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to deprive complainant of its property without due process of law is plain enough. But the constitutional prohibitions which are invoked run against the stạte, and the state alone, while the bill of the complainant in plain words negatives state action by averring that “no power to regulate the rates charged by your orator or other telephone companies” has been granted “by the Constitution or the Legislature of the state of Kentucky, or in any other way,” and that the enactment of said ordinance was and is beyond the power of the common council of said city, and the said “ordinance void and an assumption of power and authority upon

the part of the said common council unwarranted and unfounded.

If this be true, there was no state authority behind the action of the Louisville common council, and no ground to claim that constitutional prohibitions have been violated which are pointed at state aggression only. A municipal ordinance may be the exercise of a delegated legislative power conferred upon it as one of the political subdivisions of the state ; but, to be given the effect and force of a law of the state, it must have been enacted in the exercise of some legislative power conferred by the state in the premises. Murray v. Charleston, 96 U. S. 432, 440, 24 L. Ed. 760; New Orleans Water Works v. La. Sugar Co., 125 U. S. 18, 31, 8 Sup. Ct. 741, 31 L. Ed. 607; Hamilton Gaslight Co. v. Hamilton, 146 U. S. 258, 266, 13 Sup. Ct. 90, 36 L. Ed. 963; Iron Mountain R. R. Co. v. Memphis, 96 Fed. 113, 126, 37 C. C. A. 410; St. Paul Gas Co. v. St. Paul, 181 U. S. 142, 148, 21 Sup. Ct. 575, 45 L. Ed. 788; Barney v. City of New York, 193 U. S. 430, 24 Sup. Ct. 502, 48 L. Ed. 137; Manhattan Railway v. City of New York (C. C.) 18 Fed. 195; Kiernan v. Multnomah County (C. C.) 95 Fed. 849 ; and Savannah, etc., Ry. Co. v. Savannah, 198 U. S. 392, 25 Sup. Ct. 690, 49 L. Ed. 1097.

In Hamilton Gaslight Co. v. Hamilton, cited above, Justice Harlan said:

A municipal ordinance, not passed under supposed legislative authority, cannot be regarded as a law of the state within the meaning of the constitutional prohibition against state laws impairing the obligations of contracts. Murray v. Charleston, 96 U. S. 432, 440, 24 L. Ed. 760; Williams v. Bruffy, 96 U. S. 176, 183, 24 L. Ed. 716; Lehigh Water Co. v. Easton, 121 U. S. 388, 392, 7 Sup. Ct. 916, 30 L. Ed. 1059; N. 0. Waterworks v. Louisiana Sugar Co., 125 U. S. 18, 31, 38, 8 Sup. Ct. 741, 31 L. Ed. 607. A suit to prevent the enforcement of such an ordinance would not therefore be one arising under the Constitution of the United States."

If the state has conferred authority upon the municipality to establish and enforce reasonable rates for telephone service, then the establishment of rates under this power would be the establishment of rates by the state itself. Reagan v. Farmer's Loan & Trust Co., 154 U. S. 362, 14 Sup. Ct. 1047, 38 L. Ed. 1014. But this is just what the bill charges has not been done, thereby depriving the Circuit Court of every foundation for its jurisdiction as a suit arising under the Constitution or laws of the United States. Counsel now say that the averment that no power has been delegated by the state to the city of Louisville to regulate the rates to be charged for telephone service to be rendered in the city is a mistaken averment of law, and should be ignored in consequence of a prior statement of the bill, in which it is said that “the common council of the city of Louisville assumed and claimed to have been given the authority by the Legislature of the commonwealth of Kentucky, to regulate the charges and rates to be charged by telephone companies,” and had upon such assumption passed the ordinance complained of. Counsel says this shows that the city council acted under color of authority and should save the jurisdiction. But these averments are not inconsistent, and do not bring the case within Savannah, etc., Ry. Co. v. Savannah, cited above, where there were inconsistent and contradictory averments as to the authority for the tax assessment in question. That the common council “assumed” and “claimed” to have the power to do what it did do is self-evident. The enactment of the ordinance is in itself, and from any point of view, an assumption and claim of right to do what it did. This averment is therefore far from an averment that the common council was exercising a power of regulation conferred by the state. To make it clear that it had no general regulating power over such companies, and that it was acting outside of any such delegated regulating power, the clause relied upon now as asserting that the city council did act by authority of the state was followed by the distinct averment, above referred to, that the council acted wholly without any authority from the state. This makes an issue under the law of the state. If the fact be that no provision of the state Constitution, or of state law, or of the municipal charter, delegates the state power in respect to the regulation of the charges of telephone companies rendering services within the city of Louisville, the ordinance is void as ultra vires, and its enactment did not violate any prohibition of the Constitution of the United States, because not enacted in pursuance of any state authority.

When jurisdiction depends upon the case being one arising under the Constitution or laws of the United States, the facts necessary to make such a case must be plainly shown upon the record, and it is not enough that such question may or may not arise. New Orleans v. Benjamin, 153 U. S. 411, 14 Sup. Ct. 905, 38 L. Ed. 764; McCain v. Des Moines, 174 U. S. 168, 181, 19 Sup. Ct. 641, 43 L. Ed. 936; Western Union Tel. Co. v. Ann Arbor R. R. Co., 178 U. S. 239, 244, 20 Sup. Ct. 867, 44 L. Ed. 1052; Manhattan R. R. Co. v. City of New York (C. C.) 18 Fed. 195; Levy v. Shreveport (C. C.) 28 Fed. 209.

The most that can be made of the averments of this bill is that it presents questions arising under the Constitution and laws of the state. The remedy in such cases is in the courts of the state. If it shall turn out that the common council did have general power to regulate the charges of telephone companies rendering services within the city of Louisville, and that it has illegally exercised that power, either because it has thereby impaired the obligation of a contract, or by imposing rates which are unjust and confiscatory, a federal question may arise. But it is not enough to found jurisdiction upon that such a question may arise when the bill expressly avers that the action of the common council is not imputable to the state by charging that no such power had been delegated by the state.

The conclusion is that the court below erred in allowing an injunction, because it was without jurisdiction to entertain the bill at all.

Remanded, with direction to dissolve the injunction and dismiss the bill.

AMERICAN LAVA CO. et al. v. STEWARD et al.

(Circuit Court of Appeals, Sixth Circuit. July 24, 1907.)

No. 1,642.


Where the essence of an invention is the location, form, size, or any other characteristic of the means employed, the patentee must distinctly specify the peculiarities in which his invention is to be found.

[Ed. Note. For cases in point, see Cent. Dig. vol. 38, Patents, $$ 133


An amendment to an application for a patent made to introduce a new theory of the invention, and which contains new claims covering a process based on such theory, neither of which were mentioned in the original application, if permissible as within the invention, should be verified by the oath of the inventor.

[Ed. Note.-For cases in point, see Cent. Dig. vol. 38, Patents, § 152.

Amendment of application, see note to Cleveland Foundry Co. v. De

troit Vapor Stove Co., 68 C. C. A. 239. 3. SAME-MECHANICAL AND PROCESS CLAIMS.

While it is competent, when the circumstances permit it, for an inventor in describing a machine or apparatus which he has devised to make a claim for a process which his patented device is capable of carrying, out, to entitle him to do so, the process must be one capable of being carried out by other means, otherwise the claim is merely for a function of the machine; and, unless such other means are known or are within the reach of ordinary skill or judgment, the patentee is bound to point them out.

[Ed. Note.-For cases in point, see Cent. Dig. vol. 38, Patents, $ 141.] 4. SAME-ANTICIPATION-ACETYLENE GAS BURNERS.

The Dolan patent, No. 589,342, for an acetylene gas burner, and the process embodied therein, claims 1, 2, and 3 are void (1) for anticipation, especially by the French patent to Bullier of April 20, 1895; and, additions thereto (2), for indefiniteness of description; and (3) because they were new claims based on a new theory of the principle of the invention added by an amendment to the application made in the Patent Office which was not verified.

Appeal from the Circuit Court of the United States for the Eastern District of Tennessee.

Charles Neave, for appellants.
Louis C. Reagener, for appellees.
Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

SEVERENS, Circuit Judge. This appeal brings before us the questions of the validity and of the infringement of letters patent No. 589,342, granted to E. J. Dolan August 31, 1897, for improvemefits in tips for acetylene gas burners, on an application filed February 18, 1897, which patent the complainants, the appellees here, claim to own by assignment. The claims of the patent here involved are those numbered 1, 2, and 3. There are two others, numbered 4 and 5. The first and second claims are for the process of "burning acetylene gas.' The third is for the apparatus employed. The defenses were that these claims were invalid because of anticipation of the invention, and that the defendant did not infringe. The court below, while admitting the case to be "close," decreed in favor of the complainants. The doubt seems to have been upon the validity of the patent in respect to the claims involved. The appellant rests its contention that the claims are invalid upon several grounds. It will be convenient to consider first the third claim, which is for the burner, and then the other two, which relate to the process. In the specification the patentee, reciting that a difficulty had been experienced in burning acetylene and other gases rich in carbon from the accumulation of deposits at the orifice of the burner whereby the passage was clogged and the flame distorted, proceeds to state that he proposes the use of two independent gas jets, mounted and inclined toward each other, so that the jets of gas with the air which has been drawn into the gas tubes through openings in the sides thereof, by the swift upward movement of the gas, shall be made to clash together at the point of combustion, and produce a broad, flat flame. The structure of the members of the burner which he proposes to use so mounted and inclined can be best explained by reproducing figure 1, which is a central longitudinal section thereof and figure 2, which is a inodification.

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A is the body of the “tip," or burner, secured to the gaspipe, B. C is a constriction of the passageway for the gas leading from the chamber, D, into the chamber, E, at the upper end of which is the extremity of the tip. This constriction, C, is located at or near the longitudinal center of the burner. The letters, a a, represent inclined air ducts leading from the open into the gas chamber, E. We shall have occasion to refer to some further particulars of the specifications later on. Of this construction he says:

"The operation of this device seems to be that the gas under pressure escaping in a cylindrical jet through the opening, C, draws in on all sides an envelope of air through the opening, a. This is due to the fact that the chamber, E, is larger than the outlet, C, and to the fact that the air inlets, a a, substantially surround the issuing gas-jet. The result of this arrangement seems to be to so cool the outside of the flame as to prevent any deposit of carbon at the point of egress."

The third claim is this:

"3. The combination in an acetylene-burner of the block, A, having the minute opening, C, the cylindrical opening, E, opening without obstruction to the atmosphere, and the air-passages a, substantially as described.”

The grounds on which it is insisted that the patent is void in respect of this claim are, first, that it was anticipated by prior patents; second, that the description is too indefinite to distinguish it from the prior art; and, third, that the specifications were altered in essential particulars by amendment while the application was pending in the office, so as to bring in entirely new matter which is now relied on, and that the new matter was not verified by the oath of the applicant. We think that these objections are well taken. In respect to the first, the proof makes it clear that for some time prior to Dolan's supposed invention several acetylene gas burners had been invented and patented, some in this country, and some abroad, which contained the substance of all that Dolan described in his patent. By this we do not mean to say that the theory which he puts forward in respect to the mode of operation of the means he suggests had been definitely stated, but that burners had been devised and patented which embodied the means described by him, and that they were adapted to accomplish the same result. The French patent to Bullier of April 20, 1895, and his first and second certificates of addition, dated June 29, 1895, and June 12, 1896, respectively, furnish the most complete anticipation; but, before referring to the invention there disclosed, we will notice some other patents, to find what ideas and forms had been suggested by them for the construction of gas burners. A common and well-known type of such burners was the Bunsen burner, which consisted of a cylindrical chamber into which the gas was pressed through a small aperture at the bottom in a fine jet. Small openings were made in the sides of the cylinder through which air was drawn by the upward rush of the gas through the cylinder to supply the oxygen required for combustion. The theory of this operation was that the gas and air were commingled before reaching the place of combustion at the upper end of the chamber. Duplex burners—that is, burners in which two streams of gas and air combined are made to impinge upon one another at the place of combustionwere also old. In a French patent granted to M. Letang in 1896, for

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