Opinion of the court.

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. Bl., 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. De Groot, 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.

The plaintiff claims that he has invented a new and useful improvement in the art of manufacturing bricks and tiles; and states his invention to consist in using fine anthracite 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.

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 ingredients mentioned in the specification do not always possess exactly the same properties in the same degree.

But when the specification of a new composition of matter gives only the names of the substances which are to be mixed together, without stating any relative proportion, undoubtedly it would be the duty of the court to declare the patent to be void. And the same rule would prevail where it was apparent that the proportions were stated ambiguously and vaguely; for in such cases it would be evident, on the face of the specification, that no one could use the invention without first ascertaining by experiment the exact proportion of the different ingredients required to produce the result intended to be obtained. And if the specification before us was liable to either of

Order.

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 ordinarily employed in making bricks. Indeed, in most compositions of matter, some small difference in the proportions must occasionally be required, since the ingredients proposed to be compounded must sometimes be in some degree superior or inferior to those most commonly used. In this case, however, the general rule is given with entire exactness in its terms; and the notice of the variations mentioned in the specification 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 the proportion to be employed. If that be the 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 any one 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 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 instructing the jury that the specification was too vague and uncertain to support the patent, and its judgment must be reversed.

ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern

Statement of the case.

District of New York, and was argued by counsel; on consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby, reversed with costs; and that this cause be, and the same is hereby, remanded to the said Circuit Court, with directions to award a venire facias de novo.

PETER HOGG AND CORNELIUS H. DELAMATER, PLAINTIFFS IN ERROR, v. JOHN B. EMERSON.

(6 Howard, 437.)

1. When a case is sent to this court under the discretion conferred upon the court below by the seventeenth section of the act of July 4, 1836, (Patent Law,) 5 Statutes at Large, 124, the whole case comes up, and not a few points only. 2. The specification constitutes a part of a patent, and they must be construed together.

3. Emerson's patent for "certain improvements in the steam-engine, and in the mode of propelling therewith either vessels on the water or carriages on the land," decided not to cover more ground than one patent ought to cover, and to be sufficiently clear and certain.

4. A patentee whose patent-right has been violated may recover damages for such infringement for the time which intervened between the destruction of the Patent Office by fire, in 1836, and the restoration of the records under the act of March 3, 1837.

THIS case was brought up by writ of error from the Circuit Court of the United States for the Southern District of New York. It was a suit for the violation of a patent-right, and the writ of error was allowed under the seventeenth section of the act of 1836.

On March 8th, 1834, John B. Emerson, the defendant in error, obtained the following letters patent, (which were recorded anew on the 5th of March, 1841,) namely:

"The United States of America to all to whom these letters patent shall come:

66

Whereas, John B. Emerson, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the steam-engine, which improvement he states has not been known or used before his application; hath made oath that he doth verily believe that he is the true inventor or discoverer of the said improvement; hath paid into the treasury of the United States the sum of thirty dollars, delivered a receipt for the same, and presented a peti

Statement of the case.

tion to the Secretary of State, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose: These are, therefore, to grant, according to law, to the said John B. Emerson, his heirs, administrators, or assigns, for the term of fourteen years from the eighth day of March, one thousand eight hundred and thirty-four, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used the said improvement, a description whereof is given, in the words of the said John B. Emerson himself, in the schedule hereto annexed, and is made a part of these presents.

"In testimony whereof, I have caused these letters to be made patent, and the seal of the United States to be hereunto affixed.

"Given under my hand, at the city of Washington, this eighth day of March, in the year of our Lord one thousand eight hundred and thirty-four, and of the independence of the United States of America the fifty-eighth.

[SEAL.]

"By the President.

"ANDREW JACKSON.

"LOUIS MCLANE, Secretary of State."

City of Washington, to wit:

I do hereby certify that the following letters patent were delivered to me on the eighth day of March, in the year of our Lord one thousand eight hundred and thirty-four, to be examined; that I have examined the same, and find them conformable to law; and I do hereby return the same to the Secretary of State, within fifteen days from the date aforesaid, to wit, on this eighth day of March, in the year aforesaid.

B. F. BUTLER, Attorney-General of the United States.

The schedule referred to in these letters patent, and making part of the same, containing a description, in the words of the said John Brown Emerson himself, of his improvement in the steam-engine:

"To all whom it may concern: Be it known, that I, John Brown Emerson, of the city of New York, have invented certain improyements in the steam-engine, and in the mode of propelling therewith either vessels on the water or carriages on the land, and that the following is a full and exact description thereof:

"One object of my improvement is to substitute for the crank motion a mode of converting the reciprocating motion of a piston into a continued rotary motion, by a new combination of machinery for that purpose.

Statement of the case.

"This mode is applicable to an engine either with one or with two cylinders, and is carried into effect as follows: Alongside of the cylinder I place a shaft, the lower end of which may revolve in a step on the platform or foundation upon which the cylinder stands, in which case it must be somewhat longer than twice the length of the cylinder, as it must extend above it to a height somewhat greater than the length of the stroke of the piston. Sometimes, however, this shaft may have its lower gudgeon only a small distance below the upper end of the cylinders, whence it must extend above it, as before. Its upper gudgeon must of course be sustained by a suitable frame. This shaft is to stand parallel to the piston-rod, from which it is to receive its revolving motion. Upon the upper end of the shaft, above the top of the cylinder, there is to be placed a solid cylinder of wood, or of any other convenient substance, of such diameter as shall cause its periphery to come nearly into contact with the piston-rod for its whole length, when the piston is raised. The solid cylinder above described is to be made to revolve in the following manner: I make a groove in it, which commences near its lower end, and, passing spirally, extends half-way round it by the time it reaches nearly to the upper end, or to a distance vertically equal to the stroke of the engine; from that point it passes down around the opposite half, and returns into itself at the point of beginning. Upon the upper end of the piston, against its side, I place a friction-roller, which is to work in the groove in the solid cylinder; the piston-rod rising between parallel guidepieces, by which it is kept in its proper place, and its tendency to turn round by the action of the roller in the groove is checked. When the piston is down, this friction-roller will stand in the V formed by the junction of the grooves on the opposite sides, and, as it is raised; it will in its passage to the upper junction give half a revolution to the solid cylinder, and in descending will complete the revolution by the action of the friction-roller on the other portion of the groove.

"When two cylinders are used, they are to be placed parallel to each other, and at such a distance apart that the pistons of each may, in like manner, act upon the solid cylinder, the piston of one being up, when the other is down. The boiler, the steam-pipe, the valves for the admission and discharge of steam, and other appendages, may be similar to some of those already in use. From the revolving shaft already described, a rotary motion may be communicated to paddlewheels, steam-carriages, or other objects. As it is my intention, in general, to place my cylinders and revolving shaft vertically, I communicate motion to the horizontal shaft of a paddle-wheel by means of bevel-geared wheels near the lower end, or at any convenient part