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alteration, to carry out the Jones process, it is evident that the defense of anticipa tion by prior patents rests upon a slender foundation.

Certain discussions, reported in the Journal of the British Iron and Steel Institute, are relied upon as embodying a description of the Jones process. Running through all these discussions there is the same idea of the difficulties experienced in the practical carrying out of the direct process by reason of the want of uniformity in the different products of the blast furnaces, and the possibility of remedying this and thereby doing away with the expense of remelting the pig iron in cupolas by a mixture of such products in a reservoir intermediate the furnaces and the converters; but the dominant idea of the Jones patent, of maintaining a

storage and for such incidental steps to ward uniformity as the necessary mixing of the different products of the blast furnace would lead to, while in none of them is there a provision for supplying and withdrawing from the mixer such quantities of metal at a time and the retention of a considerable quantity of metal in the reservoir as a necessary prerequisite to that uniformity of product which was recognized as the great desideratum, and was the constant effort of manufacturers to secure. Granting that some of these devices may have been made use of to carry out the Jones process, none of them in practical operation seems to have been effective to secure the desired result. A process patent, such as that of Jones, is not anticipated by mechanism which might with slight alterations have been adapted to carry out that process, un-permanent and large quantity of molten less, at least, such use of it would have occurred to one whose duty it was to make practical use of the mechanism described. In other words, a process patent can only be anticipated by a similar process. A mechanical patent is anticipated by a prior device of like construction and capable of performing the same function; but it is otherwise with a process patent. The mere possession of an instrument or piece of mechanism contains no suggestion whatever of all the possible processes to which it may be adapted. New Process Fermentation Co. v. Maus, 122 U. S. 413, 428, 30 L. ed. 1193, 1198, 7 Sup. Ct. Rep. 1304. If the mere fact that a prior device might be made effective for the carrying on of a particular process were sufficient to anticipate such process, the absurd result would follow that, if the process consisted merely of manipulation, it would be anticipated by the mere possession of a pair of hands.

True, if the process were the mere function of a machine, another machine capable of performing the same function might be an anticipation; but this is not because a process can be anticipated by a mechanism, but because, as we have held in several cases, the mere function of a machine is not patentable as a process at all. Corning v. Burden, 15 How. 252, 14 L. ed. 683; Risdon Iron & Locomotive Works v. Medart, 158 U. 8. 68, 39 L. ed. 899, 15 Sup. Ct. Rep. 745.

To enable the Jones process to be successfully carried out it is necessary (1) that the intermediate reservoir or mixer should be of large size, "say, 100 tons" capacity; (2) that it be covered to prevent the access of cold air from without; (3) that it be provided with a stop, so that it may not be tilted so far as to be emptied of its contents; (4) that a quantity of molten metal so large as to absorb all the variations of the product of the blast furnace received into it and thus to unify the metals discharged in to the converters, be constantly retained in it. None of the prior patents or processes to which we are referred meets these requirements. Indeed, it is scarcely too much to say that none meets more than one of them. When we add to this that none of them was ever used, or was ever susceptible of being used, without material

metal in the mixer for that purpose, does not seem to have occurred to any of the writers upon the subject. Through all these papers there is an admission of practical failure in the efforts theretofore made to obviate the difficulty, and a half-expressed hope that American ingenuity might ultimately solve the problem. Some of the expressions, taken by themselves, seem to foreshadow the Jones idea; but there was nothing in any of these discussions that filled the requirement of the law (Rev. Stat. § 4886) of a description in a publica tion sufficient to anticipate the patent.

In some of the very works where attempts had been made to adopt a direct process they were abandoned as unprofitable, and the Jones invention subsequently adopted. The witness David Evans, manager of certain iron works in England and Wales, sums up his testimony in the following answer: "Prior to the invention of Captain Jones several firms used the direct process, but the results were not very satisfactory, as explained before, through want of uniformity. The results obtained gave a large number of defectives. But since the adop tion of the mixer at the various works I have been engaged, we have reduced the defective or second-class rails fully one half, and also saved the remelting." Indeed, it is stated by several of these writers that the adoption of the Jones invention reduced the defective rails to something like half of what they were before.

Our attention is also challenged to certain unpatented practices, among which is one known as the Whitney foundry practice for the casting of car wheels, wherein the metal is tapped from three cupolas into an open reservoir of eight to ten tons' capaci ty, permitted to mix and even up in it, and the charges withdrawn to be cast into car wheels, the reservoir being maintained half full. The practice was to run the metal from the cupola furnaces into the reservoir ladle until it was nearly full, then to begin pouring out charges into the casting ladles, while still continuing to pour metal into the ladle from the furnaces, the ladle being kept approximately full during the working day, when it was emptied and refilled on the following day. Aside from the fact that

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It should be borne in mind throughout the whole of this discussion that Jones never claimed to have succeeded in making a perfectly uniform product; that his object was to procure a uniformity which was adequate for the complete carrying on of the Bessemer process, or, as his second claim states, "for further treatment," and really to obviate the necessity of remelting the pigs, which had heretofore been regarded as preliminary to the further treatment by the Bessemer process.

this process has only to do with cupola | ready undergone the refining process of the metal, uniformity in which was largely se- blast furnaces. In Jones, we take metal dicured by a careful selection of the pig iron rect from the furnace and discard the cupocharged into the cupola furnaces, and had la. It will thus be seen that apart from the no reference whatever to the direct process wide difference between the primary work of charging converters with the product of a huge blast furnace, the base of all of blast furnaces, it appears that, while metallurgy, and the cupola of the founder, Whitney recognized the fact that the charg- a mere subdivision of that art, we find in es of iron from the cupolas, when run to- the Jones and Whitney processes a substangether into the ladle, would mix, it appears tial difference of purpose, of process, and of that with this running together of the dif- subject-matter of work." ferent charges the mixing operation ended. The maintenance of a permanent pool, and the constant pouring in and out in ladle fuls, the essence of the Jones invention,had nothing to do with the process. Indeed, it may be doubted whether the mixing of the cupola metal was of any substantial value. Evidently it suggested to no one the Jones process. It is now too late to insist that it would have been suggested to any mechanic of ordinary skill and intelligence. But if the Whitney practice were primarily for the purpose of mixing, and Substantially the same remarks may be were adequate for that purpose when ap- made with regard to the Kirk publication, plied to cupola metal carefully selected be- which had to do only with the mixing of forehand, it might be, and evidently would cupola metal. This publication was first have been, wholly inefficient when used for held by the Patent Office to be an anticipathe purpose of unifying the products of tion of the Jones process, the application blast furnaces,-in other words, for the for which was rejected upon that ground. Jones process; and it might and did require Upon further consideration, however, and invention to make such changes as were with some slight amendments, the applicanecessary to adapt it to such purpose. tion of Jones appears to have been reconDoubtless there was such mixing as the sidered, and was finally granted. carefully selected cupola metal required An attempt was made to show that the for the purpose of manufacturing car Jones invention was anticipated by a prac wheels, but the fact that the Whitney practice, common in steel works prior thereto, tice was used for cupola metal has but lit- of tapping iron from cupola furnaces into tle tendency to prove that it was adaptable a receiving ladle, which became known as without change to metal tapped from blast furnaces, which varied so largely in chemical composition.

The following observations of the District Judge are illustrative of the distinction between the Whitney foundry practice and the Jones process:

"We must avoid being misled by mere terms and subjects of work. While Jones and Whitney both desired the melting of metals, yet they had widely different objects in view. Whitney's purpose was to cast molten metal into a finished product: Jones's merely to prepare molten metal for further treatment, to wit, decarburizing it into steel. The sine qua non of purpose in Whitney was product uniformity. Uniformity of quality in car wheels is required, so they will stand strain and uniform wear."

the Bessemer cupola ladle, from which it was poured into the converters. Molten iron was tapped from several cupolas into this ladle, from which a charge was drawn and delivered to the converter vessel. Of course, if the ladle were of greater capaci ty than was necessary to charge a single converter, a residuum of metal would be left in it; but this seems to have been merely an incident of the operation of the ladle, which was used primarily for storage, and to have been of no substantial benefit in securing uniformity of product, which can only be obtained by making the receiver of larger size, and retaining a considerable quantity of metal in it after each discharge. The witness Kennedy says of this process:

"The irons were carefully selected from the different piles to make up the cupola "In the Bessemer direct process you can- charges. I have often seen the lanot secure, initially or by treatment, uni- dle drained in pouring into the converter. formity of molten metal. So far as yet deIt did not hold two full charges. veloped, the best you can do is to make the I never knew of the ladle being nonuniformity gradual and not abrupt. used for mixing purposes. If such was the In Whitney, nonuniformity, whether grad- practice I would have known it. ual or abrupt, would be alike fatal. In The capacity of the ladle was so small, and Whitney, relatively absolute uniformity is the size of the pool of metal, when there an essential of product and a sequence of was a pool, was of such varying size, that material used. In Jones, uniformity is a I do not see how any mixing could be acnonessential-in fact, a nonattainable-at-complished. Q. 18. When was this tribute of product, and is a necessary non-ladle drained, and when would there be some sequence of material used. In Whitney, netal left in the handle?-4. There would we remelt in a cupola metal which has al- be no regularity in the process. The rate

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at which the converters take the metal does | ent invention is the method of storing sucnot always correspond with the rate at which the cupolas are melting."

It is true the Jones patent is a simple one, and in the light of present experience it seems strange that none of the expert steel makers, who approached so near the consummation of their desires, should have failed to take the final step which was needed to convert their experiinents into an assured success. This, however, is but the common history of important inventions, the simplicity of which seems to the ordinary observer to preclude the possibility of their involving an exercise of the inventive faculty. The very fact that the attempt which had been made to secure a uniformity of product seems to have been abandoned after the Jones invention came into popular notice is strong evidence tending to show that this patent contains something which was of great value to the manufacturers of steel, and which entitled Jones to the reward due to a successful inventor.

cessive charges of molten metal in a receptacle before using it in converters or otherwise;" and hence it is insisted that the main feature of the invention was storage and not mixing; but the subsequent words of the same sentence, "drawing portions of the metal from the receptacle without at any time removing the whole thereof, and from time to time replenishing the receptacle with fresh charges, which mingle with the residual molten metal already therein, for the purpose of rendering the successive tappings of metal uniform in quality,"-convey a wholly different impression, and show that the primary object was that of mixing different charges for the purpose of securing uniformity in the metal when discharged into the converters. This appears still plainer in the claim appended to this specification: "The process hereinbefore described, which consists in storing charges of molten metal in a covered receptacle provided with a heat-retaining lining, remov 2. The phraseology of the patent and the ing portions only of the molten contents of amendments introduced in the Patent Office the said receptacle, without entirely drainare made the subject of much criticism, ap-ing or emptying the same, and successively parently for the purpose of showing either replenishing the receptacle with fresh addithat Jones did not understand what he had tions of molten metal, whereby the characinvented, or that the specification did not ter of the several charges of metal so treatcontain "such full, clear, concise, and ex- ed is equalized; substantially as described." act terms as to enable any person skilled The word "storing" was evidently used in in the art to make, construct, the sense of pouring the metal into the rescompound, and use the same." Rev. Stat. ervoir or mixer, as essential to the mainte§ 4888. If these criticisms are not alto-nance of a dominant pool therein. The apgether clear, they are pressed upon our con- plication was evidently considered as not sideration with an earnestness which chal-sufficiently differentiating this from former lenges a careful consideration of the history patents, and was rejected upon reference to of this patent in the Patent Office. the Witherow patents and to Kirk's FoundIn his first application the patentee stat-ing of Metals. Certain slight amendments ed that "the primary object of the inven- were then made in the specification, the tion is to provide means for insuring uni- claim verbally changed, and an argument formity in the product of a Bessemer steel submitted to the effect that the purpose of works or a similar plant, in which the met- the Witherow patent was "to receive and al from more than one blast furnace is em- store the molten metal for the purpose of ployed to charge the converters. The prod-preventing the detention, incident to the uct of the different furnaces, or of the necessity of discharging the contents of the same furnace at different times, varies blast furnace when there is no converter in quality, the ready to receive it;" whereas the distinctmanufactured steel lacks uniformity in ive idea of the Jones patent was "to have a grade. To avoid this I employ suitably receptacle capable of holding metal in a constructed reservoirs or vessels, into which molten condition into which metal, it may the molten metal from the blast furnaces is be from several blast furnaces, is run from put, the vessels being of proper capacity to time to time, and from which metal is hold a considerable charge of metal froin a drawn for treatment in the converters, or single furnace, or from a number of fur- otherwise as required." naces, and being adapted to retain the metal in a molten state for sufficient time to enable the different charges to mix and become homogeneous. Such apparatus possesses also an additional advantage in that it makes it possible to dispense with cupola furnaces for remelting the pigs preparatory to charging the converters. The metal may be tapped from the blast furnace into ladles or trucks, carried to and discharged into the mixing reservoir or vessel, and there retained in a molten state until sufficient metal has been accumulated to charge the converters."

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It is true that he subsequently states, as observed in the opinion of the court of appeals, that "the main feature of my pres

This was evidently considered as still too indefinite, and the application was thought to be fully met by the description in Kirk's Founding of Metals, and was rejected.

Thereupon the application was again amended, its present phraseology adopted, and the distinguishing feature of the invention more clearly set forth. Without further suggestion the application was allowed, and the patent issued.

It is true the process is described in the second claim as a "method of mixing molten metal," from which we are asked to infer that it was intended to include the products of cupola as well as of blast furnaces, whereas in the very first sentence of the specification it is stated that "in practice it

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One of the arguments that this was the case was that if Jones "believed the method of use by which abrupt variations in silicon could be avoided without securing uniformity in product to be a patentable invention, there was even more reason for carefully of use in the patent for the manipulation to obtain uniform products, because the two processes are obviously alternative and inconsistent with each other, incapable of being claimed in one application, and therefore disclosure might have worked a loss of a possible grant of the patent for the al

is found that metal tapped from different securing uniformity in the admixture of blast furnaces is apt to vary considerably silicon and sulphur, but also another proin chemical composition. Especial- cess, similar to that now used by the plainly is this so in the process of refining crude tiff and defendant, and by means of which iron from the smelting furnace and charged the operation of Bessemerizing iron was directly into the converter without remelt-made, without securing uniformiing in a cupola, and, although such direct ty in the product, then it is maniprocess possesses many economic advanta- festly clear from his patent and from all ges, it has on this account been little prac- the surrounding facts that he deliberately tised." The first claim of the patent is ex- and carefully suppressed any disclosure of pressly for an improvement in the art of this invention in his specification." refining iron directly from the smelting furnace. The second claim apparently extends to the art of mixing all molten metals, but the specification, taken in connection with the disclaimer, which describes a process designed to dispense with the use of cupolas, shows that it was intended to include suppressing all suggestion of such a mode metal tapped from blast furnaces, and was probably intended to be limited to that. Whether the claim would be void if construed to include cupola metal it is unnecessary to consider. It clearly includes metal from blast furnaces, and is not rendered void by the possibility of its including cupola metal. The claim of a patent must alternative mode of use." ways be explained by and read in connec- It is true that its construction of the pat tion with the specification, and as this claim clearly includes metal taken from blast furnaces, the question whether it includes every molten metal is as much eliminated from our consideration in this case as if it were sought to show that the word "metal" might include other metals than iron. Were infringement charged in the use of an apparatus for mixing cupola metal, the question would be squarely presented whether the claim had been illegally expanded beyond the specification.

Much ingenuity and many words have been expended in an endeavor to prove that the plaintiff and defendant, as well as the courts, differed widely in their construction of the patent and of what Jones was trying to accomplish. Upon the theory of the defendant the circuit court "did not attempt to construe the patent in any proper sense, but bent all its energies to wrest and torture the plain English of the patent into a meaning diametrically opposed to that which it bears on its face," and to make it appear that the great trouble at the time Mr. Jones conceived his invention arose, not from any lack of uniformity in the percentages of silicon and sulphur, but were solely the natural difficulties incident to abrupt variations in the percentage of silicon present; and that his statement that the trouble in the Bessemerizing operation, which was the thing Jones had in mind to obviate, was absolutely irreconcilable with the specification of the patent, because the sole object stated by Jones was to secure products, whether of Bessemer steel or otherwise, which would be practically homogeneous and substantially uniform in their contained sulphur and silicon,-results which can only be obtained by mixing the iron to a substantial uniformity. Defendant further states its view of the case as follows: "If, as a matter of fact, Mr. Jones, at the time he applied for his patent, had in view not only the process described by him for

ent was pressed upon the courts by the defendant with great earnestness and elaborateness of detail, and appears to have created an impression of its soundness upon the circuit court of appeals, but the circuit court did not seem to look upon it as the turning point of the case, nor do we regard it as at all decisive. It seems to assume that the second claim can only be met by evidence of absolute uniformity of product, whereas all that is claimed is a uniformity in the constituent parts of molten metal preparatory to further treatment; in other words, to make it fit for further treatment in the converters, without the necessity of remelting in the cupolar furnaces. Or, as stated by the district judge: "It is therefore plain that with a mixer thus operated it is possible to have wide variations in the composition of the blastfurnace metal charges added, and at the same time the successive withdrawals for the Bessemer converter show quite small and gradual changes of composition. The heat of the detained mass is affected by the incoming charges just from the blast fur nace, but the heat of such addition, whether relatively high or low, must mingle with, be modified by, and average with the heat of the larger and dominating mass."

With regard to this portion of the opinion, counsel for defendant observes:

"The judge of circuit court, having lost sight of the statutory requirements as to a full, clear, and concise statement of the invention, and having persuaded himself that it was his judicial duty to find a way if possible to protect the Carnegie Company in his monopoly of what Mr. Gayley and his colleagues claim ought to have been the invention described in the patent, adopted the ingenious view that the patent was to be construed as though it disclosed and covered two inventions, one having for its object to obtain a product substantially uniform in its contained silicon and sulphur,

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and the other having for its object the improvement in the operation of Bessemerizing iron which is incident to an avoidance in the successive charges of abrupt variations in contained silicon."

added and from which they were withdrawn. The other clauses were intended to disclaim the casting of the metal into pigs. We think there is no force in the criticism that a disclaimer may not extend to a part "We have not, however, been able to per- of the specification, as well as to a distinct suade ourselves that the two processes are claim. Hurlbut v. Schillinger, 130 U. S. so alternative and inconsistent with each 456, 32 L. ed. 1011, 9 Sup. Ct. Rep. 584; other as to render them mutually destruc- Schillinger v. Gunther, 17 Blatchf. 66, Fed. tive, or to justify counsel in charging the Cas. No. 12,458; Schwartzwalder v. New district judge with an abdication of his York Filter Co. 13 C. C. A. 380, 26 U. S. judicial duty of deciding the case according App. 547, 66 Fed. 152. Had the purpose of to what he believed to be the law and the the disclaimer been to reform or alter the facts. We dismiss the subject with the sim- description of the invention, or convert the ple observation that much more seems to claim from one thing into something else, have been made of it than it deserves, and it might have been objectionable, as patents that a reference to the second claim shows can only be amended for mistakes of this its object was to secure uniformity of the kind by a reissue. But the disclaimer in molten metal in its constituent parts pre- this case appears to have been made to obparatory to its further treatment, by which viate an ambiguity in the specification, and further treatment we are to understand the with no idea of obtaining the benefit of a Bessemerizing process of converting metal reissue. If the clauses had the effect of into steel, and that any step in that direc-broadening the patent the disclaimer retion would necessarily lead to an avoidance moves the objection. If they did not, the of abrupt variations in silicon and sulphur, disclaimer could do no harm, and cannot be while such avoidance of abrupt variations made the subject of criticism. would in their turn only tend toward a greater uniformity of product.

It is insisted, too, that there is no mention in the second claim of a dominant Some criticism was made upon the action pool, and that the words "removing portions of the court in permitting a disclaimer of only of the composite molten contents of certain clauses in the specification, printed the receptacle without entirely draining or above in italics, which was made after the emptying the same, and successively reargument and upon the petition of the plenishing the receptacle with fresh ununiplaintiff, "that at the hearing of this cause form additions," are satisfied by leaving a it was taken by surprise by the argument quantity of iron, however small, in the resof the defendant that the portions of the ervoir, and that it really includes nothing specification now disclaimed enlarged the that was not well known before. It is true scope of the invention of the said letters that neither the size of the reservoir nor patent beyond what your petitioner believes the amount of metal to be left therein, to be the import of the claims thereof." after each discharge is made into the conUpon the hearing defendant seems to have verter, is specified; but it is stated in the insisted that certain portions of the speci- specification that this reservoir may be of fications were broader than the second any convenient size, "holding, say, 100 tons claim. Those parts of the specification there- of metal (more or less)," with the bottom fore were disclaimed. As we had occasion of the discharge spout some distance above to observe in Sessions v. Romadka, 145 U. the bottom of the vessel, "say, 2 feet in a S. 29, 36 L. ed. 609, 12 Sup. Ct. Rep. 799, hundred-ton tank, and more or less, accord"the power to disclaim is a beneficial one, ing to the capacity of the vessel, the purand ought not to be denied except where pose of which is that when the metal is it is resorted to for a fraudulent and de- poured out of the spout a considerable ceptive purpose." In that case the plaintiff quantity may always be left remaining and was permitted to enter a disclaimer of all unpoured, and that whenever the vessel is the claims but the one in suit, the patentee replenished there may already be contained having included in the patent more devices in it a body of molten metal with which the than properly could be the subject of a sin- fresh addition may mix." Though the size gle patent. In the case under consideration of the reservoir and the considerable quanthe disclaimer was not of a claim but of tity left therein as a dominant pool might certain statements in the specification, have been described more definitely (but which if retained might be construed to perhaps at the risk of an infringement be have the effect of illegally broadening the ing avoided by one using a receiver of a second claim. The first statement dis- different size containing a different quanclaimed was that the invention might be tity), we think it is impossible to read this practised by merely receiving a number of patent without gathering from it the domi small portions of metal taken from differ- nant idea of Jones not to describe a reserent ladles, the mixing being performed voir for storage, with or without incidental merely by the act of pouring into the charg- mixing, but to provide a receptacle the ing ladle. The use of the word "merely" main, if not the sole, object of which is to ignored the steps embodied in the second preserve therein a large and constant quanclaim, where the mixing is not performed tity of molten iron as a basis for a gradual by merely pouring together the several unification of the product of several blast charges into a ladle, but by maintaining a furnaces, or of several casts from the same permanent quantity of metal in the reser- furnace, and herein distinguishing it from voir, to which charges were alternately'all prior inventions. The specification of

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