5. Patents 7, 12-Patents for alloys, methods and machines used in making them, and particular uses thereof, may be secured.

Patents for methods or machines used in making alloys, alloys themselves, or particular uses made of alloy or articles made therefrom, may be secured, if usual requirements of patentability, such as utility and novelty, are present to such degree as to render improvement a patentable invention, and not merely such a step forward as ordinary person skilled in art could make.

6. Patents 37-Whether prior patents and disclosures are for alloy per se, process or machine used in manufacture, or particular use made of alloy or article made from it, need not be determined.

Whether prior art patents and disclosures are for alloy per se, process or machine used in its manufacture, or particular use or article made of alloy or article made therefrom, need not be determined in construing patent in suit, as applicant's or patentee's claim is limited by what has been shown or disclosed, as well as claimed, in past.

7. Patents 37-Patentee cannot claim earlier disclosures, though not claimed or patented.

Applicant for patent cannot claim things of value disclosed in past, though not claimed or patented.

8. Patents 328-Metal alloy covered by Haynes patent, No. 1,057,423, held disclosed by prior British patents, if not by Haynes patent, 873,745.

Alloy of cobalt, chromium, and tungsten, for which Haynes patent, No. 1,057,423, was issued, held disclosed by prior British patents, if not by Haynes patent, No. 873,745, for binary alloy of cobalt and any one of chromium group.

9. Patents 40-One discovering new use for old alloy cannot repatent and obtain valid claims for such alloy per se.

One disclosing new use for metal alloy, old in art, cannot repatent and obtain valid claims for such alloy per se.

10. Patents

use, or method of manufacture, held invalid, as too broad.

13. Patents 37-Alloy per se cannot be claimed, if resistance element made of such alloy is old.

If resistance element made of certain alloy is old, no one can later validly claim same alloy per se.

14. Patents 41-When combination of elements or ingredients is old, only specific proportions, method of manufacture, or use can be validly claimed.

New combination of elements or ingredients, producing new result in way involving something more than ordinary skill, may be patented, if involving sufficient novelty and utility, and one adding still further element or ingredient and getting new or improved results can obtain further patent; but, when combination broadly is old, there can be no valid claims, apart from specific proportions, method of manufacture, or use.

15. Patents177-One seeking patent for certain proportions of metals forming old combination must give instructions and proportions sufficiently definite to be followed and used without experiment.

If broad combination of metals is old, one seeking patent for certain proportions of metals forming such combination must give instructions and proportions sufficiently definite to be followed and used without experiment, and such patent must be scanned more carefully and closely than that for broad combination, though particular purpose for which alloy is to be used is a very wide and varied one. 16. Patents 17-Test of sufficiency of instructions as to specific proportions of metals in alloy sought to be patented stated.

Test as to whether patentee's instructions as to specific proportions of metals in alloy sought to be patented are sufficiently definite to be of value and importance to art, where broad combination is old, is whether man ordinarily skilled in art would be able to take such step himself without assistance of patent.

be used to change claim.

While claim should be read and interpreted in light of specification, latter cannot be used to change claim.

II. Patents 328-Claims for alloy per se cannot be interpreted as claims for tools or articles which specification states may be made from such alloy.

Claims for alloy per se covered by Haynes patent, No. 1,057,423, cannot be modified and interpreted as claims for tool or article, which specification states may be advantageously made from such alloy.

12. Patents 328-Claims of Haynes patent, No. 1,057,423, for alloy of cobalt, chromium, and tungsten, held invalid, as too broad.

First four claims of Haynes patent, No. 1,057,423, for alloy of cobalt, chromium, and tungsten, without restriction as to proportions,

patent, No. 1,057,423, for alloy of cobalt, chromium, and tungsten, held valid, as step forward in art.

Claims 5 to 8 of Haynes patent, No. 1,057,423, for alloy of cobalt, chromium, and tungsten, held valid as cutting off portions of field and calling for better alloy for some purposes than disclosed by prior patents or publications, though one taking patent would still have much experimenting to do to make good alloy for purposes described, and others had previously suggested proportions within field reserved for patentee.

18. Patents 177-Patent for specific proportions of ingredients in combination broadly old narrowly construed.

Patent for specific proportions of ingredients in combination or composition broadly old should be narrowly construed, and patentee given no more than he claimed.

19. Patents

In Equity. Suit by the Haynes Stellite Company against Percy C. Chesterfield and another. Bill dismissed.

Edward N. Pagelsen, of Detroit, Mich., Charles Neave and Maxwell Barns, both of New York City, and Clinton P. Townsend, of Washington, D. C., for plaintiff.

Myron J. Dikeman, of Detroit, Mich. (Charles W. Hills, Charles W. Hills, Jr., and Ridsdale Ellis, all of Chicago, Ill., of counsel), for defendants.

TUTTLE, District Judge. This is an action for alleged infringement of letters patent issued to Elwood Haynes on April 1, 1913, No. 1,057,423, for "metal alloy," on an application filed July 20, 1912.

Preliminary to the decision, I desire to put on the record observance of the death of the patentee during the trial of this lawsuit. During the days of the contest, involving alleged infringement of this patent, the man who secured the patent left the battle of business and life here with us. Elwood Haynes, the patentee in this case, was a man who had written his name very high and very big, not only on this art, but in the business world. He was a founder of the automobile industry, and it is a real and decided loss to the art and to the business world that he should have passed away. There has been no lack of respect to Mr. Haynes or to his memory in allowing this lawsuit to proceed during the days following his death, rather than taking an adjournment. He was himself so active in business affairs that we would better commemorate his own conduct by ourselves being busy in trying to do our duty than by taking an adjournment and being idle.

Haynes' alloy consisted of cobalt, of the iron group, which also includes nickel and iron, and metals of the chromium group, which comprises the four elements, chromium, tungsten, molybdenum, and uranium.

The patentee, Haynes, has a series of patents relating to alloys of the above metals, and to distinguish the patent in suit from related patents to Haynes for binary and quaternary alloys it will be referred to as the ternary patent.

The ternary patent is for an alloy composed of cobalt and at least two metals of the chromium group. More specifically the ternary patent relates to alloys of cobalt, chromium, and tungsten. The binary alloys of cobalt and any one of the chromium group had already been patented by Haynes in patent No. 873,745, issued December 17, 1907. This will be referred to as the binary patent.

Haynes also, after disclosing and fully describing quaternary alloys of cobalt and three members of the chromium group in the ternary patent, obtained claims specific to such quaternary alloys in patent No. 1,057,828, which patent is a divisional of the ternary patent in suit. Further, in patent No. 873,746, issued December 17, 1907, Haynes discloses and claims alloys of nickel and any one of the chromium group. Various uses of these alloys are described and set forth in these patents, although in the patent in suit particular emphasis is laid upon their use as lathe or machine tools. Defendants' alloy is manufactured and sold for use as lathe or machine tools. These alloys are used as lathe or machine tools, for the reason that they possess the property of "red hardness." In other words, when they become heated during the cutting operation, they retain their hardThe softening point of these alloys is at a higher temperature than in the case of so-called "high-speed" steels, which in turn have a higher softening point than ordinary carbon steels.

ness.

While there may be some dispute about it, I think it is pretty well agreed that the ideal cutting tool for use in the lathe to cut iron and steel is made up of what can be called a matrix and the harder, more abrasive, particles carried in the matrix. The matrix itself, however, needs to be strong as compared with many other things. You could not make the matrix out of soap and put diamonds into it and make a cutting tool. The ideal tool-the alloy that will cut the hardest of metals when used as a cutting tool-needs to have those two characteristics. The reason for this is that you could not get a tool which would be entirely made of anything so hard as these small crystals or particles that we are talking about.

All of the claims in the patent in suit are relied upon. They are as follows:

for the alloys themselves, or patents for the particular uses made of the alloy or the articles made there from, provided, of course, that the usual requirements of patentability are present, such as utility and novelty, to such a degree that the improvement rises to the dignity of a patentable invention, and is not merely such a step forward as the ordinary person skilled in that art would be able to make. It seems clear that in this case we are dealing with a patent on an alloy per se, more particularly and specifically an alloy consisting of cobalt and any two of the four metals of the chromium group. We must keep this in mind in determining the novelty and utility of the claims of the patent in suit and deciding the question of infringement.

[6,7] While, in construing the patent in suit, it is important to determine whether it is for the alloy per se, the process or the machine used in its manufacture, or a particular use or article made of the alloy, it is not necessary to make such classification of the prior art patents and disclosures. This follows from the fact that an applicant for a patent or a patentee is limited in what he can validly claim, not only by what has been claimed in the past but by what has been shown and disclosed in the past. If in the history of the art some patentee has disclosed things of value, but for some reason has not claimed them, one seeking a patent at a later date cannot successfully claim those earlier things that were disclosed, even though those earlier things were not claimed or patented.

Here we have claims for an alloy per se, and in studying the history of the art to determine their novelty and also the breadth of interpretation to be given them, we must look, not only at patents claiming alloys per se, but also to all patents which have disclosed alloys. This, of course, includes Haynes' earlier patents, since his own patents are as much a part of the prior art and stand as much in the way of this patent as they would if they had been granted to some one else. His own skill and genius made discoveries in the art prior to the patent in suit, and those discoveries made by him and disclosed by him prior to the patent in suit developed the art and limited his opportunity for invention just as much as though those valuable things had been done and disclosed by others.

[8] In his binary patent Haynes claimed. cobalt and any one of the four metals of the chromium group in such broad terms that, if some one else, immediately following the 8 F. (2d)-49

issue of the binary patent, had used two of the metals of the chromium group, Haynes could have urged with a good deal of force that there was infringement. It would have been a question for very serious consideration whether such person was not merely substituting an equivalent, when he took half of one and half of another metal of the chromium group for one of the same group as taught by Haynes in his binary patent. I do not need to reach that conclusion here, but I mention it to show that Haynes' binary patent did suggest and strengthen defendants' contention that, in view of the prior art, there was no patentable novelty in the ternary alloy. However, apart from any question of patentability of the ternary alloy, in view of Haynes' own earlier binary patent, it is plain that prior to the patent. in suit ternary alloys of cobalt and two metals of the chromium group had been disclosed. I think that Boult's (Marsh) British patent, No. 2,129 of 1906, Thompson's British patent, No. 7,847 of 1895, and Leffler's British patent, No. 16,829 of 1891, and other publications, lead irresistably to the conclusion that an alloy of cobalt and two of the four metals of the chromium group was old in the art.

[9] I am not now talking about the use to which such alloy or alloys were put, as that is rendered unnecessary by the fact that the patent in suit is for the alloy per se, and is therefore anticipated by the prior disclosure of the alloy, regardless of the particular use to which it might have been put. If the ternary alloy was old in the art, then, even though Haynes had some new use for such alloy, he cannot repatent the old alloy and obtain valid claims for the alloy per se.

[10] While it is true that claims should be read and interpreted in the light of the specification, for the purpose of understanding the meaning of the claim, the specification cannot be used for the purpose of changing the claim and making it different from what it is. As remarked by Mr. Justice Bradley, in White v. Dunbar, 119 U. S. 47, 52, 7 S. Ct. 72, 74 (30 L. Ed. 303):

"The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms."

See, also, Howe Machine Co. v. National Needle Co., 134 U. S. 388, 10 S. Ct. 570, 33 L. Ed. 963; Cincinnati Railway Supply Company v. American Hoist & Derrick Co.,