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a burner of acetylene gas for lighting, the inventor states his purpose to provide means for preventing the heating of the outlet and its clogging by deposits resulting therefrom. One of the means by which he proposed to do this was to cool the gas outlets by means of a current of air introduced through a circular slot in the chamber above the constricted tube from which the gas jet ascends to the upper orifice. Dolan says he does this to “cool the outside of the flame.' Letang, with apparently more correctness, says he thereby “cools the gas outlet opening."
We pause here to note that if the tendency of the circular column of gas when drawing in air upon its surface is to encircle itself in an envelope of air, and that they pass out of the burner in that relation, as is contended in behalf of the Dolan patent, it would seem as though Letang's device was adapted to perform that function. If his chamber was long, the columns of gas and air would not preserve their integrity of shape so well, but it would be a difference in degree only, and could be improved by making the chamber shorter, or locating the air slot nearer the orifice. This is a subject to be referred to later.
A patent to Bullwiller was granted by the United States on April 19, 1898, on an application filed January 25, 1897, for "improvements in burners for acetylene gas,” which had been patented in Switzerland November 28, 1896. This invention was intended for the same purpose; that is, to obviate the formation of deposits about the orifice of the burner. His plan was to locate what he calls a "hood” above the orifice of the body of the burner, with an opening through it above the orifice of the body of the burner, and yet so near it that the jet of gas would go through it without interruption, and the air would be taken in through the circular opening between the top of the body of the burner and the hood, and the combustion take place on the outer surface of the hood. In this way the air would form an envelope for the gas jet, if Dolan's theory is correct, by the same mode of operation. In order to fulfill the theory of Dolan's patent, his air ducts should be close to the orifice over which combustion takes place. But Bullwiller's hood is integral with the body of the burner, and is essentially a part
of it. The whole is properly styled a burner and the improvement is of a “burner.” The principle or mode of operation of it seems to be the same as Dolan's if the theory of Dolan's patent is
well founded. Figure 3 shows one of his Fig.3.
Bullier's patent of 1895 and his additions of that and the following year were for "a species of tip for lighting by acetylene and other gases rich in carbon.” It is well to note that in Dolan's and Bullier's patents, as well as in other patents, the words “tip” and “burner” are used to designate the same thing, and not the orifice thereof. Figures 3 and 5 of Bullier's original patent and Figure 1 of his addition of June 12, 1896, are here shown. Fig. 2 Fig. 3.
In all of the figures a a are the channels for the gas jets, and b b the air ducts. In figure 1 of the addition, at a point between a and b, the constriction of the pipe leading into the chamber is shown as in Dolan's and in other burners. In his original patent he says:
"This invention relates to a species of tip made up of one or more central conduits for the supply of the gas and of lateral conduits which form air flues, in such manner as to bring about the complete combustion of gases rich in carbon, and notably, acetylene.
* For definiteness, I have represented, in Figs. 1 to 4 of the drawing, a tip called the Manchester tip, having two orifices a for the exit of the gas and giving a flat flame. Into these orifices open two or a greater number of air conduits, b, formed obliquely with respect to the axis of the tip, in such manner that the current of gas draws in a certain quantity of air which, mixing with the gas, determines the complete combustion of this gas, at the same time augmenting considerably its illuminating power.”
Then, to apply his system to Argand burners he says:
“In the application of this system to a tip having a circular slot giving a cylindrical flame, I arrange around the tip a circular ring c as shown in Figs. 5 and 6 of the drawing. This ring, of any suitable material, is mounted in any suitable manner provided that it leaves between it and the tip, for the passage of air, two spaces b concentric to the gas escape slot a; instead of having two slots b which form the spaces of which I have just spoken, I could also arrange series of holes which would subserve the same function."
And he says that his air channels are inclined “so that the current of gas draws in the air.” And, as may have been noticed, he says these conduits for air opening into the gas duct may be “two or a greater number.” Referring to figures 3 and 5, it is seen that in the former the air comes into the gas duct very near the orifice of the burner, and in figure 5 that the air is drawn in, in a circular form around the column of gas just below the edge of the orifice, and thus (if, as we said before, the valuable feature of Dolan's burner consists in its protecting the orifice from deposits) it is as complete an anticipation of Dolan's device as it is possible to imagine. But Bullier adds that, instead of the circular slots, he “could also arrange series of holes which would subserve the same function”—that is, a series of air ducts leading from the outside into the gas jet—and thus equipped the burner would be a fac simile of Dolan's; for, although he does not state precisely where in the length of the burner he would put the holes, so neither does Dolan. Bullier states that he inclines the air ducts toward the gas channel, a device apparently to facilitate the draft of air. In the specifications of Dolan's patent he uses the same form of construction. It seems manifest that Bullier might have formulated the third claim of Dolan's patent upon his (Bullier's) description of his own invention, if the French law had required the claims to be formulated. The complainants recognize this in France, for there they manufacture and sell these same burners under a license obtained from the owners of the Bullier patent.
This leads us to the second ground of objection which the appellant urges against the validity of the Dolan patent, which is the lack of definite specifications. The third claim which we are now considering is a combination of the body of the burner, the constricted opening C, the chamber, E, and the air passages, but it makes no requirement in respect of the longitudinal location of the air ducts on the chamber. Nor do the specifications help out the uncertainty. They only require that the air passages shall lead into the chamber above the constriction of the channel. If his had been the first of such burners, perhaps this would have been sufficient, provided the letting in the air near the bottom of the chamber would have answered his purpose. But in the then state of the art he was bound to differentiate his structure from those which preceded him; and especially is this so where the whole merit of his invention depends upon some peculiarity in the elements he employs. We think it may be affirmed as a rule resting upon the fundamental principles of patent law that, where the essence of the 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. In two recent cases we have discussed this subject so fully that we do not think it now necessary to do more than to refer to what we have already held, and the authorities then cited on which, as well as upon what we have regarded as sound reason, our opinion is based. Germer Stove Co. v. Art Stove Co., 150 Fed. 141, 80 C. C. A. 9; Bullock Electric Co. v. General Electric Co., 149 Fed. 409, 79 C. C. A. 229.
3. Was the amendment of the application in the Patent Office on May 18, 1897, whereby a new theory of the invention was introduced without a new verification, and in the circumstances shown by the record, authorized by law? In considering this question, it is to be borne in mind that the principal merit of the invention is claimed to be in the location of the air ducts, whereby it is said the gas jet acquires an envelope of air wherein it passes to the place of combustion. In Dolan's original application, filed February 18, 1896, nothing is said of any such purpose, and nothing is prescribed in the specifications or claims to indicate that the burner was to be constructed with a view to the obtaining of any such result. And all of the claims were for the apparatus, and none for a process. There was nothing whatever either in the form of the burner or in the theory of its operation to differentiate it from the former art. In April, 1897, a new attorney was employed, who seems to have been more astute than the applicant. At all events, the theory was then conceived that the introduction of the air by a series of ducts around the gas jet would envelope the jet, and that both would pass in that form to the place of combustion whereby the contact of the gas with the orifice of the burner would be prevented. This new conception was not a conception of Dolan's. If there was invention in it, it was not his. His original application made no mention of it, and he made no communication of it to the attorney. He was sworn as a witness, and he characterized the idea as a “lawyer's trick for building up a theory of some kind, which at the time I didn't know anything about. There may be an envelope of air, and there may be a mixture. The whole matter is theoretical to my mind.” Thereupon all the specifications and claims were erased and new ones incorporated, the first two claims for the process. The changes made in the application were manifestly to develop the newly conceived theory of the mode of operation, and to add claims for the process. If this was to be accomplished and the theory were to be embodied in practical means, the specifications should have been made to distinctly point out such means, as we have already pointed out. But in that regard the former specifications were retained. If the application as amended were to be construed as embodying such an invention as is now claimed, it was another and different invention from that for which the patent was originally sought, and, if an amendment having that consequence was permissible, it should have been verified by the oath of the inventor. Railway Co. v. Sayles, 97 U. S. 554, 24 L. Ed. 1053; Eagleton Mfg. Co. v. West, etc., Mfg. Co., 111 U. S. 490, 4 Sup. Ct. 593, 28 L. Ed. 493; Kennedy v. Hazelton, 128 U. S. 667, 9 Sup. Ct. 202, 32 L. Ed. 576; Michigan Central R. Co. v. Consolidated Car Heat Co., 67 Fed. 121, 31 U. S. App. 462, 14 C. C. A. 232; Cleveland Foundry Co. v. Detroit Vapor Stove Co., 131 Fed. 853, 68 C. C. A. 233, the last two being cases decided by this court. The case of Eagleton Mfg. Co. v. West, etc., Mfg. Co., supra, was strikingly like the case at bar in all the material facts which were made the basis of decision. Eagleton, the patentee, died soon after making his application. It was prosecuted by his administrators, by their attorneys. The amendment was made by them, but was not sworn to. The invention and application were assigned by the administrators to the Eagleton Company and the patent issued to it. In the present case Dolan 16 days after making his application assigned his entire interest to one Napheys, and it went through two more assignments before the amendment was filed. It is true that in the Eagleton Case the application had been a long time pending when the amendment was made, but that fact was not made the basis of the decision.
Whether in point of fact this theory of the mode of operation, namely, that the jet is enveloped by the air drawn in through the openings in the burner, is well founded or not, is a question upon which the experts whose testimony is in the record are at variance. That theory is supported by witnesses for the appellee, while those for the appellant hold that the gas and air
are commingled in the chamber, and there prepared for combustion. The contention of the appellee seems plausible, and we are in some doubt. The provision of such a chamber was probably intended for the purpose of commingling the gas and air to promote combustion, but it is possible that, in fact, the columns of gas and air retain to some extent a separate identity until after they leave the burner. However, we have in this discussion given the appellee “the benefit of the doubt.'
We lay no stress upon the kind of material of which the burners are composed. That was a mere matter of choice and judgment for the artisan. This third claim does not specify what it shall be, and the specification in that regard states that it “is preferably made of lava or other material of a like character adapted to the purpose.” Any suitable material meets the requirement.
The first and second claims are for a process or processes. They seem to us to be nothing else than claims for the function of the apparatus described. No doubt 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. But to entitle him to do this the process must be one capable of being carried out by other means than by the operation of his patented machine, and, unless such other means are known or within the reach of ordinary skill and judgment, the patentee is bound to point them out; for, unless the public are infornied by what other means the process can be carried on, the process is to them nothing else than the operation of the machine—in other words, the exercise of its functions. In the present case no other means or way of practicing the process are suggested by the patentee than the particular device on which his claim for the apparatus rests. And it is impossible for us to see how the process which is the subject of these claims could be worked by any other means than the particular means described by the apparatus. Certainly it is not explained how else it could be done. Moreover, if the apparatus is not new, its functions are not new. See the observations of Mr. Justice Brown in Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136, and the cases there cited by him; and Wessel v. United Mattress Mach. Co., 139 Fed. 11, 71 Ć. C. A. 423, and American Crayon Co. v. Sexton, 139 Fed. 564, 71 C. C. A. 548, two recent decisions of this court. Besides, the operation of the earlier burners disclosed the practice of the process the patentee proposes to make the subject of his patent. And in this connection it seems proper to repeat that the application for the patent which Dolan verified by his oath did not allege that he had invented a new process.
We are referred to a decision made by the Circuit Court of Appeals for the Second Circuit in Kirchberger v. American Acetylene Burner Co., 128 Fed. 599, 64 C. C. A. 107, in which the Dolan patent was sustained. But with great respect we are not satisfied with the reasoning in the opinion delivered in that case.
Some material facts are