(concurring). I will briefly state some of the reasons which lead me to the conclusion reached by Judge HOLT. The process of Claus may be such an improvement in the art of enameling metal as would sustain a patent. But the claims in controversy are not for a process. They are, all of them, for a new article; and there is no claim for the mix itself as a new article. If the article described in the respective claims was old before Claus devised his mix, or if such article, whether it had been actually made or not, could have been made without any exercise of inventive faculty, it was not new in a patentable sense.
It was not new in the prior art to produce steel articles having a plain or colored enamel of vitreous glaze, as is sufficiently shown by the patent to Puttmann & Fliegel for the method of producing steel roofing plates, nor to enamel steel metal ware with a mottled coating, as appears by the patent to Dubois & Stewart. It was old in the prior art to produce metal articles having a single coat of enamel presenting a mottled appearance. The mottled appearance was due to rust spots on the metal obtained by the oxidation which occurred during the process of drying and burning the enamel mass upon the metal. The extent and character of the oxidation was influenced by the constituents of the mass. In the old art these constituents were largely acid, and, being liberated in the heating and drying process, caused the rust spots upon the metal which gave the mottled effect. In hard metals like steel, because formation of rust does not take place so readily, the oxidation does not occur “to such a degree as is required to produce a good appearance”; i. e., it does not show the variety of spotting which is desirable. All this sufficiently appears in patents which were granted to Claus in England and in Germany about the same time his application was made for the patent in suit. It is apparent from his statements in these patents that Claus .conceived that the mottling on metals like steel could be effected more advantageously by increasing the alkaline constituents of the mass, and, instead of relying upon the acid or oxidizing constituents, powdering the mass with metallic ■ salts after it is spread upon the metal and before drying, and thereby an enamel could be produced having a greater váriety in its mottles and a greater transparency. The evidence in the present record respecting the prior art shows that this is all of which he could have been the inventor or discoverer at the time of the application for the patent in suit. It may be that his *28process has advantages in other, respects;.but,[so far as it produced a new article, the improvement in the article .'itself was mainly a matter of decoration. The process, claims of the present patent are ample to secure to Claus his real improvement in the art, if he made any.
The claims for a new article, of manufacture cannot be limited by anything which appears in the specification to | the real invention, of Claus. It is only when a new process introduces new characteristics into the manufactured article by which it can be identified and distinguished from all preceding manufactures that the article itself becomes patentably new. As has been said, it was old in the prior art to produce enameled steel articles; and it was also old to produce metal, articles having a single coating of enamel mottjed by metallic oxides. If the article which is the subject of .the several claims has any new characteristic, it is because of an enamel coating of the particular alkaline quality enumerated in the claim. An enamel of an “intensely alkaline nature” or “.having a preponderance oi alkaline constituents” is .any enamel “which will give a strongly alkaline reaction” in the language of the specification. In practicing the process of Claus this degree of alkalinity is to be introduced in the1, preliminary step, that of compounding .the mix. But within the rijeaning of the claims in controversy it suffices if the coating when rea.dy to be applied to the metal, or after it has been applied, has such an prior patent to Niedringhaus for a process of p alkaline quality. The roducing single coated mottled enameled iron ware shows an enamel, which is almost identical in its alkalinity with the enamel of the claims. All of the claims are anticipated by the Quinby & Whiting reissue patent alone, and reference to the other prior patents is unnecessary] unless it involved, invention to use steel instead of iron in applying the enameling process. The process of that patent would produce! a metal article having a single coat of mottled enamel permeated by metallic oxides on a partly oxidized metallic surface, the oxides extending through the enamel; and the enamel itself would have the [alkaline characteristics of the patent in suit. That the process of enameling other metals could be applied to steel without invention by those skilled in the art, so as to produce the mottled enamel, is too clear for argument. If it should be conceded that it could not have been applied as economically, or so as to produce as desirable an article jin appearance or for culinary purposes, or an article as desirable .©r as advantageous in any other respect, the fact is quite immaterial. The claims are not for an improved .article of mottled enameled ware, but for any article having the identifying alkaline quality and the other enumerated characteristics.....
I cannot agree with the argument for the appellees, which prevailed with the court below, that the .alkaline characteristics of the enamel of the claims are to be determined solely by the constituents of the mix. Undoubtedly claims 4, 5, 6, and .7. refer to the enamel in its" completed state, after the. coat has been.dried upon the metal, and claim 8 .refers to the enamel when it is ready to be coated upon the' metal. It seems plain that the identifying characteristics of the enamel are those which then exist in it If it can be found that it is then alkaline, .or intensely or preponderatingly alkaline, by the litmus *29test or any test which those skilled in the art can apply, the claims are satisfied so far as they refer to the alkaline characteristic. In the specification the term “enamel” is applied to the coating in all -stages of its manufacture, to the mix, to the molten and ground or pasty mass when ready to be applied as a coating, and to the coating after it has been applied to the metal. In one sense the mix is an enamel. It is an inchoate enamel. But the enamel of the claims is the perfected article. The proportions of the ingredients of the mix disappear in the frit or mass, and are no longer capable of being traced. The quality of the enamel depends upon the influence of what occurs in the smelter and what survives the smelter, and can be found in the frit. If Claus thought that in all stages subsequent to the mix his compound was alkaline because of the alkaline qualities of the mix, and that to know the mix, therefore, was to know the final enamel, he was grossly ignorant; but his ignorance does not require those skilled in the art to suppose that the quality of the enamel, either after it has been .applied to the metal or when it is ready to be applied to the metal, is to.he ascertained by testing the quality of the mix. They could rightfully assume that it was to be found by testing the quality o.f the completed enamel, either by such a test as was applied to it by complainants’ expert, Banks, or by the defendant’s expert, or by some other test known to the art. Such a test would show the alkalinity of the frit, but would not show the alkalinity of the mix. A test of the alkalinity of the frit would, therefore, seem to be the best criterion of the alkalinity of the enamel.
Courts lean towards reading into the claims of a patent such limitations as will save the real invention as disclosed by the specification and the prior state of the art. But when the claims are drawn in broad and nebulous terms, with the apparent purpose of enabling the patentee to monopolize an important industry, the courts should be slow in attempting to sustain their validity by narrowing them beyond the boundaries which are clearly warranted by the specification.