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Then, describing his process, he states:

"In carrying out my invention, the acid is first deposited in the bottom of a tank or vat, into which the waste is then introduced, and the tank or vat closed. The acid is then heated by means of a steam coil, steam jacket, or in some other suitable manner; steam at a pressure of from fifty to seventy- ' five pounds being used, so as to impart a high degree of heat to the acid." He further states:

"The strength of the acid and the quantity employed in respect to the quantity of material treated will depend upon the proportion of fiber and impurities in the waste. In practice I have used acid of the strength of 66° Baumé, employing for every one thousand pounds of waste from three hundred to five hundred pounds of sulphuric acid, or from four hundred to seven hundred and fifty pounds of muriatic acid."

He then adds that, when the rubber is combined with woolen fabric having long fibers of extra strength, he sometimes adds to the sulphuric or muriatic acid about one-twentieth part of its weight of fluoric acid. Now, it is here to be noted that fluoric acid is a much stronger acid than even sulphuric acid.

Down to this point the statements of the two specifications are alike. In patent No. 249,970, however, it is set forth that an essential feature of that invention is "the direct injection of live steam into the mass in the tank, as the steam penetrates every portion of the mass, and carries the acid with it.” The patentee then adds:

"There can be no appreciable dilution of the acid by condensed steam in my apparatus, as the contents of the tank are maintained at a very high temperature, and the steam or vapor, as it rises above the mass in the tank, passes at once through the draft tube, D, so that the accumulation of water due to condensation of steam is very slight."

There is not to be found in either specification the remotest hint that the patentee proposed to dilute his acid with water. To the direct contrary, as we have seen, he states that the subjecting of rubber waste to the action of heated solutions of "diluted sulphuric acid" had proved not to be practical. He is careful to explain why the steam "which penetrates every portion of the mass, and carries the acid with it," does not, by condensation in the tank, appreciably dilute the acid. His particular description of the method of carrying out the invention, namely, depositing the acid in the bottom of the tank, introducing the waste therein, and then closing the tank, excludes the idea of adding water. He states that, in practice, he has used acid of the strength of 66° Baumé, and in one contingency, suggests more heroic treatment by the addition of fluoric acid.

Nor are the patentee's above-cited statements modified or affected by the two subsequent amendments which form the closing paragraph of the specification in No. 300,720. The occasion of the first of these amendments was the adverse citation by the examiner of the patent of 1863 to Haywood; whereupon the applicant by amendment declared that his invention was distinct from Haywood's described treatment, and that such "dilute acid" as he proposed could have no appreciable effect in destroying the fiber. The other amendment was the disclaimer of the subject-matter of the French patent to Faure, who describes a process of treating rubber scrap in which he

employs sulphuric acid of a strength from 50° to 58° Baumé, at a temperature of from 60° to 80°. This disclaimer deserves to be quoted at length:

"Neither do I claim the subjecting of rubber waste to the action of sulphuric acid of sufficient strength to destroy fibrous matter contained in the waste, that being described in the French patent of Faure, No. 91,665, April 3, 1871. Sulphuric acid, however, if employed at ordinary temperatures, or at any of the temperatures set forth or suggested by Faure, acts injuriously upon the rubber; and my invention, as herein before stated, is based upon the discovery that the rubber in the waste will effectually resist the action of strong sulphuric or muriatic acid, heated to a high temperature."

Here is plainly set forth the supposed discovery of Mitchell,—the basis of his invention,-that strong sulphuric acid, if raised to a high temperature, will not injure the rubber. The patentable difference between Faure's process and that of Mitchell is declared to lie in Mitchell's use of a much higher temperature than any contemplated by Faure.

In enforcement of this view, Mr. Mitchell's solicitors, in answer to a citation by the examiner of Faure's patent as showing "want of novelty," on May 16, 1884, wrote to the commissioner of patents thus: "The reference cited in the official letter of May 15th is referred to in applicant's specification, is especially disclaimed therein, and the difference between the subject-matter thereof and that of applicant's invention is clearly pointed out in the paragraph preceding the claim. The claim is limited to boiling the waste in acid, whereas the Faure patent describes the use of acid at comparatively low temperatures."

This letter, which closed the correspondence between the applicant's solicitors and the commissioner, is consistent with the views which these solicitors had previously urged upon the patent office, as ground for dissolving an interference between Mr. Mitchell and other parties, namely, that Mitchell's discovery was "that strong, undiluted commercial acid, with heat, can be used for the recovery of rubber." We do not refer to this action of Mr. Mitchell's solicitors as creating any matter of estoppel as against him, but as a significant fact. Confining ourselves, however, to what appears on the face of Mitchell's patents, their fair meaning, we think, is that the strong undiluted sulphuric acid of commerce is to be employed in the practice of his invention.

We have only to add that if Mr. Mitchell's invention, as is now claimed, really involves the use of diluted acid, and dilution with water is requisite to the operation, it was his duty to describe the solution or state the practical rule which accomplishes the desired result. His own specifications set forth that unsuccessful attempts had been made to subject rubber waste to the action of heated solutions of diluted sulphuric acid for the purpose of recovering the rubber. This made it all the more necessary that he should distinguish his particular solution from those already tried. Merely to describe the use of heated acid, without any information whatever as to the extent of the required dilution of the acid, was to add nothing to the stock of common knowledge. Mitchell's invention, it will be observed, rested upon an original discovery, and he was bound to disclose fully to the public, in and by his patents, his modus operandi. Upon this

point the provisions of section 4888 of the Revised Statutes are imperative.

In Wood v. Underhill, 5 How. 1, 5, the court said:

"But when the specification of a new composition of matter gives only the names of the substances which are to be mixed together, without stating any relative proportion, undoubtedly it would be the duty of the court to declare the patent to be void. And the same rule would prevail where it was apparent that the proportions were stated ambiguously and vaguely."

In Tyler v. Boston, 7 Wall. 327, 330, speaking of a discovery of a new substance by means of chemical combinations of known materials, the court declared:

"Where a patent is claimed for such a discovery, it should state the component parts of the new manufacture claimed, with clearness and precision, and not leave the person attempting to use the discovery to find it out 'by experiment.' The law requires the applicant for a patent right to deliver a written description of the manner and process of making and compounding his new-discovered compound. The art is new; and therefore persons cannot be presumed to be skilled in it, or to anticipate the results of chemical combinations of elements not in daily use."

In the recent case of Consolidated Electric Light Co. v. McKeesport Light Co., 73 O. G. 1289, 1291, 16 Sup. Ct. 75, the supreme court, after citing section 4888, Rev. St., said:

"The object of this is to apprise the public of what the patentee claims as his own, the courts of what they are called upon to construe, and competing manufacturers and dealers of exactly what they are bound to avoid. Grant v. Raymond, 6 Pet. 218, 247. If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void."

Under these authorities, it is plain that, upon the appellant's theory of Mr. Mitchell's inventions, his patents are void for lack of compliance with the statutory requirements with respect to the description of the manner and process of using his discovery. The decree of the circuit court is affirmed.

REMINDER LOCK CO. et al. v. ADLER et al.

(Circuit Court, S. D. New York. December 23, 1895.)

PATENTS-CONSTRUCTION OF CLAIMS-VALVE LOCKS.

The Stiner patent, No. 413,794, for an improvement in valve locks, whereby the performance of one act (such as turning off the water in a building at night) is insured by making it impossible to perform another act (such as locking the front door of the building) until the water is turned off, covers an invention sufficiently meritorious to warrant a liberal construction of the claims, and the application of the doctrine of equivalents. Held, therefore, that the patent was infringed by a mechanism which, though different in appearance, was composed of parts which, iu function and operation, were the counterparts of the elements of the first claim.

This was a bill in equity by the Reminder Lock Company and others against Marcus Adler and others for infringement of a patent relating to valve locks.

This is an equity suit for infringement of letters patent No. 413,794, granted to Clarence M. Stiner, October 29, 1889, for improvements in valve locks. The patent is now owned by the complainants. Stiner's idea was to insure the performance of one act, such as turning off the water in a building at night, by making it impossible to perform another act, such as locking the front door of the building, until the water has been turned off. To illustrate: The porter, on unlocking the door in the morning, finds the water turned off. There is but one way for him to get water. He must take the key which unlocked the door and with it unlock the water valve. The moment he does this the key becomes caught in the valve lock or "trapped." The key can only be released by closing and locking the water valve. In other words, the porter cannot lock the door at night until he has shut off the water. The specification says:

"The device used consists of a key which fits two different locks. One of the locks is arranged so that when not in use as a seal it may be carried about or removed from its normal position, and its construction is such that it cannot be thus removed without first inserting the key and turning it. This act locks the key within the lock, so that when the lock is removed the key cannot be used in another lock until it has been released. To release the key necessitates the replacement of the lock and the throwing of the bolt. This having been accomplished the key may be removed from the lock and used on the second lock."

The patentee describes the device shown in the drawings, prefacing it, however, with the statement that it is one of many which may be used in practicing the invention. He says:

"I therefore do not confine myself to the particular form of lock nor to the particular manner of handling it. The central idea is to enforce the performance of an act or duty by rendering the performance of another act or duty dependent upon the performance of the first act. The form of lock here shown it is obvious may not be adhered to. I may use a ‘Yale' lock and key or any other form of lock wherein it is impossible to withdraw the key except it be turned to a certain point. It is obvious also, as before stated, that the invention may be used in many instances, among which may be mentioned in couples a front and back door, any two doors, a stable-door and a house-door, a safe or vault and main door of a bank, and many other instances which it is not necessary to mention herein."

The claims involved are the first and fourth. They are as follows: "(1) In combination with a lock-holder, a lock which may be embraced by the said holder, but which is removable therefrom, a keeper, and a key adapted to operate said lock to lock the keeper, holder, and lock together, for the purpose described."

"(4) A lock, in combination with a lock-holder which embraces the lock, said holder being provided with an opening, and a keeper adapted to pass through or into said opening to become engaged with the lock."

The defense is that the claims must be narrowly construed and, so construed, are not infringed.

Alfred Ely, for complainants.

Louis C. Raegener, for defendants.

COXE, District Judge (after stating the facts). The idea of enforcing one act by making the performance of another act dependent thereon was not new with Stiner. The mechanism by which he carIt was old to trap keys and to

ries out the idea is new with him.

185

attach reminders to keys. The patent to Weil shows an electric ap; paratus designed to accomplish substantially the same object as Stiner's, but operating in a totally different way. The electric circuit which operates the cut-off valve is set in motion by putting a weight on a lever or taking it off. This weight may be a key, but it may be The porter if he desires to do so can hang anything else as well. a nail on the lever and carry the front door key in his pocket continnously. It is obvious that the patented device is simpler, cheaper The same may be said and more effective than the Weil apparatus. These are the of the crude and ineffective Hellenberg structure. best references offered by the defendants, and Stiner is many steps in advance of both. They make the performance of the desired duty It is the difference between a reoptional; he makes it compulsory. The use of Stiner's mechanism insures obediquest and an order. A porter using his lock ence; none of the prior devices does this. is compelled to shut off the water before he can lock up for the night. Of course the obThere is no alternative except to pick the lock. A corrupt ject of the invention is to prevent carelessness, not crime. porter could, of course, circumvent all of these devices, but as a safeguard against forgetfulness and negligence Stiner's lock is without doubt the best yet devised.

Another feature of the Stiner invention not found in prior strucBefore the tures is the locking shut of the water valve at night. porter can release the key he must not only turn off the water, but he must lock the valve in the closed position so that no water can It is clear, then, get into the building either by accident or design. that Stiner has made a valuable invention possessing elements of exHis is not a pioneer patent cellence not hinted at in the prior art.

in the sense that he was the first to enter this field, but it is sufficiently meritorious to warrant a liberal construction of the claims; a construction broad enough to enable the complainants to restrain those who accomplish the identical result by similar or equivalent

means.

Claim 1 has the following elements in combination: (1) A lockholder. (2) A lock which may be embraced by the said holder but (3) A keeper or hasp. (4) A key. which is removable therefrom. The use by the defendants of the lock-holder and key is undisputed. There is also a lock which may be embraced by and can be removed from the holder and there is a rigid metal attachment to the valve handle which swings with it into engagement with the holder and when locked in this position effectually prevents the use of water in the building. The defendants' brief concedes that the inventor is entitled to "any fair equivalents of the means invented by him coming within the essence and gist of the invention." It is thought that this attachment is such an equivalent and that in using it the defendants That these parts have appropriated "the essence" of the invention. accomplish the same result as the complainants' device is admitted, In a limited sense but, it is said, that they do it by different means. this is true, but, as before stated, the patent is not restricted to the The defendants' mechanism, exact details shown and described.

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