General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938)

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General Elec. Co. v. Wabash Appliance Corp.

No. 453

Argued March 4, 7, 1938
Decided May 16, 1938
304 U.S. 364

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE SECOND CIRCUIT

Syllabus

1. Product claims 25-27, of Patent No. 1,410,499, to Pacz, for a filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device, held void for want of a sufficiently definite disclosure. R.S. § 4888; 35 U.S.C. § 33. P. 368.

2. Claimed inventions, improvements, and discoveries, turning on points so refined as the granular structure of products, require precise descriptions of the new characteristic for which protection is sought. In a limited field, the variant must be clearly defined. P. 369.

3. A patentee may not broaden his product claims by describing the product in terms of function. P. 370.

4. A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent. P. 371.

5. The difficulty of making adequate description may have some bearing on the sufficiency of the description attempted, but it cannot justify a claim describing nothing new except perhaps in functional terms. P. 372.

6. A patentee who does not distinguish his product from what is old except by reference, express or constructive, to the process by which he produced it, cannot secure a monopoly on the product by whatever means produced. P. 373.

7. The product claims in question, which seek to monopolize the product, however created, may not be saved by a limitation to products made in accordance with the processes set out in the specification. P. 374.

91 F.2d 904 affirmed.

Certiorari, 302 U.S. 676, to review the reversal of a decree for injunction and accounting in a patent infringement suit.