox Co. v. Hart & Reno et al., 9 Cir., 73 F.2d 433; Grand Rapids Show-Case Co. v. Weber Show Case Co., 9 Cir., 38 F.2d 730.
It should be observed that the witness experienced little difficulty in making the comparison and in pointing out striking similarities in the compared structures. The reason for the successful comparison, however, was obvious; both structures had been etched by chemical etching processes which had been in common use long prior to Pipkin. Comparable results were inevitable. It is the conclusion of the Court, based upon careful examination of the photomicrographs received in evidence, that the mat surface of the accused structure, as well as the mat surface of the structure manufactured by the plaintiff, is substantially identical with the mat surface of the prior art. If this is the mat surface defined by Pipkin in his claims, there can be no infringement. Comolite Corporation v. Davidovicz et al., 2 Cir., 111 F.2d 121; Galion Iron Works & Mfg. Co. v. Beckwith Machinery Co., 3 Cir., 105 F.2d 941.
It is difficult here to assume validity for the purpose of passing on the question of infringement. Such an assumption can be predicated only upon the construction hereinbefore adopted by the Court, to wit, that the claims in suit, although directed to an improvement in an article of manufacture, the interior mat surface, are so drafted as to necessarily embrace the method under which the defined result is produced. This strict construction so narrows the claims as to negative infringement. There can be no infringement of the claims, as thus construed, unless the accused structure is produced under the method recommended in the specifications and embraced in the claims. Plummer v. Sargent, 120 U.S. 442, 7 S. Ct. 640, 30 L. Ed. 737. The accused structure is an electric lamp bulb, the interior surface of which is "characterized by the presence of rounded as distinguished from sharp angular crevices," but it is not manufactured under the method embraced in the claims. It is clear from the undisputed testimony that the accused structure was manufactured under the method of Kennedy, hereinabove discussed, and that the chemical etching process employed had been in common use prior to Pipkin. This conclusion, although not conceded by the defendants, seems to be inescapable. It follows that the resulting structure cannot infringe the claims in suit. Thompson v. Boisselier, 114 U.S. 1, 9, 5 S. Ct. 1042, 29 L. Ed. 76; Comolite Corporation v. Davidovicz et al., supra.
The validity of the claims in suit has been sustained by the Circuit Court of Appeals for the Sixth Circuit, in the case of General Electric Co. v. Save Sales Co. et al., 82 F.2d 100, and by the Circuit Court of Appeals for the Second Circuit, in the case of General Electric Co. v. Wabash Appliance Corp. et al., 2 Cir., 93 F.2d 671. These decisions, however, appear to be predicated upon narrow interpretations of the teachings of the prior art, with which this Court cannot agree. We doubt that the patent would survive if litigated in the Second Circuit today. This is indicated by the opinion of Judge Hand in the case of Picard v. United Aircraft Corporation, 2 Cir., 128 F.2d 632, 636, in which he stated: "We cannot, moreover, ignore the fact that the Supreme Court, whose word is final, has for a decade or more shown an increasing disposition to raise the standard of originality necessary for a patent. In this we recognize 'a pronounced new doctrinal trend' which it is our 'duty, cautiously to be sure, to follow not to resist.'"
The Findings of Fact and Conclusions of Law required by Rule 52 of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c, have been prepared and filed by the Court.