(dissenting). Upon further consideration of this case on the application for a rehearing, I am unable to concur in the opinion heretofore pronounced. In the Stremme patent, dated March 26, 1867, the lines of the figure to be produced by the chipping compound are traced with a pencil on the ground surface of a pane of glass. Then the entire surface, other than the figure, is covered with a coating of varnish which is allowed to dry. Then the glue or chipping compound is applied freely on the figure overlapping the lines formed by the varnish. The glue or chipping compound then dries; the theory being that the glass will be chipped inside the figure, but that the chipping compound will merely pull off the varnish exterior to the figure.
But two patents which concern the chipping of glass by a chipping compound were shown in the prior art; the patent to Stremme being one, and that to Thompson in June, 1889, being the other. In the Thompson patent a covering of asphaltum “or analogous adhesive matter” is put over that portion of the glass which is not to be chipped. This covering is then itself covered with a layer of tin foil or paper. The patentee says, “A mere covering of paint will answer the purpose;” meaning, apparently, that the paint may be used instead of the asphaltum and its outer coating of tin foil or paper. The glue is then spread over the figure overlapping the lines of paint, or asphaltum covered with paper or tin foil. “If the chipping process were now to be carried out in the usual manner,” says the pat-entee, — and he seems to be confirmed by the testimony in the case,— “the glue would chip pieces'of glass off beneath the covering, a, b,”' *783meaning that the chipping would cross the lines of the figure and extend under the covering of paint or asphaltum. “To avoid this,” says the patentee, “I cut through the glue with a sharp knife along the margin of the space to be chipped and roll or strip oil the glue while in a jellied state from the parts not to be chipped, but I do not cut any crease into the glass itself. The outline of the design or pattern being thus cut through the glue, the chipping may be proceeded with by subjecting the glass and its sharply-defined glue cover to heat in the usual manner.” Again he says: “By my improved process I am enabled to produce chipped glass in a simple and ef-fecfive manner, and without the glass at the sides of the design to be chipped being affected by the chipping process.”
In the process of the patent in suit the following is the treatment: First, a thin film of soap or similar substance is applied over the surface of the glass; second, a pattern, capable of resisting the action of a sand-blast, is placed on the glass and held there by means of the soap; third, the film of soap, or other adhesive substance, is removed from the figure cut in the pattern; fourth, the sand-blast process is applied; fifth, the chipping compound in a liquid condition is then placed over the surface of the glass and the pattern; sixth, the pattern is lifted from the glass while the chipping compound is in a semi-liquid condition; seventh, the chipping compound thus cut away at the edges of the figure is made to harden and contract by the action of heat, thus chipping the glass within the lines of the figure. If the adhesive substance of the first step be of a kind which will not interfere with the aciion of the sand-blast, then (he third step may be omitted as needless. In this process the lifting of the pattern cuts the semiliquid chipping compound so as to leave the lower pxterior edge of the chipping compound which remains on the glass in line with the exterior of the figure to be chipped. The chipping com-poimd commences to dry from such exterior edge, and the chipping is effected so that the figure is clear and exact. The idea that the edges of the pattern — when the glass surface immediately under and coincident with said pattern remained smooth and that within the figure had been roughened as by sand-blasting — could be used to cut or sever a semiliquid chipping compound, so that the portion thereof left on the figure or sand-blasted surface would dry within the lines of the figure, and in drying pull or chip interiorly from such lines, seems to be new with the patentee of the patent in suit.
The patent to Frederici was for an improvement in preparing glass for the sand-blast process. By means of an adhesive coating he attached to a pane of glass a pattern with a design cut in it. Over this he placed a thin layer of beeswax, or some such material, and then stripped the pattern off, thus cutting the beeswax at the edges of the design. He then applied the sand-blast process to the portions of the glass not covered by the beeswax. If the pattern itself had been in this patent, what is called in the record “a sand-blast resist,” and if instead of covering the design with beeswax the sand-blasting had been applied to the design, — that is, to the portions of the glass not covered by the pattern, — and thereafter a chipping compound had been applied over the pattern, and then the pattern had been lifted, leaving the liquid or semiliquid chipping compound on the design, and the *784chipping compound so left had been suffered to dry, this would have been the process of the patent in suit. But in the Frederici patent the beeswax, or whatever material is used, seems to be set or dry when the pattern is lifted off. The idea of putting such a substance as a liquid glass-chipping compound over a pattern and over the portion of the glass surface exposed thereby, which portion had been previously sand-blasted so that it might hold the chipping compound, and of then pulling the pattern from the glass, leaving the semi-liquid chipping compound exactly within the lines of the figure, and adhering to the roughened glass in such a way that in drying it would 'pull or chip the glass from its own exterior lines, the same being coincident with the lines of the figure, seems to me not suggested by the Frederici patent. In the patent to Shaw the paint is brushed over the pattern and the glass, and after it dries the pattern is removed. The point in that patent seems to be the use of metal foil for the purpose of making patterns so that the same can be successfully removed from the glass.
The successive steps of treatment, as set forth in the patent in suit, constitute a process which is not in the prior art; nor am I able to say that the prima facie validity of this patent upon the matter of invention is satisfactorily disposed of by anything in the record. The patent to Thompson seems to show that the cutting of the chipping compound by lifting the pattern was not an obvious expedient. He used a knife or sharp implement to sever the still jellied, or as yet unhardened, glue at the outer edges of the figure to be chipped, for the very purpose of preserving exactness of contour. It did not occur to him that this could be easily and rapidly done — provided the figure or design were roughened while the margin thereof under the pattern remained smooth — by simply lifting the pattern at a prior stage of the glue-hardening process, and before the glue became solid enough to afford the necessary resistance to the action of the knife. Stremme operated on ground glass. He sought to produce models for casting. Chipping to or from an exact line was a problem with which he was apparently not concerned. The following sentence occurs in his specification : “The mode here described may be simplified to a great extent by using patterns in applying the varnish, either in the manner of brushing through or printing on the glass the protecting varnish, which latter method would also be applicable in certain cases, even in transferring the glue, when the varnish would be dispensed with altogether.” Erecisely what he meant, by the words “transferring the glue” is not any more definitely disclosed than by-the sentence quoted. Did he mean to use a flexible or a rigid pattern? Was the pattern to adhere to the glass? The suggestion seems to be of a pattern as a substitute for the varnish. Was the pattern to remain on the glass while the glue dried and while the chipping went on during the subsequent application of heat? The process of the patent in suit concerns the treatment of smooth glass. The sand-blasting is a necessary condition to the action of the chipping compound, and the pattern for the preliminary sand-blasting serves in the application —and accurate adjustment within the lines of the figure — of the chipping compound. In the Stremme process the design on which the glue is to be applied is not bounded by clear glass. The rough*785ened surface to bold the glue is not a distinct inclosure on a surface of glass otherwise clear. There is not surrounding the design a margin of clear glass which of itself would resist, or tend to resist, any chipping exterior to the ground surface of the design. Nor in the Thompson patent is the exact definition of a sand-blasted design within a margin of clear glass in any way proposed or suggested in aid of the eliipifing process. In the process in suit .the sand blasting is applied within the exact lines of the design. When the pattern is lifted there are no surface breaks or irregularities to carry the chipping compound across the exterior lines; moreover, the cutting of ilie somiliquid coating is from the underside. The chipping compound is thus left on, and within the exterior lines of, the roughened surface, so that the drying process may commence at, and the pull in the chipping process be from, the exterior lines. My conviction is that the decree here ought to be reversed.