rateness 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 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 opinfon, 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

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
plaintiff, "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 speci-
fications were broader than the second
claim. Those parts of the specification there-
fore 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 de-
ceptive 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 sin
gle patent. In the case under consideration
the disclaimer was not of a claim but of
certain statements in the specification,
which if retained might be construed to
have the effect of illegally broadening the
second claim. The first statement dis-
claimed *was that the invention might be [436]
practised by merely receiving a number of
small small portions of metal taken from differ-
ent ladles, the mixing being performed
merely by the act of pouring into the charg
ing ladle. The use the word "merely" "me
ignored the steps embodied in the second
claim, where the mixing is not performed
by merely pouring together the several
charges into a ladle, but by maintaining a

object to obtain a product substantially uni- permanent quantity of metal in the reser-
form in its contained silicon and sulphur, voir, to which charges were alternately
and the other having for its object the im- added and from which they were with-
provement in the operation of Bessemerizing drawn. The other clauses were intended to
iron which is incident to an avoidance in disclaim the casting of the metal into pigs.

the successive charges of abrupt variations in contained silicon."

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 ob-
viate 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
moves the objection. If they did not, the
made the subject of criticism.

35] We have not, however, been able to per-
suade ourselves that the two processes are
so alternative and inconsistent with each
other as to render them mutually destruc-
tive, 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 sim-
ple observation that much more seems to
have 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 pre-
paratory 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 direc-
tion would necessarily lead to an avoidance
of abrupt variations in silicon and sulphur, disclaimer could do no harm, and cannot be

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 185 U. S. U. S., BOOK 46.

re

It is insisted, too, that there is no mention in the second claim of a dominant pool, and that the words "removing portions

985

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 con

what he has made that is new, and what it replaces of the old. That which is common and well known is as if it were written out in the patent and delineated in the drawings." We think this second claim not only describes with sufficient clearness the purpose of the patent to secure uniformity of the molten metal in its constituent parts preparatory to further treatment, but, read with the specification, sufficiently describes the process by which this uniform

metal to secure such uniformity of product. [438]
It is undoubtedly true that the storage fea-
ture appeared more prominently in the
specification which was first rejected upon
the ground that it was not sufficiently dif-
ferentiated from prior patents than in that
which was finally accepted, but there is
nothing to indicate that Jones did not un-
derstand from the first that the distin-
guishing feature of his invention was the
preservation of a considerable quantity of
iron in the reservoir.

3. The question of infringement only re mains to be considered, and, in the view we have taken of the prior devices, presents no serious difficulty. The court of appeals was of opinion that "the defendant's reservoir, or accumulating ladle, complained of, is the sanie in principle as one which has been in

verter, is specified; but it is stated in the ity may be secured by always preserving in specification that this reservoir may be of the reservoir a sufficient quantity of molten any convenient size, "holding, say, 100 tons of metal (more or less)," with the bottom of the discharge spout some distance above [437] the bottom of the vessel, "say, 2 feet in a hundred-ton tank, and more or less, accord ing 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 perhaps 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 the patent is not addressed to lawyers, or even to the public generally, but to the manufacturers of steel; and any description which is sufficient to apprise them in the language of the art of the definite feature of the invention, and to serve as a warning to others of what the patent claims as a monopoly, is sufficiently definite to sustain the patent. He may assume that what was already known in the art of manufacturing steel was known to them, and, as observed

PENNSYLVANIA

use at the Cambria works ever since Bessemer steel was first manufactured there, with only this difference, that at first it was used at cupola, now at furnace." If such were the fact, of course defendant would not be open to the charge of infringeinent. Undoubtedly it has the right to make use of all prior devices, and particularly such as had been used at its own manufactory. In order to understand the device made use of by the defendant prior to the Jones invention, we reproduce herewith two small but easily understood cuts, taken from its brief, showing the character of the ladle known as the Bessemer intermediate ladle, used by it and generally by all American mills manufacturing steel by the Bessemer process.

It appears elsewhere in the testimony that the intermediate reservoir or ladle was from fifteen to eighteen tons' capacity, and the converter from six to eight tons; that

4 Cupolas Each
Tap of One Cupola
6000 Pounds

Reservoir. 15 to 18 Tons

Reservoir 11 Tons
Remainder, 4 to 5 Tong

Converter 6 to 7 Tona,

by Mr. Justice Bradley in Webster Loom | the molten metal *was tapped from the cu-[439] Co. v. Higgins, 105 U. Š. 580, 586, 26 L. ed. 1177, 1179, "he may begin at the point where his invention begins, and describe

polas into the reservoir, and withdrawn for the converter, and as the intermediate ladle held considerably more than the amount of

metal necessary to charge a converter, there was some incidental mixing; but the main, and perhaps the only, purpose of the reservoir was for storage, and that if any quantity of metal were left in the reservoir it was by accident rather than by design. It will be noticed, too, that the reservoir was open at the top. It does not appear to have been made use of in carrying out what is known as the direct process, the difference being that the cupola practice furnished a metal for the Bessemer converter that was uniform in composition, or practically so, while the direct metal was largely variable in composition.

The testimony further shows that, after the installation of the Jones mixer at the Edgar Thomson works, Mr. Morgan, the defendant's mechanical engineer, visited and inspected these works, and obtained information as to their practical operation, and was advised by the superintendent as to the location and proper size of the mixer and its contiguity to the converters. Mr. Morgan does not deny this conversation, although he qualifies it by saying that he thought the Jones apparatus had grave defects. Shortly after this visit, and in the latter part of 1895, defendant installed an apparatus of its own for the operation of the direct process, which is herewith produced upon a small scale and in comparison with the Jones process. It consisted of a covered refractory lined and turtle-shaped

side of the mixer, which was not allowed to run below the floor, as a guide to the men who rotated or tilted the mixer, since, if the mark went below the floor and out of sight, they could not tell how much iron was left in the mixer. Under these instructions not to allow the chalk mark to go below the floor there was retained in the mixer about 175 tons of molten metal, amply sufficient for the purposes stated in the Jones patent. Its principle of construction was similar to that of the Jones mixer, and its operation identical. Indeed, defendant's engineer himself says: "With the exception of additions of cupola metal, I do not know that there is any material difference between our practice and that described in the second claim" of the Jones patent. We agree, in the opinion of the circuit court, that "it is quite clear, in view of these facts, that infringement takes place. That initial mixing rather than storage is the purpose of the reservoir is shown by the fact that the cupola metal is not stored, but served direct in ladles to the converter plant. And that the homogeneous mixture, once obtained, is used as a dominant pool to produce a graduated, nonabrupt product, is shown by the chalk line minimum limit of 175 tons. With such a permanent dominant pool in constant use, we are clear that respondent's practice infringes the second claim of the Jones patent in both letter and spirit."

If the contents of the mixer used by de

vessel of about 300 tons' capacity, arranged | fendant were allowed *habitually to become [441]

to tilt, and having a spout at either side for receiving and pouring out the metal. The metal was brought to the mixer and poured [440]in at one end, and, *through a spout on the other side, was poured into a ladle, which supplied the Bessemer converters. The metal was supplied both from blast furnaces and cupolas, the former furnishing about two thirds, the latter about one third, of the metal used; but the metal from the cupola system was delivered by a ladle to the converter direct and not through the reservoir. The metal from the blast furnace entered the reservoir in about fifteen-ton ladle lots, and was withdrawn in approximately twelve-ton lots. The chief engineer of the company states that, "in accordance with the natural way of using the reservoir, it is ordinarily kept well filled up." That in the practical operation of the mixer or res

empty in carrying out its process, there would be no infringement; but all the evidence contradicts this. In the Jones practice this cannot be done, since the mixer cannot be tilted beyond a certain point. In the defendant's mixer it can be done, but is not, since the operator is not allowed to tilt it beyond a certain point gauged by a chalk mark. This seems to be the only on founda

tion for the charge so frequently reiterated, and in varying language, that the methods in use before the Jones process deprived that process of all novelty, and if novelty existed it was by reason of the varying modes of executing such methods; the inference from this being that, as the Jones method was old, it could only be treated as new because of the conduct of individuals in applying the method and their intentions, and that this reduces itself to the

ervoir a large quantity of iron was retained proposition that the Jones patent rests up

for mixing purposes is evident from the
fact that a chalk mark was made on the

on the mere intention or minds of persons. If we understand this argument correctly,

it is that the prior method contemplated | we think the court of appeals made its most
storing only, and the mixing was but an in- serious error. The defendant had an un-
cident, while the Jones patent contemplates questioned right to manufacture steel as it
mixing as its main object and storage only
as an incident.

This proposition that the application of this patent depends upon the individual intent of the operator overlooks the essential nature of a process patent. The directions and specifications of such a patent are addressed to those engaged and skilled in the art. It professes to disclose a method of procedure, not the particular instrumentality that may be employed. It may be, as suggested, that one person may, and in ignorance of the patented method, make use of a reservoir merely as such, and without any desire to avail himself of the patented process; but such a fact would not deprive the discoverer of the process of the protection of his patent. Such a supposed case

had been accustomed to do; but instead of that it abandons the Bessemer uncovered ladle of twelve to eighteen tons, and adopts a covered refractory lined reservoir of 300 tons' capacity, and makes use of it, not as before, for the storage of cupola metal, but for the mixing of blast-furnace metal aecording to the direct process. This, too, was done immediately after Mr. Morgan's visit to plaintiff's works.

It is true that with the growth of the production of furnaces *from fifty tons a day [443] in 1872 to four or five hundred tons in 1895 all apparatus would naturally be increased in size; but why was the open reservoir theretofore used for cupola metal provided with a cover and enlarged in its capacity from fifteen to three hundred tons

might present a question of fact for a court -twentyfold-while the converter was lit

or jury, and if it were made to appear that the party charged with infringement had, as in this case, changed the instrumentalities used by him after a new method had been disclosed, and particularly if he had for the first time used a special device necessary to that process, a jury might well refuse to believe and find that the defendant was only following the old methods of procedure, and

not seeking to avail himself of the plaintiff's the end of getting a practically

invention.

[442] *But we think the difference in the two processes may be illustrated by a very simple example: examp Let us imagine a reservoir containing, say, three quarts, and filled with one quart each of three liquids of different constituent parts, and withdrawn for further treatment at the rate of one or two quarts at a time. Necessarily there would be some incidental mixing, but it would occur at once that the main object of the reservoir was a retention of a sufficient quantity of the mixture to supply the receptacle for further treatment, and if no necessity existed for a longer retention of the liquid in the reservoir, it could be very quickly emptied by two discharges into the receiving vessel. Now, let us substitute for this reservoir a cask of, say, sixty quarts, into which the liquids of different constituent parts are poured in at one end from a multitude of receptacles, and discharged at the other end after remaining a certain time in the cask, and that this cask could not be tilted so far but what a quantity of liquid would be left within it amounting, say, to half its capacity. Now, if there be no distinction between these two operations there would be little left to the Jones process, the very vitality of which consists in the size of the cask relative to the ladles and the mixing of the various liquids poured into it before they are withdrawn.

If, as insisted by the defendant and found by the court of appeals, the reservoir now used is the same in principle as the one which had been in use at the Cambria Iron Works ever since the Bessemer steel was first manufactured there, and the same were

tle more than doubled in size? Why was it so operated that 175 tons were left in the mixer as a dominant pool, if no infringement were contemplated? In the face of these facts the question so earnestly pressed by the defendant, whether the "method of mixing molten metal," covered by the second claim, was one for securing a substantial homogeneous composition of metal, to uniform product, or was one simply for the purpose of preventing sudden variations in the compositions of successive small portions drawn from the reservoir, without attaining substantial uniformity, loses most of its significance. We do not know how the process can be better described than in the specification itself: "To provide means for rendering the product of steel works uniform in chemical composition." The variations in such composition are said to be "partieularly in silicon and sulphur," and the process to be one of mixing, whereby the particles of metal "are diffused or commingled thoroughly among each other, and the entire charge is practically homogeneous in composition, representing in each part "an average of a variety of uniform constituent parts, all the charges of the converter from time to time will be substantially uniform." This, denuded of all hypercriticism, is the object of the Jones invention, which seems to be the only one yet devised for carrying on what is known as the direct process. If it be true that this process cannot be carried on without infringing the Jones patent, he is certainly entitled to a monopoly of the invention. If it can be, then every method theretofore known for carrying on such process was open to the defendant. But we think the change from the Bessemer intermediate ladle to the Jones mixer was a radical one, and was made for a purpose. That purpose was clearly the adoption of the Jones process.

It is true that before the facts were fully ascertained a stipulation was signed to the effect that the "amount of molten *metal in[444] said mixer (defendant's) varies from noth

adequate for the purposes of the direct pro-ing to its full capacity, depending on the cess, why was any change made? Therein supply and demand, the supply being ger

adequate for cupola metal, uniformity in uniformity re- which had been lar largely secured by careful selection and breaking up of the pigs, but it had not proved a success for blast-furnace metal, except that it had been used to a very limited extent in foreign countries where the peculiar character of the iron ore had rendered it possible to carry on a direct process, although apparently by methods quite other than those employed by Jones. The principal step employed by Jones was to magnify the capacity of the reservoir about twentyfold, provide it with a cover, and to arrange that it should not be tilted beyond a certain point, in order that a "considerable quantity" of molten metal might be retained in it for a sufficient time to accomplish a pretty thorough mixing, but little change having been made in the meantime in the size of the receiving ladles and converters. As the reservoir was designed to hold a large quantity of metal for a considerable time it must have been covered to obviate the contents being crusted over or sculled.

nearly to uniformity than when it ran into The decree of the Circuit Court of Apthe reservoir. The former methods were peals is therefore reversed, and the case re