No. 1052. BROOKS-SCANLON COMSION OF LOUISIANA. June 9, 1919. PANY, petitioner, v. RAILROAD COMMISopinion below, see 81 South. 727. Petition for a writ of certiorari to the Supreme Court of the State of Louisiana granted.

No. 1037. John H. MUDD and Elizabeth G. Mudd, petitioners, v. ALABAMA MINERAL (250 U. S. 647) LAND COMPANY. June 9, 1919. For opin- No. 1053. Charles C. FOSTER, acting suion below, see 255 Fed. 991. Petition for a perintendent, etc., petitioner, v. Frank Joseph writ of certiorari to the United States Circuit GOLDSOLL. June 9, 1919. Petition for a Court of Appeals for the Fifth Circuit denied. writ of certiorari to the Court of Appeals of the District of Columbia denied.

No. 1047. NATIONAL BRAKE & ELFC- No. 1059. J. M. THOMPSON, Master and TRIC COMPANY, petitioner, v. Neils A. Claimant, etc., petitioner, v. Peter LUCAS and CHRISTENSEN et al. June 9, 1919. Peti- Gustav Blixt. June 9, 1919. Petition for a tion for a writ of certiorari to the United writ of certiorari to the United States Circuit States Circuit Court of Appeals for the Seventh Court of Appeals for the Second Circuit granted. Circuit granted. For opinion below, see 258 | For opinion below, see The Westmeath, 258 Fed. 880.

Fed. 446.

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of New York City, and J. Bruce Kremer, of

MINERALS SEPARATION, Limited, et al. v. Butte, Mont., for respondent.
BUTTE & SUPERIOR MINING CO.

(Argued March 19, 1919. Decided June 2,

1. PATENTS 328-SCOPE OF CLAIMS-ORE rior Mining Company, defendant below and CONCENTRATION.

4. PATENTS 153- DISCLAIMERS - TIME OF ed in this case. ENTRY.

Entry of disclaimer of claims of patent filed 107 days after decision of Supreme Court holding them invalid held, in view of patent owners residing in a foreign country and of the existing war conditions, not unreasonably neglected or delayed.

*Messrs. Henry D. Williams, William Hous- Corporation, 31 R. P. C. 206 (Privy Council British ton Kenyon, and Lindley M. Garrison, all of New York City, Frederic D. McKenney, of Washington, D. C., Garret W. McEnerney, of San Francisco, Cal., and Odell W. McConnell, of Helena, Mont., for petitioners.

For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

682*

(39 Sup.Ct.)

upon the use of oil by the respondent in excess of 1 per cent. on (of the weight of) the ore, after the decision of the former case by this court.

The evidence shows, and counsel now admit, that prior to the decision by this court in December, 1916, the respondent used, in its ore concentration operations, various oils in quantities less than one-half of 1 per cent. on the ore, but that from January 9, 1917, to the time of trial, with the exception of two or three weeks, it used oils of a composition which we shall discuss later on, in quantities in excess of 1 per cent. on the ore. In other respects its methods were substantially those of the patent in suit.

On this showing, the District Court found the patent infringed by the respondent, when it used oil in quantities greater than, as well as when it used it in quantities less than, 1 per cent. on the ore.

The Circuit Court of Appeals held the patent infringed only when the respondent used oil in quantities equal to, or less than, one-half of 1 per cent. on the ore, and it therefore reversed both of the holdings of the District Court, but allowed recovery for the period when less than one-half of 1 per cent. of oil on the ore was used.

The Circuit Court of Appeals derived its authority to limit the claims to one-half of 1 per cent. on the ore from the construction which it placed upon the following clause of the opinion of this court in the former case,

viz.:

The reasoning which carried two members of the court to their conclusion was that, as shown by the evidence of the patentees and the argument of their counsel, the amount of oil which is "critical," in the sense of marking the point of transition from the processes of the prior art to the process and discovery of the patent, is one-half of 1 per cent. of oil on the ore, and that therefore this court, by using the expression quoted, intended to limit the claims, not to a "fraction of one per cent.," but to a "fraction of one-half of one per cent. on the ore."

matter.

The process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its sucshows. This satisfies the law." cessful application, as the evidence abundantly

Thus was it plainly held proper for the patentees to claim a reasonable degree of variation-"within the terms of the claims" in the amount of oil to be used in the application of their discovery in practice, and that the restricting of the amount to a fraction of 1 per cent. on the ore was reasonable and

lawful.

The two expressions "critical proportions" and "amounting to a fraction of one per cent. from the evidence and the latter from the on the ore" being used, the former derived claims of the patent, obviously, to the extent that they differ-if they differ at all-the language of the claims must rule in determining the rights of the patentees.

[1] While in the former case this court was not called upon, and in its opinion did not attempt, to define the scope of the claims, but was considering the patent only from the of the claimed discovery, nevertheless, the point of view of the invention and usefulness language quoted seems to indicate clearly enough that the opinion of the court then was, as it is declared now to be, that as to the claims here involved the patent extends to and covers the use in the process of oils of the patent, in amounts *equal to any fraction of 1 per cent. on the ore. The oleic acid claims are in terms limited to 0.02-0.5 per cent. on the ore. The Circuit Court of Appeals fell into error in the interpretation which it placed upon our opinion, and its judgment in this respect is reversed.

Since the case must be retried, there remains to be considered the reversal by the Circuit Court of Appeals of the holding by the District Court that the use of oil by the respondent in excess of 1 per cent. on the ore constituted an infringement of the patent.

As we have said, prior to the former decision by this court, the respondent used in its ore concentration process less than one-half of 1 per cent. of oil on the ore, and as to such practice infringement is clear, but from January 9, 1917, to the time of trial, with slight exceptions, it used in excess of 1 per cent, on The specification of the patent points out the ore, and it is necessary to consider only that the proportion of mineral which floats the operations during this latter period. The in the form of froth varies with different ores oil used during this period was a compound, and with different oily substances *used and varying in composition from time to time, but that simple preliminary tests are necessary we agree with the District Court in selectto determine which oily substance will yielding as typical a mixture made up of 18 per the best results with each ore. Of this feature of the patent this court said:

"Such variation of treatment must be within the scope of the claims, and the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject39 SUP.CT.-32

cent. of pine oil, and the remainder of petroleum products or derivatives-12 per cent. of kerosene oil, and 70 per cent. of fuel oil. Of this compound there was used 30 pounds to the ton of ore, which would be 1.5 per cent. on the ore. As thus stated, without more, it

*343

is obvious that the use of such an amount of oil would not infringe the claims of the patent which limit the oil to be used to a fraction of 1 per cent. on the ore.

"Q. Have you since found it possible to use other oils than oleic acid with the result of producing a froth? "A. Yes.

"Q. What other oils?

"A. I have obtained satisfactory results by the use of petrol and certain proportions of distillate of crude petroleum, such as Cosmos oil,"

But the contention of the petitioners, approved by the District Court, was, and now is, that kerosene and fuel oil were inert and valueless, if not harmful, as used by the respondent in the process, and rendered the re-and he said "Cosmos oil" is "a petroleum covery less than it would have been if the distillate." pine oil only had been used; that they were added solely to carry the content of oil beyond the prescribed fraction of 1 per *cent. on the ore, in the hope of technically avoiding infringement; and that essentially in its operations the respondent used the process of the patent with 0.27 of 1 per cent. of pine oil on the ore, and therefore infringed it.

The respondent replied that it was not true that kerosene and fuel oil were inert and useless, and asserted that they were oils of the patent, "having a preferential affinity for metalliferous matter"; that the patentees by the claims of their patent had limited their exclusive right to the use, in the process, of any oil or oily substance having such an affinity, but in an amount not greater than a fraction of 1 per cent. on the ore, and that

therefore the process of the respondent, in which more than 1 per cent. of oil on the ore was used, did not infringe the patent.

The entire evidence in the Hyde Case was introduced on the trial of this case, and whether the petroleum products or derivatives used by the respondent were oils within the scope of the patent must be determined

Chapman, an engineer and a witness for the petitioners in the Hyde Case, testified that he had obtained good recoveries in the laboratory and in commercial practice, from the ore of the Braden mine, in Chile, using three pounds of Texas fuel oil to one pound of American wood tar oil per ton of ore. Texas fuel oil is petroleum.

Greninger, an engineer employed by one of the petitioners in installing its flotation plants, testified in this case that in a mine in British Columbia he used a mixture of oil, 75 per cent. of which was derived from pe

troleum.

There is much more of the same character

from witnesses for the petitioners, and the effect that petroleum products are useful Ievidence of the respondent is strongly to the and efficient and have been widely used in the process in laboratory and commercial practice.

Without quoting more from the record before us, we must conclude that when the patent in suit was obtained, and even until the testimony in the Hyde Case was closed in 1912, petroleum products were recognized by the petitioners, and that they are still used, as oils, efficient and useful in the process of the It is admitted that petroleum products are patent in suit. Much of this evidence is es"oils having a preferential affinity for metal-pecially impressive because the papers from

from the record now before us.

liferous matter."

*which it is derived were written, and the

In each of the four claims of the "Com-witnesses testified before the question as to plete Specification" of the British patent, petroleum, now made in this case, was raised filed by the same persons who were patentees or discussed. of the patent in suit, on June 3, 1905, "petrol" is given as an equivalent of oleic acid in the process. This appears in the statement, repeated in each claim, that the ore and acidified water shall be mixed or agitated with "a small proportion of an oily substance such as oleic acid or petrol, amounting to a fraction of one per cent. on the ore." "Petrol" is the name used in England for gasoline.

[3] While we thus conclude that petroleum and petroleum products are oils useful in this process of the patent, it is also clear that they are not as highly efficient as pine oil and several other oils and combinations of oils, which, in the nomenclature of the record are called "frothing oils," and also that better results would probably have been obtained by the use of less than 1 per cent. on the ore, of pine oil alone, than were obtained by the respondent with that oil in combination with the larger amounts of petroleum products. And this presents the further question neces→ sary to a decision of the case, viz.:

The claims of the patent in suit which we are considering call for the use in the process of an "oily liquid,” “an oily substance," and in the twelfth claim simply of an "oil." These expressions are said by Prof. Chand- Does the use of a more efficient, in comler, an expert for the petitioners, muchbination with a less efficient, oil of the patent relied on in the Hyde Case and in this, to in- constitute infringement, where the former is clude petroleum products.

Higgins, one of the experimenters who discovered the process in suit, and who is much relied upon by the petitioners as an expert witness in both cases, testified as follows in the Hyde Case:

used in an amount within the limits of the claims but the combined amount is in excess of such limit, and when the amount of the more efficient oil used would probably produce better results from the process than are produced with the combination of oils?

(39 Sup.Ct.)

To answer this question requires a con- | ent,” viz., slight acidification, heat, and fine sideration of the state of the prior art as it pulverization of the ore, and then the dis

"We have found that if the proportion of oily substance be considerably reduced, say to a fraction of one per cent. on the ore, granula"The herein described process of concentrattion ceases to take place, and after vigorousing ores which consists in mixing powdered ore agitation there is a tendency for a part of the with water, adding a small proportion of oily oil-coated metalliferous matter to rise to the liquid having a preferential affinity for metalsurface of the pulp in the form of a froth or liferous matter (amounting to a fraction of one scum." per cent. on the ore), agitating the mixture until the oil-coated mineral matter forms into a froth, and separating the froth from the remainder by flotation."

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