Scottish Court of Session Decisions

George Rose, engineer, Glasgow, obtained letters-patent No 18,101 A.D. 1889, for “improvements in apparatus for burning hydro-carbon, or other oils for lighting and heating purposes.” In his provisional specification the invention is thus described—“My invention relates to apparatus for burning hydrocarbon or other oils in the form of spray for lighting and heating purposes, and the improvements are mainly applicable to that class of apparatus wherein steam, generated from water supplied to a coil-pipe or chamber heated by the flame, is used to spray the oil or oil vapour in the burner or combustion box. My improved apparatus, as constructed in accordance with my invention under one arrangement, consists of a tank for holding oil which is supported on legs or on a pedestal or its equivalent, and has secured to its side or bottom a water tank. Suitable plugs or screws are provided for filling these tanks. Projecting out, preferably from the water tank, is a pipe which is connected to or supports a coil pipe or chamber and supplies water thereto. In the chamber or coil pipe the water is converted into steam by the heat of the flame, which issues from a burner situated preferably below the generating coil or chamber. The coil is connected at its upper end or at other suitable part with and supplies steam to a branch leading to the burner nipple. From this branch pipe another connection to the upper part of the water tank is made. The generating coil or chamber is preferably enclosed in a metal casing, up through the bottom of which the steam nipple projects. Oil from the oil tank is led to the casing, the lower part of which it fills to about the height of the burner nipple. Cocks or valves are provided at suitable places on the supply pipes to regulate the water, steam, or oil supply. With this arrangement, when it is required to start

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the apparatus, naphtha or other volatile oil is poured into the casing surrounding the generating coil or chamber, and is lighted. After burning for a sufficient length of time to heat up the coil or chamber, water from the water tank is gradually turned on. As the water comes in contact with the heated surface of the coil or chamber, steam is at once generated, and by a proper opening and closing of the valves is passed into the upper or other part of the water tank, thus giving a considerable pressure therein. After this has been done, the steam supply to the water tank is turned off, and the steam supply to the burner turned on so as to maintain the flame by spraying the oil or oil vapour in the oil well of the casing. The pressure in the water tank can be thus maintained by turning on a supply at intervals from the generating chamber or coil. The oil in this arrangement is supplied by gravitation. The water tank instead of being a separate tank fitted below or at the side of the oil tank may be fitted inside the oil tank, or a compartment may be made in the oil tank for holding water. The pipe for supplying water to the steam generator may be made with a syphon bend in it for the purposes of keeping a sufficient water supply in the coil or chamber. … The steam supply to the water tank for creating pressure therein may be supplied from a separate coil or chamber arrangement, and it may be supplied continuously, instead of intermittently as aforesaid.”

In his complete specification, after a similar description of the invention, he declared that what he considered novel, and therefore desired to secure by letters-patent, was, inter alia—“1. In oil spray lighting or heating apparatus working with self generated steam, the method of creating a pressure in the water tank by admitting steam from the self-generating coil or chamber to said tank substantially as here in before described. 2. The combination with the steam generating coil or chamber of the lamp or burner of a pipe connection for conducting steam from said coil or chamber to the water tank substantially as and for the purpose here in before set forth. 3. The combination with the self-generating steam coil or chamber and the water tank or compartment, of the pressure pipe and valve, substantially as here in before described with reference to the drawings annexed. … 6. In oil spray lighting or heating apparatus working with self generated steam, the combination with the water tank and a self-generating steam coil or chamber of a pipe having a syphon bend therein for supplying water from said tank to the coil or chamber substantially as hereinbefore set forth.

A popular description of Rose's patent is given in the opinions of the Lord Justice-Clerk and Lord Rutherfurd Clark.

The patent was acquired in 1891 from George Rose by Rose's Patents Company, Limited.

In November 1891 Rose's Patents Company, Limited, raised an action in the Sheriff Court at Glasgow against Frederick

Braby & Company, Limited, in which they prayed the Court to interdict the defenders from infringing Rose's Patent, and in particular to interdict the defenders, “either directly or indirectly, from making, offering for sale, selling, or using without the consent, licence, or agreement of the pursuers, any oil spray lamps or oil spray lighting apparatus working with self-generated steam in which a pressure is created in the water tank by admitting steam from the self-generating coil or chamber to said tank by means of a pipe connection for conducting steam from said coil or chamber to said tank, according to the method or in the manner described in the said letters-patent and relative specification, or according to any method or in any manner substantially the same, and from making selling, or using any oil spray lamp or oil spray lighting apparatus constructed with or embracing in its construction such method or arrangement as aforesaid,” and to ordain them to pay to the pursuers £1000 as damages.

The pursuers averred—“The invention covered by the said letters-patent consists of ‘improvements in apparatus for burning hydrocarbon or other oils for lighting and heating purposes,’ and the principal improvements, so far as applicable to oil spray lamps or lighting apparatus working with self-generated steam, consist in the method of creating a pressure in the water tank by admitting steam from the self-generating coil or chamber to said tank, and the manner of effecting same by the combination with the steam-generating coil or chamber of the lamp or burner of a pipe connection for conducting steam from said coil or chamber to the water tank, all as described in said specification, and also the general arrangement and combination of parts of the several self-generating steam lamps therein described.”

The defenders lodged answers, in which they averred, inter alia—“(1) The alleged invention was not at the date of the alleged letters-patent the subject-matter of a grant within the meaning of the Patent Acts. There is no ingenuity or invention displayed in said invention. … (2) There is no sufficient distinction between what was old or was in use and known at and prior to the date of the letters-patent, and what was new. These are claimed as new inventions which were old. In particular, claims 1 and 2 include the inventions of a method and appliances for creating pressure which was anticipated by Doty's Patent, No. 8967, A.D. 1887, and by Robinson's Patent, No. 3696, A.D. 1889. Claim 3 is identical with claim 2, except as regards application of a valve to a pipe which is old and publicly known. Claim 6 is anticipated by Doty's Patent aforesaid. … (3) The alleged invention was not new, and was publicly known before the date of the letters-patent. In particular, the invention was published in the following letters-patent:—Doty's Patent, No. 8697, A.D. 1887; Robinson's Patent, No. 3696, A.D. 1889.”

As regards Doty's patent, Doty stated in hls specification that his invention related

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“to the utilisation of mineral and other oils for lighting, heating, and other purposes.” One object of his invention was to provide for converting the oil into gas or vapour, and for utilising the heat generated by the combustion for heating the pipe in which such conversion was effected, so that the operation would be continuous without the aid of any separate or extraneous heating apparatus. For this purpose he employed a tank of oil and a coil of pipe connected therewith at its lower end by a feed pipe. The upper end of the coil was connected by a bent pipe with a burner placed in the centre of the circle formed by the lowest winding of the coil. The operation was set agoing by oil being placed in a saucer under the coil and ignited. By this means the oil in the coil became heated and threw off a vapour or gas, which escaping through the burner became ignited by the flame at the base of the coil. On the gas being thus ignited, the flame filled the interior of the cylindrical passage formed by the coil, and thus the combustion continued as long as there was oil supplied to the coil from the tank. To ensure the requisite flow of oil from the tank, notwithstanding the pressure of the expanding gases in the coil and pipes, three methods were specified—(1) The placing of the tank at such height above the coil that the gravity of the oil in the supply pipe would maintain a constant pressure against the expanding gas; (2) placing the tank a few inches above the coil and connecting the upper part of the tank, above the level of the oil, and the upper part of the coil by means of a pipe, “so that when a pressure occurs in the coil from the expanding gases, it will be communicated to the said tank or reservoir, and extended over the surface of the oil, thus rendering the supply more even and the flame more regular;“(3) the employment of an air-pump. Another object of Doty's invention was to provide for the utilisation of a mixture of the gas or vapour into which the oil had been converted with steam or water gas for the production of heat for generating steam, or for use in blast furnaces or other purposes. In this modification there were two tanks, one of oil and one of water, and a coil consisting of two tubes wound side by side, the inlet of the one tube leading to the oil tank, and the inlet of the other to the water tank, and the outlets of both tubes, provided with suitable burners, being situated together in the centre of the circle made by the lowest winding of the coil. In this case, when ignition took place and the coil became heated, the oil-gas and the super heated steam were discharged together, and a fierce combustion followed. In figures attached to Doty's specification there was a bend in the pipe leading from the tank to the coil, but no mention was made of the utility of such a bend in the specification.

Robinson's patent, as he stated in his specification, was for “improvements in lamps burning hydrocarbon oils under pressure for lighting or heating, also applicable to other lamps.” In carrying out his invention Robinson employed an oil tank and an oil-gas generator. The generator shown in the plans annexed to the specification, but which was no part of the invention, consisted of a succession of horizontal tubes connected by vertical tubes, closed by screw stoppers. From the bottom of the reservoir a pipe was taken to the lowest part of the generator, and from the highest part of the generator a pipe led to a space left over the oil in the reservoir. From the highest part of the generator a pipe was also taken to the nozzle of the burner, which was placed in such a position that the flame issuing from the burner played on or was close to the generator, so as to keep the generator hot enough to vapourise the oil contained therein, and send it forth at the burner in the form of oil-gas. The combustion was started by a piece of oil waste being placed between the valves of the generator and set on fire. Robinson did not bind himself to any mechanical arrangement or construction of parts of his lamp or to any form of generator or burner, so long as the feature constituting his invention was preserved, “namely, conducting the pressure evolved in the gas generator to the upper part of the oil reservoir, so as to balance the pressure between the generator and the oil reservoir and secure the efficient working of the light without the use of hand pumps or other auxiliary means at present used for creating pressure in the oil tank.” Robinson claimed as part of his invention the maintaining of a pressure in the oil reservoir automatically by the oil vapour from the generator, so as thus to dispense with the use of pumps and other auxiliary modes of obtaining pressure.

The Sheriff-Substitute ( Guthrie) allowed parties a proof of their averments. The pursuer led evidence, inter alia, to show that oil vapour lamps were unsatisfactory, because the heating of the oil caused a deposit of carbon to be formed on the inside of the coil and passages, and thus the pipes became choked up.

On 29th June 1892 the Sheriff-Substitute pronounced the following interlocutor—“Finds that the pursuers are owners of the letters-patent condescended on, and that the defenders have failed to establish the objections to the validity thereof pleaded in the defences: Finds that the defenders have infringed the said letters-patent: Therefore repels the defences, and interdicts, prohibits, and restrains, as prayed for, and decerns,” &c.

The defenders appealed to the Sheriff ( Berry), but on 6th March 1893 the Sheriff adhered to the interlocutor appealed against.

On 18th October 1893 the Sheriff-Substitute assessed the damages at £270, for which sum he decerned against the defenders.

Against these interlocutors the defenders appealed to the Court of Session, and argued—The pursuers' patent was invalid. This invention was not proper subject-matter for a patent. It had been anticipated

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by both Doty and Robinson. The pipe connections and coil fittings were indicated in Doty and Robinson's patents. A mode of working the lamp automatically by means of pressure on the liquid in the upper part of the tank was also shown in both the prior patents. It was said that oil vapour choked the pipes, but that did not matter if the patent contained the patentable idea. One could not patent a simple set of pipe-connections because one used water instead of oil. The employment of steam in order to create pressure could hardly be described as a novel invention. One could not get a patent for ingenuity in applying means which were identical to subjects which were analogous. If a known article was applied to analogous purposes it was not patentable because it produced advantages not produced before— Morgan & Company v. Windover & Company, March 11, 1890, 7 P.O.R. 131. The adaptation of a well-known idea in a well-known manner for a well-known purpose, and not involving any invention, was not the subject of a valid patent— Longbottom v. Shaw, March 19, 1891, 8 P.O.R. 353. If a man of science having Doty and Robinson's patents before him, and acquainted with the principle of the steam spray lamp, could without any exercise of inventive ingenuity have constructed a lamp like that of Rose, then Rose's patent was bad—Lord Chancellor Halsbury's opinion in Anglo-American Brush Electric Light Corporation v. King, Brown, & Company, April 5, 1892, 19 R. (H.L.) 26. Under Doty's specification a machine dealing with the agent steam could be constructed getting over the difficulty of back pressure in the same mode as that specified in Rose's patent. The syphon bend claimed in the 6th article of Rose's specification was also old, and was plainly delineated in figure 1 of Doty's patent. This claim being bad the whole patent fell — Murchland v. Nicolson & Gray, July 19, 1893, 20 R. 1006. On all these grounds the patent was invalid.

Argued for pursuers—The patent was good. If something remained to be ascertained necessary for the useful application of a discovery, that afforded room for another patent. Opinion of Lord Chancellor Westbury in Hill v. Evans, January 29, 1862, 4 De G. F. and J. 300. Of the usefulness of Rose's patent there could be no question. There was no necessity for a pump; it worked automatically. It could be worked at less expense than those of Doty and Robinson's, as the oil was not under pressure, and thus there was no necessity to put out the light in order to replenish the lamp with oil. Very crude oil could be burned in it. There was no choking of the pipes as in Doty and Robinson's lamp. There was here no application of the same machinery to analogous purposes. Water was different from oil, and it required inventive ingenuity to adapt to water the mechanism which was formerly applied to oil. The same result might be obtained, but it was by different means, and it was a useful development beyond what was shown in former patents. An invention might consist in a combination of known elements. Even an apparatus of such a simple character as a syphon bend would be patentable if combined with other useful and patentable features. The judgment of both Sheriffs was in favour of the pursuers, and should be adhered to— Cannington v. Nuttall, June 12, 1871, L.R., 5 English and Irish Appeals 205; Stewart & Briggs v. Bell's Trustee, December 5, 1883, 11 R. 236; Gosnell v. Bishop, March 13, 1888, 5 P.O.R. 151; Thomson v. American Braided Wire Company, June 3, 1889, 6 P.O.R. 518; Vickers, Sons & Company v. Siddell, August 7, 1890, L.R., 15 App. Cases 496, Lord Herschell's opinion, p. 502.

At advising—