Claim 1 of letters patent No. 42,580, granted May 3d 1864, to J.
F. T. Holbeck and Matthew Gottfried, for an "improved mode of
pitching barrels," namely, "The application of heated air under
blast to the interior
Page 128 U. S. 159
of casks by means substantially as described, and for the
purposes set forth," is a claim to an apparatus, and is void for
want of novelty.
The process carried on by means of the apparatus was not new as
a process.
The case of
Lawther v. Hamilton, 124 U. S.
1, considered and explained.
In respect to the apparatus, the patentees at most, merely
applied an old apparatus to a new use.
Claim 2 of the patent held not to have been infringed.
Tuts was a suit in equity brought in March, 1881, in the Circuit
Court of the United States for the District of Indiana, by Matthew
Gottfried against the Crescent Brewing Company, founded on the
alleged infringement by the defendant of letters patent No. 42,580,
granted May 3d 1864, to J. F. T. Holbeck and Matthew Gottfried, for
an "improved mode of pitching barrels."
The specification, claims, and drawings of the patent were as
follows:
"Be it known that we, J. F. Th. Holbeck and Matthew Gottfried,
both of Chicago, County of Cook and State of Illinois, have
invented a new and useful improvement in pitching barrels, etc.,
and we do hereby declare that the following is a full, clear, and
exact description thereof, reference being had to the accompanying
drawings, making a part of this specification, in which"
"Figure 1 is a longitudinal section taken in a vertical plane
through the center of the apparatus which we employ in the
operation of pitching barrels, etc. Figure 2 is a horizontal
section taken in the course indicated by red line
x x in
figure 1. Figures 3 and 4 are views of the tabular closing guard
which is applied to the barrels or casks in the operation of
heating them. Similar letters of reference indicate corresponding
parts in the several figures."
"Before filling casks with spirituous or volatile liquids, it is
necessary to render the casks impervious to air, the most common
and probably the cheapest method of doing which has been to flow
melted pitch or other substance into the pores and joints of the
casks while they are in a heated state, but the difficulties
hitherto attending this process arise in consequence of a want of
some economical means of heating the
Page 128 U. S. 160
casks without burning or seriously charring their inside
surfaces."
"My invention has for its object the preparation of casks for
receiving pitch or other melted substance suited to the object in
view by subjecting said casks to blasts of highly heated air by
means of an apparatus which will be hereafter described. To enable
others skilled in the art to understand our invention, we will
describe its construction and operation."
"In the accompanying drawings, we have represented one mode of
carrying our invention into effect, which consists of a furnace
constructed of masonry, as represented by A, figures 1 and 2. This
furnace is of a rectangular form, and has a vertical central
opening, A', through it. Near the base of the furnace is a grate,
a, beneath which is the ash-pit,
b, and above
which is a fire chamber,
c, which is covered by a lid,
c', as shown in figure 1."
"An opening,
d, is made through the side of furnace, A,
which forms an external communication with an internal chamber, A',
either below the grate or above this grate, as shown in figure 1.
This opening,
d, communicates with a fan case, B, arranged
outside of the furnace and furnished with a series of rotary wings
or fans,
e e, which may be rotated by any convenient
motive power. The fans,
e e, create a blast of air through
the furnace chamber, A'. This air, rushing through the opening,
d, and through the fire which is built upon the grate,
a, is allowed to escape through the passage,
d',
near the top of the furnace. Between this passage,
d', and
the cask which it is desired to heat, I form a communication by
means of a detachable pipe, E, which connects with a short pipe,
E', that is secured around the passage,
d', as shown in
figures 1 and 2. The removable pipe, E, may be made conical, as
represented, so that the opening through the head of the cask, D,
need not be very large, and this pipe is provided with a bow
handle,
g, by means of which the pipe can be removed or
adjusted in place without liability of burning the hands. The
contracted end of pipe, E, enters a short tube,
h, which
passes through and is suitably affixed to a covering plate,
i, that is
Page 128 U. S. 161
used to close or partially close the opening,
j, which
is made through the head of the cask. This plate,
i,
should be somewhat larger than the opening through the head of the
cask, and this opening should be of such form as to admit plate,
i, and to allow of this plate being adjusted, as
represented in"
image:a
"figure 1. When this plate,
i, is adjusted on the inner
side of the cask head, opposite the openings therethrough, it may
be confined in place by means of a key,
k, which is passed
between a flange formed on the projecting outer portion of the
short pipe,
h, and the head of the cask, as represented in
figures 1 and 2. "
Page 128 U. S. 162
"When a cask which it is desired to render impervious to air is
adjusted in proper position, and a communication formed between it
and the furnace, A, as above described, a fire is made upon the
grate,
a, and by means of the blast fan applied to the
furnace the heated products of combustion are forced into the cask,
and allowed to escape therefrom through an opening at the bottom of
covering plate,
i, as indicated by the arrows in figure
1."
"When the cask thus subjected has become properly heated so that
the resin substance within it will readily flow into the pores and
cracks or joints in the wood, the parts,
i and E, are
removed, the opening through the head of the cask properly closed,
and the cask rolled about until the melted resin has permeated
every pore and interstice in its inside surface."
"Having thus described our invention, what we claim as new and
desire to secure by letters patent is"
"1st. The application of heated air under blast to the interior
of casks, by means substantially as described, and for the purposes
set forth."
"2d. The use of a removable conductor, E, in combination with a
furnace and blowing apparatus, arranged and operated substantially
as described."
"3d. The tube-holding plate,
i, in combination with the
removable pipe, E, and blast-furnace, A, substantially as and for
the purposes described."
Infringement is alleged only of claims 1 and 2.
The defendants put in an answer to the bill, a replication was
filed, and proofs were taken on both sides. The issue of novelty
and patentability was warmly contested. The principal matters
relied on in the proofs to show want of novelty in the invention
were English letters patent No. 6,901, granted to C. P. Devaux,
October 8, 1835; English letters patent No. 9,924, granted to
Davison and Symington, November 2, 1843; English letters patent No.
12,918, granted to Cochrane and Slate, January 3, 1850; a
description found in a volume entitled "Tomlinson's Cyclopedia of
Useful Arts, London & New York, 1854." Vol. II, Ham-Zir, p.
665, and figure 2,015, the thing described being known as the
"Pewterer's
Page 128 U. S. 163
Blast;" a description found in a volume published at
Braunschweig, in 1854, called "Handbuch fur Bierbrauer," at 116 to
118; the Seibel machine, first used early in 1857, and a
description contained in a volume published at Leipsic, in Germany,
in 1861, called "Der Bierbrauer," at 138
et seq.
In January, 1882, the circuit court, held by Judge Gresham,
delivered an opinion in which it was held that the bill must be
dismissed, on the ground that the patent was void for want of
novelty.
Gottfried v. Crescent Brewing Co., 9 F. 762. The
anticipations especially considered in the opinion of Judge Gresham
were the Cochrane and Slate patent, the Seibel machine, and the
"Bierbrauer" publication of 1861. A rehearing appears to have been
had of the case, and in September, 1882, Judge Gresham delivered an
opinion,
Gottfried v. Crescent Brewing Co., 13 F. 479,
holding that he had given undue importance to the Cochrane and
Slate patent, the Seibel apparatus, and the German publication, and
that the patent was sustainable as a patent for mechanism. An
interlocutory decree was entered in October, 1882, holding the
patent to be valid as to claims 1 and 2 and to have been infringed
as to those claims, and referring it to a master to take an account
of profits and damages. On the report of the master, a final decree
was entered in favor of the plaintiff in December, 1884, for a
money recovery. 22 F. 433. From that decree the defendant has
appealed to this Court.
Page 128 U. S. 165
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
There has been, as appears by the reports, a good deal of
litigation as to this patent.
In June, 1878, in
Gottfried v. Bartholomae, 3 Ban.
& Ard. 308, in the Circuit Court of the United States for the
Northern District of Illinois, Judge Blodgett held the patent to be
valid. The only anticipating devices which appear to have been
considered by him were the Davison and Symington patent of
November, 1843, and the Neilson and various other hot-air blasts in
smelting furnaces.
The patent was sustained by the decision of the Circuit Court of
the United States for the Eastern District of Wisconsin, held by
Judge Dyer, December 1, 1879, in
Gottfried v. Phillip Best
Brewing Co., 5 Ban. & Ard. 4. The anticipations considered
in the opinion of Judge Dyer were the device of one Pierce, the
Beck machine, the Davison and Symington patent, the Devaux patent,
the Neilson hot-blast patent, granted in England, in 1828, a patent
granted in England to one Boville, in 1846, and a patent granted in
England to Cochrane and Galloway, in 1818. The Cochrane and Slate
patent, the "Pewterer's Blast," the two German publications, and
the Seibel apparatus do not appear to have been considered in that
case.
The next decision was in June, 1881, by Judge Blodgett in the
Circuit Court of the United States for the Northern District of
Illinois in
Gottfried v. Conrad Seipp Brewing Co., 8 F.
322. The question of novelty was not considered, and the bill was
dismissed on the ground of noninfringement.
Then came the decisions in the present case.
In
Gottfried v. Stahlmann, 13 F. 673, in the Circuit
Court of the United States for the District of Minnesota in
October, 1882, Judges McCrary and Nelson concurred in the second
decision of Judge Gresham in the present case, sustaining the
validity of the patent.
It is also stated that Judge Baxter, of the Sixth Circuit, held
the patent to be valid.
Page 128 U. S. 166
It is quite apparent from the face of the specification, as it
is clear upon the evidence, that the process of flowing melted
pitch on the inside, into the pores and joints of casks which were
to be filled with spirituous or volatile liquids, such flowing
taking place while the casks were in a heated state, was not new.
The specification states that a difficulty attended such process
because there was no economical means of heating the casks without
burning or seriously charring their inside surfaces. It also states
that in this view, the invention has for its object the preparation
of casks for receiving the pitch by subjecting them to blasts of
highly heated air by means of the apparatus described -- that is,
the invention is of the apparatus. The specification then describes
it. The substance of it is an apparatus consisting of a fan case
arranged outside of a furnace, and furnished with a series of
rotary wings or fans, which create a blast of air and force such
blast into a chamber, and through a fire built upon a grate in the
chamber, and thence through such chamber, and out of it, and, by
means of a pipe, into the cask which it is desired to heat, the
heated products of combustion being thus forced into the cask and
then allowed to escape therefrom, so that the cask will be properly
heated to admit of the ready flow of the melted pitch into the
pores and cracks or joints in the wood in the interior of the cask
when the cask is rolled about.
The first claim of the patent, namely, "the application of
heated air under blast to the interior of casks by means
substantially as described, and for the purposes set forth," is a
claim to the means or apparatus described for applying the heated
air under blast to the interior of the casks, and is a claim for
mechanism, and not for a process. The evidence further shows that
the process was old, and was fully developed in the Seibel
apparatus. The only process that is embodied in the plaintiff's
apparatus is the process of bringing the heated products of
combustion, impelled by a blast of heated air rushing through the
fire built upon the grate, into direct contact with the interior of
the cask, and with the pitch which may cover the interior. A Seibel
apparatus, as used in St. Louis continuously from
Page 128 U. S. 167
1857, was put in evidence, and has been produced before this
Court. It is used by inserting it within the cask to be heated. It
consists of an elongated furnace, having a straight perforated
cylindrical pipe extending horizontally the entire length along its
bottom, one end of the pipe connecting by a conduit, with a blower
on the outside, which drives a blast of air through the pipe, the
blast passing out through the perforations in the pipe and into and
through the fire in the furnace on the top of the pipe, whence the
products of combustion pass into the cask, into contact with its
interior surface and then out of the cask.
The process of the Seibel apparatus is the same as that of the
plaintiff's apparatus. The furnace and its fuel are between the
blower and the interior of the cask. The heated products of
combustion, being the blast of air either wholly or partially
deoxygenated, pass from the fire directly into contact with the
interior of the cask. So far as any process is concerned, the
processes embodied in the two apparatuses are identical. The fact
that in the plaintiff's apparatus the furnace is not thrust into
the cask, and that the products of combustion are conducted into
the cask through a pipe, does not affect the question of the
process.
It is contended by the plaintiff that the first claim of the
patent is for the process when applied or operated by an apparatus
like that of the plaintiff, situated outside of the cask, and not
within it, and reference is made to the case of
Lawther v.
Hamilton, 124 U. S. 1, as
sustaining the view that the mechanical means by which a process is
applied may be an essential part of the process, and that the
process is not anticipated unless the mechanical means of applying
it, shown by the plaintiff, existed before, and were applied before
to carry on the same process. But the true view of the case of
Lawther v. Hamilton is this: Lawther's patent was for a
process of working oil seeds to obtain oil by dispensing with the
muller stones before used to complete the grinding. The omission of
the muller stones produced more oil and better oil cake. The seed,
first crushed by heavy rollers, was passed directly from them into
a mixing machine, without being
Page 128 U. S. 168
operated upon by muller stones, which had before been used for
grinding and mixing. The crushing of the seed between powerful
revolving rollers was retained in Lawther's process, and the seed
was transferred immediately from them to a steam mixing machine.
This Court said that while the invention was that of a process, it
was limited, at least so far as the crushing of the seed was
concerned, to the use of powerful revolving rollers to do such
crushing. The crushing being stated in the specification to be of
such character that each seed was individually acted upon, and the
oil cells were fully crushed and disintegrated, the claim was
for
"the process of crushing oleaginous seeds, and extracting the
oil therefrom, consisting of the following successive steps,
viz., the crushing of the seeds under pressure, the
moistening of the seeds by direct subjection to steam, and finally
the expression of the oil from the seed by suitable pressure, as
and for the purpose set forth."
The crushing of the seed in the manner stated was a part of the
process. Of course it had to be done by some kind of
instrumentality, and it was held to be a part of the process that
the kind of instrumentality should be powerful revolving rollers
whose effect would be to act upon each seed individually, and fully
crush and disintegrate the oil cells; but the instrumentality or
apparatus was not a part of the process, while the operation upon
each seed by the kind of instrumentality described was a part of
the process.
So far, therefore, as the first claim of the patent is a claim
to a process, it is fully anticipated in the process carried on by
means of the Seibel apparatus.
Considering the first claim of the patent as a claim to the
apparatus used for applying the heated blast to the interior of the
cask, the apparatus existed before. It is found in the Cochrane and
Slate patent of 1850, which shows a blast passing through the fuel
in a furnace and a pipe extending from the furnace into the
interior of a flask or mould intended to be heated, through which
pipe the blast, consisting of the heated products of combustion,
was conveyed into such interior. The deoxygenated blast was applied
to the heating and drying of the inner walls of the receptacle into
which it
Page 128 U. S. 169
was carried. There was no invention in applying the apparatus to
a cask instead of a flask. It would require only ordinary
mechanical aptitude, and not invention, to make the mouth of the
exit pipe, carrying the heated products of combustion, of a proper
size to enter the bung-hole or other orifice of a keg or a cask,
instead of entering a flask or mould.
So too, the description of the "Pewterer's Blast," in
Tomlinson's Cyclopedia of 1854, shows the plaintiff's apparatus. It
is there stated that the pewterers have a kind of blow-pipe or hot
air blast, consisting of a common cast iron post with a close
cover, containing ignited charcoal and termed a hod. This pot has a
nozzle leading into it which supplies air from bellows worked by
the foot, and another nozzle leading out of it which directs the
current of hot air upon the article to be soldered. The drawing of
this apparatus is as follows:
image:b
In this apparatus there is a blast driven through a fire in a
closed receptacle in such manner that the heated products of
combustion are carried out of a nozzle and directed where needed.
Whether the nozzle terminates in the air or in the interior of a
cask or keg, or whether the deoxygenated blast which leaves the
nozzle is partially reoxygenated or not before reaching its
objective point, does not affect the identity of the apparatus. In
reference to both the Cochrane and Slate patent and the "Pewterer's
Blast" apparatus, the patentees have, at most, merely applied an
old apparatus to a new use, without any change of its constituent
elements or of its mode of operation. In fact, the defendant's
apparatus is, to all intents and purposes, a faithful copy of the
"Pewterer's Blast" apparatus.
Page 128 U. S. 170
Under these views, it must be held that the first claim of the
patent is invalid.
As to the second claim, there is no infringement, the
defendant's apparatus having no removable conductor corresponding
to the removable conductor, E, of the second claim. The defendant's
pipe is screwed fast to the furnace, and cannot be removed while
the machine is in use. It is cast separate from the furnace, for
convenience of renewal in case of the breakage of either it or the
furnace. The movable conductor, E, is described in the
specification of the patent as a pipe provided with a bow handle,
by means of which it can be removed or adjusted in place without
liability of burning the hands. The defendant's pipe which enters
the keg or cask is not removable or detachable in this sense.
For these reasons, the decree of the circuit court is
Reversed, and the case is remanded to that court, with a
direction to dismiss the bill of complaint, with costs.
