43 F. 140 -

140

·DDERAL REPOR'J'ER,

vol. 43.

it is claimed, in the down stroke, and gives effective clearance upon the stroke,so a uniform anc;l unchanging speed is secured. If the location of this pin on which the lower slides oscillate below the top of the slide, instead of being above the top, makes any difference in the result, then perhaps the defendant's improvements involve a patentable invention, but if the location of the pin above or below the top is a change in form, and not in substance, and the diflerence in result, if there is any, is one of degree, then McEvilla has no patentable invention. A patent was granted to 1. B..Wayne (No. 156,193) on October 20, 1874, in which the only substantial diffel'ence of construction in the mechanism employed is the location of the pins on which the lower slides oscillate just above the top of the slide; and the complainant's expert Redfield, in describing the McEvilla invention, admits that the location of the pin does not change the results obtained, and although he says the feature in the McEvilla patent of having the pivot of the slide at ull times above the pivot in the lower end of the sash-frame is peculiar, and nofgeneral in saw-mills, he thinks thechange in location would make fiOmaterial difference in the operation of the machine, except a difference' ;of quality, rather than tof kind. The patents of Wayne and McEvilla ar,e substantially identical in the results obtained.· In both the pins which oscillate the lower slides are above the pins on the lower guide'S of the gate when the latter iaat the upper limit of its stroke, but the pins oq\'fhich the slides oscillate in the McEvilla patent below the tC)P ofthe Slidell., which location ofthepina is not in the Wayne patent. There is no patentable invention in thill. . The Ehlers patent, No. 78,443, granted June 2,1868, reissued as No. 6,185,Decemher 22, 1874; locates the pins on which the slides oscillate below the top of the slide, so that McEvilla was not the first e\1en to do that. Without considering, therefore, the case further, I am of opinion that the. defendant is entitled to a. decree dismiflsing the bill, and it is so ordered.
t ApPARATos MA,NUF'GCO.

v.

YARYAN MANUF'G

Co. et

aZ"

(Circuit Court, E. D. Pennsyl.vania. July 8, 1890.)
hPATENTS FOR INVENTIONS-EvAPORTING' ApPARATus--NOVELTY.

.

S: " SAME':"-EvIDENCE-AlIlENDMEN'f 011' ApPLICATION TO AVOID PRIOR.PATENT-ADMISSION.' . . . .
Yaryan,011e ot tbe defendants, and president of defendant company, wbo was conversant with the art, had applied for a patent for evaporating apparatus, which , was rejected on the first patent in suit. He amended his application to avoid this , patent. Yaryan'l' admissioJ;ls,in tqe patent-office should be regarded aa · the expressions of a competent expert, and as llvldence in support of the validity of the patent in wit. ' .
1

The combination in an evaporating apparatus of parallel evaporating tubes, discharging both liquid and v!lpors directly into a common separatlDg ch!lmber, with a prOVision for an equal and regulated supply of the liquid to be evaporated to each of the tubes, heW.to be a patentable novelty.

Reported by ;Mark

Collet, Esq., of the l;'hile.delphia bar.

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141

S.

Sum-EXTENT OF dLAIM.

The original application for the first Pli'tent in suit included the device afterwards patented in the second; in erasing a description of this, there was also erased a description of a modification of the first, in which a "dome" placed above theevaporating tubes was dispensed with. The claims in issue do not include the dome as an element of the combination. Held: the clailJls should be constrned to cover the combination set out therein, and the "dome" should not be read into the claims. zontal tubes, is not confined to vertical tubes, though the drawings show them only in this position, and their ends are designated as "upper" and "lower," where the invention clearly includes horizontal tubes, especially whel'e, in other claims, the patentee intends to confine himself to vertical tubes, and he so expresses himself in plain language.

4. SAME-ExTENT OF A claim containing as elements certain tubes, without specifying vertical or hori-

5. SAME-LETTER IN REPLY TO REJEOTION-NoT LIMIT OTHER CLAIMS. A letter from applicant for patent replying to a rejection by the patent-omce"

distinguishing a claim fr,omthe references cited against itpy calling attention to the fact tbat the surfaces made, an element therein were vertical, not horizontal as in the alleged anticipation, affects no claim but the one rejected. of the paoout cannot control the import of claims the, terms of which are not ambiguous.
TESTIMONY NOT NECESSARY., ,

6. SAME-'-LETTERS TO OIl'FICEBEFORE 'GRANT OF PATENT-CLAIMS NOT AMBIGUOUS. A correspondence between the inventor and the patent-omee prior to the grant

7.

8.

Where expert testimony does not seem 'necessary t'g the court, it can proceed to determine the question of infringement without its aid. ' Claims of letters patent No. 341.669' sued upon, heUl to be valid claims and fringed by defendant.
SAME-AIlANDONMENT-ERASURI<J FROM . PATENT No.

,'"

341,669.

'

,

. , '.'

'

9.

The specification of II 'patent originally embraced matter whiCl1 was erased before: issuc, and was after the issue presented in another application and' patent issued' thereon. l1eld, not an abandonment of the parts erased from the first specification. : ' . ' ' , '

'10. SAME-NoVELTY.

Claims which cover merely placing several apparatus side by side, and connept, ing them in substantially the same manner as had previously been done with analogous apparatus, a pump to cause a flow of liquid from one to another being the only new element, do not, even though the individual apparatus had a special fit , ness for such connection, cover patentable novelty. ' 11. SAME-LETTERS PATElnNo. 378,843. Tbe novel portion of claims of letters patent No. 878,843 sued upon, is fully claimed in prior patent to same inventor, No. 341,669, also sued upon. The question'of infringement and novelty of other claims in patent No. 318,8t31\ot beillg in issue, not passed upon.
12. SAME-NOVELTY.

The claims sued upon in letters patent No. 878,843, ciaim merely dilplica.tiensof the apparatus claimed in letters patent No. 341,669, and the addition of a pump cannot make the subject-matter of said claims, a patentable inventioll in view'of said letters patent. "

. ,

In Equity.' Bill for injunction and account against the Yaryan Manufacturing Company, Homer T. Yaryan, and :J!'rederick B. Dodge., The apparatus described in complainant's patent 341,669, consisted, essentially of a. chamber, E, in which were a number of parallel tubes,b, b, b, called ,a tary," along the interiors of which the liquid to be evaporated was made to pass in thin films. The exterior of the tubes were exposed to the action of hot steam. At the top of the tubes was a chamber, G, which received the liquid, and had devices distributing it over the of the tubes. At the bottom of the tubes was a well or separating chamber, P,that received both thevapofs' and theunevaporated liquid :from the ends of the tubes, and 'was kept, as we.re the' tubes, in a comparative

,

,vol. 43., : I, t'l.,

:' r .

... Outside tlieaPIlaratus was a condenser 'which was connected Y,witll J>, to draw off the vapor, and to maintain,a*acuum in the chamber and evaporating tubes, and in the shown into' which the tubes communicated at the. toptwhich also was connected with the condellser. The claims be infringed were:___ .' .' '. ..' " the cOmbinationof'a heating chambericontaining the b'dttery of tubp8,b,' chamber, G, communicating with the interiors of the tUbes, 'ssdescribed, chamber, P, and"Mnduit, Y, connecting thi(chamber or well, 'P,wlth a SUitable vacuum-inducing apparatus, substantially as de,sl,lflbed. (Q) Ip an apparatus for evaporating liqUids, the coml1inatioD,of,a battery of tubes contained in a hellting chamber, means for deliveringa liquid upon the interior surfaces of the near their upper ends, well, P, forre'ceiVingthl'l vapors and unevaporated liquid fr()m' the lower ends means, for:,maintaining aJ;l1ore or less perfect vacuum in the of the weU, P"sub,stantilllly as!lp61·ilil'd.(6) In an evaporating apparatus constructpd, and operating as set:forth, the combination of a battery of tubes, b, contained in a suitable heating chamber, well,P, with which the lower ends which the unevaporated liquid from the of the saDie '8 pump or ,equivalent means for l'eturiling liquid from f;he well, P, into the interior surfacps of the tub!'s, substantially as, specified." "(11) In liD .evaporating: apparatus, constructed substantially as described, the combination, with the chamber, G, and well, P,ufa pump, M, or other suitable ID.ElltDS foJ;' .rllturniqB liquid from tl}e well, P, the chamber, G, 8,ubstantillUj . . ,In dliilh '1; 'the patentee has tlsedtli'e words"approximately vertical" in reference to the "evaporating surfaces;" and in the second claim the word reference to "tubes " in certaint;lom binations. , Edward.:,N"Dicke:r8on, Ra'tl.daU Morgan,' George Harding, for complainant." . " · , '. Elmer P. Howe and ChQ:uncey Smith, for defendants.
i .',. ' .

1

BU-rL'ER,'Ji. The patents, No, 341,669, dated May 11, 1886, and No. 378,843, dated, Febtuary 28, 1888,g,:'IlJltedto S., M.Lillie,-the first for "improved, apparatus for evaporating sugar the for for evaporatingliqu'ids." Thed'efense assails the validity of each patent; and also denies infringement. The specifications of No. 341,669 carefully describe the apparatus covered by that patent,-too, ehiborately, .This patent, and the' alleged infringement ' .I , tn-e a;pparatu8 isdp.s,igned to carry out is described intbe Slpecitl¢a#ops as tollows: .i .. · " . . . Pl'oc,essconsiBts·, in cRlIsing the 'sugar solution' for evaporation; to llo.w in thin .ll.lms over surfaces hpated by stelll1l or otherwise. and in maintl\,iniflg orspa.Ce. which thesl,lrfaces are exposed, RIIlI in which .t1;ie .1' mOre or,lesl:\ ,perfect vacuum, to facilitate the evapo'ratipn 'of' 'the SOlution, flOWing' over the heated surfaces." , .
"':' . '. ' ; , ' : '. ',._'.' , I i i , - -' , , , I'"

_ \

: 'i'

i

'

, The

1884.-

this patentwll,', file<tonf,he25th day of April, of infringement is fifth, sixth,

SUGAR APPARATuS JbNUF'Gcti."

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Jii:D.d'eleventh claims.

history Of the, art, to' the patent beto Lillie'sinvention the most l1-dvanced appartiius for was'onepatlfnted byMr. Yaryan in lOs well d,escribed in the accompanying specjfications, from which the following is copied: '

"In ordinary operations of vacuum distillation II · vacuum pan ' is em'ployed,' consisting; substantiatly, of's large copper or iron vessel for holdinK 'the liquid to be evaporated, and provided,withsteam coils at the botlomof said 'vessel tor heating the liquid. Among'the ditllculties attending the process as ordinarily followed are, that by reason of the necessity ofdealing witih onlythil immediate contents of the vessel, at· dne operation the process is, ndt and labor are lost in the frequent"replenishing requirEid. , MoreolVer, 'O'Wlng to the length of time d urItigwhich the liqilidis neeessarily color is injdtedand the value of the Ultiexposed to beat; in many mate product Hnpait'ed, while in the' 'case of saccharine soh1tions this pro'longed eXpOlIlJre to heat tends to convertcrystaUizable intouhCryBtaIlizable sugal'. Further. in order to deal with'& 'sufficient quantity for commercial praeticabiUtyat each replenishing, a vessel of large dimensions: is required. large original dutlay;bM.ides increased:cost in maintaining a thereby of heat by radiation from so large ftll, But,vacu um land: a face. , {nsuch pans a 'large forler spaceinust be anowed for'frothing;t(fpre'vent losS:in,boiliog over, and the entire 6peration thus necessitates constant and to prevent turbulent boiling," .' : '

. of'tST8, is wprthy of attEmtil)J). ,in this conneet.ion, and has not been overlooked. ltis,not necessaIj",'lhow'ever, t6'enlarge otithis branch' of the caSe. Thea-tate of the art; the deficiencies ofiotmer apparatus; 'arid the object of inventors in this lille, are raadily seen: :and understood by an examination of the patents .just referred to. Mr. intended for am6re :effectual' ill-earis Of applying the process of vacuum distillation. The plio,cess itself Was old. .The apparatus was' not successful when' 'applied to 'engar distillation: The reasons are' stated by 'Ml'.· Yaryanin his ,appli. cations· for' othetpatents in IS86i In one ofthem be says :
"In' me,.):une 10,1884, No. 300,185. theadvantagtls .of continuous'an:drapid6T8poratiOldnvaetLO, are fully and correctl,stated. : ng ,the thlll:ein'des¢ribe<'l. whew large, quantiti!ls o( liqpiqs ,are to be:9perated upon, itl)ecomes, necessary to multiply the n,umber ()f cpils in anioutitof heating surface.' To a 'this is practicable,beyond Which. alld.especiallY When used for ,there objections; amo'ng' Which are cost, space occUpied; and: the ,latge number of joints exposed to theatmosphel'etobe kept tight., 'In the ,apparatus,' iuid by the methods constituting the subject of my in.ventiMI, these :ditlicultie$ are largely overCOme; ,and to this. end I em ploy a cyli ndel' cOIltllintng a large number of tu1;les, eaQh tub,e being tpe eqUivalent of a coil. ,,,rlanged ,as t;Oreceive an,eql!al feed ,and to iq,to a cO,mmon ingcbamber. l ' ' . ' ,. , .",' . ,,,.,

: ',In the

Ii'

of

says::

,"

described in ,said original patent, JhdlJ to be evapQrl1ted is fec;l ,to a coiled pipe connected a iuid surrounded by steam or other "heating medium. In its 'coiltae't\h.'ough 'SlUdpi'pe theftuid iii vapor.itB ahd t!l6'-vap!Jr 'an'dftuid&l'e discharged into Ii 'separating' eDamber: 'from wheIiC'e)the'(tapor

FEDERAL IUll'QRTER,

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over to 8 condenser or to tbeonter air. while the evaporated substllnce is withdrawn from the separating chamber by,a tail pipe or pump, making the evaporating process continuous. In the specification of said letters patent 1 point out that as 'the equivalent of the arrangement shown, the coil of pipe conducting the Iiqnid to 'be evaporated may be inclosed in a larger pipe instead of a drum, and the steam or other heating medium introduced in the'spaQebetwElen t,hetwo:pipes. In ,practice I find this arrangement to be preferable, as the simpler and cheaper,form, and my improvement relates more:particularly to a lIeyice employing, coils so arranged. When it is desired as to treat fluids in large quantities, to increase tile catJacity qC1J;ly l.fllld that it is notpraeticable to doso,,'by iIwreasing to any considerable extent either the: of the pipe, constituting my evaporating JWiJs. ,for the followingreasql)s:, First,; The coils being usually of copper, thickness an!l weight of metal requisite as the diameter of the ,the i/!increased, renders! tA6 cost, as as the bulk and weight of the enlargeli,ooil.entirely disproportionate to',th,e increaSe of capacity. Second. Un,1e81i1' djametar or area of the pipe ,is restricted, a suttiei ent current of vapor wUJ nQt ,be formed to, thrQw the liqu.d : evaporated into commotion, so to coPlltantly bathe the whole inner surface of coil. which is absolutely the surface and to pre.vent oIQggingoftMAOiI.; In coils compQ8edot pipe of uniform diamet!!r,aunifprm and heat cannot be maintained through'oui toe'cojI,owing constantly increasing volume. pressure, and friction of the vapor as it .,towardsthe separating chamber. Fourth. When t.he coil is of too great length, the friction of the contained fluid and vapor iambuntstd several inches of mercury, or, in other words, a vacuum gauge connected with the outlet will mark some inches higher than one connected the inlet, which results in unduly heating the substance contained in the'infel'iol': vacuum, and in conllequent injury to the product." apparatus of 1884, and of all To overcome the defects of others then in use; wa,s,as we have seen, the object of his later inventions. Mr. ,Lillie'seflorf.,shad also been directed to this end, and, 8S before stated.he applied patent under consideration, April 2.5, 1884, A comparison of the specifications and claims of Mr. Yaryan's applicationofl886 (for No..355,259) with Lillie's shows that the invention described in. each (as respects the, matters here involved) is substantially"the same. Differences in form and construction of some parts of 'theappatatus, described (in the two applications, appear; but 'they'seenftb['bei'mmaterial llsre&,pects the subject of invention now unconsideration. In principle, operation, and effect the apparatus are, '1 theSlilme, to the extent, inv()lved.' Mr. Yaryan, on being amended and obtained letters. The appa,referred, 'ratus, however,'subsequently underwent other changes, which appear in hill'snbseqileht,putentof 1888. 'This reference to the state ofthe art and by the -', improv'ement show patentabl,e to devQte much space to this quesnovelty? It would not tion. Starting witbtheusual ptesnmption in favor of the patent, conthestitteM' thelirt', andi!th'eadmissions Of Mr. Yaryan', shown app,ljc,Mipn . t()" covedng l;lirriilar inthe ?OncItlsloO: that lhl,S: quest:LOn be answered a.;ffirmaSeems unavoidtli:lhk- I; do not attribute to these admissions the

l!

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force of an estoppel, but treat them as the expressions of a competent expert. Without them, indeed, it would seem reasonably clear that Lillie was the fj.rst to perfect an apparatus adapted to the successful application of this process of vacuum evaporation to sugar liquidfl. How he accomplished it........the peculiarities of his apparatus-fully appears by his specifications. The substitution of comparatively short parallel tubes for the old coils of pipe, the addition of a separating chamber into which they discharge directly, both the liquid and vapor, with provision for an equal, regulated supply to each of the tubes, constitute the most impoi'tan( new features. These changes from the old devices are of great value; and with others of less consequence, combined as he describes; rconstitl.1te substantially a new apparatus. The improvement over all former devices, intended for the same use, is such an advance iii the art as seems"to put the question of invention beyond doubt. Second.-Has the respondent infringed? As we have seen, the claims involved are the fourth, fifth, sixth, and eleventh. They are for combinations of various elements of the apparatus, and are readily understood. Were they intended to express what their temls(considered in eonnEloti CUl with the speCifications alone) import; or should they be construed to mean something else? On this question much time and labor were expended. The respondent has subjected the claims to careful analysis, in the light not only of the specification, but also of attending circumstances, in an effort to show that they include by implication the "dome, D," and also a vertical arrangement of t.he tubes. As respects the first-the implication of the dome-I cannot accept the respondent's view. The point is, however, not free from embarrassment. The difficulty arises, apparently, from carelessness of the patentee in erasing from the specifications (as originally filed) what relates to the "multiple effect" combination. In doing this he incluJed in the erasure a description of modifications of the "single effect" apparatus, dispensing with the dome. This description has no special relation to the combination referred to; it relates particularly to a modification of the previously-described "single effect" apparatus. The claims under considerationHwere drawn in conformity with it-dispensing with the dome, before the erasure was made, and were subsequently allowed without change. The erasure seems, therefore, to be the result of inadvertence. The embarrassment arises from the insertion of the clause and its erasure combined. If the olause had been omitted originally, I think it would be reasonably clear that the claims should be construed to Cover the combinations stated, without the dome, as their terms import. -Under the circumstances, I still think they should be so construed. Both the-office and the patentee must,' I think, have understood them to cover the modification stated. They were drawn; as before observed, prior to the erasure, when it is clear such modification was intended, and were allowed, subsequently, without amendment. I attach no importance to the fact that the patentee included the dome when describing the operations of his device. From tbis description the operation without the dome is readily understood; and it would have v.43F.no.2-1O

· :to desCribe the. dperation with to the !vanotis ,ttibdliftC8it'ions contemplated. Besides', this descriptiOlll, was also written .before, the erasure, when, it is clellr.:the modificatioD:w8scontemplated. seriously doubt that the claims were and intended "to cover only! whatiheyexpress-:-rramodified com.:bination, dispensing ,w,ith the ' , i :Aueape<tta tbe·secoqd'ithe.implicationof should besaip.: 'fTh/llUbe claims wei'eoriginally ihtended to. cover the combi· natiotlsJwith tubes differently arranged: (varying from vertical)! cannot .doubt,: ,It In,listbe,supposed that Lillie intendedto.'cmier his entire in· vention. lihe confined himself· to vertical tubes ,he, did not coverit; fOl!the<'i9ventioll embmces tubes in any other praeticable position, as :clear1y,:asit; :doesthose vertically ' ,There .is. nothing more to distinguish the latter from what, was old \ than the< tbrmer.. If tubes in ;·horizontal position, or varying ata11 from vertioal; had been old, a. .(lhangeto,vertical wol1ld . not, have ,been; patentable. .. The specifications ·show ,that Lilliun !understood sc6pe,of :his :iaventioll; and. the claims ,show ·his inteption tooover. the whole:.of, it_TheLsPl?Cifications refer to other vertical tubes" ap,d; fuel·claims rare. in .terms, not only broad enough, but mosta.ppropriate:to include such othertubes.; Where he intemds,toconfine himself too.. verti:tlillarrangement he .so iii· plain language. as appears by· ,tither ,elatins. .Where" in.. tends, to,:ooqfirie ,himself. to /l, from 'Vertical, he says; so, .as in the first claim. While he attaches; most importancej as hestatM,:to :for reasons, :given ·in the .specifications" he attaebesJm-portancealstdo, any otherwhioh js, practicable.. His 'statement of:· prefel'ooce:for ·the;forwttfl is. no.'tan exelusioll :oLthe latter, ;but rather an.: implied reiteration'; of his claim ito ,it.. The :responuent's inference, from:what:hetlays on, thia.subject,(would seem'to limit him to· Btridly vertical, babes. .If varied even, slightly:. fromihis ,position the tubes -,might, nearly as well: be,horizontal; {orin' such case the equal distribu· tiontn;theirBurflloos,fromwhich.theespecial benefit of the vertical po'sition ariSel!, could not ibemaintained.Therespondent further points, in this;,connectiori,to :the words "uppel' arid :lower ends" ofthe tubes, claims. Ido not think importance should be attached to found this lamguage·.. i; appropriate if the tubes vary .ever 80 little from horizoliltal ij and :itlig not. entirelr inappropriate, I think, when applied to the receiving etidBof tubes. through which a stream flows. We associate th.e: idea oLupper and lower with such streams, and:I>thipkthe sourcefltom which they flow may be termed the upper end, without Bctual misnseoflanguage, even though the coun;leis level and the ,flow: fOrced., [I So. theexprE!ssion may. be, :understood in· the claims.i:.Slightly IUlore .important is the fact that some of these claims call for the !' battery .of; tubes, b;'l!and, that the specifications refer to this batteryi8Soneof: vertical, tubes. ,The drawings exhibittubes in this pO'sitiononlyi. Thepul'poseofthedmwings is to Jillus1Jrate the parts and nothing ';mote. .The: tubes ,and their reolationsi.OOlli as well be ,illustrated, .in onElia! the positions: specified
i. l- ...

I

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Uher;' It would have been waste of labor, tiS well as unusu1l1, to draw them in the various positions contemplated. Placed vertically in the battery shown, the specifications properly describe this battery as one of' vertic1l1 tubes; but it does not follow that the other arrangements, described in the specificatiol1s are excluded, and that the claims are to be lirnitedaccordingly. ' . The. corre&pondence between Lillie and the office, is also invoked, as evidence that the claims were intended to embrace vertical tubes only; and also as a reason why Lillie should be so confined in a court of equity, regardless probably of intention. This correspondence is as follows:
·. . . co April, 25. 1884. 129,291. "Olaims 1. 2 are met by patent of Percy. 52.197. Jan. 23, 1866. See also patent 34,651, Mar. 11, 1862. And Matthiessen. 147,149, Feb. 3, '74, aha a'rerejected. B. S. HEDRICK, Ex." .. LoCUST STREET, PWLAPELPJ:!:IA, PA., December 14,1885. "To the,llonol'able Commissioners of Patents: In reference to my application 129,291, filed Apr. 25, 1884. for improvements in evaporating appa..: ratus, and your letter of the 7th Inst., rejecting the first and second .claim of said a.pplicatlon.· The first claim I berebyabandon as met by the references cited. The second claim I Rsta re-examination for on the ground that in 110 case, in J#e.rences, are the Elvaporatingsurfaces vertical, or appro'l(imately so. In Matthitlssen's arrangement (patent No. 147,149,2, 3, '74) the evap" orating trays, B, are nearly horizontal., In Percy's (52,197, 1, 23, '66) the evaporatingcoi1s are nearly horizontal, and in Southmayd's (No. 34,651,'4, 11, '62) the Wire nelting of the plunger is not a continnous vertical surface at all, nor is it an evaporating surface or :wall in th!'sense of one to one side of which heat Is applied for thpevaporating of liquids In contact with the other side; the plunger and nettings simply act as an agitator and not asa conveyor of beat for purposes, as stated on p. 2 of the specification 9fmy The object JD evaporating surfaces verticalis that it permltl! t'va'poration being-carried on on all of the surface inclosing (or exposed) in the evaporating spaces; thus in the tubes of my arrangem'ent are utiliZfd the entire surfaces of interiors of the tubell in eYaporatillg th!'lr films of liquid, while in the case of Matthiesspn's tra,"s, for example, only the upper surfaces of the hollow,bottoms, a, of the trays, .B, are evaporating sllr· faces. Iftbe trays, B, were vertical. then the (j'luid could be made to Uow down botb surfaces of the hollow bottom, C. and the arrangement would meet my claim.' "Yolll's respectfully. S. MORRIS LI:LLm."

to

Mr. Lillie's letter is assumed to be an admission that the claims are for verticaltubes. This point was urged with impressive force; I am not satisfied, however, after careful examination of the letter and the circumstances under which it was written, that this assumption is able. The only claim under consideration was the second-first in the patent, This is for the combination therein stated, with vertical BUr· faces; To apply the admission to other .claims , for different elements and combinations, is, I think, inadmissible. That he did not intend it 10 be so applied, aud thattheqffice so understood, seems maniJest, from the fact that he did not amend,·nnd that the'ofificegranted the claims as drawni; . Indee4 t the office, never objected. to them. If Lillie contem·

1:48

J'EDERALRlU'ORTER,

vol. 43..

platedauch an ,admission, we WQuid expect him to atnend, and if he did not, and the office so letter, we wouldexptlct t,o reject his application. Yet he did not amend, and the offi,cef:l,11owed the claims. Granting,however, that the assumption is justifiable,what is the result? We have seen that notwithstanding the assumed admission, the claims were allowed as drawn, covering, (as we have found,) horizontal tubes, accordingly. This act of the office is, not only and the patent consistent with the belief that the claims were intended to be limited to vertical tubes, but is conclusive,I think, that they were not. If the correspondence evinces an intention, at the tim,e' of its date, to restrict the claims, the sUbsequent act of the office shows that it was abandoned. This was the final act in the transaction, and is entitled to cont,rolling weight, The patent was intended to express and. the patentee's rights·· ' If the claims granted are inconsistent with former of the office, and admissions of the patentee, the logical inference is that further. examination led to a change of views. The 'caSe is not analogous tooIle,ill which the of a clain'lare ambigu()us, and susceptible of diff'er.en,t. constructions, and the acts and declarations of. the patentee are appealed to. Here the terms are their import cannot be setaside or controlled by the preYious correspondence-even if it be interpreted as the reE!pondent desires. In Vulcaniw CO. V;,J Davis, 102 U. S. 222, the court said: , "We do not mean to be understood as asserting thatany cqrrespondence between the applicant fora patent and the commissh:me., of patents can be allowed to enlarge, diminish, or vl\ry .the language of a patent afterwards issued. Undoubtedly a patent, any oiher written instrument, is to be interpreted by its own terms." The doc'trineof estoppel, which is also invoked, is inapplicable to the facts.. Yary"hnor the respondent was misled, If aware of the correspondence, the subsequent grant of the clilims would guard them against misunderstanding, There is no reason, therefore, why equity should not construe the claims as their terms import. With this construction, are the claims infringed? It is urged, as that the court cannot pass on this question, without pert testimony. I do not so nnderstand. Expert testimony is often necessary, in disposing of such questions; anq there tl,le court will not proceed without it. Here, however, it does not seem necessary. Mr. Yaryan, as we have seen, amended to escape the objections fice-founded .partly on Lillie's patent, From time to time he .made other changes, until the apparatus became what is shown in the alleged infringing devices. The changes, however, seem to be formal and unimportant, so far as respects the claims involved. Looking at Lillie's. the variety in form and comspecifications and claims, and bination, eontemplated, it is, I think,reasonably clear that the de.vices used by the respondent infringe the claims While there are mechanical differences, the apparatus of the complainant and respondent, so far as respects these claims, seem to be the same in manner of combination, the elements embraced, mode of operation and

SUGAR

MANUF'G CO. tI. YARYAN MANUF'G

co.

149

feet. It. would be a waste of time to enter upon an analysis of the apparatus and point out the infringement more particularly. I think the substance of each claim involved is almost as readily seen in the respondent's as in the complainant's. The other patent sued upon, No. 378.843, is, in the language ofthe specifications, for the" combination of a series of evaporating pans, each having a construction substantially as shown in patent No. 341,669, to form a multiple effect evaporating apparatus, and consists further in a series of surface heaters arranged in connection with the pans, and operating to use a portion of the vapor from the several pans for heating dther a single liquid passed in succession through the several heaters, in the direction from the coolest to the hottest, or for heating different liquids in tpe several heaters respectively." The claims involved are as follows:
.. (3) The combination of the battery of evaporating tubes, their ingJ1eating chamber; E. and collecting chamber, P, common to the said tubes ()f an evaporating pan operated substantially as described, the heating chamber and its contained evaporating tUbes of a second similarly. operating, pan, a vapor conduit leading from the collecting chamber. P, ot the first pan to the heating'chamber. E, of the second pan, and a liquid condricting pipe and connections leading from the chamber, P, of the former to the feed ends of the -evaporating tubes of the latter, substantially as and for the purpose described. <4) The comhination of the battery of evaporating tubes, b, their surrounding heating chamber, E, and collecting chamber, P, common to the said tubes of .an evaporating pan operating substantially as described, the heating chamber, E, and the tubes, b, of a second similarly operatiDK pan, and a vapor cODlJuit leading from the collectIng chamber, P, of the' first pan to the heating chamber, E, of the second pan, SUbstantially as and for the,purpose specified." "(6) The combination, with two consecutive pans of a multiple effect evap.Qrating apparatus, each pan being provided with the evaporating tubes, b, and collecting chamber, P, of a pump, C, having its suction pipe connected with the chamber, P, of the first of tlle two pans, and its eduction pipe, v', with feed ends of the evaporating tubes of the second pan, the pump and its connections operating to draw liqUid from the chamber, P, of the first pan, and to deliver it to the evaporating tUbes of the second pan, substantially as speci.tied."

The question of validity 'Rpplies, of course, to these claims only. Whether .the patent may be sustained for other claims embraced, is not involved. I attach no importance to the fact that the specifications of the prior patent originally embraced this subject. Mr. Lillie had a right to that part, ashe did, and present it subsequently. I see to justify the allegation of abandonment. Do the claims, or does either of them, embrace invention? The "multiple effect" process was old, and had long been practiced, when this patent was appiied for. Rillieux described, and applied it, in 1843, as appears by his patent of that date. His method of applying it, was to place several "single effect" apparatus side by side,. and unite them in ,such mann!:'r thctt the liquor and vapor, after passing through the first would. pass into the second, and. so on· to .and through as many such apas were united,receiving an additional eff,ect !r.Qm each. To,

loot

48.

ofLilliel a llt:Jparatus, oovered by' the' first'patebt',slde by side, and: unite them samematinel.' 'and by the 'same Ichrrracter of employed ,in uniting the old single effectapparatus, certainly would not require invention. Ifit be admitted that Lillie's appall'lltu,lJ';,iSO united, cbDstitutes a new combination, It bewdevice, (and in one sens!'rit does,) this admission would not support the claim to patentaBlenovelty.The combination,would be new only to the extent of the single effect apparatus combinetHn it; and this apparatus is covered by the former 'patent. Nor does 'it tend to support the claim to such novelty'to,say.th/tt Ullie was the first to make a sUbcessful application ofthe multiple'effect process to Here, again, so far as respccts:theclaims involVed,the statement is correct only to the extent that his single effect apparatus is ,embraced. Themanber of combining the single effect apparatus is the only thing covered by the claim's, and in my judgment, it embraces Dothingnew. The third is' for the liquor and vapor oonouits,i5 the connection stated; the fourth'is for the vapGrconduit alone, in this, connaction;while the sixth is for 'a pump combined "'ith a liquol' Conduit. lath unable, after patient ex-" to filld any tpllteiial distincti6n hetween this, means of uniting, singlee,fI:ect with a, view to multiple effect, and ,by Rillj,eu:x;., ,In construction, character I' Qperation, and effect,: the, means or devices employed" Seem to be essentially 'the same. not use;the pump to accelerate' the flow of liquor, when Lillie does; but the addition of this oldmeans ofa<:complishdid not require invention., Any rnechanic directed to inc.. the flow wou1d the pump. It is the most <:9rilmon appliance for, such a would have made no difference, .asrespects this. question, if, the.origin8l application, of 1886, had,not"beenamended' by the withdrawaheferred to, lind these claims haa been-inserted in ,the first patent., The Qbjection to 'thelli, there would ' that tp say, thata11patentable novelty is covered, have' bee:bthe' by the otheriylaiIiJs. ' , " ,,' ,', I have not overlooked" the usual presumption in favor of the pat-, ent, nor the lact that Yaryan's conduct may probablY!lgain be appealed to"jn'Hs support., But ,with these ,considtlrlltionsfuUy inmind I am nevertheless forced to the oonelusion that the claims cover nothing new. The first patent",to Lillieieinbl'aceS everyt\1ing mentioned in them to whlch he is entitled. For the introductioriof 'imyof the' ;mlitters eov· ered by that; into the respondent's 'combined devicE/S; :it must answer in damages, as we have aiready determined.' It cannot u'se them, in rany connection ()r coIlibinat,ion,Whatever,' without the' complainant's ", ,'" Nor have "I overlooked the fact 'that one of the advantages of Lillie's single effect apparatus i'8 its especIal fitness for funhar combination and . use in the multiple effeb't process. This: advantage in that ap:paratus: 'and is covered 'by the patent for it. It is 'one of the 'features that renders thatinvetition valu8ble. Lillie, and others obtaining his asseut,may utilize,:·itby'making such combinations; If in making"

NORMANDIE.

151

something new and patentable is introduced protection for it may be obtained. If the other claims of Lillie's 1888 patent cover such new things they will of course be sustained. That question is not involved. here is simply that the claims under consideration embrace nothing new and are invalid.

THE

NORMANDIE.1

THE' CHARLOTTE WEBB.

O'SULLIVAN

et al.

'V. CoMPAGNIE GENERALE TRANSATLANTIQUB.

O'SULLIVAN st'

al.

11. THE

" " . . (Distr£Ct Court. S.D. NeW Y()Tk.May 20.1800.)

'L COUISIOlr-STIUM: AND BAIL-FoG-ExCESSIVE BPEED"";DtJTt ToRBvtm8B. , CoUisjpn occurred toward" midnight of May 28,1889, from, jive to eight mUes east 'by south of Sandy Hool£ light-ship, in a dense f\lg, l;>etween the N'OrnmIidleand the pilot-boat Charlotte 'Webb, by reason of which tile was "The steam-ship,. having left New Yark on one of her regular trips, had been put upon a course of east by south, on which courlle she continued until witl;lin a few momentil of collision; The Jlllot-boat wall cruising forveBllels. She was sMt. lng, slowly,on:a cOurse Of E. N. E.; anq crossing the steamet's course. ;When the steamer's whistles were ,first helll'd, which was from IS.¥> 80 minutes, petore the collisIon; the pilot-boat'continued 'to sound her fog-horn,which Was blown by mechanical meilns, at regular il!.tervals. and '6B:the Normandie's whistles continued to approach, bearing in the s\Wle direction, two bombs were fired by the pilot-buat. and a fiash light was twice shown over the p'ort side. She did not altel' her course at anytime. ,". She was struck by thestesmer on her port side, ,half out through, alQng with the steam,er for a short Mriod, until ",he dropped :oa The stesmerls speed had been from 11 to 12 knots, her maximum speed bemg 16 knot"" lJ!lOn hearing, the pilotr-boat's; ,horn ahead,' her enginell were.slowed. She contmuedon at this speed for about a when the light of the sailing vessel came iil siglit;only a short distance ahead. By reversd before the collision her to four,or ftveknot" facts being tound on very con. ftlqting evidence, that there was no fauit in the pilot-boat, in ber sig'nals or maneuverll;' that the speed of the steam-sbIp was in excess ohhe ",peed requWed: in, Ii fog. by article 13 of, tlle collision rules;. tbat she was also to biamefor not reversing, instead of slowing, when the horn was ahea4 and near-; and that she alone was responsiblef6rthe collision.' , So SAMB-'l'wO iND 'STOPPING PowER. " llpontwo suits1,n personam and in re..'I'n, s1l.ccessively brought tor the, same demand, Iiosecuri ty being obtained in the former, decree should be given in the suit in'rem, with one bill <If only, but not unt.il after the availa\)lewitnclIs, ,had been produced and called therein.

In,Aclp:ljralty.

Action!! for

by collision.

Carte,r& for li1;Jelant. CO1Idet:113i:{)s., for defendants.
of the;'

,:

J . The above libels were filed to recover damages for the loss
G. Benedict, Esq., of the New York

:

Charlotte Webb, with the personal effects ,of; those on

(' /:RepQ1'Uld' by