The Wood-Paper Patent
90 U.S. 566 (1874)

Annotate this Case

U.S. Supreme Court

The Wood-Paper Patent, 90 U.S. 23 Wall. 566 566 (1874)

The Wood-Paper Patent{|90 U.S. 566fn1|1}

90 U.S. (23 Wall.) 566

CROSS-APPEALS FROM THE CIRCUIT COURT

FOR THE EASTERN DISTRICT OF NEW YORK

Syllabus

1. A manufacture or a product of a process may be no novelty, and therefore unpatentable, while the process or agency by which it is produced may be both new and useful.

2. In cases of chemical inventions, when the manufacture claimed as novel is not a new composition of matter, but an extract obtained by the decomposition or disintegration of material substances, it is of no importance, in considering its patentability, to inquire from what it has been extracted.

3. When the substance of two articles produced by different processes is the same and their uses are the same, they cannot he considered different manufactures.

4. Paper pulp extracted from wood by chemical agencies alone is not a different manufacture from paper pulp obtained from vegetable substances by chemical and mechanical processes.

Page 90 U. S. 567

5. The reissued patent No. 1448 granted to Ladd & Keen, April 7, 1863, for a pulp suitable for the manufacture of paper made from wood or other vegetable substances is void for want of novelty.

6. The patent granted to Watt & Burgess July 18, 1854, was for a process consisting of three stages for obtaining paper pulp from wood: the reissue No. 1449 to Ladd & Keen, dated April 7, 1863, is for a single stage process. It is not, therefore, for the same invention. Hence the reissue is void.

7. Construction of the two boiler patents granted to Morris L. Keen, the one dated September 13, 1859, and the other June 16, 1863. Both held to be for combinations.

8. A construction of the patent granted May 26th, 1857, to Marie Amedee Charles Mellier.

a. The patent covers the process claimed, when applied to wood as well as when applied to straw.

b. The "internal pressure," as described in the specification, is to be ascertained by deducting from the pressure marked by the steam gauge, the weight of one atmosphere.

The preceding case has treated somewhat of the manufacture of paper, though the case had reference chiefly to a manufacture from rags, and by mechanical means. The present case concerns the manufacture of paper, though this case relates more to manufacture from wood &c., and by chemical agencies.

As most persons know, the materials out of which paper is made have to be reduced in the paper mill, before the paper is formed, into what is known as pulp. This pulp, whether obtained from wood or other vegetable substances, is a fibrous material consisting of what is called in chemistry "cellulose." As such, in its natural state, it is combined with other substances called "intercellular matter," which must be removed to render the cellulose fit for being made into paper. It was well known before the year 1853 that the fibers of cotton or of flax were pure cellulose, and that cellulose existed also in straw and wood, but it had not, so far as is known, been extracted from wood by chemical agencies alone, nor brought into a condition to be wrought into paper without mechanical treatment. Even the fibers

Page 90 U. S. 568

of cotton and of flax, though pure cellulose, required disintegration in order to reduce them to a pulp suited to felt in paper. This was usually effected by mechanical means -- by a rag-beating machine -- but when thus effected, a product had been obtained adapted to the manufacture of paper, a fibrous pulp, the same in kind and capable of the same use as that obtained from straw or wood.

So a pulp had been produced from straw and some varieties of wood by various processes, many of them cumbrous and all of them perhaps much inferior to the process of Watt & Burgess -- two persons a patent to whom and certain reissues of it were under consideration in this case. This is shown by numerous well known patents, and was admitted in this case.

So before the year 1853, the cellulose produced from straw, wood, and other vegetable substances was not produced in the first instance in a condition of purity other than one approximate. But it was cellulose abundantly suitable for making paper, and could be purified.

So again, prior to the year mentioned and the patent of Watt & Burgess, the cellulose produced was not in the first instance of the proper consistency and dimensions and with fiber of the proper length for immediate felting. However, by chemical and mechanical treatment subsequently applied it could be made so and made so completely.

Finally. In no case and by no process prior to 1853 was pulp produced ready for washing and bleaching by a single operation. Successive operations, largely mechanical, were used, the vegetable substances being however sometimes boiled in alkalies, with or without pressure, and disintegration by mechanical means following.

This having been the previous state of the art, the American Wood-Paper Company being engaged, A.D. 1866, in the manufacture of paper pulp and paper from wood, straw, and other vegetable substances under different patents owned by them, including two reissued patents of Watt & Burgess, all of which different patents they alleged could be used conjointly in their business, filed a bill in the court below to

Page 90 U. S. 569

restrain a company called the Fiber Disintegrating Company from what was alleged to be a infringement.

The defendant company made their paper principally from bamboo, though it was alleged and there was some evidence to show that they made it also from straw.

The following were the patents owned by the complainants:

I. Two reissued patents, numbered respectively 1448 and 1449, upon a patent originally granted on the 18th day of July, 1854, and antedated the 19th day of August, 1853 (the date of a patent which had been granted by the British government), to Charles Watt and Hugh Burgess, already named, for an improvement in the manufacture of paper from wood, reissued (to Ladd & Keen) in the two reissued patents numbered as above, on the 7th day of April, 1863 -- one for an improved manufacture of paper and paper pulp from wood and the other for the paper and paper pulp, the product of said process of manufacture.

II. A patent granted to Morris L. Keen on the 13th day of September, 1859, for a new and useful improvement in boilers for making paper pulp from wood.

A patent granted on the 16th day of June, 1863, to the said Keen, for an improvement in boilers for making paper pulp.

III. A patent granted on the 26th day of May, 1857, antedated the 7th day of August, 1854, to Marie Amedee Charles Mellier (a Frenchman), for an improvement in the manufacture of paper.

The defendant set up, among other things,

1. Invalidity of the Watt & Burgess reissues on the ground, as to No. 1448, that the invention claimed was old, and as to No. 1449 on the same ground of want of novelty and on the additional ground, one more specially insisted on, that the reissue was for a different invention from that patented; and, therefore, by the terms of the Patent Act, [Footnote 2] which required that the reissue should be for the "same invention"

Page 90 U. S. 570

as the original patent, void. The alleged want of identity consisted in the fact, as alleged, that the original patent described the production of paper pulp in a state ready for washing and bleaching, by three successive stages of work, while the reissue described the production of it by a single operation.

2. That the Keen patents were for combinations, and that all parts had not been used. Accordingly that there was no infringement.

3. Invalidity of the Mellier patent on the ground of want of novelty in the alleged invention.

Evidence was taken upon all the issues thus raised, and a decree was made.

That the Watt & Burgess patents were void.

That the Keen patents were for combinations, and that defendants were not infringers.

That the Mellier patent was valid, and that the defendants were infringers of it.

Thereupon the complainants appealed from that part of the decree which related to the Watt & Burgess and the Keen patents and the defendants from that part which sustained the bill as to the Mellier patent.

To enable the reader to understand perfectly the case, the patents under consideration are all set out. This, with a few remarks and some testimony &c. interposed, it is hoped will enable the reader who has any general knowledge of the art of papermaking, sufficiently to understand the case.

"

I

. THE WATT & BURGESS PATENTS"

"1. ORIGINAL PATENT JULY 16, 1854. ANTEDATED AUGUST 19, 1953."

"Specification"

"The wood or vegetable substances upon which it is intended to operate by this process should first be reduced to very fine shavings or cuttings, the finer the better. This may be done in any suitable machine."

"The shavings are then to be boiled in a solution of caustic alkali, the strength of which, being dependent on the nature of vegetable substances operated on, can only be learned by experience.

Page 90 U. S. 571

For deal or fir wood, we find that a solution of alkali of the strength indicated by twelve degrees of the English hydrometer answers very well. The length of time necessary for this part of the process is somewhat dependent on the nature of the vegetable substance to be treated."

"We find boiling in a solution of caustic alkali under pressure of considerable service."

"We do not claim this operation as a part of our invention."

"The shavings are then to be well washed and pressed, and the washings may be saved and evaporated down and burned in a suitable furnace, when they are again available for the same purpose."

"The damp shavings are now to be exposed to the action of chlorine, or the compounds of chlorine with oxygen, till on a portion being placed in a dilute solution of caustic alkali the vegetable substance falls into a dark pulpy mass. This part of the process is conveniently effected by placing the damp shavings on racks or drawers about nine inches apart, one above another, arranged in a chamber, and allowing the chlorine or the compounds of chlorine with oxygen to enter the chamber and fill it. Of the compounds of chlorine with oxygen, we prefer that known as prot-oxide of chlorine, or hypochlorous, or chlorous acid, or euchlorine. If found more convenient, the chlorine, or the compounds of chlorine with oxygen, may be used in aqueous solution instead of the gaseous form."

"As soon as the shavings have been sufficiently acted upon by the gas, as may be ascertained by the method above described, they may be removed and the hydrochloric acid, which is the result of the above process, removed by washing, and the shavings well pressed. This should be done with as little water as possible, as this acid may be saved and made use of for the reproduction of chlorine. The shavings are now to be placed in a weak solution of caustic alkali, when they will fall into a pulpy mass of dark brown color. This part of the process may be expedited by exposing this mass to the action of a beater or 'engine,' placed in a tank containing the solution of alkali."

"The pulp thus obtained, as above described, having been freed from the alkali by washing (which may be saved as before directed), may now be bleached by the usual process or, as we prefer, by chlorite or hypochlorite of soda or potash, liberating the chlorous or hypochlorous acid by hydrochloric acid. "

Page 90 U. S. 572

Having thus fully described the nature of our invention and shown how the same may be reduced to practice, we wish it to be distinctly understood that we do not confine our claim to the apparatus or utensils or the manipulations herein named, as they may be varied to suit the circumstances of the case.

"Claim"

"But what we do claim as of our invention and desire to secure by letters patent is the pulping and disintegrating of shavings of wood and other similar vegetable matter for making paper by treating them with caustic alkali, chlorine simple, or its compounds with oxygen and alkali, in the order substantially as described."

As has been already stated (supra, p. 90 U. S. 569), one ground set up by the defendants as a defense to the bill was that the original patent and the reissue No. 1449 were not for the same invention, the allegation of the defendants being that the original patent was for the production of the pulp ready for bleaching and washing by a single operation, whereas in the reissue No. 1449, three distinct operations, following each other in order of time, were adopted.

In support of this their view the defendants showed that in March, 1854, before the original patent was granted but while an application for it was pending, the Commissioner of Patents wrote to Watt & Burgess stating that there were "at least forty other applications for patents, or patents on record, for processes of treating vegetable fiber," and that "in a large part of these, alkali and chlorine or its compounds were used," and requesting Watt & Burgess to make

"a clear and definite expression of what the novelty in their devices was confined to, both in the specifying of the nature of the invention and in setting forth the claim."

The defendants showed further that, in reply, Watt & Burgess, through their counsel, said:

"The invention relates to a series or combination of processes, in the order in which they are stated, for treating shavings &c., for the purpose of reducing hem from their crude state to a pulp, ready to be made into paper. The several processes through

Page 90 U. S. 573

which the shavings pass, may be enumerated in the following order, viz.:"

"First. The shavings are boiled in a solution of caustic alkali until by the test of washing they have lost their woody taste (for white pine shavings about three hours), when they are washed and pressed to rid them of the alkali."

"Second. They are then subjected to the action of chlorine or its compounds and oxygen until, by testing a portion in a dilute solution of caustic alkali, it falls into a dark pulpy mass, when it is again washed and pressed to remove the hydrochloric acid, which is the result of this process."

"Third. The material is then subjected to a weak solution of caustic alkali, when it falls into a pulpy mass of a dark-brown color. It is then again washed to free it of the alkali, and may be bleached by any of the known processes."

"The shavings must pass through these several processes, and in the order stated, and this constitutes the invention. The processes, taken separately, will not produce the article, but their sum will, and they are only claimed in their series, and not in their individual capacities. It is admitted that alkali and chlorine have been used in pulping vegetable matter. But it is not known that alkali, chlorine, oxygen, and alkali, have been used in the manner, and in the order, in which Messrs. Watt & Burgess use them. This order and series of processes is what, therefore, constitutes their invention, and what they suppose they have embodied in their claim."

After some further discussion, the patent from which the above specification is quoted was granted.

The testimony of Burgess, one of the original patentees, was taken by the complainants. He said:

"I began to make experiments on the preparation of pulp for making paper from wood in 1851, with Mr. Watt. On account of his great age, making most of the experiments devolved on me. . . . I produced a good pulp by boiling wood in caustic alkali at a high pressure. I found that some woods required much more alkali than others. I found that when intercellular matter was not wholly removed by caustic alkali, it could be decomposed by chlorine, or the hypochlorides, one answering the purpose as well as the other. I used, therefore, chlorine or bleach power, preferably chlorine, since one of the products

Page 90 U. S. 574

attending the elimination of chlorine -- namely sulphate of soda -- had a marketable value in England. I found that to a certain extent and when desirable, I could substitute the employment of caustic alkali for chlorine, the one for the other, but the nature of the wood under treatment materially affected this substitution. I found the greater quantity of intercellular tissue was removed by the caustic alkali, the less chlorine or its compounds with oxygen was required, and consequently the higher the temperature and pressure and the greater the strength of the alkali employed the less of the intercellular tissue was left, and consequently less chlorine or its compounds with oxygen required; but if sufficient caustic alkali was employed at a requisite temperature, chlorine was only necessary for bleaching purposes. As regards the cost, the chlorine process appeared to cost less than the free use of alkali, since one of the products of its elimination is a marketable article in England, and we calculated on the sale of the sulphate of soda as one of the sources of profit in working the patent. In drawing up the specification for a patent, I therefore laid most stress on the process that seemed to offer the greatest pecuniary advantage, since the recovery of the soda ash had not been practically tried by us at this time, and we were in uncertainty as to the success of such recovery. With a knowledge of the above facts, I was desirous of embracing in my specification the modes of producing wood pulps with caustic alkali either with or without steam pressure, supplementing when necessary the alkaline boiling with the subsequent treatment of chlorine or the hypochlorides."

"I prepared a description of my invention -- a provisional specification -- prior to my application for an English patent. I here annex a copy of the specifications, both provisional and final, of the English patent."

"The wood upon which it is intended to operate by this process should first be reduced to very fine shavings, the finer the better; this may be done by any suitable machine."

"The shavings should then be boiled in caustic alkali of the strength indicated by about 12

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