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storage and for such incidental steps toward 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 with: drawing 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, unless, at least, such use of it would have occurred to one whose duty it was to make ractical use of the mechanism described. n other words, a process o: can only be anticipated by a similar process. . A mechanical patent is anticipated by a o: device of is: 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. is aus, 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 rocess, 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 rocess can be anticipated by a mechanism, ut because, as we have held in several cases, the mere function of a machine is not atentable as a process at all. Corning v. }. 15 How. 252, 14 L. ed. 683; Risdon Iron & Locomotive Works v. Medart, 158 U. S. 68, 39 L. ed. 809, 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 into 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

alteration, to carry out the Jones process, it is evident that the defense of anticipation by prior patents rests upon a . 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 se products of the blast furnaces, and the pos-i: sibility of remedying this and” thereby do-> ing away with the * 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 permanent and large quantity of molten 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 publication 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 unprefitable, 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 adoption 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 ‘. of car wheels, wherein the metal is tapped from three cupolas into an open reservoir of eight to ten tons' capacity, 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 opouring out charges into the casting ladies, . 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

this process has only to do with cupola metal, uniformity in which was largely secured by a careful selection of the pig iron charged into the cupola furnaces, and had no reference whatever to the direct process of charging converters with the product of blast furnaces, it *Fo that, while Whitney recognized the fact that the charges of iron from the cupolas, when run together into the ladle, would mix, it appears that with this running together of the different charges the mixing operation ended. The maintenance of a permanent pool, and the constant pouring in and out in ladlefuls, 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 .#. to any mechanic of ordinary skill and intelligence. But if the Whitney practice were primarily for the purpose of mixing, and were adequate for that purpose when aplied to cupola metal carefully selected be: orehand, it might be, and evidently would have been, wholly inefficient when used for the purpose of unifying the products of blast furnaces, in other words, for the Jones process; and it might and did require invention to make such changes as were necessary to adapt it to such purpose. Doubtless there was such mixing as the carefully selected cupola metal required for the purpose of manufacturing car wheels, but the fact that the Whitney practice was used for cupola metal has but little tendency to prove that it was adaptable 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 be: tween 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 g 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.” “In the Bessemer direct process you cannot secure, initially or by treatment, uniformity of molten metal. So far as yet developed, the best you can do is to make the nonuniformity gradual and not abrupt. In Whitney, nonuniformity, whether gradual or abrupt, would be alike fatal. In Whitney, relatively absolute uniformity is an essential of product and a sequence of material used. #. Jones, uniformity is a nonessential—in fact, a nonattainable—attribute of product, and is a necessary nonsequence of material used. In Whitney, we remelt in a cupola metal which has al

ready undergone the refining process of the blast furnaces. In Jones, we take metal direct from the furnace and discard the cupola. It will thus be seen that apart from the wide difference between the primary work of a huge blast furnace, the base of all metallurgy, and the cupola of the founder, a mere subdivision of that art, we find in the Jones and Whitney processes a substantial difference of purpose, of process, and of subject-matter of work.” 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. Substantially the same remarks may be made with regard to the Kirk publication, which had to do only with the mixing of cupola metal. This publication was first held by the Patent Office to be an anticipation of the Jones process, the application for which was rejected upon that ground. Upon further consideration, however, and with some slight amendments, the application of Jones appears to have been reconsidered, and was finally granted. * *An attempt was made to show that the s Jones invention was anticipated by a practice, common in steel works prior thereto, of tapping iron from cupola furnaces into a receiving ladle, which became known as the Bessemer o 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 capacity than was necessary to charge a single converter, a residuum of metal would be left in it; but this seems to nave 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 uantity 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 charges. . I have often seen the ladle drained in pouring into the converter. . . . It did not hold two full charges. - - I never knew of the ladle being used for mixing purposes. If such was the practice I would have known it. . . . The capacity of the ladle was so small, and the size of the pool of metal, when there was a pool, was of such varying size, that I do not see how any mixing could be accomplished. Q. 18. When was this ladle drained, and when would there be some inetal left in the handle?—A. There would be no regularity in the process. The rate

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at which the converters take the metal does not 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 experiments into an assured success. This, however, is but the common history of important inventions, the simplicity of which seems to the ordimary 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. 2. The phraseology of the patent and the amendments introduced in the Patent Office are made the subject of much criticism, apparently for the purpose of showing either that Jones did not understand what he had invented, or that the specification did not contain “such full, clear, concise, and exact terms as to enable any person skilled in the art to make, construct, compound, and use the same.” Rev. Stat. $ 4888. If these criticisms are not altogether clear, they are pressed upon our consideration with an earnestness which challenges a careful consideration of the history of this patent in the Patent Office. In his first application the patentee stated that “the primary object of the invention is to provide means for insuring uniformity in the product of a Bessemer steel works or a similar plant, in which the metal from more than one blast furnace is employed to charge the converters. The product of the different furnaces, or of the same furnace at different times, varies in quality, , . so that the manufactured steel lacks uniformity in grade. To avoid this I employ suitably constructed reservoirs or vessels, into which the molten metal from the blast furnaces is É. the vessels being of proper capacity to old a considerable charge of metal from a single furnace, or from a number of furnaces, 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 o also an additional advantage in that it makes it possible to dispense with cupola furnaces for remelting the pigs #.”.” to charging the converters. e 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 susicient metal has been accumulated to charge the converters.” It is true that he subsequently states, as

3 observed in the opinion of the court of ap

, that “the main feature of my-presy-p

ent invention is the method of storing successive 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 Fo of .# uniformity in the metal when discharge 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, removing portions only of the molten contents of the said receptacle, without entirely draining or emptying the same, and successivel replenishing the receptacle with fresh additions of molten metal, whereby the character of the several charges of metal so treated is equalized; substantially as described.” The word “storing” was evidently used in the sense of pouring the metal into the reservoir or mixer, as essential to the maintenance of a dominant pool therein. The application was evidently considered as not sufficiently differentiating this from former patents, and was rejected upon reference to the Witherow patents and to Kirk's Founding of Metals. Certain slight amendments were then made in the specification, the claim verbally changed, and an argument submitted to the effect that the purpose of the Witherow patent was “to receive and store the molten metal for the purpose of preventing the detention, incident to the necessity of discharging the contents of the blast furnace when there is no converter ready to receive it;” whereas the distinctive idea of the Jones patent was “to have a receptacle capable of holding metal in a molten condition into which metal, it may be from several blast furnaces, is run from time to time, and from which metal is drawn for treatment in the converters, or otherwise as required.” * * This was evidently considered as still too o 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

is found that metal tapped from different blast furnaces is apt to vary considerably in chemical composition. Especially is this so in the process of ..". iron from the smelting furnace and charged directly into the converter without remelting in a cupola, and, although such direct process possesses many economic advantages, it has on this account been little practised.” The first claim of the patent is expressly for an improvement in the art of 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 #. which describes a process designed to dispense with the use of cupolas, shows that it was intended to include metal tapped from blast furnaces, and was §. intended to be limited to that.

hether 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 always be explained by and read in connection 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

f: whether the claim had been illegally ex

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panded 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 r. 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 specisication 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

securing uniformity in the admixture of silicon and sulphur, but also another process, similar to that now used by the plaintiff and defendant, and by means of which the operation of Bessemerizing iron was made, . . without securing uniformity in the product, then ... it is manifestly clear from his patent and from all the surrounding facts that he deliberately and carefully suppressed any disclosure of this invention in his specification.” 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 suppressing all suggestion of such a mode of use in the patent for the manipulation to obtain uniform products, because the two: processes are obviously alternative and in-3 consistent 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 alternative mode of use.” It is true that its construction of the patent 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 b cvidence 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 furnace, 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 i. 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,

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.” "We have not, however, been able to persuade ourselves that the two processes are so alternative and inconsistent with each other as to render them mutually destructive, or to justify, counsel, in charging the district judge with an abdication of his judicial duty of deciding the case according to what he believed to be the law and the facts. We dismiss the subject with the simle observation that much more seems to ave been made of it than it deserves, and that a reference to the second claim shows its object was to secure uniformity of the molten metal in its constituent parts preparatory to its further treatment, by which further treatment we are to understand the Bessemerizing process of converting metal into steel, and that any step in that direction would necessarily lead to an avoidance of abrupt variations in silicon and sulphur, while such avoidance of abrupt variations would in their turn only tend toward a greater uniformity of product. Some criticism was made upon the action of the court in permitting a disclaimer of certain clauses in the specification, printed above in italics, which was made after the argument and upon the petition of the laintiff, “that at the hearing of this cause it was taken by surprise by the argument of the defendant that the portions of the specification now disclaimed enlarged the scope of the invention of the said letters patent beyond what your petitioner believes to be the import of the claims thereof.” Upon the hearing defendant seems to have insisted that certain portions of the specifications were broader than the second claim. Those parts of the specification therefore were disclaimed. As we had occasion to observe in Sessions v. Romadka, 145 U. S. 29, 36 L. ed. 609, 12 Sup. Ct. Rep. 799, “the power to disclaim is a beneficial one, and ought not to be denied except where it is resorted to for a fraudulent and deceptive purpose.” In that case the plaintiff was permitted to enter a disclaimer of all the claims but the one in suit, the patentee having included in the patent more devices than properly could be the subject of a single patent. In the case under consideration the disclaimer was not of a claim but of certain statements in the specification, e which if retained might be construed to : have the effect of illegally broadening the * second claim. The first statement disclaimed was that the invention might be practised by merely receiving a number of small portions of metal taken from different ladles, the mixing being performed merely by the act of pouring into the charging ladle. The use of the word “merely” red the steps embodied in the second claim, where the mixing is not performed . merely pouring together the several charges into a ladle, but by maintaining a permanent quantity of metal in the reservoir, to which charges were alternately

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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 of the specification, as well as to a distinct claim. Hurlbut v. Schillinger, 130 U. S. 456, 32 L. ed. 1011, 9 Sup. Ct. Rep. 584; Schillinger v. Gunther, 17 Blatchf. 66, Fed. Cas. No. 12,458; Schwartzwalder v. New York Filter Co. 13 C. C. A. 380, 26 U. S. App. 547, 66 Fed. 152. Had the purpose of the disclaimer been to reform or alter the description of the invention, or convert the claim from one thing into something else, it might have been objectionable, as patents can only be amended for mistakes of this kind by a reissue. But the disclaimer in this case appears to have been made to obviate an ambiguity in the specification, and with no idea of obtaining the benefit of a reissue. If the clauses had the effect of broadening the patent the disclaimer removes the objection. If they did not, the disclaimer could do no harm, and cannot be made the subject of criticism. It is insisted, too, that there is no mention in the second claim of a dominant pool, and that the words “removing portions only of the composite molten contents of the receptacle without entirely draining or emptying the same, and successively replenishing the receptacle with fresh ununiform additions,” are satisfied by leaving a quantity of iron, however small, in the reservoir, and that it really includes nothing that was not well known before. It is true that neither the size of the reservoir nor the amount of metal to be left therein, after each discharge is made into the converter, is specified; but it is stated in the specification that this reservoir may be of any convenient size, “holding, say, 100 tons of metal (more or less),” with the bottom tof the discharge spout some distance above: the"bottom of the vessel, “say, 2 feet in a • hundred-ton tank, and more or less, according to the capacity of the vessel, the purpose of which is that when the metal is poured out of the spout a considerable quantity may always be left remaining and unpoured, and that whenever the vessel is replenished there may already be contained in it a body of molten metal with which the fresh addition may mix.” Though the size of the reservoir and the considerable quantity left therein as a dominant pool might have been described more definitely (but erhaps at the risk of an infringement being avoided by one using a receiver of a different size containing a different quantity), we think it is impossible to read this patent without gathering from it the dominant idea of Jones not to describe a reservoir for storage, with or without incidental mixing, but to provide a receptacle the main, if not the sole, object of which is to preserve therein a large and constant quantity of molten iron as a basis for a gradual unification of the product of several blast furnaces, or of several casts from the same furnace, and herein distinguishing it from all prior inventions. The specification of

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