IrIEAD V. WEST PUB. CO.
MiWren .... .Tones, 77 TIt 872 MiZUkin
for Jones, 77 Ill. 879
MiZiken for Mmikin.
Ship. 874, n. 68 Andr. 318, n. 1
Andrews cites jour cases not cited by Shipman. Andrews alleges tbat the case does not support the text. The text Is to the effect that "it is necessary, as we have Been, to obtain the leave of the court to make use of several matters of defense, tbe application for leave being addressed to the discretion of the court." The second paragraph of the syllabus to the case cited reads as follows. "a. Where a defenda.nt, after filing the general Issue, and the continuance of the cause, discovers that he has a substantial defense not admissible under the general issue, he should, at the earliest convenient day, ask for special leave of the court to file ao additional plea, so as not to take the plaintifl' by surprise or delay the business of the court... This case will be found digested In Kinney's Dlinois Digest, pp. 2228, see Clark's affidavit, 10.
Clay Fire InBurance Company v. Wusterhausen for Ship. 374, n. 68 Clay l?ire and Marine Imurance Compnny v. Wusterhausen Andr. 318, Do 1 Error. "And Marine" omitted. Explanation. Shipman, 336, includeB "and marine.· Andrews, 298, omits "and marine." Bee Clark's affidavit, 12.
CMZdB v. Wesco" Childes
Ship. 411, n. 96 Andr. 350, n. m
ChiZdB for CMldeB. Wescott for WeBcot.
Cited from the original note of Stephen. Cited Childs v. WeBcot in 2 Cro. Eliz. 470. Cited ChildeB v..·WeBcot in 2 Cro. Eliz. 482. Cited ChUd v. Westeot in 14 Vin. Abr. 479. Cited Child v. Westcoat in 23 Vin. Abr. table of cases. Cited Childes v. Westcot in Stephen (Heard) 314. Cited Childs v. Westcot in Stephen (Heard) table of caas see Clark's affidavit. 12.
Wyat .... Alaud, 1 Salk. Ship. 449, n. 1; 450. n. II for Wyat v. Aland. 1 Salk. 824 Andr. B8l, n. e; 882, n. h Error. Alaud for Aland. Explanation. Cited from the original note of Stephen. Shipman (449) cites Sibl.ay v. Brown, 4 Pick. (Mas!!.) 137. Andrdws (881, n. 1) cites L11Jbey v. Brown, 4 Pick. 187. The case should be cited SiMey v. Brown, 4 Pick. (Mass.) 1.8a. Shipman (450. n.5) cites Sibley v. Brown. Bhipman (450, n. 6) cites Rex v. Stevens, 5 East, Andrews (882, n. h) cites King v. BtevellL see Clark'a affidaVit, 10.
80 FEDERAL REPORTER.
Mamert. Oase, 9 Ooke, 8 Ship. j 450, n. ., for 1451, n.1I Andr. 383, D. 1. Manier'. Oase, 9 Coke, 8 Error. Mauser for Man.er, Explanation. Cited from the original note of Stephen. Shipman cites (n. 7, 450) DO'VaBton v. Payne, 9 BoBL G8O. Andrews (882) cites Devaston v. Payne. Correct citation is DO'Vaston v. Payne, 2 H. BI. 597. Bee Clark's a1lidavit, 11. 1 '7. Ship. 456, n. Spencer .... Southwick, II Johnl. 818 for Andr. 886, n. 1 Speucer v. Southwick,lI Johnl. 814 Error. 818 for 814. Explanation. Cited 818 Chitty, 666, n. (f). Shipman cites nine cases not cited by Andrew.. See Clark's a1lidavit, 18.
Ship. 456, n. 24 MoI8hner 1'. Granger, 4 GUm. (TIl.) 78 for Andr. 886, n. 1 MoIsner.1'. Granger, 4 GUm. (Ill.) 69 . Errors. 78 for 69. Mishner for Misner. Explanation. Report commences on page 69. · Opinion commences on page 7/!. Discussion of the point of pleading commences on page 7& Shipman cites Watriss v. Pierce, 36 N. H. 236. Andrews does not cite Watriss v. Pierce. Shipman cites ten cases not cited by Andrews. Andrews cites seven cases not cited by Shipman. See Clark'll a1lidavit, 18.
Ship. 456, n.24 SP'/"UC1C 1'. Forsythe. 40 Ill. 440 for Andr. 886, n.l Spurc1c .... FOT'IJth, 40 Ill. 488 Errore. 440 for 488. Sprock for Spurc'k. FOT81Jthe for Forsyth. Explanation. Report commences on page 438. Opinion commences on page 439. Discussion of the point of pleading commences on paR8 ... Shipman cites Watriss v. Pierce, 86 N. H. 236. Andrews does not cite Watriss v. Pierce. Shipman cites ten cases not cited by Andrews. Andrews cites seven cases not cited by Shipman. See Clark's a1lidavit, 13.
Ship. 456, n. 9t Oyett 1'. Pendleton, 8 Oonn. 728 for Andr.386, n.1 Uyett 1'. Pendleton, 8 Oow. T28 Error. Vonn. for Vow. Explanation. Correct citation is 727. Shipman cites ten cases not cited by Andrews. Andrews cites seven cases not cited by Shipmaa. Bee Clark's a1lidavit, 18. .
AMERICAN SULPHITE PuLp CO. V. HOWLAND FALLS PULP CO.
Piercy v. Sabin, 10 CaL n Ship. '119, Do 89 for Piercy v. Sabin, 10 CaL 22 Andr. dO, n. 8 Error. 27 for 22. Explanation. Report commences on page 22. Opinion commences on 26. Discussion of the pleadmgs commences on page :no Cited 27 in People v. McCumber. 72 Am. Dec. 5111. Andrews cites People v. McCumber, 72 Am. Dec. lUI. Andrews (n. L) cites Sade v. Drake, Hob. 9911. Shipman cites Sw.de v. Drake, Hob. 21l5. Citation should be Slade v. Drake. Andrews (n. i.) cites Smith v. Yeomans, 1 Saund. 81&. Shipman cites Smith v. Yeomans, 1 Saund. 816, 81'1. Andrews cites three cases not cited by Shipman. . See Clark's afildavit, 18.
A.MERIOAN SULPHITE PULP CO. v. HOWLAND FALLS PULP CO.I (CirCUit Court of Appeals, First Oircuit.
L PATENTS-PRIOR USE IN FOREIGN COUNTRy-KNOWLEDGE OF INVENTOR.
try received knowledge, before applying for a patent, of a prior use of the
April 16, 1891.)
Where one claiming to have made an Independent Invention In this COUD-
Invention In a foreign country, such knowledge will nat deprive him of the protection of the patent laws, if, before receiving the information, his Idea had been so developed and applied 88 to constitute Invention If expreSfled In a patent. J. 8AME. An Inventor working Independently In this country conceived the Idea of a lining for a wood-pulp "digester" composed of a homogeneous, cementitious )llixture put on In a plastic state. He had discovered the acid-resistlDg fOrce of such compositions as against highly-heated bisulphite liquor, consIsting of lime, sulphurous acid, and water, and was experimenting with varying degrees of success with cements composed of various ingredients, including hydraulic cement and sand alone, and hydraulic cement with other Ingredients, including silicate of soda and sand. With these mixtures he had put the discovery in operative form, so as to stand the test of the conditions of actual use, but had, perhaps, not discovered all the materials or compositions capable of performing the necessary function. While his invention was in this stage,' and before application for a patent, he received knowledge of the use of a like Invention in Europe. Held, that this knowledge did not deprive him of· a right to a patent, and that he was entitled to claim, not only the composition withwWch he had successfully experimented, but also those which he described with sufficient clearness to be understood by persons skilled In the art, a.nd such as would naturally develop, In the growth of the art, withont invention. 10 Fed. 986, reversed.
.. BAME-FAlLURE TO DISCLOSE INVENTION.
The silence of an Inventor for more than a year after his experiments had reached a practical and operative stage held not to have prejudiced his right to a patent, where his silence resulted from a reasonable fear of losing control of the Invention.
- CONSTRUCTION 011' CLAIMS PULP DIGESTERS. REFERENCE TO SPEOIFIOATIONS -WOOD-
The specifications of a patent for a wood-pulp digester described "8 continuous llnIng or coat, B, of acid-resisting material, applied In a plastic condition," which llnIng "Is of the nature of a cement" composed "of any material or mixture of materials which Is acid-resisting, and capable of beJng madeplastlc and adheSlive." ",A convenient material for the purpose Rehearing pending
Is commerclal eement,-preferably,. Portland," etc. "Other cement-like materials or mixtures having slmUar.;properties or characteristics may be used, such as the ordinary cement mixtures, sand and Portland cement, ssud and tar, and the like." The claims were for "the Improved pulp Q.l.gester herein described," having "a continuous lining or coat, B, of cement, as described," "applied to the interior of the sa.1d shell for the purpose set forth." Held, that the use of the word "cement" did not limit the claim to ordinary hydraulic cement, or to the particular cementltlous mixtures which the Inventor had chemically and commercially Isolated as Individuals, but that the claims must be construed in connection with the references therein to the specifications as. Including all cementitlous mlxtures which ordlnllJl11y skilled, practical chemists might be expected to find as answerIng the described conditions, or such as would naturally develop In the growth of the art without Invention. 70 Fed. 986, reversed.
The Russell reissue, No. 11,282 (original No. 445,235), for Improvements In wood-pulp digesters, consisting In lining the same with a continuous coating of cementitious compositIon. construed, and held valid and infringed. 70 Fed. 986, reversed.
Appeal from the Circuit Court of the United States for the District of Maine. This was a bill in equity by the American Sulphite Pulp Company against the Howland FaIls Pulp Company for alleged infringement of reissue patent No. 11,282 (original No. 445,235), for an improve· tnent in wood-pulp digesters. The circuit court dismissed the bill (70 Fed·. 986), and the complainant has appealed. CaustenBrown and Alex. P. Browne, for appellant. John L. S. Roberts, for· appellee. Before COLT, Circuit Judge, and WEBB and ALDRICH, District Judges. ALDRIOH, District Judge. This cause involves the validity of a patent for an invention relating to improvements in the construction of vessels ordinarily called "digesters," and, as a leading feature of the improved construction, provides for what the complainant calls a "protective lining" for the shells thereof. These digesters are used in the sulphite wood-pulp process, and may be either stationary or rotary, and are constructed with an outer shell of iron. The structures are large and expensive, va1'ying in size (sometimes 15 feet in diameter by 30 in length), and are designed to receive blocks of wood and wood substances to be subjected to the sulphite process; and the metal shell, being corrodible by the acids and gas used in the process of cook· ing or dissolving the wood fiber, requires an interior protective lining. It is manifest-indeed, it is conceded-that the practical workings of the sulphite process had disclosed a fundamental and imperative necel¥lity for some means of protection against the hazard and explosive dangers incident to the corroding influences and the great pressure, under highly-heated conditions, of bisulphite acid solutions necessarily involved in the proeess for dissolving the wood substances; and in this connection we cannot do better than quote from the opinion of the circuit court on this phase of. the case, where it is said:
"It is very evident that the art to which the patent relates had been for a long time urgent for a practical lining for the iron or steel shells of digesters,
which would be reasonably economlcaI.and that the urgency had been so
AMERICAN SULPHITE PULP CO. V. HOWLAND FALLS PULP CO.
great aa to have becoD;1e a tundaD;1enta,1 necessity. .For several. no one nad been able to respond; so that, under the. clrctul1staDces, whOever shouJd lSolve the whole problem; or should mue advances ofptact1ba1' \1Se In that direction, whether by adoption trom other arts or otherwise, would have been entitled to be held an Inventor, both by the common judgment and by the eourts. MltBcherlich accomplished this tn part, but he always had a lead l1nlng In direct juxtaposition with the shell, and his Interior material was not continuous. Tbe Russell device dispiaced the lead, and turntshed a continuous and homogeneoas l1DlDg."
The prior state. of the art, the anticipatory character of American and foreign patents, questions of .fraud in reissue in respect to the patent in suit, questions as to prior pUblic use in the United States and in foreign countries, and finally the question whether the problem presented to the involved patentable novelty, are not raised by the assignment of errors, and are not before us. These questIons were all resolved in favor of .the patent in suit by the circuit court,and thus our investigations are narrowed to the question whether George Fred Russell's conception and discovery in August, 1889, .at the time he received information from Cologne, were so far reduced to operation and practical use, or, in other words, had far an idea of practically operative means, as to become a discovery or an invention entitled to patentable protection; and, if the problem of invention is determined favorably to the patent, then the question as to the validity and mean'ing of the claims and specification, and the question of infringement, will requil'e our consideration. The claims are stated in the reissue patent as follows: "r c1alm: (1) The Improvedpl1lp digester herein deecrtbed, bavlng an outer
.hell,A, and a continuous llnlng or coat, B,ot cement, as described, applied to the Interior of the said shell, tor the pU!'Pose set forth. (2) The Improved pulp digester herein described, having an outer shell, A, a continuous llnlng or coat, B, ot cement, substantially as described, applied to the Interior of the &ald shell, and an interior l1nlng ot tiles, C, all Bubstantlally as set fortb."
The complainant contend.s for a broad construction of his claims, and that his device and process, under reasonable construction"Oonsists In an Improved pulp digester, In which the. metal sbell, corrodible by the acid solution employed, Is protected against Its by a continuous coat or llnlng ot cement of proper thickness applied upon the Interior of the shell; tbe term 'cement' including any material or mixture ot materials whlcl;t resists the acid solution under high beat and pressure, and which Is capable ot being mlWe plastic and adhesive to the digester shell, and so compact IU!I, In practice, to. prevent the acid. solution from reaching the Iron shell In consequence ot the high steam pressure used In the process."
On the other hand, the defendant in error stands here, as in the court below, upon the defense that, while Russell was experimenting in that direction, he had made no advance in the art at the time he re, ceived information from Cologne that Wenzel, an Austrian, was suc· cessfully lining digesters with hydraulic cement and sand. The defendant does not urge that the Russell claims should be limited to hydraulic cement, and it may be here remarked that the learned cQ-unsel on both sides agree, in argument, that the construction limiting Russell's cI;ums to hydraulic cement is impossible, and cannot stand. The scope of the claims, will be considered later. The -posi. tion of counsel in argument is given in this connection for the purpose of hetter understanding the questions which we are to consider.
The patentee claims I:i,.broad discovery, to become operative by applying, without joints seams, plastic materials in the nature of cement, which he says he had sufficiently described, while the defendant, admitting that Russell had conceived the idea of a homogeneous protective lining, insists that he had made no invention, that he had not advanced beyond the field of experiment, had not discovered the material necessary to reduce his conception to practice, and that his claims, cove;ring all materials or mixtures Of materials which will serve as a one-piece or continuous lining, are void. There would seem to be no doubt, upon the evidence, that Wilhelm Wenzel had conceived the idea of a continuous digester lining, and that he was using a composition of cement and sand successfully for that purpose, before Russell's discovery. Wenzel covered his device as early as May, 1888, by a secret Austro-Hungarian patent for an acid-resisting material, and on August 15, 1889, secured a Swedish patent covering the same device, which .was not, however, published until November, On the 30th of July, 1889, Mr. Springer, who was connected with the Russell Paper Oompany, and then traveling abroad, sent a communication to William A. Russell from Cologne, in which he said, . . in speaking of digesters:
"I have found a cement lining which, It It turns out to be what It now appears, Is the best thing .yet. It Is simply a cement and Is put on as one would plaster 0. wall."
This information was conveyed to the patentee, Russell, early in Augu!!! in the same year. It therefore llecomes necessary to ascertain Russell had progressed in his discovery and invention, and how whether he had so far advanced the art at the time he received knowledge of the Springer letter from Cologne as to entitle him to protection as an inventor. The circuit court approached this phase of the case with the observation that while Russell "must have had before that time a clear and positive conception of the substance of what was ,afterwards patented," where the "substantial question," as in the cuse at bar, "is whether the patentee, Russell, invented at all, we do not deeln it in fact necessary that the complainant should prove that the alleged invention was put into a practical, concrete, or visible form before the patentee received the information contained in er's letter." Holding this view, the circuit court, under its construction limiting the clahns to hydraulic cement, found and held that Russell had not solved the problem of invention, and dismissed the bill. We are inclined to consider the question of invention here presented upon lines perhaps less favorable to the patentee than those drawn by the circuit court, and to deterlnine his rights with reference to the mles· which would govern questions of patentability. Therefore, ,had his advance in the art at the time he received information of the Wenzel experiments reached such a stage as would entitle it to protection as involving invention, if expressed in letters patent? If so, the· information from Cologne would not deprive him of the fruits of his discovery. At least, a higher advance in the art is not required to protect him against information of this character than would be required to protect his discovery, as an invention described in a patent, under the rules regulating patentability and nonpatent.
AMERICAN SULPHITE PULP CO. V. HOWLAND FALL'3 PULP
ability. So it becomes necessary to inquire as to what Russell had done at the time he received information of the experiments and developments by Wenzel, and this, as all agree, could not have been earlier than the first week in August, 1889. Now, what was Russell's conception, and wllat had he done to demonstrate -the practicability of his discovery before August, 1889? Had he conceived the idea of such a structural lining before he received information from Cologne, and had he so far demonstrated the practicability of his conception by devising and employing ideas and means for adapting it to the required use as to entitle him to the position of inventor? Or did he borrow the discovery from Wenzel? By this test the patent must stand or fall. It is clearly established by the uncontroverted evidence that Russell, nearly a year prior to the Cologne letter, having observed the imperfect workingS and the dangerous conditions incident to a lining composed of different materials with leaded and cemented joints, conceived the idea of a seamless, homogeneous lining, to be composed of materials from which brick, tile, and artificial stone are made, which should be acid-resisting, a&d so far adhesive that it would attach to the shell and become a part of the structnral formation, and so far COhesive, expansive, and resilient as to respond to the expansive and retractive force of the iron shell when subjected to the varying conditions of heat and cold, as was necessary in the process of cooking and curing the wood. This was unquestionably a step in the direction of invention, and one which contemplated an important and useful advance in the art. Having conceived the idea of such a structural lining so adhering to the shell as to become a part of the main structure, he entered the field of experiment for the purpose of discovering the forces in nature which would respond to the required purposes, and be equal to the test to which the structural lining, in practical operation, would be subjected. The invention did not start with a discovery of a force in nature, or a particular ingredient, but with the idea of a homogeneous structural lining, and the search for material was for the discovery of means for reducing the inventive idea to practical utility; and in this line he had little digesters con· structed, similar to those used in the actual process; made something like 50 experiments and tests with briquetts, pipe retorts, and little digesters, with various compositions in the nature of cement, including compositions of sand, pitch, and tar, tar and sand with cement and without, tar and sand with clay and asbestos, sand and silicate of soda and cement, and others of sand and cement alone,-some of the compositions standing the test imperfectly, others fairly well, but sand and cement being the most satisfactory. Having conceived the idea of a homogeneous lining, and having demonstrated the adaptation and. utility of cementitious, adhesive material or mixtures in plastic form for such purposes under digester conditions, should he have stopped on hearing of the Wenzel experiments, or was he entitled to perfect the art in a commercial sense, and secure the fruits of his 'Conoeption and invention by letters patent? At the time the information came from Cologne, his homogeneous lining, to be composed of acid-resisting, adhesive, and cohesive mixtures in the nature of cement, was a foregone conclusion. That was his invention. That advanced the art It had oc-
SO ,FEDERAL, RBPORTlIlR.
curred:toRussell, while experimenting for suitable cement materials to take the" place of lead in the joints of the linings, that, if he could succeed in finding a suitable cement for such purposes, he could'make the whole lining of the same material; and months before the Cologne letter, while reasoning from the fact that, if, as was known, artificial stone, brick, and tile would withstand the digester conditions of heat, pressure, and. acid, the materials from which they were made would stand the same test, he had conceived the idea of a homogeneous lining whereby thElartificiaI stone .and brick, with dangerous cemented and leaded joints, were to be supplanted by a continuous wall composed of cementitious ingredients or materials from which artificial stone, brick, and tile were made, applied in a plastic state, It should be observed at this point that the sulphite process cannot be conducted in an open vessel, for the reason that the bisulphite liquor cannot be raised under such conditions to the required high degree of temperature witpout losing the sulphurous gas which is the sole or principal agent in effecting the required changejand, while continuous, homogeneousJinings were known: in the arts, no method had been suggested or devisedfQr adapting such conditions to digesters used in the sulphite prOOess. This conception, therefore, of a one-piece structural liuing ,fol',suchpurposes,was new; and Russell's experiments had already demonstrated the fact, contrary to the belief of the scientific world, that cement mixtures; which were known not to resist the effects of cold 'sulphite liquor, would' stand the test of such. liquors under conditions of .high heat and pressure. He had discovered that the thick inner coating of cementitious mixtures, adhering to and protecting the ontel' shell somewhat from intensity of heat and expansion, possessed, ,sufficient expansibility and contractibility to withstand the maximum expansion and contraction of the iron under such changed and protected conditions. He had discovered that his continuous lining composed of cementitio)us material applied in a plastic state, when hardened, would stand against the hot sulphite liquor; that it adhered to and protected the iron from the corroding influences of the acids; that its cohesive, expanding, and resilient qualities would withstand the ·strains resulting from the expansion and contraction of the iron shell under the protective conditions incident to the thick homogeneous wall or lining, when subjected to the degree of heat and pressure necessarily employed in the sulphite process. He had discovered a new property or force in matter (Poillon v. Schmidt, 6 Blatchf. 299, Fed. Cas., No. 11,241; Smith v. Ely, 5 McLean, 76, Fed. Cas. No. 13,043; Parker v.lIulme, 1 Fish. Pat. Cas. 44, Fed. No. 10,740; LeRoy v. Tatham, 14 How. 1'56,17'5; Collar Co. v. White, 2 Ban. & A. 60, Fed. Cas. No; 14,B96; Ansonia.Brass & Copper CO. V" Electrical Supply Co., 144 U. S. 11, 12 Sup. ct. 601; Rob. Pat. § 101), and had made practical application of such newly.discovered force to an object. His operative mode was to apply the. matter containing the newly-discovered force in plastic .formto his object, and his object was a homogeneouEl lining covering the innerimetal walls 0f the digester shell. Having conceived the idea of a .cementitious lining, and having newly discovered the acid·resisting force of cementitious compositions as against highlycheated bisulphite liquor consisting of lime, sulphur·
ous acid, and water, he was experimenting in the field of cementitiou8 matter, including hydraulic cement and sand alone, and hydraulic cement with other ingredients, including silicate of soda and sand.. He had discovered the fact of this force (Telephone Cases, 126 U. S. 1, 534, 536, 8 Sup. Ct. 778), and had applied it to tlie inner walls of shells under conditions like the conditions existing in the practical sulphite process, and had tested its adhesive, cohesive, and acid-resisting power, and, although not necessary in order to secure a patent for his conception, his discovery, and his process (Telephone Cases), was experimenting with various materials in the nature of cement, all of which would do the work more or less successfully, for the purpose of "bringing his art to the highest degree of perfection" in the mechanical and commercial sense. At the time in question, Russell had conceived and put in form a continuous lining more distinctivelyhomogeneous than that of the metal bathtub (Steel-Clad Bath Co. v. Mayor, 77.Fed. 736); for in his conception and practice the lining material,.! applied in a plastic form, in the hardening process, under heat and pressure, closely adhered to. and became a part of, the outer structure. or shell itself. He had discovered acid-resisting forces ill matter under new conditions. He had made successful experiments, and put in operative form his newly-discovered force in ingredients and in compositions which stood the test of digester conditions. He had not, perhaps, discovered all the materials, or all the matter, or all the compositions which contained this force, and which were capable of performing the necessary function, but as to such as he had discovered and put in operative form, and such as he could describe with reasonable clearness, he was entitled to protection, and these include sand, silicate olsoda, and cement, sand, pitch, and tar, and hydraulic cement and sand as well. Some of these compositions stood the test better, made better linings, and did the work more successfUlly, than others; and as to such as he used, such as he described, and such as those skilled in the art could understand, he is entitled to protection. At this time he had advanced the art in the solphite-process line not ina slight degree, but in a high degree. He was an inventor not in a narrow. sense, but in a broad sense, and as such was entitled to a patent covering his homogeneous structural lining, his adaptation of the forces· in matter which he had discovered, and the cementitiolls compositions in the nature of cement with which he had successfully experimented, and which he had adapted to the required conditions and use, as well 8S those which he described with sufficient clearness to be understood by persons skilled in the art, and such as would naturally.develop, in the growth cif the art, without invention. We look at this as an invention of an improved structure, with a devised and described process for creating it and putting it in operation in connection with a new and pressing emergency, and not for any particular ingredient or It is true, the ingredients must possess certain described characteristics; but after all the ingredients are only a part of the invention involved in the construction of the inner part of the shell, and, in order to answer the prescribed purpose, they must possess certain described plastic, ildbesive, cohesive, and acid-resisting cMracteristics. The required characteristics being described, the kind
and quality may be found by the ordinary mechanic skilled in the art, and applied according to the method described, namely, in plastic con· ditions, with a trowel. . It would seem that Russell at this time had practically solved the problem presentea, and that his discovery, demonstrations, and prescribed process present a meritorious and useful invention; and, in our view, Wenzel's unpublished and unknown discoveries in Austria should not deprive him of the benefits of his own independent and original discovery and experiments in this country. Upon the question whether Russell had so far completed his discovery and accomplished his purpose when he received information from Cologne as to entitle him to a patent, and before passing to other questions in the case, let us look for a moment at the development of his conception in connection with his newly-discovered fact or force in matter under heat, pressure,an'd acid conditions, and his actual adaptation of means and process to the required purpose, in the light of the reasoning of Mr. Ohief Justice Waite in the Telephone Cases, 126 U. S. 1, 532, 8 Sup. Ct. 778. There Bell was the first to discover the fact that, by gradually changing the intensity of a continuous electric current so as to make it correspond to the changes in the density of the air caused by the sound of the voice, vocal sounds could be transmitted and reproduced at a distance, but he had not advanced so far as to actually transmit spoken words so that they could be distinctly heard at the receiving end of the line. Bell had discovered the fact that a force in nature (the electric force), under changed conditions, would produce a new and unknown result,-that of reproducing vocal sounds at a distance from the speaker, although words had not been transmitted. Upon the question of the patentability of his discovery, and his imperfect art, Mr. Chief Justice Waite said:
"But it ltl insisted that the claim cannot be sustained, because, when the patent was issued, Bell had not in fact completed his discovery. While it is conceded that he was acting on the right prlnciple, and had adopted the true theory, it is claimed that the discovery lacked that practical development which W9B necessary to make it patentable. In the language of counsel, 'there was still work to be done, and work calling for the exercise of the utmost ingenuity, and call1ng for the very highest degree of practical invention.' It is quite true that when Bell applied for his patent he had never actually transmitted telegraphically spoken words so that they could be distinctly .heard and understood at the receiving end of his line, but in his specification he did descrlbe accurately, and with admirable clearness, his process (that is to BaY, the exact electrical condition that must be created to accomplish his purpose); and he also descrlbed, with sufficient precision to enable one of ordinary skill in such matterS to make it, a form of apparatus which, if used in the way pointed out, would produce the required effect,-receive the words, and carry them to and deliver them at the appointed place. The particular instrument which he had, and which he used in his experiments, did not, under the circumstances in which it was tried, reproduce the words spoken so that they could be clearly understood; but the proof is abundant, and of the most convincing character, that other instruments, carefully constrncted, and made ex· actly in accordance with the specification, without any additions whatever, have operated, and wlll operate, successfully. A good mechanic of proper sklll in matters of the kind can take the patent, and, by following the specification strictly, can, wIthout more, construct an apparatus Which, when used in the way pointed out, will do all that it is claimed the method or process will do. Some witnesses have testified that they were unable to do it. This shows that they. with the particular apparatus they had and the skIll they employed
AMERICAN SULPHITE PULP CO. V. HOWLAlSD FALLS PULP CO.
In Itl;; use, were not successful;, not that others, wIth anotber apparatus, per· haps more mrefully constructed or more skillfully applIed, would necessarIly faU. As was saId In Loom 0<>. v. HIggins, 100 U. S. 580,586, 'when the ques· tion 18 whether a thing can be done or not, It is always easy to find persons ready to show how not to do it.' If one succeeds, that 18 enough, 00 matter how manyotbers fail. The opposite tesultl;; will show that in the one case the apPlU'atus used was properly made, carefully adjusted, with a knowledge of what was required, and skillfully used, and that In the others it was oot. The law does not require that a discoverer or Inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfect1011. It is enough if he describes hIs method with sufficIent clearness and preclsl.()o to enable those skilled io the matter to understand what the process is, and if he points out some practicable way of putting it Into operation. ThJs Bell did."
And this Russell did in respect to his conception and process. And, as to the Bell patent, it may be, further observed in this connection that Bell was in doubt whether the magneto or the variable resistance methods. were the better for conducting the force, but thought the magneto method was; and as to this the chief justice says (page 538, 126 U. S., page 784, 8 Sup. Ot.):
"Indeed, he saId, In express terms, he preferred it, but that does not exclude the use of the other, if It turns out to be the most desIrable way of usIng the process under any c:Ircumstances."
'And again he says (page 539,126 U. S., and page 785,8 Sup. Ot.):
"Surely iI. Patent for such a discovery is not to be confined to the mere means he improvised to prove the reality of bis conception."
Under the reasoning of this case, it would seem clear that Russell's patent should not be declared void because he was in doubt as to which of the compositions would prove the most satisfactory in a commercial sense,or because he had not practically and finally tested and chemically isolated all the matter or material containing required cohesive, adhesive, and acid-resisting qualities. . As has been said, the information from Oologne reached the patentee in August, 1889; and the fact that he remained silent as to his discovery until about the time of his application for a patent, in October, 1890, requires our attention. The record shows that the pat·· entee was in the employ of the Russell Paper Oompany, in which his father was treasurer and his uncle president, during the period covering the supposed acts of invention, as well as during the later period in which his application was pending in the patent office, and that cer· tain experiments were made by the paper company during that time, in which the patentee took part without disclosing the discoveries and experiments involved in his invention. If there were a controversy upon the evidence as to what the patentee had actually done in the line of the art, or if the conditions were such as to require him to speak, this evidence would have weight. But the evidence discloses no controversy in respect to the first proposition, and the only question fairly raised is whether his conception and discovery amount to invention,-whether he had carried it forward to a practical demonstration by developing the idea of means. As to the second proposition, his father and uncle were prominent officers in the company, and active and influential in the management of Us business. The
cOJU)lany of which they were officers was a member of· a syndicate (to, Which it was responsible) composed of several large companies, wh:ere t1;J.e purpose was to secure and control inven,ti'ohs useful in the sulphite process. , According. to the testimony of the patentee, he feared that he might lose control of his discovery by disclosing it, and was in doubt about the proper course to pursue, but finally decided action .of the patent to say nothing until his rights were secured by office. Silence under conditions requiring a man to disclose would raise suspicion, but here the evidence as to the experiments is undisputed and undoubted. There is no question betwl>en this patentee and another person claiming the invention. There is ·no question about the Wenzel discovery, and no question about the time at which knowledge of that came to young Russell. The only question is whether he had gone far enough to entitle him to protection at the time he acquired knowledge of what Wenzel was doing. It would seem that in remaining silent he was simply acting the part'of precaution, and whether wisely or not is probably immaterial, as we think there was nothing in his conduct, under the circumstaric.es, which in any way l!.ffects the credibility of his story. The inventor, having advanced the art in a certain line, as he believed, in order to secure his rights stated his claims, and described his invention and the oPerative means for putting it into practioe; and we now come to a consideration of the questions relating to the scope and validity of his patent, construing it with reference to his claims, description, and specification, as set forth in his application: of October 18, 1890, and the reissue patent No. 11,282, dated November 16, 1892. In the circuit court, as has been said, a result was reached limiting the claims to a coat or lining of hydraulic cement. In discussing the question as to the scope of the claims, that court said: .
"The whole substance of the patent Is In the first claim. This consists of only two elements,-the shell and the continuous lining or coat of cement. .Its language is so unequivocal that its construction needs no aid from secondary rules, and is not enlarged nor limited by the redundant,. and, in BOme particulars, somewhat obscure, language of the specification, whether of tb,e original patent or of the relseue, except in one particular."
And again, in referring to the word "cement" as it was said:
in the claim,
"But this word haa the ordinary commercial meaning of hydraul1c cement, and also a larger, and perhaps more accepted, sense. It cannot, in this patent, be given the latter without substanUally giving the patentee the whole art, and much more than he can claim to have actually invented or discovered. Therefore we are compelled to l1mlt the word which he has himself chosen to its ordinary commercial sense. An examination of the file wrapper leads to the same results, but we need not enlarge on this. 1.'he word 'cement' havIng various significations, its precise definition for this purpose must thus be determined. With that exception, we need only say that we are not to construe what does not need to be construed, and that the simple phra.seology of tWs claim can neither be added to nor taken from by what appears in the specification, by what occun-ed In conuectlon with the reissue, or by any alleged Implied disclaimer arising In relation thereto. We know of no mystery relating to ascertaining the legal meaning of claims In patents; and we apply to this case the fundamental rules by which Is read every Instrument whose laniUage Is clear in Itself."
It would thus seem that the court below construed the claims without reference to the description of the invention, and the method and, process of putting it into operative form, which the specification tained. In connection with this limited interpretation, we feel bound in brief or in argument to observe that counsel on neither side, in this court, maintain this position, but, oJ!. the contrary, expressly: renounce it as one not possible, and of which the claims are not susceptible. In our view, this question of construction should not be determined upon lines so technically atld closely drawn. We look upon this invention as one in which a description or specification is given in accordance with the requirements of section 4:888 of the Revised of the manner and process of "making, constructing, compounding and using" in order "to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected to make, construct, compound, and use the same," and where the claims and the specifications are to be read together, not for the purpose of enlarging the invention stated in the claims, but "for the purpose of better understanding the meaning of the claim" (Howe Mach. 00. v. National Needle Co., 134 U. S. 388, 394, 10 Sup. Ct 570), the limit and extent of the invention, and the object of thE: inventor, and the construction, method, and process, as understood by him (Vance v. Oampbell, 1 Fish. Pat. Cas. 483, Fed. Cas. No. 16,837; Wilson v.Ooon, 18 BIatchf. 532, 6 Fed. 611; Gottfried v. Brewing 00., 5 Ban. & A. 4,36, Fed. Cas. No. 5,633; Brass Co. v. Miller, 9 Blatchf. 77,97, Fed. Oas. No. 17,254; Seymour v. Osborne, 11 Wall. 516, 547; Rob. Pat. § 750; Curt. Pat. [4th Ed.] §§ 225, 227). In the case last cited (Seymour v.Osborne), Mr. Justice Clifford said:
"Where the· claim immediately follows the description of the invention, It may be construed In connection with tbe explanations contained In the specifications; and, where It contains words referring back to the specIfications, It cannot properly be construed In any other way."
Mr. Curtis, in his explanation of the purposes of the claims and specifications, and the relations which they sustain to each other, observed (section 227) that "the claim is not intended to be any description of the means by which the invention is to be performed, but is introduced for the security of the patentee," and that one object of the specification "is to make known the manner of constructing the machine, if the invention is of a machine." And Mr. Chief Justice Fuller, in Howe Mach. Co. v. National Needle Co., 134U. S. 394, 10 Sup. Ct. 572, says:
"Doubtless a claim is to be construed In connection with the explanation contained In the specification, and it may be so drawn as, In effect, to make the specification an essential part of it."
Now, let us see what Russell stated in his claims, and the means which he described in his specification to which he referred for reducing his invention to form and practice. The inventor, in his claims, which immediately follow his description of the invention, says: "I claim (1) the improved pulp digester herein described, having an outer shell, A" (thereby referring to his diagram and to his specification), "and a continuous lining or coat, B, of cement, as described" (agaiIi referriJig to his specification), "applied to the interior of the said shell
for the purpose set forth" (thus again referring to the specification). The inventor, in his second claim, which is substantially the same as the first, refers to his "continuous lining or coat, B, of cement, substantiallyas described." Now, what is the effect of this? Doubtless, It is to limit his claim to a pulp digester with a lining of cement It does not cover structures with linings of other material, but limits it· self to a cement-lined structure with an outer shell, described in the specification as a metal shell, and a lining described in the specification as of cement mixtures. In other words, he limits his patent to a cement-lined structure, and, by express and necessary reference to his specification and diagram, describes the material, the process, and the operative means for constructing the improved pulp digester as a whole; and, while his reference to the specification may not enlarge or extend the invention claimed, it may and must be examined in or· der to understand the manner of making and constructing the shell, and compounding the cement materials necessary to reduce his con· ception to use. This reference to, and a consideration of, the specification, definitively exclude the idea thatthe conception and the operative means are limited to hydraulic cement, or anyone particular cementitious ingredient. Answering one part of the requirements of section 4888, he "particularly points out and distinctly claims" his inven. tion as an improved digester, with an outer metal shell combined with an interior continuous cement lining; and then, further answering another part of the requirements of section 4888, he proceeds to "file in the patent office a written description of the same, and of the manner and process of making, constructing, compounding, and using It, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same." In this description which the statute requires, he says:
"My invention relates to improvements in the constructIon of the vessels, what ordInarIly called 'digesters,' In wWch wood pulp Is manufactured Is known as the 'sulphite process.' Its object is to Improve the construction of these digesters, so as to prevent theIr injury by the solution employed. · · · The shell of the dIgester Is marked A, and wIthin It are S'hown linIngs, Band C, the construction whereof I will now proceed to describe: A represents the outer shell of the digester. It is ordInarIly constructed of metal,-such as Iron, steel, or brass,--which Is liable to be injuriously affected by the acid solution employed. Upon the interIor of the shell of the dIgester, I form a contInuous llning or coat, B, of acId-resisting material, applied in a plastic condItion. ThIs lining or coat Is of the nature of a cement, and may be composed of any material or mIxture of materials whIch is acId-resisting, and capable of being made plastic and adhesIve to the shell of the digester, and so compact as to prevent the acId solution from reacWng the iron shell in consequence of the high steam pressure reqUired In practice. Aconvenient material for the purpose is commercial cement, pre,ferably Portland, made plastic with water, and applied with any suItable Implement upon the interior of the digester shell, so as to form a continuous covering therefor. Other cement·like materials or mixtures having simIlar properties or characteristics may be used, such as the ordinary cement mixtures, sand and Portland cement, sand and tar, and the llke."
He then proceeds to describe the necessary thickness and compactness of the lining under different conditions. Thus, it would seem to be clear that the inventor intended to cover acid-resisting cementi-
tious mixtures, which could be applied in plastic condition, which would adhere to the outer shell, become a part of it, and so compactly form and harden under the pressure and process of application which he described as to prevent the acid from reaching the iron; and while describing commercial cement as a convenient material, and while he expressed a preference for Portland cement made plastic with water, as to other cementitious mixtures he left the acid-resisting and adhesive qualities to be ascertained by the practical chemist, or other "person skilled in the art or science to which it" appertained. This is manifestly the purpose of the inventor, and the argument strenuously made against it is that it is so broad a claim of the art, and so indefinite and vague, as to be inoperative and void; and this presents, perhaps, the most serious question in the case. We will look at this question first in connection with the principle enunciated and elaborated in the Telephone Oases, 126 U. S. 1, 8 Sup. Ct. 778. Let it be observed at the outset that this invention is not for a structure alone, but for a structural improvement which involves a process of making the improved structure, and the process is the idea of means; and the idea of means, in turn, involves what might perhaps be called a subinvention, or subdiscovery, whereby a newly-discovered force in matter is adapted to a useful purpose, in becoming the means of making the broad, inventive idea of a homogeneous, adhesive structural lining operative and useful, or, in other words, through which cementitious materials, which would not stand cold bisulphite conditions, are adapted to the required purpose of resisting hot bisulphite conditions under steam pressure. But, however this may be, the idea of a continuous structural lining, and the process for making it, are to be considered together. In the case to which we last referred, the chief justice says (page 536, 126 U. S., and page 783, 8 Sup. Ct.):
"The law does not require that a discoverer or inventor, in order to get a patent for a process, must have succeeded in bringing his art to the highest degree of perfection. It is enough if he describes his method with sufficient clearness and precision to enable those skllled in the matter to understand what the process III, and it he points out some praticable way of putting it into operation."
This we think Russell did. He said, in effect:
"I have conceived the idea that the old linings of brick and tile with cemented and leaded joints, which do not stand under pressure and acid conditions, may be displaced, and we may have a homogeneous lining formed of the materials of which such bodies are made. We will let it harden as one piece, adhering to the outer shell as a continuous lining; and, if the brick and tile will stand the pressure and acid conditions, this will. 1 have experimented in the field of cementltious material, and I have found several mixtures that will answer the purpose which 1 have described, and 1 have found, by subjecting them to the sulphite liquor conditions, that they will answer the purpose. 1 have said that the materials must be capable of being made plastic and adhesive to the shell, and must be acid-resisting; and this means acid-resisting under digester conditions, which means Wghly-heated bisulphite conditions. I have said that other cement-like materials or mIxtures, having simJJar properties or characteristics, may be used, such as the ordinary cement mixtures, sand and Portland cement, sand and tar, .and the like; and this explanation of my discovery, and this explanation of the conditions which are necessary to make test, wlll enable any practical chemist or skllled person to discover the requ1red qualltlos."
Now, considering this feature of the case upon the evidence, outside of 'the description of discoveries and of the necessary qualities in mat· contained in his specification, Russell says repeatedly that hiS' experiments demonstrated that mixtures of cement, generally speaking, did sta,nd the test; and it may be observed. that the expert evidence in the case abundantly shows that there exists in cementitious mixtures generally,. when formed of acid·resisting materials, a common hot hisulphite resistant quality. It is not necessary to comment at length upon the testimony of the chemists and technologists, and it seems quite refer to the statement of Dr. Carmichael as to the chemical action in the sulphite process. He says:
"The remarkable tact appears that, while blsulphIte llqul>rs attack hydraulic cement quite freely at ordinary temperatures, they have no action whatever at the high temperature at which the sulphite process Is conducted." Again: "It Is a curious fact, which the employment of the Russell llning has brought out, that, even if original defect$ exist in the Russell llning, they become filled in use." Again: "All cement llnings are more or less porous when first applied, but in use soon fill up with sulphate and sulphite of lime. They then become practically impervious to liquor, and aifl>rd complete prl>tection to the shell beneath. Such liquor 8Jll may work through a crack is quickly rendered harmless through reaction with the Ume salts composing the cement."
As said by Mr. Justice Strong in Smith v. Vulcanite Co., 93 U. S. 486, 495, "to find a material, with a mode of using it, · · · had been an object long and earnestly sought." Russell' discovered that cement materials generally, which possess the quality of being made plastic, wlien applied in that condition, as a thick, one-piece lining to an iron shell to be used in the process of disintegrating wood substances, generally speaking, had the quality of adhering to the shell, of resisting the hot acid, and of performing the function of protecting the iron from the highly·heated conditions to which it would otherwise be subjected, and that the expansive and resilient qualities of such materials were equal to the expansion and contraction of the shell with the temperature of the iron so reduced. The evidence dem onstrates-and quite likely Russell understood-that some cement mixtures, commercially speaking, were more desirable than others; and the word "cement," used in the claims, must be understood, when considered in connection with the statutory description, as referring generally to cementitious mixtures having the qualities which he described. As to those which he expressly like commercial .cement, preferably Portland, made plastic with water, and as to the ordinary cement mixtures,-sand and Portland cement, and sand 'and tar,-there can, of course,be no doubt in the mind of any person possessing ordinary skill in the art as to what he intended j and as to his general expression, "any material or mixture of materials which is acid-resisting, and capable of being made plastic and adhesive to the shell of the digester, and so compact as to prevent the acid solution from reaching the iron," he described the conditions which, in the hands of persons skilled in the art, would develop, whether in a given mixture the 'required property and qualities do or do not exist. He discovered that in such cementitious materials as could be made plastic, and were adhesive, cohesive, and self-hardening, the required properties, in a degree, existed as a quality common to them all. This