(dissenting). The extinguishing of a fire of oil, varnish, gasoline, naphtha, or other volatile substances presents difficulties which do not exist in putting out the ordinary fire by water. Water thrown on an oil fire, being the heavier of the two, sinks to the bottom of the oil instead of blanketing the top.. If the oil is burning in a tank or container and a large quantity of water is thrown thereon, it causes, the oil to rise, overflow the tank, and spreads the fire. If the oil is confined in a tank, explosions from the generated and tank-contained gas burst the tank and spread the fire. Steam and certain gases could be used, but their efficacy was limited to use when the fire was in a chamber or confined space, but when explosions blew out windows or made openings, the effectiveness of these agencies ceased. Sand or sawdust mixed with soda deadened flame, but the difficulty of applying sufficient quantities and the intensity of the radiant heat from oil fires made their use restricted. In fact, prior to the work of the two companies to which we later refer, water seemed to be the only agency used for fire extinguishing, for in the so-called “chemical engines,” the portable chemical' extinguishers of soda and acid, with which we were familiar for a generation, water is the extinguishing agent; and it was thrown on the fire by the gases formed from its separated chemicals when united by the inversion of the machine.
For the extinguishing of oil fires, and incidentally of other fires, two companies pri- or to 1924, and some ten other companies since that time, have furnished a simple, light, portable, and effective apparatus which can be instantly used, which dispenses with water and ejeets foam which rests on the top of the oil and' so blankets the flame. By the tilting of this light machine of two or three gallon capacity, two separated chemicals, one of them mixed with licorice, intermingle and simultaneously form bubbles and eject from 25 to 30 gallons of fire-blanketing foam a distance of 25 to 30 feet.
Deferring to its apparatus, which it calls Phomene, and contrasting it with the extinguishers with which we are familiar, one of the companies in language incident, it is true, to praising one’s own product, but in fact shown by the proofs to be the case, says:
“The soda and acid extinguisher ejeets 2% gallons of water; Phomene ejeets 20 gallons of fire-fighting foam and this foam is effective on burning liquids as well as dry materials.
“Phomene extinguishes burning oil, enamel, tar, wax, grease, shellac, lacquers, inflammable solvents or chemicals. Wherever such materials are used or stored, Phomene is an absolute essential, and in nearly every industry these inflammable materials are used; *291therefore, we recommend Phomene for general protection, to replace the old style soda and acid extinguisher.
“Phomene is labelled by the Underwriters’ Laboratories and endorsed by insurance authorities generally as a substitute for the soda-and-aeid extinguisher. Furthermore, Phomene is endorsed for many hazards where the soda and acid extinguisher would not be acceptable.”
The other company by proof shows like efficiency for its apparatus:
“It is capable of delivering between eight and ten times the capacity of the extinguisher, that is, if our extinguisher had a capacity of three gallons, we would carry three gallons of liquid to the fire, but on inversion or operation, the device would deliver perhaps 25 to 30 gallons of a fire extinguishing medium. • * * That • makes a form of foam, and in addition forms sqfficient pressure to throw that foam through the nozzle a distance of say 25 or 30 feet, which enables the operator to stand at a good distance from the fire and not be affected by the heat of it and still puts him in a position to extinguish the fire.”
As the sales by one of these companies of such a foam extinguisher grew from 100 in 1918 and $600,000 worth in 1919 to an aggregate of $1,400,000 up to 1927, and as the other company has sold large quantities in the two years in which it has dealt in foam extinguishers, it will be seen that we are dealing with a highly useful, unique, portable, at hand, and better apparatus for the extinguishing of oil fires at their start than the art previously had.
Turning next to the origin of such foam extinguisher, the proofs show that in 1913 Charles H. Meigs, who had been in the extinguisher business for some thirteen years, went to Germany, and there saw a fire put out by a foam extinguisher. “I observed that the foam which was expelled from the extinguisher flowed on top of a burning oil surface and extinguished the fire very rapidly. * * * I thought it would be a wonderful thing for the American market.” He bought one, brought it back with him, and thus, and there is no contradiction of his testimony, “originated the idea of the production of the foam type of extinguisher in this country.” Describing this German machine- he testified:
“It was the usual European type of extinguisher made of steel instead of copper. It has no hose as the American extinguishers have, but had a fixed outlet and it had an inner tube, inner compartment, and that was fixed in the extinguisher. The top cap was removable. It had a stopple which fell off on the inversion of the extinguisher. * * * I never had any of those German chemical charges but I learned afterwards that they used many different foam-making materials, but principally licorice.”
The machine was marked patented, but without identification as to number or date. Meigs then went to Washington, made such search for the foam type machine, as he himself could, and found none. He thereafter redesigned the German machine, had some made, and put them on the market about 1916, and sold about 100. In 1917 the business was taken over by the Foamite Fire Extinguisher Company, and 2,000 were sold. Additional capital was put in and patent attorneys employed. Search by them brought to light that a patent for a foam extinguisher, No. 858,188, had in 1907 been granted to one Laurent, a subject of Russia, and tliat according to the records of the Patent Office it was owned by a German company. They were then advised by their attorney that their extinguisher infringed the Laurent patent. The war prevented the Foamite Company from taking any steps to acquire the patent or a license. It continued the infringement which it had unconsciously been doing. Immediately on the close of the war Meigs went to Germany to buy the Laurent patent. After protracted search, the German company, which had gone out of business, was found, and, after protracted negotiations, the patent was bought in 1918 by the Foamite Fire Foam Company which had succeeded to the business of the Foamite Fire Extinguisher Company. The proofs show that in that year some 7,000 of the extinguishers were sold, and in 1919 some 15,000. By later transfers the patent passed to the Foamite-Childs Company, the successor to the business ; and^with the exception of the infringement by the Irwin Company, which ended by the buying of said company and of several other companies which ceased on notice, the assignees of the Laurent patent were the only makers and venders in the country of a foam extinguisher until 1922, when the other company, the defendant, put its Phomene extinguisher on the market.
Such are the proofs as to when and how the plaintiff company and its predecessors came to make foam extinguishers. There is no proof as to the source from which the defendant company obtained its knowledge, but, as it was, during all the years the other company was selling foam extinguishers, itself selling soda-and acid extinguishers, in *292competition, and as the proofs heretofore quoted constrained it to confess that extinguisher was completely superseded by the foam extinguisher, it is quite clear that by 1922 it had become apparent to it that it must enter the foam field if it was to compete in hand extinguishers. Accordingly we find it entering such field in 1922, two years before the expiration of the Laurent patent.
On May 9, 1924, the plaintiff began this suit against the defendant, charging infringement of that patent. As it expired June 25, 1924, the suit is now limited to an accounting.
Turning, then, to Laurent’s patent, we note that it is for an apparatus, or - as it states, for a “hand fire extinguishing apparatus.” The generic form of such invented apparatus Laurent thus describes: “This invention has for its object to provide a hand fire extinguishing apparatus of the kind in which two or more liquids, arranged separately in a common container, are caused to mingle in the case of fire so that they generate gases (carbonic acid) which expel the liquids in a powerful jet.” He then refers to some defects of previous apparatus, and adds, “The defects are obviated by means of the present invention, owing to the fact that it sprays foam instead of liquid;” and, pointing out how such foam is produced, says: “The formation of the foam is produced by adding to one of the liquids (or to both of them) any appropriate viscous foam-forming substance. There are many such substances, but the most advantageous is extract of licorice root (sueeus liquirit®).” It will here be noted that such generic invention and the elements thereof above disclosed are embodied in a generic claim as follows: “A fire-extinguishing apparatus, comprising a receptacle containing separated gas-producing fire-extinguishing substances and a foam-producing substance which causes the substances to produce a gas-filled foam simultaneously with the evolution of gases.”
It will also be noted that the several elements of such quoted generic disclosure and the several elements of the quoted generic claim are shown in Figure 4, which he describes as being one where “the vessel b is divided into two compartments by means of a vertical partition 1; one of these compartments serving for the reception of the vessel a containing the acid, while the other is charged with a soda solution.” In addition to this generic, inclusive description, figure, and claim, Laurent showed in his specification by Figure 1 the possible use of his generic invention when, as noted in claim 5, it comprises the additional element “of a receptacle having a * * * mixing chamber.” Having then in the same patent a generic claim in which the element of a mixing chamber does not appear and a specific claim in which it dogs appear, what is the applicable law of patent construction ? Manifestly, the principle applicable to the construction of all contracts, viz. to give effect to every part of the contract. The claims granted in a patent are the sovereign’s contract of exclusive ownership in consideration of a patentee’s disclosure.
In Freeman Electric Co. v. General Electric Co., 191 F. 168, 169, this court said:
“There is nothing in the prior art that compels the restriction of the broad element of claim 1, viz., ‘interior retaining means,’ to the specific element of claim 2, viz., ‘a yoke secured in the crown of the cap, and provided with arms extending within the interior of the cap.’ t
“Under such conditions, following our previous decision in Ryder v. Sehliehter, 126 F. 487, 61 C. C. A. 469, we give effect to all parts of the patent by enforcing a construction that makes both generic and specific claims effective.”
And in the National Cash Register Case (C. C. A.) 53 F. 367, 370, in words that have become hornbook patent law, it was said:
“There is nothing upon this record which would warrant us in attributing to the patentee the folly of having presented, and to the patent office the improvidence of having allowed, two claims for the same thing. The distinction between them must be maintained, that both may be given effeet. * * * This claim, as we read it, is, distinctly, exclusively and broadly, for a new combination; and we know of no authority or principle of law which, so reading it, would warrant us in converting it, by construction, into a claim for details merely.”
As showing the consistent and persistent application in this circuit of this rule of construction, reference is made to Allen v. Wingerter (C. C. A.) 17 F.(2d) 745; Ryder v. Schlichter (C. C. A.) 126 F. 487; General Electric Co. v. Freeman Electric Co. (C. C.) 190 F. 34; Rollman Mfg. Co. v. Universal Hardware Works (D. C.) 207 F. 97; Whitaker v. Todd (C. C. A.) 232 F. 714.
Finding, then, that Laurent disclosed a specific apparatus whose general container had a mixing chamber, and was granted therefor claim 5 which had this limitation of “a mixing chamber,” and that his claim 1 was broader, in that it had no limitation of *293“a mixing chamber,” it is clear that the element of a mixing chamber of claim 5 cannot he injected into claim 1 by judicial interpretation. Claim 1 is self-explanatory. There is no uncertainty in its words. There is no call for interpretation. Its clear words are a law unto themselves. In United States Glass Co. v. Atlas Glass Co. (C. C.) 88 F. 493, 509, affirmed by this court in 90 F. 724, it was urged that the plain terms of a self-explanatory claim should by judicial interpretation be so interpreted as to broaden it. It was there said, and we think the language is equally applicable where a claim, clear in its language, is sought to be narrowed by adding a limitation by interpretation: “When a claim, read in its common, ordinary meaning, is explicit and clear, when there is no apparent uncertainty, there is no room for construction. Rich v. Close, 4 Fish. Pat. Cas. 279, Fed. Cas. No. 11,757. * '* * A court discharges its duty and exhausts its power when it ascertains and declares what was claimed.”
Applying claim 1 as it reads, and not as limited to having a mixing chamber, it is clear that both the plaintiff’s Foamite and the defendant’s Phomene hand extinguishers are aptly described by claim 1, in that they both have the recited elements thereof, to wit, (1) “a fire-extinguishing apparatus;” (2) “comprising a receptacle;” (3) “containing separated gas-producing fire-extinguishing substance, and a foam-producing substance;” (4) “which causes the substances to produce a gas-filled foam simultaneously with the evolution of gases.” So reading and applying the claim, infringement follows.
As the court below based its decision on noninfringement, it was not called on to pass on the validity of the patent. On that question we have the prima facies of the grant of the patent and the reversal by the Patent Office of its own previous holding that because, as stated in substance by the court below, “no invention was required to' use the bubble-producing emulsion of Gates in the old soda and acid apparatus,” the apparatus involved no invention. Originally Laurent sought to have granted the broad claim of “a fire-extinguishing apparatus, comprising a receptacle containing separated gas-producing fire-extinguishing substances.” When his application was broadly rejected, not on account of his elaims, but because of its lack of invention, he stood on his original application, and in the end succeeded. Clearly, he was right. It is true that Gates in the stationary apparatus of his patent showed the use of foam as a fire extinguisher, but, with that known, neither he nor others made the advance in the art which both the Foamite and Phomene apparatuses did. Nor did it occur to any one to reconstruct the soda and acid water extinguisher into a foam ejector. When Laurent showed that, his apparatus did what neither the old water hand apparatus or Gates’ foam apparatus did; and it did it by utilizing generated gas to intermingle and “to produce a gas-filled foam simultaneously with the evolution of gases.” He disclosed a new thing. This simultaneity of gas and gas-filled foam is described in the specifications, viz., “in the present instance the gas-filled foam is produced simultaneously with the evolution of gases, which greatly amplifies the apparatus,” was called to the attention of the Office, ansi the simultaneity happily described in the amendment, viz.:
“The references cited do not anticipate applicant’s invention, as in the present instance the gas-filled foam is produced simultaneously with the evolution of gases, which greatly amplifies the apparatus.
“In the patent 749,374 the gases are produced in advance and stored under pressure in a reservoir connected with the apparatus. When the apparatus shall act the gas is led from said reservoir through a soap-like emulsion. This is quite different from the present invention in which the gases in statu naseendi produce the gas-filled foam.”
The original broad claim had added to it that which characterized the functional novelty of Laurent’s apparatus as one “which causes the substances to produce a gas-filled foam simultaneously with the evolution of gases.” The patent was promptly allowed and claim 1 granted. It is clear that the claim should have been so limited. The idea of a hand extinguisher, the tilting of one, the use of different ingredients to form gas, the capacity and use of foam as a fire extinguisher, were all well known; but Laurent made a functionally new use of all these known things when he made an apparatus such as is described in his generic claim, namely, one which while using “separated gas-producing fire extinguishing substances” such as the old acid and soda apparatus did, and a “foam-producing substance” such as Gates showed, was an apparatus which did what neither of the others did, namely, “eauses the substances to produce a gas-filled foam simultaneously with the evolution of gases.” It is this simultaneous evolution of old gases in a new relation with the old licorice which simultaneous*294iy evolves the gas for bubble-forming and foam ejecting. To my mind, it was this •capacity and use of the apparatus that gave it patentable novelty; and I find it clearly outlined in the specification where Laurent describes his apparatus as “of the kind in which two or more liquids, arranged separately in a common container, are caused to mingle in the case of fire so that they may generate gases (carbonic acid) which expel the liquids in a powerful jet.”
So viewing the patent, I would hold it valid and infringed.