In re Verley

delivered the opinion of the Court:

The appellant’s contention is mainly that he uses the Herzian exciter to produce ozone, while Tesla does not use that means for the same purpose, but only electrical currents of ordinary high frequency. But inasmuch as Tesla in his first and second patent does .use the Herzian exciter, and that in the specifications of his third patent he says that the appliances of the other two patents may also be used for the production of ozone, as well as the special appliance which he does use for that special purpose, we concur with the tribunals of the Patent Office in holding that this was a plain anticipation of Ver ley’s idea. An attempt is made to distinguish between the Herzian exciter and other apparatus for the production of electric currents of high frequency, and between electrical currents having oscillations of twenty or thirty thousand a second and those having billions of such oscillations; but we fail to find any warrant for the distinction. The difference is plainly one of degree, not of kind. Moreover, Tesla expressly refers to currents of high frequency having many millions of oscillations a second. We can, therefore, find no patentable novelty in the use of the Herzian exciter to produce ozone.

There would seem to be some advantage in the applicant’s location of his condenser, exciter and ozonizer in the secondary circuit of his transformer, instead of having them in the primary circuit, where Tesla places them. It would seem that this special location tends to prevent the formation of arcs across the exciter or air-space, and that such prevention is desirable in the production of ozone. If there is patentable novelty in this arrangement, as possibly there may be, *600we presume that a patent would be allowed upon application and specifications distinctly directed thereto. The question of the patentability of the appellant’s device in that special regard does not seem to have been passed upon by the Commissioner of Patents, or by the other tribunals of the Patent Office, except by their general refusal of a patent, notwithstanding that the point seems to have been made before all of them by the applicant’s counsel. But we have no means of ascertaining on this appeal whether the result of the appellant’s location of his condenser would be as claimed, or whether there is such superiority in it over Tesla’s device as would justify its being regarded as patentable invention.

There are modes by which this can be determined; and we think that the appellant should be remitted to some of those modes for the establishment of this special claim, if he can establish it.

It is our conclusion that no sufficient reason has been shown to induce us to disturb the decision of the Commissioner of Patents, and that the decision should be affirmed. It is accordingly hereby affirmed. The clerk of the court will certify this opinion and the proceedings of the court in this cause to the Commissioner of Patents according to law.