JUDGES OF THE SUPREME COURT OF THE UNITED STATES DURING THE TIME OF THESE REPORTS. The Hon. ROGER B. TANEY, Chief Justice. ORDER OF COURT. For the 1st Circuit, HoN. LEVI WOODBURY. ATTORNEY AT LAW 490 Louisiana Ave. WASHINGTON, D, C. THE DECISIONS OF THE Supreme Court of the United States, AT JANUARY TERM, 1847. 1*] *JAMES WOOD, Plaintiff in Error, have invented a new aud useful improvement. 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, without making any experiments of his own. If the patent be for a new composition of matter and no relative proportions of the ingredients are given,or they are stated so ambiguously and vaguely that no one could use the invention without first ascertaining, by experiment, the exact proportion required to produce the result, it would be the duty of the court to declare the patent void. But the sufficiency of the description in patents for machines, or for a new composition of matter, where any of the ingredients do not always possess exactly the same properties in the same degree, is, generally, a question of fact to be determined by the jury. 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 uncertainity was not sufficient to justify the court below in declaring the patent vold. 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. in the art of manufacturing bricks and tiles. The process is as follows: Take of common anthracite coal, unburnt, *such quantity [*2 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 contents are more equally burned. If the heat is raised too high, the brick will swell, and be injured in their form. If the heat is too moderate, the coal dust will be consumed before the desired effect is produced. Extremes are therefore to be avoided. I claim as my invention the using of fine anthracite coal, or coal dust, with clay, for the purpose of making brick and tile as aforesaid, and for that only claim letters patent from the United States. "JAMES WOOD. "Dated 9th November, 1836." In July, 1842, he brought a suit against the defendants in error, for a violation of thispatent. 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 betaken 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 three fourths of a bushel of coal dust to onecannot, therefore, be specified; but, in general, 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 ture, but that must be ascertained by experiby which the manufacturer can make the mixments 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 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. of mixing anthracite coal dust with clay, for 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 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 plaint-eral rule of three fourths of a bushel of coal for iff to a patent for a most beneficial invention a thousand bricks, with the exceptions or varifor burning clay of the qualities usually found, ations previously expressed. 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 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. 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 proportion of coal than that specified in the general rule. 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. BÍ., 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.) Mr Chief Justice TANEY delivered the opinion of the court: The question presented in this case is a narrow one, and may be disposed of in a few words. vention to consist in using fine antharcite 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 enti tled 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 something 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 ingre- [*5 dients mentioned in the specification do not always possess exactly the same properties in the same degree. 1847 SEWALL V. CHAMBERLAIN. ORDER. But when the specification of a new compoThis cause came on to be heard on the transition of matter gives only the names of the to be mixed together, script of the record from the Circuit Court of substances which are without stating any relative proportion, un- the United States for the Southern District of doubtedly it would be the duty of the court to New York, and was argued by counsel; on And the same consideration whereof, it is now here ordered declare the patent to be void. rule would prevail where it was apparent that and adjudged by this court, that the judgment the proportions were stated ambiguously and of the said Circuit Court in this cause be, and vaguely. For in such cases it would be evi the same is hereby reversed, with costs; and dent, on the face of the specification, that no that this cause be, and the same is hereby reone could use the invention without first ascer-manded to the said Circuit Court, with directaining by experiment the exact proportion of tions to award a venire facias de novo. the different ingredients required to produce And if the the result intended to be obtained. 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 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 the rule he has stated; and as applicable to those cases only where the clay has some peculiarity, and differs in quality from that or Indeed, dinarily employed in making bricks. in most compositions of matter, some small difference in the proportions must occasionally be required, since the ingredients proposed to debe compounded must sometimes be in some gree superior or inferior to those most commonly used. In this case, however, the gen eral rule is given with entire exactness in its terms; and the notice of the variations, mentioned in the specifiation, 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. 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 If that be the the proportion to be employed. 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 instruct ing the jury that the specification was too vague and uncertain to support the patent, and its judgment must be reversed. U. S. Book 12. Cited-6 How., 484. STEPHEN SEWALL, Appellant, v. HENRY V. CHAMBERLAIN. Appeal dismissal-amount in dispute. Where the prayer of a bill in equity shows that definite computation, and that there can be no rethe demand of the complainant is susceptible of covery over the sum of two thousand dollars, the appeal to this court will be dismissed, on motion, for want of jurisdiction. HIS was an appeal from the Circuit Court THIS was an appeal from the Circuit Court trict of Alabama, sitting as a court of equity. The facts in the case are sufficiently set forth in the opinion of the court. Mr. Dargan moved to dismiss the appeal for want of jurisdiction. 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, cure the payment of a promissory note made upon a lot of land in the city of Mobile, to seby Chandler in his favor, bearing date 6th August, 1824, for $485, payable on the first of March thereafter, which was not paid at ma turity, for the collection of which the comagent; also to the purchase of the premises, plainant made the defendant his attorney and under a decree for *its sale, by the defend- [*7 ant, for one hundred and fifty dollars. The 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. After setting out all the circumstances of his case, and specially interrogating the defendant, the complainant's prayer is, that the matter NOTE. As to jurisdiction of Supreme Court of United States, dependent m amount, see note to Gordon v. Ogden, 3 Pet., 33. 21 25 may be "referred to a master, to compute and report the amount found due your orator by the foreclosure decree, with the interest thereon, and also to compute and 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 Bullard, 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 cpmputation, 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. Mississippi, on a certificate of division in opinion between the judges thereof. 64 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 "who shall taking the testimony of persons live at a greater distance from the place of trial than one hundred miles," the section proceeds 'Provided, that a notification from the thus: 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." 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 dis This cause came on to be heard on the tran-tance than one hundred miles from Jackson, script 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 mater 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. Cited 3 Wood. & M., 329. N. AND J. DICK AND COMPANY, v. HARDIN D. RUNNELS. the place of trial of the suit or matter of con- because neither the said "In testimony whereof have hereunto set Sufficiency of certificate of reason for want my hand and seal, the day and year first before of service of notice. 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 be 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 miles of 8*] 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. written. [SEAL.] (Signed) "PAUL BERTUS, "Recorder No. 1, Mayor pro tem.” *And thereupon a motion was made by [*9 the defendant's counsel to exclude the deposition, 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 opposed in opinion, which is ordered to be certified to the Supreme Court of the United States; which is done accordingly. Mr. Bibb, counsel for the defendant, submitted the case to the court. Mr. Justice MCLEAN delivered the opinion of |