SCHULTZ BELTING CO. 17. WILLEMSEN BELTING 00.
"to tan the hide through and through, the hide for that purpose being
immersed in tan liquor for several months, and even years;" that by the old process the interior of the hide is tanned equally with the surface, the effect being to diminish the strength of the leather so produced as compared with raw hide. He further states that if the raw hide is not immersed in tan liquor at all, but is merely "fulled, curried, and stuffed," while the hide becomes pliable, and its tensile strength is increased, yet it is not durable, and will lack body and finish. To combine the advantages' of raw hide and fully tanned leather, the patentee then describes a process of manufacturing leather that differs from the old process admitted to be in vogue, only in the respect, that the hide is immersed in tan liquor for a much shorter period,-say, from 8 to 10 days,-the result being that the outer surfaces of the hide are tanned, while the interior stratum is only partially tanned, and retains all the qualities, including the strength, of fulled and stuffed raw hide, but is not subject to decomposition. Having described the process and the merits of the product,. the claim of the patentee is as follows: "As a new article of manufacture, leather having tanned surfaces and an interior of pliable raw hide, substantially as described." It thus appears that the patent in this case covers an alleged new product, the same being the result of a new or improved process; and it is not denied that such a product may be the subject-matter of a valid patent. Smith v. Vulcanite Co., 93 U. S. 489; Vulcanite Co. v. Smith, 1 Holmes, 354. The contention is, however, that neither the process described, nor the product claimed in this patent, was new; and to this point the evidence for defendant, as well as for the complainant, was chiefly directed. \ It will suffice to say that the testimony in the case shows to my entire satisfaction that prior to the granting of the Schultz patent on April 19, 1876, a very considerable amount of leather had been produced and sold at Louisville, Ky., Cincinnati, Ohio, and St. Louis, Mo., and probably at other points in the United States, having tanned surfaces and an interior stratum of pliable raw hide. The testimony of all the witnesses supports that conclusion, and the fact is not seriously controverted by complainant's counsel. I have no doubt, however, that very much of the leather of the kind last mentioned, that is shown to have been in the market prior to the date of complainant's patent, was what was regarded at the time as imperfectly tanned leather. The leather in question in many instances no doubt was withdrawn from the tanning vats before it. was tanned through and through, owing to the great demand for leather, and the desire of manufacturers to get their product on the market as soon as possible. Probably the manufacturers of such leather and the dealers therein did not regard it as being either as serviceable or valuable as perfectly tanned leather. But these concessions do not aid the complainant's case. The fact remains that the product claimed as the result of an improved process was not new. The same article had been prod:J.ced before, and manufacturers knew very well how to produce it before Shultz filed his specification. If he made any disC'Overy it consisted in his finding out that leather imperfectly tanned-which every
vol. 40·.. had
preferable But thatdiscov,ery, even if.it·could be patented, has not been claimed. And 1 may further add in this connection, that the greater tensile strength of leather. imperfectly tanned (,which is the chief for complainant's leather purposes) was a fact well known to tanners.long before t-hedate of complainant's patent. It was well understoodamongtanners.·that rawhide had greater tensile strength than leather thoroughly tanneq, and hence that a strip ofleather with an in'lierior stratUlP ofraw hide between tanped surfaces wasJ;lecessarily stronger thana strip Of leather of the same dimensions tanned ,through and through. It will be understood. of course I that in deciding this case the court does not impugn the doctrine tha,.t the accidentaLdiscovery of a new compound or neW article of manufacture by a person who did. not have or retain suffioient knowledge of the process ,to reproduce the compound, or explain how it was produce.d,will not invalidate a patent granted to another person who subsequently makes the same compound or article, and explains the method of production. Ra'l'l8Dm v. Mayor, 1 Fish. Pat. Cas. 265; Tilghamv. Proctor, 102 U. S.711. That doctrine has no application to this ,case, for the reason that ta,nners have long known how to make the new llrticle of manufactl,ue des.cribed in 'the patent; and when such article ha.s heretofore been I11ade, its production was not accidental, but intentional. , With reference to the contention, of complainant's counsel that the patent in contrOversy should be upheld on the strength of the decision in Smith v. Vulcanite Co., supra, and that no distinction .can he drawn between the two it will suffice to- say I that in the case cited the patent was upheld on the ground that a new product had resulted from the described process, that differed froIll all that had preceded it in degree of uaefuln6SS and in kind, and that had new uses and properties. In the case lLt bar the alleged new prQduct is conclusively shown to be old, and the process by which it is produced is also old. For want of patentable novelty the patent is adjudged to be void, and the bill .is acQordingly dismissed.
!ol': I!Ol'ne uses (notablyJor beltJng.) to perfectly tanned leather.
ROYER 1'. SCHULTZ BELTING
Co. et al.
court, E. D. Missouri, E. D. Ootobefo14, 1889.'
PATBl'tTS :rOBINVBNTIONS-ExTENT .Oll' CLA.IM.,...TBllIA.TMENT Oll' HIDES POB BELTING LEA.THER.
The claim of letters patent No. 149,954, issued to Herman Royer, April 21,1874, was for "the treatment of the prepared raw hide in the manner and ,for the purposes set ,fortlJ,. II .' The method of treatment described mlS (1) the removal of the hair from the hide by sweating; (2) drying the hide perfectly hard; (8) inserting it in miter,' for 1, or 15 min,utes; (4), fUUi.n g, or SOf,tenmg it by mechanical means; (5) po it a certainmixtu1'6; (6) fulling this mixture into it in a suitable machine; (7) moistening it 4 or 5 times a Clay; (8) stretching it, and cutting it into suitablepiece80' The specification,refel'll to the patentee's "mode of preparing
BOYER fl. SCHULT1: BELTING 00.
hides, .. and 8ay8 that it is necessary to make use of a preparation substantially as described, in order to render raw hide fit for use. The olaim was amended 80 as to conform to above on suggestion from the patent-office that a claim for preparing raw hides by the fulling and bendiJig operation and the preserving mixture was not patentable. HeW, that the claim must be limited to the whole process described, and the patent was not infringed by a variation in the method of m.aking belting leather; BS..l. by liming, instead of sweating, green hides. Following RO'j/er v. Ooupe, 88 ,tt'ed. Rep. 113. ,
plainant. O. H. Krum, for defendants.
Broadhead &: HaeuB8ler,Wm. M. Ecdes, and M. A. Wheaton,for com-
On bilHor infringement of patent.
THAYER, of. The testimony in this case does not sustain the charge of infringement, unless the claIm of Royer's patent, No. 149.954, be construed'as covering broadly the method of making belting leather out of prepared raw hide, by stuffing the hide, by means of a fulling-machine, with a mixture composed of tallow, wood-tar, and resin. In the case of Royer v. Coupe, 38 Fed. Rep. 113, it was held that the claim did not'admit of such a liberal interpretation; that, if the claim was given such a broad scope, the patent would necessarily fall in view of the prior state of the art of tanning, a.nd hence that the claim in question must be limited to the entire process described in the specification, consisting of (8) successive steps, whereby raw or green hides are first' denuded of their hair' by means of a "sweating process," then "dried hard," and subsequently stuffed in a fulling-machine, with a preserving mixture consisting of tallow, wood-tar, and resin. In that case it was held that the patent was not infringed, unless the process was used in its entirety; and, inasmuch as the defendant in that case removed the hair from green hides by a liming process, instead of by sweating, the bill was dismissed. In the case at the testimollyshows that the sweating process mentioned in the Royer patent is not used by the defendants. It also appears that by the defendants' method ,of treatment the hides are "limed" and ·bated," and that they are alsopartially tanned. In each of these respects defendants' process varies from the Royer process, and the patent is not infringed, unless this court gives a broader scope to the claim than was accorded to it in Royer Cottpe. This the court must decline-to do. The epecification and claim of Royer's patent is so worded, as'\vas well shown by Judge,CoLT, as to leave it ina great measure uncertain whether the patentee intended to claim' the entire process described, of removing the hair from ,hides by sweating, llnd drying them,and then stuffing them, by means of a fulling-machine, with a preserving mixture, or whether he intended to claim only those steps of the process by whichapllrticular preserving mixture was worked into the fiber of prepared raw hide, by means of a fulling-machine. The doubt which arises from the language of the specification as to the proper construction of the claim. is in itself sufficient to warrant the court in adopting the conafter full consideration, in the first circuit, struction 'on. the 'ground of comity" 'But, in addition-to that view of themattElr,