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court should proceed in a liberal spirit, so as to sustain the patent and the construction claimed by the patentee himself, if this can be done consistently with the language which he has employed.

required by the specification under this qualification is injurious and pernicious, the patent is void for want of utility, and the defendant entitled to a verdict; and the counsel for defendant then and there duly excepted."

We think this ruling of the court was correct.

*V. This instruction was properly [*468 modified. The state of the evidence hardly justified the judge in giving any instruction upon the subject to which it related.

The original specification and claim were clearly confined to heated fat liquor. The law (Act of 1836, sec. 13; 5 Stat. at L., 122) re- III. and IV. These exceptions are sufficientquired that the re-issue should be for the same ly answered by what was said by the circuit invention as the original patent. It is to be court as to the second prayer. presumed the commissioner did his duty. If the re-issue be for fat liquor generally, it is for a thing then patented for the first time, and the patent involves a violation of the law. The second specification says: "The principal feature of the invention is the employment of fat liquor.'" It then proceeds to direct how the liquor shall be prepared. In doing this it is said “It is desirable to heat the liquor to or near the boiling point."

This is the foundation of the first claim, which is for "the employment of fat liquor in the treatment of leather, substantially as specified." The heated condition of the liquor is before distinctly specified, and if it be applied in any other state its condition will not be as specified, either exactly or substantially. After the words "boiling point," the specification proceeds: "And it is preferred to use the same in connection with other ingredients. Thus, for instance, there may be added to each ten gallons of such heated fat liquor," etc. The ingredients are then named. This is the ground 467*] *of the second claim, to wit: process substantially as herein described of treating bark tanned lamb or sheep-skins by means of a compound composed and applied essentially as specified." Here heated fat liqour is clearly one of the constituents of the compound. A chemist proved on the trial that heat was an element essential, in a large degree, to the efficacy and utility of both the simple liquor and the compound, when so applied. We think the better opinion is, that the first claim was intended to cover, and does cover, only the use of heated liquor.

"The

The first instruction might well have been refused for the reason, also, that it was too broad as to this point.

II. The next prayer and the action of the court are thus set forth in the bill of exceptions; "2. The defendant's counsel also requested the said judge to charge that the proper construction of the patent is that the fat liquor should be applied at or near the boiling point, and if the jury believe that the application of fat liquor, at such a temperature, to leather is injurious and pernicious, the patent is void for want of utility, and the defendant entitled to a verdict; but the said judge refused so to charge the jury, but modified the said request and instructed the jury that the proper construction of the second claim of the patent, so far as it relates to the application of heat, is that the compound, composed of fat liquor and the other ingredients required, should be applied at or near the boiling point, under the common knowledge of persons skilled in the art of treating this leather, to procure softness and pliability, would make them wait until it was partially cooled before its application, and if the jury believe that the application of fat liquor at such a temperature to leather as is

The remaining five exceptions may be grouped and disposed of together. Neither of them requires any special remark.

We are satisfied with the rulings of the learned judge who tried the case as to each and all of them.

We find nothing in the record of which the plaintiff in error has a right to complain. The judgment of the Circuit court, is therefore, affirmed.

Dissenting, Mr. Justice Field and Mr. Justice Hunt.

*ROLAND G. MITCHELL, Appt., [*287

v.

RICHARD A. TILGHMAN.

(See S. C., 19 Wall., 287-419.)

Patent, effect of as evidence-construction of specification - Tilghman's patent — patent, when void-useful, meaning of question for jury different inventions.

1. A patent, when introduced in evidence by the complaining party in a suit for infringement, afis the original and first inventor of what is therein fords a prima facie presumption that the patentee described and claimed as his invention.

2. Where the language employed is clear and unambiguous, it must speak its own construction in the specification of a patent, as well as in any other grant issued by public authority.

3. The proofs in the record bearing upon the question of novelty, are not sufficient to overcome the prima facie presumption that the patentee, Tilghman, is the original and first inventor of what is described in the patent as his invention for making fat acid and glycerine from natural fat. 4. A patent for a useful result is void if the described result cannot be obtained by the described means, whether the effect is produced by mechanical principles, or by chemical agency, or by the application of discoveries in natural science.

5. An invention may be impeached by showing that it is not capable of being used to effect the object proposed.

6. Neither an invention which will not enable the operator to accomplish the described result, nor one which constantly exposes him to the loss of his life or to great bodily harm, can be regarded as useful within the meaning of the patent law. 7. The patentee, Tilghman, did not succeed in introducing his invention into practical use by the means and in the mode of operation described in the specification.

8. Two things are not the same under the patent law. when one is in practice substantially better than the other, in a case where the second improvement is not gained by the use of the same means or known mechanical equivalents.

9. The question whether the similarity is sufficient or insufficient to prove the alleged infringejury in an action at law, or by the court in a suit ment, is a question of fact to be determined by the in equity.

NOTE.-Utility, extent of use, and commercial success as evidence of invention-see note, 59 C. C. A. 620.

Mr. Justice Swayne delivered the opinion of

the court:

This is a writ of error to the Circuit Court of the United States for the Northern District of New York.

The action was for the infringement of a reissued patent. The plaintiff in error was the defendant in the court below. A verdict and judgment were rendered against him. In the progress of the trial he took numerous exceptions. We have considered them, and will proceed to dispose of the case.

There was no error in the refusal of the court to direct a verdict for the defendant. The evidence is fully set out in the record. It was well remarked by the circuit judge, in deciding the motion for a new trial, that "the conflict of evidence upon the questions of fact is very great, and made it a very proper case for submission to the jury." Where it is entirely clear that the plaintiff cannot recover, it is proper to give such a direction, but not otherwise.

It is insisted, in this connection, that the reissue is void, because it was not for the same invention as the original patent.

This point does not appear to have been taken in the court below and, therefore, cannot be made here. No instruction was asked or given touching the subject. It is to be presumed, until the contrary is made to appear, that the commissioner did his duty correctly in granting the re-issued patent.

already been sufficiently instructed upon the subject. The instruction assumes that the reissue was for the use of fat liquor, without reference to the point whether it were hot or cold. This renders it necessary to construe the patent with a view to the solution of that question.

The original specification declared that the invention consisted "in a novel treatment of bark tanned lamb or sheep-skins." The patentee said: "The process Ì adopt, and which constitutes my invention, is as follows: I take of 'fat liquor,' obtained in scouring deer-skins after tanning in oil, say 10 gallons, and warm the same to or near the boiling point. I then add to such heated fat liquor 8 ounces of salsoda, twelve ounces of common salt, [*465 1 pint of soft soap and 4 ounces of Venetian red, and stir and mix these several ingredients with the fat liquor." The claim is as follows: "What is here claimed, and desired to be secured by letters patent, is the process substantially as herein described of treating bark tanned lamb or sheep-skins by means of a compound, and applied essentially as specified."

*

With this speicfication and claim, it was apprehended that the patent did not cover the use of heated fat liquor alone-which the patentee claimed as a part of his invention-but that it would be held to cover the use of such heated liquor only in combination with the ingredients specified. If so, the omission of any one or all of the ingredients would have given im an-munity to an infringer. To remedy this defect the re-issue was procured. In the specification in that case the patentee says: "My invention consists in a novel treatment of what is known as bark tanned lamb or sheep-skin."

The question put to Uriel Case, and his swer, were within the proper limits of a crossexamination. Johnston v. Jones, 1 Black, 210, 17 L. ed. 117.

The question to Place was proper, and his answer was not objected to. His answer as to his connection with the paper to which he referred, also passed without objection. But it is insisted that it was error to require him to state 464] its contents, *no notice to produce it having been given. To this there are two answers: it was an incidental and collateral matter drawn out to test the temper and credibility of the witness. It in nowise affected the merits of the controversy between the parties. The witness stated that he did not know who signed the paper. The contents could not, therefore, have operated to the injury of the defendant.

The question to Porter involved the novelty, utility and modus operandi of the alleged invention of the plaintiff, and the answer was competent evidence.

Elaborate instructions covering the entire case were given to the jury. None of them were excepted to by the defendant.

Numerous instructions were asked by his counsel. An exception was taken in relation to each one of them, and is assigned for error.

We shall refer to them as they are numbered in the record.

"The principal feature of my invention consists in the employment of what is known amongst tanners as fat liquor, which is ordinarily obtained by scouring deer-skins, after tanning in oil, but which, when it is not convenient to obtain in this manner, may be produced as a liquor having the same character-obtained by the cutting of oil with a suitable alkali. In treating leather with the 'fat liquor,' it is desirable to heat the liquor to or near the boiling point, and it is preferred to use the same in connection with other ingredients. Thus, for instance, there may be added to each 10 gallons of such heated fat liquor, 8 ounces sal soda, 12 ounces common salt, 1 pint of soft soap, or an equivalent quantity of hard soap, 4 ounces of Venetian red: such ingredients to be well stirred and mixed with the fat liquor." The claims follows: "1. The treatment

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1. That the patent is for "the treatment of mod bak tanned sheep and lamb-skins, by the employment of fat liquor, and if the jury believe such treatment was known to others more than two years before the plaintiff applied for his patent, his patent is void." This instruction was properly refused. It stated inaccurately the rule of law which it involved. A patent relate back, where the question of novelty is in issue to the date of the invention, and not to the tim of the application for its issue. The jury ba

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court should proceed in a liberal spirit, so as to sustain the patent and the construction claimed by the patentee himself, if this can be done consistently with the language which he has employed.

The original specification and claim were clearly confined to heated fat liquor. The law (Act of 1836, sec. 13; 5 Stat. at L., 122) required that the re-issue should be for the same invention as the original patent. It is to be presumed the commissioner did his duty. If the re-issue be for fat liquor generally, it is for a thing then patented for the first time, and the patent involves a violation of the law.

The second specification says: "The prineipal feature of the invention is the employment of fat liquor."" It then proceeds to direct how the liquor shall be prepared. In doing this it is said "It is desirable to heat the liquor to or near the boiling point."

This is the foundation of the first claim, which is for "the employment of fat liquor in the treatment of leather, substantially as specified." The heated condition of the liquor is before distinctly specified, and if it be applied in any other state its condition will not be as specified, either exactly or substantially. After the words "boiling point," the specification proceeds: "And it is preferred to use the same in connection with other ingredients. Thus, for instance, there may be added to each ten gallons of such heated fat liquor," etc. The ingredients are then named. This is the ground 467*] *of the second claim, to wit: process substantially as herein described of treating bark tanned lamb or sheep-skins by means of a compound composed and applied essentially as specified." Here heated fat liqour is clearly one of the constituents of the compound. A chemist proved on the trial that heat was an element essential, in a large degree, to the efficacy and utility of both the simple liquor and the compound, when so applied. We think the better opinion is, that the first claim was intended to cover, and does cover, only the use of heated liquor.

"The

The first instruction might well have been refused for the reason, also, that it was too broad as to this point.

II. The next prayer and the action of the court are thus set forth in the bill of exceptions; 2. The defendant's counsel also requested the said judge to charge that the proper construction of the patent is that the fat liquor shoul !! near the boiling point, and it. at the application of fat li erature, to leather is injur the patent is void for fendant entitled

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required by the specification under this qualifi cation is injurious and pernicious, the patent is void for want of utility, and the defendant entitled to a verdict; and the counsel for defendant then and there duly excepted."

We think this ruling of the court was correct.

III. and IV. These exceptions are sufficiently answered by what was said by the circuit court as to the second prayer.

*V. This instruction was properly [*468 modified. The state of the evidence hardly justified the judge in giving any instruction upon the subject to which it related.

The remaining five exceptions may be grouped and disposed of together. Neither of them requires any special remark.

We are satisfied with the rulings of the learned judge who tried the case as to each and all of them.

We find nothing in the record of which the plaintiff in error has a right to complain. The judgment of the Circuit court, is therefore, affirmed.

Dissenting, Mr. Justice Field and Mr. Justice Hunt.

*ROLAND G. MITCHELL, Appt., [*287

บ.

RICHARD A. TILGHMAN.

(See S. C., 19 Wall., 287-419.)

Patent, effect of as evidence-construction of specification-Tilghman's patent-patent, when void useful, meaning of-question for jury different inventions.

1. A patent, when introduced in evidence by the complaining party in a suit for infringement, affords a prima facie presumption that the patentee is the original and first inventor of what is therein described and claimed as his invention.

2. Where the language employed is clear and unambiguous, it must speak its own construction= the specification of a patent, as well as in any other grant issued by public authority.

3. The proofs in the record bearing upon the question of novelty, are not sufficient to cre Tilghman, is the original and first investor of what the prima facie presumption that the pe is described in the patent as his invents fr ing fat acid and glycerine from natura 4. A patent for a useful result is v scribed result cannot be obtained by means, whether the effect is prodaned ical principles, or by chemical a application of discoveries in nat

5. An invention may be pes de that it is not capable of being es ject proposed.

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[R. A. TILGHMAN.]

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10. The process under which the respondent Mitchell works, is substantially different from that of the complainant, Tilghman.

A

York.

[No. 87.]

Argued Nov. 11, 12, 1873. Decided Mar. 4, 1874. PPEAL from the Circuit Court of the United States for the Southern District of New This was a suit under letters patent granted to Richard Tilghman, dated October 3, 1854, and antedated January 9, 1854, for "improvement in processes for purifying fatty bodies." There was a decree in the court below sustaining the validity of the patent, and heiding the appellant to have infringed, and ordering an injunction and reference for accounting to Kenneth G. White as master, appellant being left at liberty to stay the injunction until final hearing, on filing a bond, in the penal sum of $20,000, with a condition to pay the award on final decree in the court below, or in this court on appeal.

The bond was filed and the injunction stayed. The master reported that no gains or profits had been proved to have been received by, or to have arisen or accrued to, the respondent from the use of the invention patented in the letters patent set forth in the order of reference.

On exceptions to the master's report, the court decreed that the complainant do recover of the respondent as profits, the sum of $229,826.63, and as costs, $954.98, making in all $230,781.61.

By consent, after the filing and printing of the appeal record, an amended decree was made and filed.

The amount in the amended decree is the same as in the first; but it is therein specified that the sum of $229,826.63 is made up of $160,699.05, as savings of lime, sulphuric acid and fat, and increased profit from glycerine sold; and $69,127.58 for interest on each year and $954.98 for costs.

The infringement claimed is: "Appellant infringes by the use of highly heated water under pressure, to decompose fat into fat acids and glycerine. Appellees' patent is not limited to specific degrees of temperature."

great strength, so that the requisite amount of pressure may be applied to prevent the conversion of the water into steam.

The process may be performed more rapidly and also continuously, by causing the mixture of fatty matter and water to pass through a tube or continuous channel, heated to the temperature already mentioned; the requisite pressure for preventing the conversion of water into steam being applied during the process; and this, I believe, is the best mode of carrying my invention into effect.

In the drawing hereto annexed, are shown figures of an apparatus for performing this process speedily and continuously, but which apparatus I do not claim as any part of my invention.

Fig. 1 of the said drawing is a vertical section of this apparatus.

[Fig. 1.]

I place the fat or oil in a fluid state in the vessel, a, with from one third to one half its bulk of warm water; the disc or piston, b, perforated with numerous small holes, being kept in rapid motion, up and down in the vessel, a, causes the fat, oil and water, to form an emulsion, or intimate mechanical mixture. A force pump, c, like those in common use for hydraulic presses, then drives the mixture through a long coil of very strong iron tube, dd, which being placed in the furnace,ee, is heated by a fire, f, to about the temperature of melting lead. From the exit end, g, of the heating tubes, dd, the mixture, which has then become converted into free fat acids and the "To all whom it may concern: solution of glycerine, passes on through another Be it known that I, Richard Albert Tilgh-coiled iron tube, hh, immersed in water, by man of Philadelphia, have invented a new and improved mode of treating fatty and oily bodies, and I hereby declare that the following is a full and exact description thereof.

The specification of the Tilghman patent is as follows:

My invention consists of a process for producing free fat acids and solution of glycerine, from those fatty and oily bodies of animal and vegetable origin which contain glycerine as their base. For this purpose I subject these 292*] fatty or oily hodies to the action of water at a high temperature and pressure, so as to cause the elements of those bodies to combine with water and thereby obtain at the same time free fat acids and solution of glycerine. I mix the fatty body to be operated upon with from a third to a half of its bulk of water, and the mixture may be placed in any convenient vessel in which it can be heated to the melting point of lead, until the operation is complete. The vessel must be closed and of

which it is cooled down from its high temperature to below 212° Fahrenheit, after which it makes its escape through the exit valve, i, into the receiving vessel.

*The iron tubes I have employed, and [*293 found to be convenient for this purpose are about one inch external diameter, and about half an inch internal diameter, being such as are in common use for Perkins' hot water apparatus. The ends of the tubes are joined together by welding to make the requisite length, but where welding is not practicable, I employ the kind of joints used for Perkins' hot water apparatus, which are now well known. The heating tube, dd is coiled several times backwards and forwards, so as to arrange a considerable length of the tube in a moderate space. The different coils of the tube are kept about a quarter of an inch apart from each other, and the interval between them

is filled up solid with cast iron, which 294*] *also covers the outer coils, or rows of tubes, to the thickness of half or three quarters of an inch, as shown in Fig. 2. This casing of metal insures a considerable uniformity of temperature in the different parts of the coil, adding also to its strength, and protecting it from injury by the fire.

The exit valve, i, is so loaded that when the heating tubes, ddd, are at the desired working temperature, and the pump, c, is not in action, it will not be opened by the internal pressure produced by the application of heat to the mixture; and therefore, when the pump, c, is not in action, nothing escapes from the valve, i, if the temperature be not too high. But when the pump forces fresh mixture into one end, j, of the heating tubes, dd, the exit valve, i, is thereby forced open to allow an equal amount of the mixture, which has been operated upon, to escape out of the cooling tubes, hh, at the other end of the apparatus. No steam or air should be allowed to accumulate in the tubes, which should be kept entirely full of the mixture. For this purpose, whenever it may be required, the speed of the pump should be increased, so that the current through the tubes may be made sufficiently rapid to carry out with it any air remaining in them.

Although the decomposition of the neutral fats by water takes place with great quickness at the proper heat, yet I prefer that the pump e, should be worked at such a rate in proportion to the length or capacity of the heating tubes, dd, that the mixture, while flowing through them, should be maintained at the desired temperature for ten minutes before it passes into the refrigerator or cooling parts, hh, of the apparatus.

the same state of intimate mixture in which they enter them. I therefore prefer to place the series of heating tubes in a vertical posi tion, so that any partial separation which may take place while the liquids pass up one tube, may be counteracted as they pass down the next. I believe that it will be found useful to fix at intervals, in the heating tubes, diaphragms pierced with numerous holes, so that liquids, being forced through these obstructions with great velocity, may be thoroughly mixed. I deem it prudent to test the strength of the apparatus by a pressure of ten thousand pounds to the square inch, before taking it into usc, but I believe that the working pressure necessary, in using the heat I have mentioned, will not be found to exceed two thousand pounds to the square inch.

When it is desired to diminish the contact of liquids with iron, the tubes or channels of the apparatus may be lined with copper. The hot mixture of fat acids and solution of glycerine which escapes from the exit valve of the apparatus separates by subsidence. The fat acids may then be washed with water and the solution of glycerine concentrated and purified by the usual means.

The fat acids thus produced may, like those obtained by other methods, be used in the manufacture of candles and soap, and applied to various purposes, according to their quality; and, when desired, they may also be first bleached by chemical agents, or purified by distillation, in a current of steam or in a vacuum, as is now well understood. I prefer that the fatty bodies should be previously deprived, as far as practicable, of such impurities as would cause the discoloration of the fat acids *produced; but when the fat acids are [*296 to be finally purified by distillation, this preliminary purification is of less importance.

When the sulphuric acid, nitrous fumes, or other corrosive agent, shall have been used for purifying, hardening, or otherwise preparing the fatty body to be operated upon, I take care that all traces of it shall be washed out or neutralized, before passing it through the apparatus.

The melting point of lead has been mentioned as the proper heat to be used in this operation, because it has been found to give good results. But the change of fatty matters into fat acid and glycerine takes place with some materials (such as palm oil) at or below the melting point of bismuth; yet the heat has been carried considerably above the melting point of lead without any apparent injury, and the decomposing action of the water becomes more powerSome fatty bodies, particularly when impure, ful as the heat is increased. By starting the ap-generate, during the process, a portion of acetparatus at a low heat, and gradually increas- ic or other soluble acid, which might tend to ing it, the temperature giving products most injure the iron tubes; in such cases I add a corsuitable to the intended application of the responding quantity of alkaline or basic matter fatty body employed, can easily be determined. to the water and oil, before they are pumped To indicate the temperature of the tubes, dd, into the tubes. I have found the successive melting of metals Having now described the nature of my said 295*] and other substances of *different and invention, and the manner of performing the known degrees of fusibility to be convenient in same, I hereby declare that I claim, as of my practice; several holes half an inch in diame- invention, the manufacturing of fat acids and ter, and two or three inches deep, are bored in-glycerine from fatty bodies by the action of to the solid parts of the casting surrounding water at a high temperature and pressure. the tubes, each hole being charged with a dif- [Witnesses,] ferent substance. The series I have used con[R. A. TILGHMAN.] sist of tin, melting at about 440° F.: bismuth, at about 510° F.; lead, at about 612° F.; and nitrate of potash at about 660° F. A straight piece of iron wire passing through the side of the furnace to the bottom of each of the holes, enables the workman to feel which of the sub stances are melted, and to regulate the fire ac-infringement is as follows: cordingly. It is important for the quickness and perfection of the decomposition, that the Be it known that we, Robert Alfred Wright, civil engineer, and Louis Jules Fouché, steamboiler maker, of Paris, in the Empire of France,

oil and water, during their entire passage through the heating tubes, should remain in

JAMES MCCURLEY.

JOHN R. DARKER.

Consulate of the United States, London. The specification of Wright & Fouché's Patent, dated, Jan. 25, 1859, which is used by appellant, and which the appellee charges with

*To all whom it may concern:

[*297

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