What R. A. Tilghman, of Philadelphia, claimed as his invention
under the letters patent granted to him of January 9, 1854, was the
process of manufacturing fat acids and glycerin from fatty or oily
substances by the action of water at a high temperature and
pressure.
Two conditions,
viz., that the heating vessel must be
kept entirely full of the mixture of fat and water and that no
steam or air must be allowed to accumulate in the vessel employed
to impart the heat, were material and indispensable conditions of
Tilghman's patented method.
The claim of the patentee must be limited to the specific method
or means of applying highly heated water under pressure pointed out
in the specification; and although the claim is on its face broader
than this, yet it is to be construed by reference to the
specification.
In this point of view, it is unimportant whether the claim
contained any direct reference to the specification or not. Such
reference, where not expressed, will be implied.
The precise apparatus described in Tilghman's specification does
not appear to have gone into practical use in this country or in
Europe, and the apparatus worked by Tilghman's licensees differs in
many material respects from the apparatus described in his patent,
and, taken as a whole, therefore, it was considered by this Court
that Tilghman did not succeed in introducing his invention into
practical use by the means and mode of operation described in his
specification.
Accordingly, where a defendant had used highly heated water in a
close vessel, but used a much more moderate degree of heat than
specified by Tilghman, and used an entirely different apparatus
from Tilghman's, and one which permitted the existence of steam as
well as water -- construing Tilghman's claim of invention as
limited by the specific means and mode of operation described in
his specification -- such defendant was held not to have
infringed.
Appeals from the Circuit Court for the Southern District of New
York in which court R. A. Tilghman filed two bills in equity
against R. G. Mitchell, under a patent granted to him the said
Tilghman for a process for making fat acid and glycerin from
natural fat, one bill having been filed during the first term of
the patent and the other under the extended term of the same
patent.
In both cases, final decrees were given in favor of Tilghman,
and the defendant, Mitchell, took these appeals.
The bill set forth the grant of letters patent to Tilghman,
Page 86 U. S. 288
October 3, 1854, for fourteen years from January 9, 1854, the
reduction of the patented improvement to use, and the infringement
by Mitchell.
The invention claimed by Tilghman may be stated in general terms
to be based upon the discovery that if water be heated to a high
degree, and at the same time retained in a close vessel so that it
cannot pass into the state of steam, but must remain in the liquid
state, it will, while in such highly heated liquid state, possess a
peculiar property of separating natural fat into its chemical
constituents, glycerin and fat acids. He undertook to claim the
employment of water
in the liquid state, heated and under the
pressure necessary to retain it in the liquid state as
the
decomposing agent. He asserted that prior to his discovery and
invention, no one had ever known, used, or described the employment
of
highly heated water retained in the liquid state by
pressure as such decomposing agent, and that under the law
if he set forth this newly discovered decomposing power of
liquid water heated and under pressure, and exhibited in
his specification one mode of practically applying it, he was
entitled to the exclusive use of this decomposing agent in treating
facts for the purpose of separating them into fat acids and
glycerin.
To understand the questions at issue in this case, and passed
upon by the court, there is first to be considered the phenomenon
of heating water &c., its behavior and properties when
heated.
Water when heated in an open vessel at the surface of the earth
passes into a state of vapor, at a temperature of 212� of
Fahrenheit's thermometer; the waters expanding over eighteen
hundred times in passing into steam. It is impossible to retain
water in a liquid state, in an open vessel, after it has reached
that temperature. If the vessel in which the water is heated,
however, be covered, and the cover be fastened down, the water can
be heated to any temperature whatever, and will still remain in the
liquid state. The tendency of the water to pass into vapor
increases with the
Page 86 U. S. 289
degree of heat applied to it, and there must therefore be a
proportionate pressure or restraint by the enclosing vessel on the
heated water to overcome this expansive tendency, or tendency to
pass into a state of a vapor.
Vessels in which water could be heated to any desired
temperature, and the water still retained in the liquid state, were
known in the arts and called "digesters."
To understand matters further a brief statement of the art of
treating fat is necessary.
Fats obtained from various sources differed much in hardness and
fusibility, and each variety was formerly supposed to be an
entirely different article. About 1816, Braconnot, a French
chemist, discovered that all natural fats were merely
mechanical mixtures, in various proportions of fats
entirely solid and hard, now called stearin, with a more fluid fat
or oil, called olein. He found that simple pressure very slowly
applied, squeezed out the more fluid part, and that the remainder
made harder candles. But the process of separation by pressure was
difficult and imperfect.
Chevreul, in 1825, discovered that all fats were chemical
compounds of a substance called glycerin, with fatty bodies having
slight acid characters called fatty acids; that fatty acids were of
different degrees of fusibility, and that when the glycerin was
separated from fats, the fatty acids could be more rapidly and
perfectly pressed so as to get out the hardest fatty acids for
candles; and he patented a chemical process of separating these
fatty acids from glycerin.
His process consisted of two distinct stages:
1. The manufacture of natural fat into
soap, by boiling
lime or other alkali with the fat, in which case fourteen pounds of
lime were used to one hundred pounds of fat.
2. The decomposition of the soap so produced into fat acid by
the use of two pounds of sulphuric acid to each pound of lime.
Soap had always previously been made by boiling the fat and
solution of alkali together, and Chevreul suggested that this
production of
soap could be expedited by boiling the
Page 86 U. S. 290
fat and the solution of alkali together
under pressure.
He did not, however, suggest that
water alone, heated and
under pressure, would of itself decompose neutral fat into a fat
acid and glycerin, but expressly mentioned alkali and sulphuric
acid as the decomposing agents.
Another mode of separating free fat acids was devised, which was
called
decomposition by sulphuric acid distillation.
This process was invented and used for producing
fat acid
only, and not glycerin, the glycerin being
destroyed
by the process. It was asserted by Tilghman that this process
differed from his:
1. In that the result produced was different,
viz., fat
acid only, while his, Tilghman's, produced simultaneously both fat
acid and glycerin;
2. In that it required sulphuric acid to decompose the fat into
fat acid;
3. In that it did not depend for its efficiency on the use of
highly heated water in the liquid state, retained in such
state by pressure;
4. In that it was a process of distillation.
We must view here also the
attempted decomposition by
steam.
It was from time to time attempted, prior to Tilghman's alleged
invention, to decompose neutral fat into fat acid by
distillation in a current of steam, but it was asserted by
Tilghman that it was an unsuccessful and abandoned experiment, and
had never come into use; and that even if it had been successful it
differed in every way from his process. Among other ways,
In not producing glycerin as a result;
In not depending upon or even allowing of the presence of highly
heated
water under pressure;
In that it was a process depending on vaporization and
subsequent condensation of the fat acids;
In that the apparatus absolutely
necessary for the
distillation process was such as to render the execution of the hot
water process of him, Tilghman, in the same utterly impossible.
Tilghman asserted that he had made the discovery not
Page 86 U. S. 291
that
heat alone would decompose fats into fat acid and
glycerin, nor that the presence of water was necessary when
chemicals are used to decompose fats into fat acid and glycerin --
but merely that
water in a
liquid state heated to
a high degree of temperature while enclosed in a strong vessel, so
as to prevent its passing into steam, would of itself and without
the aid of chemicals separate natural fat into its constituent
elements, fat acids and glycerin. Having made, as he alleged, this
discovery of a new chemical decomposing property of
water
highly heated and retained in the liquid state by pressure,
Tilghman, in his patent, announced it, and, as will be seen
directly, also described two modes of carrying out his process
based thereon.
In the alkaline saponification processes, which were in use
prior to Tilghman's invention, various forms of closed boilers,
provided with safety valves, were known. It was also known that fat
and water would tend to remain unmixed in a boiler, and therefore
agitators or circulators, for preserving a mixture or intimate
contact between the fat and lime and water during the process of
alkaline saponification, under pressure, were also in use.
[
Footnote 1]
The specification, in the patent, ran thus:
"Be it known that I, Richard Albert Tilghman, of Philadelphia,
have invented a new and improved
mode of treating fatty and
oily bodies, and I hereby declare that the following is a full
and exact description thereof."
"My invention consists of a process for producing free fat acids
and solution of glycerin from those fatty and oil bodies of animal
and vegetable origin which contain glycerin as their base. For this
purpose, I
subject these fatty or oily bodies to the
Page 86 U. S. 292
action of water at a high temperature and pressure, so
as to cause the elements of those bodies to combine with water, and
thereby obtain at the same time free fat acids and solution of
glycerin. I mix the fatty body to be operated upon with from a
third to a half of its bulk of water."
"And the mixture may be placed
in any convenient vessel in
which it can be heated to the melting point of lead, until the
operation is complete. The vessel must be closed and
of great
strength, so that the requisite amount of pressure may be
applied to prevent the conversion of the water into steam."
"
The process may be performed more rapidly and also
continuously by causing the mixture of fatty matter and
water to pass through a tube or continuous channel,
heated to
the temperature already mentioned; the requisite pressure for
preventing the conversion of water into steam being applied during
the process, and this,
I believe, is the
best
mode of carrying my invention into effect."
"In the drawing hereunto annexed are shown figures of AN
apparatus for performing this process
speedily and
continuously, but which apparatus
I do not intend to claim
as any part of my invention."
"Figure 1 of the said drawing is a vertical section of this
apparatus, and Figure 2 shows the various parts of the apparatus in
horizontal section: similar parts in these figures being marked
with similar letters of reference."
"I place the fat or oil in a fluid state in the vessel, A, with
from one-third to one-half its bulk of warm water; the disk or
piston, B, perforated with numerous small holes, being kept in
rapid motion, up and down, in the vessel, A, causes the fat, or oil
and water, to form an emulsion, or intimate mechanical mixture. A
force pump, C, like those in common use for hydraulic presses, then
drives the mixture through a long coil of very strong iron tube, D,
D, D, D, which, being placed in the furnace, E, E, E, E, is heated
by a fire, F, to about the temperature of melting lead. From the
exit end, G, of the heating tubes, D, D, D, D, the mixture, which
has then become converted into free fat acids and solution of
glycerin, passes on through another coiled iron tube, H, H, H,
immersed in water, by which it is cooled down from its high
temperature to below 212� Fahrenheit, after which it makes its
escape through the exit valve I into the receiving vessel. "
Page 86 U. S. 293
"The iron tubes I have employed and found to be convenient for
this purpose, are about one inch external diameter, and about half
an inch internal diameter, being such as are in common use for
Perkins's hot water apparatus. The ends of the tubes are joined
together by welding to make the requisite length, but where welding
is not practicable, I employ the kind of joints used for Perkins's
hot water apparatus, which are now"
image:a
"well known. The heating tube, D, D, D, D, is coiled several
times backwards and forwards so as to arrange a considerable length
of tube in a moderate space. The different coils of the tube are
kept about a quarter of an inch apart from each other, and the
interval between them is filled up solid with cast iron, which
Page 86 U. S. 294
also covers the outer coils or rows of tubes to the thickness of
half or three-quarters of an inch, as shown in Figure 2. This
casing of metal insures a considerable uniformity of temperature in
the different parts of the coil, adding also to its strength, and
protecting it from injury by the fire."
"The exit valve, I, is so loaded that when the heating tubes, D,
D, D, D, are at the desired working temperature, and the pump, C,
is not in action, it will not be opened by the internal pressure
produced by the application of heat to the mixture; and therefore,
when the pump, C, is not in action, nothing escapes from the value,
I, if the temperature be not too high. But when the pump forces
fresh mixture into one end, J, of the heating tubes, D, D, D, D,
the exit valve, I, is thereby forced open to allow an equal amount
of the mixture, which has been operated upon, to escape out of the
cooling tubes, H, H, at the other end of the apparatus. No steam or
air should be allowed to accumulate in the tubes, which should be
kept entirely full of the mixture. For this purpose, whenever it
may be required, the speed of the pump should be increased, so that
the current through the tubes may be made sufficiently rapid to
carry out with it any air remaining in them."
"Although the decomposition of the neutral facts by water takes
place with
great quickness at the proper heat, yet I
prefer that the pump, C, should be worked at such a rate
in proportion to the length or capacity of the heating tubes, D, D,
D, D, that the mixture, while flowing through them, should be
maintained at the desired temperature for
ten minutes
before it passes into the refrigerator or cooling parts, H, H, of
the apparatus."
"The melting point of lead has been mentioned as the proper heat
to be used in this operation, because it has been found to give
good results. But the change of fatty matters into fat acid and
glycerin takes place with some materials (such as palm oil) at, or
below, the melting point of bismuth, yet the heat has been carried
considerably above the melting point of lead without any apparent
injury, and the decomposing action of the water becomes more
powerful as the heat is increased.
By starting the apparatus at
a low heat, and gradually increasing it, the temperature giving
products most suitable to the intended application of the fatty
body employed, can easily be determined."
"To indicate the temperature of the tubes D, D, D, D, I have
found the successive melting of metals and other substances of
Page 86 U. S. 295
different and known degrees of fusibility to be convenient in
practice; several holes, half an inch in diameter, and two or three
inches deep, are bored into the solid parts of the castings
surrounding the tubes, each hole being charged with a different
substance. The series I have used consist of tin, melting about
440� F.; bismuth at about 510� F.; lead at about 612� F.; and
nitrate of potash at about 660� F. A straight piece of iron wire,
passing through the side of the furnace to the bottom of each of
the holes, enables the workmen to feel which of the substances are
melted and to regulate the fire accordingly. It is important for
the quickness and perfection of the decomposition that the oil and
water, during their entire passage through the heating tubes,
should remain in the same state of intimate mixture in which they
enter them. I therefore prefer to place the series of heating tubes
in a vertical position, so that any partial separation which may
take place, while the liquids pass up one tube, may be counteracted
as they pass down the next. I believe that it will be found useful
to fix at intervals, in the heating tubes, diaphragms pierced with
numerous small holes, so that liquids, being forced through these
obstructions with great velocity, may be thoroughly mixed
together."
"I deem it prudent to test the strength of the apparatus by a
pressure of ten thousand pounds to the square inch, before taking
it into use; but I believe that the working pressure necessary in
using the heat I have mentioned will not be found to exceed two
thousand pounds to the square inch."
"When it is desired to diminish the contact of the liquids with
iron, the tubes or channels of the apparatus may be lined with
copper. The hot mixture of fat acids and solution of glycerin which
escapes from the exit valve of the apparatus separates by
subsidence. The fat acids may then be washed with water, and the
solution of glycerin concentrated and purified by the usual
means."
"The fat acids thus produced may, like those obtained by other
methods, be used in the manufacture of candles and soaps, and
applied to various purposes, according to their quality; and, when
desired, they may also be first bleached by chemical agents, or
purified by distillation, in a current of steam or in a vacuum, as
is now well understood. I prefer that the fatty bodies should be
previously deprived, as far as practicable, of such impurities as
would cause the discoloration of the fat acids
Page 86 U. S. 296
produced; but when the fat acids are to be finally purified by
distillation this preliminary purification is of less
importance."
"When the sulphuric acid, nitrous fumes, or other corrosive
agent shall have been used for purifying, hardening, or otherwise
preparing the fatty body to be operated upon, I take care that all
traces of it shall be washed out, or neutralized, before passing it
through the apparatus."
"Some fatty bodies (particularly when impure) generate, during
the process, a portion of acetic or other soluble acid, which might
tend to injure the iron tubes; in such cases, I add a corresponding
quantity of alkaline or basic matter to the water and oil before
they are pumped into the tubes."
"Having now described the nature of my said invention, and the
manner of performing the same, I hereby declare that"
"
I claim as of my invention, the manufacturing of fat acids
and glycerin from fatty bodies by the action of water at a high
temperature and pressure."
"R. A. TILGHMAN"
The answers to the bill of Tilghman, which set forth his patent,
denied that Tilghman had applied his improvement to practical
use;
Alleged that the manufacturing of fat acids and glycerin from
fatty bodies by the action of water at a high temperature and
pressure, cannot be accomplished so as to be practically useful, if
it can at all, by the method and apparatus described in said
letters patent;
Alleged that all attempts to carry on the manufacture of fatty
acids by means of the apparatus and method described in said
letters patent had failed;
Denied that the defendant had been using the improvement of
Tilghman, or "any method in construction or
operation
substantially the same,
otherwise than was thereinafter
alleged," but admitted that he
"used
water at a high temperature, and steam, and
such pressure as arises from the expansive force of
hot water or steam in a
close vessel, under and
in pursuance of a patent of Wright & Fouche, January 25,
1859;"
Alleged that "the action of
water highly heated in a
close
Page 86 U. S. 297
vessel upon very many substances to decompose them, and
upon fats and oils," was, prior to Tilghman's invention, well known
to chemists &c., and was described in printed publications;
Alleged that before the invention of Tilghman
"the use of a close vessel of such strength as to resist the
pressure of the water when heated, or
any needed pressure
when using water to decompose
other substances, was known
to and practiced by men of science and manufacturers in the United
States and elsewhere;"
Alleged that the said quality of highly heated water thus used
is an elementary principle, and
not patentable;
Alleged that the mode and means described in the specification
as the best means of carrying the invention into effect was
dangerous, owing to the degree of heat required.
It also referred to numerous prior patents, and contained
extracts from publications to show that Tilghman's invention had
been anticipated. Among the extracts were:
1st. Extracts showing use of digesters, for heating water to
high temperature and still retaining it in a
liquid
state;
2d. Extracts showing use of digesters for
rendering raw
fat or removing the membranous and cellular matter, and thus
purifying it;
3d. Extracts from text books and writers, stating generally that
neutral fats can be decomposed into fat acids and glycerin, and
that in the act of decomposition the elements of the water are
taken up by the fat acids and glycerin;
4th. Extracts to show that alkaline saponification decomposes
neutral fat into soap and glycerin, which soap can afterwards be
decomposed into fat acid, and also to show that the
alkaline
saponification can be better effected in a close vessel under
pressure;
5th. Extracts stating that fats can be distilled in the presence
of steam into fat acids, which are passed over as vapors and
condensed in the still.
The patent of
Wright & Fouche, dated January 25,
1859, under which the defendant, Mitchell, in his answer as above
condensed, asserted that he was working, was thus:
Page 86 U. S. 298
"TO ALL TO WHOM IT MAY CONCERN:"
"Be it known that we, Robert Alfred Wright civil engineer, and
Louis Jules Fouche, steam boiler maker, of Paris, in the Empire of
France, have invented 'a new apparatus, destined to produce
chemical decompositions by means of superheated steam and water,'
and we do hereby declare that the following is a full, clear, and
exact description of the same, reference being had to the annexed
sheet of drawings, making a part of the same."
"The apparatus, which is the object of the present patent to
secure, is susceptible of several industrial applications; but as
it is chiefly intended for the
decomposition of fatty
substances into fatty acids and glycerin, we will describe it
as applied to that purpose."
"This invention is represented in the annexed drawing, which
shows the elevation of the apparatus complete. [
Footnote 2]"
"The dimensions of the apparatus may vary with the various
purposes to which it may be applied."
"
a is a metal (iron or copper) boiler of any form
whatever, placed in a furnace in order to be heated by a naked
fire; this boiler has sides
sufficiently strong to resist a
pressure of from ten to twenty atmospheres; [
Footnote 3] it is of a variable capacity,
according to the requirements of the manufacture, and it may have
its interior lined with lead or by any other metal which will not
be attacked by the fatty bodies which are to be introduced and
produced therein;
b, hearth;
c, ashpit;
d, dipping pipe, furnished with a cock to empty the
apparatus by pressure;
e, e, manhole, serving for cleaning
the cylindrical vessel
a, and for the introduction of
substances, if required;
f, metal tube (of iron or copper)
connecting the bottom of the boiler a with the bottom of the
cylinder
h; g, metal tube of ascension, conducting the
superheated water from the boiler
a to the upper part of
cylinder
h. This tube is terminated in the interior of the
cylinder
h by a rose jet, or, more simply, holes are made
in the extremity so as to distribute the water uniformly in the
cylinder
h and to ensure a molecular or finely subdivided
contact between the superheated water and the substance submitted
to
Page 86 U. S. 299
the operation;
h, iron or copper upper cylinder, which
should, like boiler
a, be able to resist a pressure of
from ten to twenty atmospheres. The cylinder
h receives
the substances to be treated;
i, funnel, furnished with a
tube and with a cock, serving for the introduction of the
substances to be treated into the cylinder
h -- that is,
when this substance is of such a nature"
image:b
"as to be introduced through a small aperture;
k,
manhole, serving for cleaning the cylinder
h, and for the
introduction of substances to be treated which cannot pass through
the funnel
i;
l, safety valve;
m,
manometer or pressure gauge, indicating the pressure
Page 86 U. S. 300
in the whole of the apparatus;
n, n, cocks serving to
indicate the height and level of the substance and of the water in
cylinder
h; o, cock serving to empty the cylinder when the
operation is completed."
`ACTION OF THE APPARATUS
"Supposing everything arranged as shown in the drawing, then, in
order to decompose fatty substances into fatty acids and into
glycerin, the boiler
a is completely filled with water.
The cylinder
h is filled with water up to one third of its
height, and it is then filled up to the level of the upper cock
with the fatty bodies to be decomposed. The introduction of the
fatty bodies takes place, as we have said, either through the
funnel
i or by the manhole
k. The boiler
a is then gradually heated till the pressure gauge
indicates a pressure of from
ten to twenty atmospheres,
according to the nature of the substances submitted to the
operation, when the following takes place:"
"The
superheated water in the boiler a acquires an
ascending motion on account of the difference in the temperature of
the two capacities
a and
h; a current is thus
created, whence it results that the
heated water in boiler
a ascends through the tube
g into the cylinder
h, and being forcibly driven out through the holes in the
rose jet, passes through the fatty bodies and descends again
through the tube
f to the bottom of the boiler
a,
where it is again warmed, in order to recommence its ascending
motion, and so on."
"When this operation has been thus continued during a length of
time which may vary from five to eight hours, according to the
nature of the fatty bodies operated on and also according to the
variation of pressure (varying from ten to twenty atmospheres), the
fatty bodies are decomposed into glycerin, which remains dissolved
in the water, and into fatty acids, which float in the cylinder
h. The contents are now emptied out and separated from
each other at the same time."
"In conclusion, we would remark that we are aware that firstly,
the decomposition of fatty bodies by
water under the influence
of heat and of pressure is a well known scientific fact. Water
is substituted for the organic basis. It forms a perfect and fixed
combination with the fatty acids, while the glycerin is dissolved
in the excess of water. Secondly, that as this chemical action
takes place under the influence of a weak
Page 86 U. S. 301
affinity, it is necessary, in addition to the above-named
physical and chemical conditions, to ensure a
perfect molecular
agitation of the whole mass, and that we wish it to be
understood that what we wish to claim and establish as of our
invention consists of an apparatus wherein the water and the fatty
matters are heated separately in two different boilers. The first
boiler is heated by the source of heat, while the second boiler is
heated by the first boiler."
"In these boilers, the agitation necessary for the
chemical
action and combination is produced by the pressure of the
heated water in the first boiler. This water circulates
continuously from this first boiler to the second boiler and from
the
second boiler to the first in a continuous and
self-acting or automatic manner, without interruption. The
characteristics of our apparatus are that it produces
agitation by
circulation alone, a continuous and
automatic circulation produced by the pressure of water."
"Lastly, our apparatus effects its chemical action in a
continuous manner, without the aid of any manual or other
assistance."
"CLAIMS. Having described the nature of our invention and the
manner in which the same is to be performed, we do not claim the
application of
superheated water for decomposing fatty
bodies, nor the form of the apparatus above described, which may
vary somewhat according to conditions and circumstances; but what
we
claim as our invention is producing a continuous
automatic circulation of
highly heated water in a very
finely divided state through the bodies under treatment by means of
an apparatus constructed and employed substantially as herein shown
and described."
Tilghman insisted that the use of highly heated water under
pressure to decompose neutral fats into fat acids and glycerin was
an infringement of his patent, no matter what particular form of
apparatus might be used or what particular temperature adopted, and
no matter what particular device might be adopted to maintain the
intimate mechanical mixture of the fat and water during the
decomposing operation, these last being obvious matters of detail,
susceptible of infinite variety.
He contended that Mitchell's infringement consisted in
Page 86 U. S. 302
using highly
heated water with neutral fat in a close
vessel, and restraining or confining it there under pressure so as
to preserve the water while heated in a
liquid state, and
by means of this highly
heated liquid water to produce fat
acid and a solution of glycerin.
Mitchell, on the contrary, asserted that heat alone will
decompose fats into their elements; that the decomposition is
effected by temperatures varying from about 510� F., the melting
point of bismuth, to 610� F., the melting point of lead;
that
these were the very temperatures named by Tilghman as required
in his process; but that in the very act of separation, they will
be destroyed unless some base be present to unite with these
elements; that this destruction so produced was the
burning
up, in fact, of the fat by heat; that this effect was known to
Tilghman; and that his invention consisted merely in using heat to
decompose the fat by sheer heat, and to supply, at the instant of
decomposition, water to prevent the burning up or destruction of
the elements produced; that the single idea of Tilghman's patent
was the use of great heat to decompose and a contrivance for
immediately presenting particles of the aqueous agent to fix and
reunite into the new forms the decomposed elements; that he did
this by making an emulsion or mechanical mixture of fat and water;
that he called for a vessel of great strength, and proposed to work
under a pressure of 2,000 pounds to the square inch; and that he
loaded the safety valve to prevent the conversion of water into
steam.
Mitchell therefore contended that from the very purpose of his
patent, Tilghman was to be confined to the very ranges of heat
above described; that it was an essential condition of the patent
that there should be heat not below 510� Fahr.; [
Footnote 4] that the manipulation should be
rapid, not exceeding ten minutes; that the vessel should be
entirely filled with the mixture of fatty matter and water, and
that no steam whatever should be permitted in it.
He contended, in addition, as the Reporter understood it,
Page 86 U. S. 303
that this construction of the patent was the right one on the
face of the instrument and on principles of patent law,
independently of the alleged special design of the patentee in
framing his specification.
The evidence as to the range of heat by which fats are
destructively decomposed seemed, as the Reporter read it, to show
perhaps that it was one of conditions.
Renwick (
see infra, 86 U. S. 357)
and Rand, experts of Mitchell, fixed the working range of
Tilghman's patent at from 440� F. to 660� F.; and Rand and Wayne,
also his experts, testified that the chemical action is the same
with water heated and under pressure from 300�F. to 600�F.
From what has been said the reader will have perceived that the
first question in the case was:
The construction of the patent. Tilghman had "claimed"
as his "invention" "the manufacturing of fat acids and glycerin
from fatty bodies by the action of water at a high temperature and
pressure," and he claimed as his invention nothing besides. And in
the opening of his specification he declared that "for the purpose
of executing his invention, he subjected these bodies to the action
of water at a high temperature and pressure," and declared nothing
more.
But he had said in his specification that he "mixed the fatty
body to be operated on with from a third to a half of its bulk of
water," and that "the mixture may be placed in
any
convenient vessel in which it can be heated to the
melting
point of lead, until the operation is complete," adding that
"the vessel must be closed and of great strength, so that the
requisite amount of pressure may be applied to prevent the
conversion of the water into steam," saying nothing, however, about
keeping the vessel entirely full of the mixture.
And he had described more specially
"an" apparatus by
which "the process may be performed more
rapidly, and also
continuously, by causing the mixture of fatty matter and water to
pass through a tube
heated to the temperature already
mentioned," &c., which he said he
believed to be
the
best mode
Page 86 U. S. 304
of carrying his invention into effect, but which apparatus he
stated that he "did not intend to claim as any part of his
invention."
He had stated also that
"the melting point of lead had been mentioned as the proper heat
to be used in this operation, because it had been found to give
good results; but that the change desired took place with some
materials at or
below the melting point of bismuth,"
and "that no steam or air should be allowed to accumulate in the
tubes, which should be kept entirely full of the mixture," and that
although decomposition took place "with great quickness at the
proper heat," he "
preferred that the mixture, while
flowing through them, should be maintained at the desired
temperature for
ten minutes."
And he had said, when speaking of the matter of heat:
"By starting the apparatus at a low heat and gradually
increasing it, the temperature giving products most suitable to the
intended application of the fatty body employed can be
determined."
Was, then, the invention claimed (a process) so inseparably
connected with certain means, that is to say, with certain and
specific degrees of high temperature, or fullness of
vessels or tubes, or rapidity of manipulation, as that, unless it
was effected through those same specific degrees of high
temperature, or fullness of vessels or tubes, or shortness of time,
it could not be effected under the patent at all?
If this question was to be answered affirmatively, there was no
necessity to make a single inquiry further -- there was an end of
the complainant's case, though it might be admitted that the
defendant was doing exactly that which in the claim to his patent
Tilghman claimed as
his invention, to-wit the
"manufacturing of fat acids and glycerin from fatty bodies by the
action of water at a high temperature and pressure." For however
practical Tilghman's exact methods and exact means might be -- that
is to say, however much and well reduced into use -- the defendant
confessedly was not using exactly the same methods, or exactly
Page 86 U. S. 305
the same means, in the particulars just mentioned, but was using
methods and means different, confessedly, in some details of both.
Plainly he did not infringe.
But if this first question was not to be answered affirmatively
-- if the patent was to be construed broadly rather than closely --
if Tilghman's invention was the manufacturing of fat acids and
glycerin from fatty bodies by the action of water at a [any] high
temperature, by "any convenient" vessel, and irrespective of
manipulation in a limited time, and of tubes or vessels kept
constantly and entirely full of the mixture, then, of course,
arose,
2d.
A question whether he was an original inventor. And
if he was, then would arise,
3d.
A question whether he had given anywhere such "a full,
clear, and exact" description of his invention, and of the manner
of making and using the same, as would enable anyone skilled in the
art most nearly allied to make and use the invention, a matter
required by the Patent Acts [
Footnote 5] as a condition to the validity of any patent
granted.
And if he had given such a description, then would arise, as one
not so immediately to be answered as before,
4th.
A question whether the defendant infringed the patent
of Tilghman.
It will be seen [
Footnote 6]
that this Court, in giving its judgment, took the first view of the
case -- that is to say, construed the patent closely -- so that the
other questions possible to have arisen in the case did not perhaps
arise, nor indeed any question but the great one of the
construction of the patent.
Nevertheless, a great body of evidence was given on the
assumption that the other view -- that which gave to the patent the
broad construction claimed for it by the patentee -- was the true
one, or might be taken by the court. The case was argued largely on
that assumption, and the questions which would necessarily arise in
that view are discussed very fully in the opinion given in the
case. [
Footnote 7]
Some of the evidence is therefore perhaps proper to be
Page 86 U. S. 306
mentioned, in mentioning which the Reporter begs leave to say
that the evidence was in some parts conflicting; that in his
limited space he can present it much less perfectly than he could
desire, and as with larger space he would not fail to endeavor to
do. [
Footnote 8] He has also to
say that in some of its parts, the case presented recondite matters
of chemical science; matters which he confesses that he understands
but little, and is perhaps unable to understand much more. If in
any points, therefore, he has fallen into error, he asks for excuse
from anyone whom he may either mislead or fail to lead at all.
It is requisite to state that Richard Albert Tilghman, the
patentee, was a citizen of Philadelphia, and brought up a practical
chemist; that having, as he conceived, made the discovery that he
could
by the action of water at a high temperature and
pressure produce free fat acids and solution of glycerin from
fatty and oily bodies which contained glycerin as their base, he
went in 1853 to England, and there, March 25, 1854, obtained a
patent from the British government for his invention. In the same
year, he got patents for the same invention from the governments of
the United States, of France, and of Belgium; that granted by the
United States being given at
supra, p.
86 U. S. 291.
He was in Europe and America alternately, from 1853 to 1859, and
returned to the United States in August or September of the year
last named.
I
ORIGINALITY OF INVENTION
THE COMPLAINANT'S SIDE OF THE QUESTION
The fact that Tilghman was the person who first distinctly
observed and publicly announced that water, in a liquid state, at a
high temperature and under pressure, would of itself and without
the aid of chemical substances separate natural fat into its
constituents of fat acids and glycerin, did
Page 86 U. S. 307
not, as the Reporter read the proofs, seem to be open to well
founded question.
Tilghman relied on the following evidence:
I. SCIENTIFIC TREATISES.
Among these the following were specially quoted:
1.
Richardson & Watts' Chemistry Applied to the
Arts, London, 1863, [
Footnote
9] where it is thus said:
"The only perfectly unobjectionable mode of obtaining glycerin,
inasmuch as it alone insures the entire absence of mineral
impurities, is the decomposition of the fats by the vapor of water
at a high temperature. This mode of decomposition was first adopted
as a means of obtaining fatty acids and glycerin by Mr. Tilghman in
1854."
2.
Musprat's Chemistry, London, 1856-1858, article
"Glycerin," [
Footnote 10]
where it is thus said:
"A much more economical method is that introduced by Mr.
Tilghman in 1854. By this process, the fatty bodies are broken up
into acid and basic substances, through the agency of heat,
pressure, and steam."
3.
Watts' Dictionary of Chemistry, London, 1864,
[
Footnote 11] article
"Glycerin," where it is thus said:
"By heating fats with water or with steam. This is the only
unobjectionable method of obtaining glycerin, inasmuch as it alone
insures the entire absence of mineral impurities. It was first
carried out by Mr. Tilghman in the following manner."
Tilghman's mode of working with the coil apparatus is then
described.
II. MEN OF SCIENCE.
1.
The Paris jury of savants, at the Exposition of
1855, when speaking of Chevreul, the eminent French chemist,
say:
"We can affirm without fear of contradiction
that with the
exception of the undertaking of the saponification of the fatty
bodies by water, which remained unknown to him, he has
indicated in a
Page 86 U. S. 308
clear and precise manner all the scientific bases upon which
depend the different methods of practical manufacture of the fat
acids employed for making candles."
And speaking of Tilghman, under the head of "Aqueous
saponification in a close vessel," the same jury said:
"
It was Mr. Richard Albert Tilghman, chemist, of
Philadelphia, who was the first who had the idea of applying this
reaction on a large scale. In his patent taken in London, the
25th of March, 1854, he thus sets forth his discovery, and his
manner of operating:"
" My invention consists in a new method of obtaining free fat
acids and solution of glycerin from animal and vegetable fatty and
oily bodies which have glycerin as their base."
" My invention consists in exposing the aforesaid fats and oils
to the action of water at a high temperature and pressure, the
effect of which is to cause the combination of the water with the
elements of the neutral fats, so as to produce at the same time
free fat acids and solution of glycerin."
2.
Professor J. C. Booth, analytical chemist, of
Philadelphia, called and recalled, was thus in substance
interrogated, and thus in substance answered:
"Q. With whom did you study chemistry, and where? How long have
you been engaged in the profession of analytical chemist? What
posts, if any, in public institutions have you held, and what works
or papers have you written on chemistry?"
"A. I studied chemistry with Wohler, in Cassel, Germany, and
with Professor Magnus, in Berlin, during 1833, 1834, and 1835. From
1835 to the present time, I have been engaged as professional
analytical chemist. I was professor of Chemistry applied to the
Arts in the Franklin Institute, Philadelphia, for ten years, and
Professor of Chemistry and Physics in the Central High School,
Philadelphia; I have been for the last eighteen years in the United
States Mint, and I still continue, independent of the mint, my
profession of analytical chemist. I am the author of the greater
part of the Encyclopedia of Chemistry; of a report upon the
progress of chemical manufactures made to the Smithsonian
Institute, at the request of the perpetual secretary of that
institute, Professor Henry; I also edited the translation of
Regnault's Chemistry, translating much of it myself, and annotating
it."
"Q. From your knowledge of chemistry, who would you say
Page 86 U. S. 309
was the discover of the chemical power of water in a liquid
state, at a high temperature and pressure, on fats, to produce fat
acids and glycerin?"
"A. Mr. R. A. Tilghman."
"Q. Do you know of any other person who has claimed the merit of
this discovery?"
"A. I know of no other."
"Q. Is this discovery regarded as a new and important fact in
chemistry?"
"A. It is so regarded."
"
* * * *"
3. The answer of the defendant having set up that it was shown
by a paper published in the year 1823 (Journal of Science, London,
vol. xvi, p. 172), entitled, "Change of Fat in Perkins's Engine by
Water, Heat, and Pressure," that Tilghman had been anticipated in
his discovery, and, as will be hereafter seen, some reliance having
been placed on that paper, the examination of the witness thus
proceeded:
"Q. Give a list of chemical treatises that you have examined on
the subject of this discovery and its date, and particularly with a
view of showing whether it was known between 1823 and 1854, and
whether it has been known since 1854."
"A. I annex a list of standard chemical treatises, of the
highest authority, of dates between 1823 and 1854, which I have
examined. They all contain descriptions of the properties of fat
and fat acids, and the known methods of producing fat acids and
glycerin. None of them mentions the fact that fat acid and glycerin
can be produced by the action of water on fats at a high
temperature and pressure."
"I annex another list of standard chemical treatises of dates
subsequent to April 3, 1854, all of which contain mention of that
chemical fact."
"I therefore infer and conclude that that chemical fact was
first made known subsequent to 1852, an prior to April 3,
1854."
"
List of treatises published between 1823 and
1854"
"
which do not mention the chemical fact"
Dumas's Chemistry, vol. 5. Paris, 1835.
Berzelius's Chemistry, vol. 2. Brussels, 1838.
Page 86 U. S. 310
Ure's Dictionary of Chemistry. London, 1831.
Brande's Chemistry. London, 1841.
Graham's Chemistry. London and Philadelphia, 1843.
Booth's Encyclopedia of Chemistry. Philadelphia, 1850.
Regnault's Chemistry. Paris and Philadelphia, 1852.
Gerhardt's Chemistry. Paris, 1854.
Gmelin's Chemistry, vol. 7. London, 1852.
Pelouze & Fremy. Chemistry. Paris, 1850.
"
List of chemical treatises published after April 3,
1854,"
"
which do mention that chemical fact"
Comtes Rendues. Paris, April 3, 1854.
Liebig & Kopp's Year book. Giessen, 1855.
Miller's Chemistry. London, 1862.
Watts's Dictionary of Chemistry. London, 1864.
Gmelin's Chemistry, vol. 16. London, 1864.
Musprat's Dictionary of Chemistry, vol. 2. London, about
1856-1858.
Chemical Gazette. London, 1856.
"Q. State what technical works on the subject of the manufacture
of fat acid, published between 1823 and 1854, you have examined,
and whether any of them contains any description or notice of the
process of manufacturing fat acid and glycerin from fats by the
action of water at a high temperature and pressure."
"A. I have examined the following technical works, all of which
contain descriptions of the various processes for the manufacture
of fat acids. None of them mentions or refers to the process for
the manufacture of fat acid and glycerin by the action of water on
fats at a high temperature and pressure."
Chevreul & Gay Lussac's Patent. Paris, 1825.
Hibert's Encyclopedia. London, 1838.
Dumas's Chemistry, vol. 6. Paris, 1863.
Parnell's Applied Chemistry, vol. 2. London, 1844.
Knapp's Technology. London and Philadelphia, 1848.
Roret's Encyclopedia. Fat Acids. Paris, 1849.
Morfit's Chemistry of Soap and Candles, 1st edition.
Philadelphia.
Payen's Chemistry. Paris, 1851.
Official Report of London Exhibition. London, 1851.
Tomlinson's Cyclopedia of Arts. London, 1852.
Appleton's Dictionary. New York, 1852.
Ure's Dictionary of Arts. Boston, 1853.
"Q. state what technical works on the subject, published since
1854, you have examined, and whether they mention the
Page 86 U. S. 311
process of manufacturing fat acids and glycerin by the action of
water on fat at a high temperature and pressure, and to whom they
refer as the inventory of that process."
"A. I have examined the following technical works. They all
mention the water process, and refer to Tilghman as its
inventor:"
Bulletin de la Societe d'Encouragement. Paris, 1855.
Morfit's Chemistry of Soap and Candles, 2d edition. London and
Philadelphia, 1856.
Official Report of London Exhibition. London, 1863.
Richardson & Watts' Technology, vol. 1, part 3. London,
1863.
Repertory of Patent Inventions, 3d series, vol. 24, page 408.
London, 1854.
Mechanics' Magazine, vol. 61, page 111. London, 1854.
Newton's Journal of the Arts and Sciences, vol. 45. London,
1854.
Franklin Institute Journal, 3d series, vol. 29, page 36.
Philadelphia, 1855.
"Q. Please state in general terms the result of your examination
of the standard chemical and technical publications."
"A. No one of the technical treatises or chemical works,
published prior to 1854, contains any mention either of the
chemical fact of the decomposition of fat by water at a high
temperature and pressure, or of the manufacturing process founded
upon it. After 1854, both the chemical fact and the manufacturing
process are mentioned in numerous technical and chemical
publications."
The testimony of:
4.
Professor R. E. Rogers, Professor of Chemistry for
ten years in the University of Virginia; Professor of the same
science for eighteen years in the University of Pennsylvania;
editor of the last American edition of Turner's Chemistry,
5.
Professor Wolcott Gibbs, who had studied with
Professor Hare of Philadelphia; with Dr. Torrey, of New York; with
Professors Ramelsberg and Rose in Berlin, Prussia, and with Liebig
in Giessen; for ten years Professor of Chemistry and Physics in the
Free Academy in New York, and now Rumford Professor in Harvard
University,
6.
Professor F. A. Genth, student for two years with
Professor Gmelin; for two with Liebig and others; for three
Page 86 U. S. 312
years assistant to Bunsen; for two years Professor in the
University of Marburg,
7.
Professor Robert Bridges, Professor of Chemistry in
the Philadelphia College of Pharmacy; editor of Graham's Chemistry,
and of several editions of Fowne's Chemistry -- all sustained the
assertion of Professor Booth as to the originality of Tilghman with
the invention.
Professor Gibbs thus testified:
"Q. state when and by whom your attention was first called to
the question of the novelty of the plaintiff's patented invention,
as affected by defendant's exhibits. State whether you then made a
full investigation of the subject, and a report, and state the
substance of any such report."
"A. My attention thereto was first called by Mr. Mitchell, the
defendant, in the early part of the year 1863. I then made a full
investigation of the subject at his request, and gave him a written
opinion, the substance of which was
that the plaintiff's
invention was new."
8.
The testimony of the Patent Office. In 1858, Mr.
Werk, a manufacturer of candles in Cincinnati and afterwards sued
by Tilghman as an infringer of his patent, applied to the Patent
Office for an improved treatment of fatty acids through the aqueous
process. He was thus replied to by the Honorable Joseph Holt, then
Commissioner of Patents:
"UNITED STATES PATENT OFFICE"
"June 26th, 1858"
"SIR: Your application for a patent for an improved treatment of
fatty acids has been examined. You are referred to Reganault's
Chemistry, vol. ii, p. 1594; to Payen's Chemie Industrielle, p.
771, and to the patents of R. A. Tilghman, January, 1855, and
October, 1854. Mr. T. is the acknowledged discoverer of this
process. The application is refused for want of novelty."
"Respectfully yours &c.,"
"J. HOLT, Commissioner"
"M. WERK, ESQ."
9.
The London International Exhibition of 1862. At this
exhibition, one of the juries, reporting on the subject of oils,
fats, wax, and their products, and referring to the efforts
Page 86 U. S. 313
made "as early as 1855," by M. De Milly, to modify the process
of saponification by means of lime, said:
"Instead of effecting this decomposition at a temperature of
212�, and employing 14 percent of lime, he raised the temperature
by working under pressure and employing only 4 percent of
lime."
"At the present time, M. De Milly has indeed reduced the
proportion of lime to 21 1/2 percent. This process has been
imitated in Austria. Undoubtedly it constitutes a real improvement
upon the ordinary method of saponification by lime,
but in
spite of this considerable improvement, which is in fact but a
combination of Mr. Tilghman's mode of saponification by water at a
high temperature [
Footnote
12] combined with the lime process, we cannot believe that
these two methods of saponification, under any modification at
present attempted, can, in an
economical point of view,
successfully compete with the sulphuric saponification."
10.
Medal of Honor. The report of the same exhibition
[
Footnote 13] contains
this:
"
MEDALS"
"UNITED STATES: TILGHMAN,
for fatty acids obtained by
aqueous saponification."
III. MANUFACTURERS OF CANDLES.
1. Mr. G. F. Wilson, managing agent of Price & Co.'s Patent
Candle Company, at Battersea, London -- the largest candle factory
in the world -- who, it appeared, was besides a man of education
and had made the general and particular matters now under
consideration the subject of learned research, and was in the habit
of writing and lecturing upon them, affirmed that Tilghman was the
discoverer of the invention claimed by him. In a public lecture
delivered by him in January, 1856, before the Society of Arts, in
London, he said:
"In January, 1854, Mr. Tilghman, an American chemist, who has
studied all that has been published here and in France on the
subject of acidification and distillation of fatty bodies,
obtained
Page 86 U. S. 314
a patent for exposing fats and oils to the action of water at a
high temperature and under great pressure in order to cause the
combination of the water with the elements of the neutral fats so
as to produce at the same time free fat acids and solution of
glycerin. He proposed to effect this by pumping a mixture of fat
and water, by means of a force pump, through a coil of pipe heated
to about 612� Fahr., kept under a pressure of about 2,000 pounds to
the square inch; and he states that the vessel must be closed so
that the requisite amount of pressure may be applied by prevent the
conversion of water into steam. This is, all must admit,
a
beautiful, original chemical idea,
well carried
out."
The defendant, Mr. R. G. Mitchell, who was a witness,
testified that the process by water, heat, and pressure alone had
not been known to him
before the date of Tilghman's
patent, nor indeed known to him until four years afterwards. He
said:
"I have known for more than forty, years that fats were
acidified by moisture. I never knew that fat acids and glycerin
could be obtained from fats by heat, water, and pressure until I
heard of it in connection with the patent of Wright & Fouche,
in 1859."
ORIGINALITY OF INVENTION
THE DEFENDANT'S SIDE OF THE QUESTION
I. SCIENTIFIC TREATISES.
No scientific treatise was produced which denied, with mention
of Tilghman's name, or by specific reference to what he asserted to
be his, that he had discovered what in the claim to his patent he
claimed as his invention. An extract from a paper in the
Journal of Sciences, vol. xvi, p. 172, published in London
in 1823, entitled, "Change of Fat in Perkins's Engine by Water,
Heat, and Pressure," and made by the defendant an Exhibit (E) in
the case, and somewhat relied on by him, mentioned that
"Mr. Perkins used in his steam cylinder a mixture of about equal
parts of Russia tallow and olive oil to lubricate the piston and
diminish friction; that the mixture was consequently
Page 86 U. S. 315
exposed to the action of steam at considerable pressure and
temperature, and, being carried on by steam, it was found in the
water, giving rise to peculiar appearances."
A particular account, too long to be here inserted, was
annexed.
II. MEN OF SCIENCE.
1.
Professor P. H. Vanderweyde, a native of Holland,
educated in chemistry at the Royal University of Delft, M.D.,
Professor of Chemistry in the New York Medical College, and in the
Cooper Institute, and fifteen years in America, was at different
times asked and answered thus:
"Q. From your knowledge of chemistry, would you say that
complainant was the discoverer of the power of water under heat
and pressure to dissolve fats into acids and
glycerin?"
"A. The more my information about the matter has increased the
more I am convinced that the power of
water to decompose
fats into the fatty acids and glycerin was known a long time before
the date of Mr. Tilghman's patent."
"Q. Do you know, or did you ever hear of any standard chemical
treatise or book which states that complainant made any chemical
discovery as to the decomposition of fats into fat acids and
glycerin?"
"A. I do not know, nor did I ever hear of such a statement, and,
in those standard works, when Mr. Tilghman's process is mentioned
at all, it is stated simply that he took out a patent for a certain
apparatus."
"
Cross-examined"
"Q. state who was the first person, within your knowledge, who
made the explicit statement that fat acids and solution of glycerin
could be obtained for manufacturing purposes by the action of
liquid water on neutral fatty bodies at temperatures above 350�
Fahrenheit, and state when and where such statement was made."
"A. I am not aware that any other man made that precise
statement, with all the special conditions mentioned in the
question, before Mr. Tilghman."
"
* * * *"
"Q. Who was the first person who got so far as to use 'water
Page 86 U. S. 316
alone' in the practical manufacture of stearic and margaric
acid, and oleic acid, and glycerin, from neutral fat?"
"A. I know not who the first person was who practically
manufactured stearic and the other fatty acids besides glycerin,
from the fats by means of water alone; but I know that Mr. Tilghman
took a patent for that purpose. I doubt, however, if it was ever
put in practical operation. Surely not to make glycerin."
2. The defendant having put in evidence an extract from the
Journal of Science, London, 1823, vol. xvi, p. 172,
entitled "Change of Fat in Perkins's Engine by Water, Heat, and
Pressure," which paper was marked "Exhibit E" (quoted
supra, p.
86 U. S.
314),
Florence Verdin, partner of the defendant, under the
firm name of Mitchell & Co., and who testified that he had an
interest against the patent, and if in the present suit a sum of
money was decreed to be paid to the complainant, he would be, he
supposed, responsible for one-half, had testified, in 1868 in
another case (all the testimony in which was received by consent),
as follows:
"Q. Would not any manufacturer of ordinary skill and information
in his art, as current prior to 1854, have known from Exhibit E
that fat acids and glycerin were produced by the action of water at
a high temperature and pressure, and does not the presence of
acrolein involve the production of glycerin?"
"A.
I should have known it, and I cannot doubt others
would, as a person had only to subject the fat to the action of
water at a temperature and pressure named to have acidified fats;
acrolein cannot be formed without glycerin's being formed
first."
"Q. Do you know of any standard chemical treatise or book which
states that the complainant has made any chemical discovery in
reference to the decomposition of fats into fat acids and
glycerin?"
"A. I do not know of any such works which give Tilghman the
credit of being a chemical discoverer."
"Q. Did you ever hear of any standard chemical treatise or book
which ascribes to the complainant any such discovery?"
"A. I have never heard of any."
"Q. Are technical works of any value to the manufacturers
Page 86 U. S. 317
of fat acids and candles, so far as you have examined them, and
if so, what?"
"A. They have never been to me; my knowledge was always superior
to theirs; they are generally more likely to mislead the
manufacturers than to benefit them."
"Q. Is the information communicated in Tilghman's patent of 1854
of any more value to a manufacturer of fat acids and candles than
that which is found in defendant's Exhibit E?"
"A. I think there is no difference between the two, and I have
always thought, and think so yet, that the patent of Mr. Tilghman
had been copied from Exhibit E."
"
Cross-examined"
"Q. When did you first see it stated in a book or document that
highly heated water under pressure would, without the aid of
chemicals, decompose neutral fat into fat acid and a solution of
glycerin?"
"A. I don't know when."
"Q. Can you swear you ever saw that statement prior to the date
of Mr. Tilghman's patent, January, 1854?"
"A. I cannot."
3. See also testimony of Drs. Rand and Wayne,
infra,
pp.
86 U. S.
355-357.
II
CAPACITY FOR PRACTICAL USE
THE COMPLAINANT'S SIDE OF THE QUESTION
How far Tilghman's discovery or invention had been or could be
carried on so as to be practically, that is to say, commercially,
of value by the rapid manipulation described by him, or with the
very high degrees of heat which he mentioned, or with the
vessels filled with the mixture alone -- assuming that either
rapidity, or specific degrees of high heat, or entire absence of
steam from the vessel in which his mixture was to be put were an
essential part of his invention as patented -- seemed, as the
Reporter read the evidence, to be a matter less clear than that he
was the true and first discoverer of what in the claim to his
patent he claimed as his invention.
Page 86 U. S. 318
As on the first point, the evidence relied on by him was that of
books of science, and more particularly of men of science and
manufacturers of candles.
I. SCIENTIFIC TREATISES.
1.
Richardson & Watts's Chemistry (quoted
supra, p.
86 U. S. 307):
"The only perfectly unobjectionable mode of obtaining
glycerin."
2.
Musprat's Chemistry; article, "Glycerin" (quoted
ut supra): "A much more economical method is that
introduced by Mr. Tilghman."
3.
Watts's Dictionary; article, "Glycerin" (quoted
ut supra): "This is the only unobjectionable mode."
II. MEN OF SCIENCE.
1.
Professor J. C. Booth, already described, thus
testified:
"I tried the second apparatus indicated in the patent, with an
apparatus quite similar to the drawing accompanying the
specification to Mr. Tilghman's patent, except that the coil was
circular, rising in a continuous spiral coil from below upwards, so
that the exit pipe came from the upper part instead of the lower,
as indicated in said drawing."
"As we obtained at the rate of four hundred to four hundred and
fifty pounds in twenty four hours, in so small an apparatus, and as
the product consisted of fat acid and glycerin, I regard the
process as a most perfect manufacturing process -- that is, making
fat acid and glycerin in an economical manner, and adapted to
commercial uses."
"By comparing the solid fat acids obtained by the coil
apparatus, and subsequent clarification and pressure, with the
solid fat acids obtained in Grant's candle factory, in
Philadelphia, by the sulphuric saponification, I believe that the
product of the coil apparatus is fit for making candles. By
comparing the glycerin which I obtained by the coil apparatus with
several kinds of glycerin of commerce, I believe that the coil
apparatus will make a glycerin, suitable for commercial purposes,
equal to that produced by any other process, after resorting to the
usual method of purification."
2.
Professor Rogers, already described:
"I was present at the trial of the process of the
complainant,
Page 86 U. S. 319
in the coil apparatus, in company with Professors Booth and
Bridges, and Mr. R. A. Tilghman. It is my opinion, and not only my
opinion, but my thorough conviction, that it is a process
altogether adapted to carrying out the method of Mr. Tilghman."
"The odor of the products evinced nothing offensive which would
indicate the presence of acrolein as a hurtful substance, the small
amount of oxide of iron being an accidental and not necessarily
present substance, and was readily removable."
3.
Professor Bridges, already described, stated that he
had been present at the trial of the apparatus referred to; that
the trial was made at "about the temperature of the melting of
lead." He exhibited specimens of the lard stearin used, and some of
the results of the operation, describing particularly how they were
obtained. He concluded by saying:
"From the amount of the material used during the operation, and
from the character of the results, I consider the apparatus of
Tilghman as one capable of carrying on, in a practical manner, his
process."
III. MANUFACTURERS OF CANDLES.
1. In June, 1854, Tilghman exhibited his patent and his coil
apparatus to Mr. G. F. Wilson, above named as the managing director
of Price & Co.'s large candle company in England, and made
experiments with it before him. On the 13th of December, 1855,
after having thus seen it, that company agreed to pay Tilghman
�1000 sterling a year for the use of that patent, and some minor
ones of less importance that expired prior to 1859, they, Price
& Co., being free to terminate the arrangement at any time by
giving Tilghman two years' notice. They had not terminated it in
May, 1864, when the testimony to prove facts just stated was taken,
but had, since 1859, paid in each year, and in 1864 were still
paying to Tilghman the �1000 sterling for the use of his patent of
9th January, 1854, alone.
2. So a certain Monier, of Paris, one of the managing agents of
the
Societe Generale de Stearinerie, at Villette, near
Paris, having seen Tilghman's apparatus at Tilghman's laboratory in
London, in June, 1854, and samples of fat acid and
Page 86 U. S. 320
glycerin said to have been produced by it, made a preliminary
agreement with Tilghman that "after experiments had been made to
enable Monier to judge of the efficacy and reality of the
invention," a contract by which they were "to buy the absolute,
general, and exclusive license for the new processes of Mr. R. A.
Tilghman, giving him a royalty in money," should be made before a
notary. The coil apparatus was brought to Paris and worked at
Monier's factory, many experiments being made with it. It was
worked both by hand and by steam power. A contract in form was then
made between Tilghman and Monier, and 15,000 francs were paid to
Tilghman. Tilghman and his brother then attempted to make a large
apparatus at Monier's factory at Paris. This occupied nearly six
months, a good deal of what was done having been superintended by
Tilghman's brother, and not by him, he having been ill a short part
of the time, and for much the greatest absent in America. The
experiments, owing to causes about which Tilghman and Monier
disagreed, were unsuccessful, and the contract was annulled by
consent of both parties. Tilghman having returned to France, a new
contract was made with him, and 12,000 or 15,000 francs paid to
him, and more experiments made in Paris. They too were
unsuccessful, Tilghman and Monier disagreeing as before about the
cause. Tilghman being now in Philadelphia, Monier, representing
that the agreement between them was verbal, and not producing the
written contract, sued him in one of the inferior courts of Paris,
claiming damages in 25,000 francs. Judgment by default for want of
an appearance was got by Monier, and damages given in 2,000 francs.
Tilghman, in America, hearing of this, ordered an appeal to be
taken, and one was taken. The appeal, however, was not prosecuted.
A compromise was made between the parties by which 1,000 francs
were paid to Tilghman, the lawsuit discontinued, all previous
engagements made "null and of no effect," and Tilghman left free to
"reenter into the free use and enjoyment of his patents."
3.
The testimony of Charles Taylor Jones, of
Cincinnati, since
Page 86 U. S. 321
1849 a member of the firm of Gross & Dietrich, manufacturers
of candles.
"Q. State the process first employed by you for decomposing fats
into fat acids and solution of glycerin."
"A. The first process used by me was that of saponification with
about fourteen percent of lime, in open vessels, and decomposing
the lime soap thus obtained with sulphuric acid; the quantity of
sulphuric acid requisite being about two and a half pounds to each
pound of lime."
"Q. What was the next process, and what advantages had it over
the first? And why did you abandon it?"
"A. The next process was saponification under pressure of about
130 lbs. to the square inch, with six to seven percent of lime, and
a corresponding diminution of sulphuric acid. It had the advantage
over the first process of diminishing the cost of the operation
just as much as the lime and sulphuric acid was diminished. This
process was abandoned for another, which enabled me to dispense
entirely with the use of lime and sulphuric acid."
"Q. State what process you now use and what are its advantages,
and also whether you practice the said process by a license from
the complainant, and have paid and are to continue to pay him for
its use."
"A. I use the process patented to Tilghman, the advantages of
which, over all other processes known to me, are that it enables me
to produce fat acids without the use of lime or sulphuric acid. I
practice this process by a license from the complainant, and have
paid and am to continue to pay him for its use."
"Q. State how much fat has been decomposed at your factory by
the action of water only at a high temperature and corresponding
steam pressure of 300 lbs. to the square inch."
"A. About 90,000 lbs."
"Q. How much fat is treated at each charge of the apparatus? And
how much fat could you decompose per week, if working night and
day, at 300 lbs. pressure, at the same rate you have obtained in
working by daylight only?"
"A. From 6,000 lbs. to 7,000 lbs. of fat is treated at each
charge of the apparatus, and I could decompose about 150,000 lbs.
per week by continuous work. "
Page 86 U. S. 322
"Q. State how long it takes, in your apparatus, after the charge
has been heated up, to decompose it into fat acid and glycerin by
the action of water alone at 300 lbs. steam pressure."
"A. About five hours."
"Q. Would you have any difficulty in continuing to work by water
only if you desired to do so?"
"A. I think not."
"Q. Have you any specimens of stearic acid and of candles made
from fat decomposed at your factory by water only? If so, produce
them, and mark them."
"A. I have such specimens. Here they are, marked as
directed."
"Q. How much fat have you worked, in all, under the
complainant's patent when using one-half percent of lime in
addition to the action of the heated water? And how long has your
factory been working Tilghman's process?"
"A. I have treated 738,000 lbs. of fat in which a half percent
of lime was used, and I have been using Tilghman's process since
the first of November last."
"Q. Examine the first described process in the complainant's
patent, and state whether or not you would infer therefrom that the
strong vessel mentioned was to be entirely filled up with oil and
water, so as to leave no steam room whatever in the vessel."
"A. I have examined this part of the patent, and I can see
nothing in it requiring the vessel named to be completely filled
with oil and water."
"Q. State whether there are reasons, obvious to anyone
accustomed to steam boilers, why said vessels should or should not
be entirely full, and state such reasons."
"A. There are reasons which I should think would be entirely
obvious to one accustomed to steam boilers why said vessels should
not be perfectly filled with oil and water, the prominent one of
which, to my mind, would be the danger of applying even a moderate
heat to the vessel, under such circumstances, inasmuch as the
expansion of the contents under only a moderate heat might rend the
vessel asunder."
"Q. Examine the second described process in the complainant's
patent, and state whether or not you can see reasons for the
direction there given, to keep the tubes entirely full of liquid,
and not to allow steam to accumulate in them; if yea, state such
reasons in detail. "
Page 86 U. S. 323
"A. I see no reasons given therefor in that second part of the
patent. Obvious reasons for that direction occur to my mind as a
manufacturer, which are the avoidance of irregular working of the
machinery indicated, and consequently increased strain and wear of
the machinery."
"Q. Do you know the rules for calculating the strength of
cylindrical iron boilers? If yea, calculate thereby the strength of
perfectly welded iron tubes of the dimensions directed to be used
in the second described apparatus in plaintiff's patent."
"A. I know the rules which I believe to be generally adopted for
calculating the strength of boilers. By that rule, I compute the
strength of the tubes alluded to in the second part of the
plaintiff's patent at 60,000 lbs. -- that is, it would take 60,000
lbs. to burst them."
"
Cross-examined"
"Q. In the first process used by you, was not water used, and
were fats ever decomposed into fat acids and a solution of glycerin
without the intervention of water, which was always necessarily
present when glycerin was obtained, and generally used in
connection with steam?"
"A. Water was used in the first process described, but in
quantity only slightly in excess of that requisite for preparing
the milk of lime. I do not know of the decomposition of neutral
fats into fat acids and a solution of glycerin ever having been
attained without the intervention of water. Within the limits of my
experience or knowledge, steam has always been an agent in the
process."
"Q. When was the second process, described by you, first used by
yourself?"
"A. In the fall of 1859."
"Q. You state you use the process patented to Mr. Tilghman.
Describe in detail that process as used in your factory."
"A. I place the melted fat to be treated in a large vessel with
water, equal to one half the bulk or weight of the fat, or in
excess of that proportion, and subject the charge to a pressure of
steam, 300 lbs. to the square inch, for a period of about five
hours, keeping the water and fat in intimate contact by pumping the
water from the bottom to the top, and discharging it on the surface
of the fat to make its way to the bottom. I prefer, however, to use
half of one percent of lime, inasmuch
Page 86 U. S. 324
as that quantity of alkali enables me to perfect the
decomposition in four hours' working at a pressure of 250 lbs. per
square inch, with material economy of fuel, and of wear and tear of
machinery. Since ascertaining the advantages of this mode I have
adhered to it."
"Q. Describe particularly when your apparatus was first put in
operation, under whose superintendence, where made, the size,
construction, shape, materials that compose it, its capacity and
cost, the quantity of fat and water put into the apparatus at one
time, how full at each charge, and the disposition made of the
products after it was decomposed."
"A. My apparatus was first put in operation in September, 1863,
under the superintendence of R. A. Tilghman. The vessel in which
the fat is treated was made in Philadelphia. This vessel comprises
a tube of about thirty eight feet in length and thirty eight inches
in internal diameter, made of iron plates of half-inch thickness
and a copper tube of nearly the same length, and about thirty five
inches diameter, placed inside the iron tube so as to leave an
annular space of about one and a half inches between the copper and
iron vessel. The estimated capacity of the vessel is about 10,000
lbs. of oil and water, and the quantity usually put into the vessel
at one time is 6,000 lbs. of fat, and about 4,000 lbs. of water,
which is held by the copper vessel mentioned above, and serves to
fill it within about three feet of the head or top. When the
decomposition is perfected, the water holding the glycerin in
solution is discharged into its proper receptacle, and the fat
acids into their place."
"Q. Explain why two tubes are used instead of one, and why they
are of different metals."
"A. Because the cheapness of iron, and its greater strength as
compared with copper, suggested its use to resist the great
requisite pressure, and the inner vessel was introduced to save the
iron from contact with the fat acids, which would rapidly corrode
the iron and soon render such iron vessel unfit for use."
"Q. In the description of the operation now used by you, you
mention oil and water as the contents of the boiler. When no lime
is used, are the products satisfactory?"
"A. The products are satisfactory when no lime is used. I have
treated fourteen or fifteen charges of 6,000 lbs. to 7,000 lbs. of
fat, each with water alone. The reasons for adding lime in
subsequent treatments was the desire to diminish the pressure,
Page 86 U. S. 325
and this course has been persevered in not only because that
object was attained, but because an economy was effected in fuel,
labor, and time."
"Q. Do you now state that in order to make the process with the
greatest economy in practice, the aid of the pump to circulate the
water and oil freely, and the presence of lime in the proportion
described by you, are necessary?"
"A. I do not know that a less quantity of lime would not
suffice, but I do regard the use of the pump and of some lime
essential to the use of my apparatus with the greatest
economy."
"Q. By whose direction do you use the pump and the percentage of
lime now employed by you?"
"A. The pump was an original part of the apparatus named, and
its use directed by the complainant. I use the lime solely for my
own convenience and advantage, at my own instance, without
direction."
"Q. Who was present when you first employed lime in the process,
and who first suggested its use?"
"A. Some of my employees were the only ones present when lime
was first used. The suggestion of its use, I think, was made by my
foreman at the factory."
"Q. Is not lime used in the process produced by the apparatus of
Mr. Tilghman, in every instance, so far as your knowledge extends,
when said apparatus is used?"
"A. I believe it is."
"Q. Why?"
"A. I believe it is used for the same reasons that I use it --
namely to economize time and cost."
"Q. State whether anyone in your manufactory ever mixed a fatty
body with from a third to a half of its bulk of water and placed
the mixture in any convenient vessel in which it could be heated to
the melting point of lead; that is, to 600� Fahrenheit, until the
operation was completed, the product being free fat acid and a
solution of glycerin?"
"A. No."
"Q. Have you always used the pump in your apparatus?"
"A. I have invariably used the pump."
"Q. State how long it takes to heat up the charge in your
apparatus."
"A. I have not noted the time. The water is heated up to a
temperature indicated by a pressure of 250 lbs. to the square
Page 86 U. S. 326
inch before its introduction to the vessel in which the fat is
decomposed, and the pump is set to work immediately after the water
has been introduced. This water is heated in the boilers which
supply the steam pressure, and is blown up from them into the
vessel containing the fat."
"Q. In your examination in chief, you state that you have
examined the first described process in the complainant's patent
and could see nothing in it requiring the vessel named to be
completely filled with oil and water; please quote from the said
specification any part which states that the convenient vessel
therein mentioned should not be completely filled with fat and
water, or any passage implying the same."
"A. There is no part of the said specification which requires
explicitly or implicitly that the said vessel should not be
completely filled."
"Q. Do you now say that, by a plain interpretation of said
specification, as a manufacturer, you would not infer that said
vessel was to be completely filled with oil and water?"
"A. I do now say that, as a manufacturer, I would not infer that
a plain interpretation thereof would require the vessel to be
completely filled with fat and water."
"Q. Have you ever used, for the manufacture of fat acids and
glycerin, such an apparatus as is described in the second part of
the complainant's patent?"
"A. I have not."
"Q. Please quote from the complainant's patent the words
explicitly or implicitly requiring or authorizing the use of a pump
and one half percent of lime as used in complainant's apparatus,
now employed in your factory."
"A. I find no such words."
"Q. Is there anything to that effect in the patent as reduced to
practice in your factory?"
"A. I believe not, sir."
"Q. State how the steam pressure of your apparatus is produced,
and how it is applied."
"A. It is produced by cylindrical boilers, which are twenty four
inches in diameter and about thirty four feet long, of which there
are two. The steam generated in them is introduced into the upper
part of the digester, and into an angular space between the iron
and copper vessels composing the digester, the iron vessel being
closed steam tight, and the upper part of the
Page 86 U. S. 327
copper vessel sufficiently open to admit the steam directly into
contact with the charge."
"
Reexamined"
"Q. You have stated the use of the pump in the apparatus erected
by the plaintiff at your factory, to be the circulation of the
water through the oil under treatment; now state, from an
examination of the second described apparatus in Tilghman's patent,
whether or not provision has been made for producing this thorough
mixture of the fat and water before it went into the apparatus, as
well as for renewing the state of mixture, should it be necessary,
within the apparatus itself."
"A. It seems to me that provision has been made for effecting
and renewing that intimate mixture; not having used the apparatus
described in the second part of the plaintiff's patent, I cannot
speak from experience."
"Q. Has the pump employed in your apparatus ever failed to act?
Of what material is it composed?"
"A. It has not. It is composed of bronze."
IV. OTHER PROOFS.
1.
Tilghman offered to show to the defendant his coil
apparatus practically at work, and the offer was declined.
Just before the testimony had been closed, Mitchell asked for
the inspection of Tilghman's apparatus. The examiner's minutes
proceed:
"March 24, 1864. Tilghman replied:"
"That the coil apparatus is very weighty and bulky, and was
dismantled at the request of Professors Booth and Bridges the day
after the experiments therewith were tried by them in order to
enable them to examine its interior construction and dimensions;
that to get the coil apparatus again in working order and try new
experiments would require considerable time and delay the hearing;
that the defendant neglected to make his request until the moment
of adjournment on the day originally fixed for closing the
testimony; that the complainant has, however, caused the same
experiments to be repeated in a more portable apparatus, which he
produces and now formally offers to experiment with it, and try and
pertinent experiment in the presence of defendant, on Friday, March
25, at any suitable
Page 86 U. S. 328
place and hour which defendant will now indicate, it being
understood also that such experiments tried for defendant are not
to be permitted to delay the hearing."
To this offer the defendant made no reply.
Tilghman subsequently thus addressed his counsel:
"April 5, 1864"
"SIR: The only objection which the complainant had to the
repeating of his experiments on the coil apparatus was the risk of
delaying the hearing to the next term."
"As the court has ordered that the case shall still be heard
this term, though at a later day, the complainant now offers to
repeat the experiment tried by Professors Booth, Rogers, and
Bridges, in the presence of the defendant; and requests the
defendant to signify his acquiescence or refusal of this
proposition within five days. If accepted, the complainant will at
once have his apparatus put in order, and then appoint the earliest
day which may be convenient to both parties for the defendant to
visit complainant's laboratory in Philadelphia, and see the process
in action."
"Very truly yours,"
"R. A. TILGHMAN"
"G. C. GODDARD, ESQ.,"
"Solicitor for defendant, 17 William Street, New York"
And thus subsequently (enclosing a copy of the letter)
again:
"PHILADELPHIA, April 13, 1864"
"SIR: On the 5th instant I mailed to you the notice of which the
following is a copy, requesting the favor of an answer within five
days."
"For fear that you did not receive it, I now send this copy of
my former note, requesting the favor of an answer accepting or
declining my proposition within the five days after your receipt of
this present notice, inasmuch as I have other engagements to which
I wish to attend. I would also thank you to acknowledge the receipt
of my former notice, if it was received by you."
"Very respectfully yours,"
"R. A. TILGHMAN"
"G. C. GODDARD, ESQ.,"
"Solicitor for defendant, 17 William Street, New York "
Page 86 U. S. 329
Mr. Goddard, the counsel, thus replied:
"NEW YORK, April 15, 1864"
"DEAR SIR: Yours of the 13th is received, as was yours of the
4th or 5th, to which I think I made answer."
"After the use of your coil apparatus by us was declined by you,
we made arrangements which we hope will supersede the necessity of
making experiments on yours. Should we change our minds, and desire
to experiment on yours, we will advise you; but at present we do
not."
"GEORGE C. GODDARD"
"MR. A. TILGHMAN"
The minutes of testimony taken before the examiner next
contained the following:
"May 6, 1864"
"Counsel for the defendant offers to repeat the experiments in
the coil apparatus, and on the Scharling apparatus, in the presence
of complainant, and make alterations therein to make it conform to
complainant's patent, if any are necessary, it being understood
that such experiments are to be made at a time which will give
opportunity to give evidence in this cause in respect thereto. Also
to repeat the experiments on the Scharling apparatus, in
complainant's presence."
"Mr. Harding, in behalf of Mr. Tilghman, replies by giving in
evidence the offers contained in Mr. Tilghman's letter of April 13,
1864, to G. C. Goddard, Esq., the defendant's counsel, together
with the reply, April 15, 1864, of the said counsel, and further
refers to his offer to repeat the complainant's experiments on the
digester, contained in the record of the date of March 24, 1864.
And adds that, as the complainant has a complete apparatus,
constructed in accordance with his patent, the successful operation
of which he has proved by disinterested experts, and has repeated
the offer to exhibit to the defendants, he cannot see any reason
why he should occupy time in altering the apparatus now at the
defendant's works, especially since the time for closing testimony
and the day of hearing will not leave time to reopen this matter.
"
Page 86 U. S. 330
CAPACITY FOR PRACTICAL USE
THE DEFENDANT'S SIDE OF THE QUESTION
I. SCIENTIFIC TREATISES.
Nothing as to the incapacity for practical use of the invention
patented to Tilghman was derived from this source.
II. MEN OF SCIENCE.
1.
Professor Vanderweyde -- already described,
supra, p.
86 U. S. 315 --
on examination in chief, stated that he had made experiments --
Professor Doremus being present -- for testing the effects of water
on fat at a high temperature and pressure. They were careful to
follow the directions given in the specifications of Tilghman's
patent, except that they did not use the apparatus specified in it.
The experiments were not for the purpose of testing the apparatus
described. The witness said:
"The first experiment was: fat and water were placed in an iron
vessel, hermetically closed. This vessel was provided with a few
holes to place in the different substances mentioned in the patent,
by the melting of which the temperature was to be determined. The
experiment was made by raising the temperature to the melting point
of lead, keeping at that temperature for ten minutes, removing the
vessel from the fire, cooling it in water and opening it. The
result was that the fat was changed into a black substance, which
possessed the well known and very characteristic strong smell of
acrolaic acid. [Sample exhibited.] Dr. Doremus kept detailed notes.
Chemically speaking, I would declare the sample a mixture of
acrolaic, stearic, margaric, and oleic acids with water. Heat was
obtained from charcoal."
"The second experiment was in all respects similar to the first
except that the temperature was only carried up to the melting
point of tin. The result was that the fat was not so black-looking
as in the first instance; but the smell of the acrolaic acid was
not less offensive. [Sample of this result exhibited.] This sample
is the same as the former. There is a difference in color, produced
by the difference in temperature, almost 200�. "
Page 86 U. S. 331
"Doubts were entertained by both Dr. Doremus and myself if the
experiments were fair, as perhaps some parts of the iron vessel
might be exposed to a temperature somewhere above the melting point
of lead and tin; therefore it was suggested by us to procure a bath
of melted lead and place the vessel in it in order to have an equal
temperature throughout. This was done. The same experiments were
repeated as in the first instance, with the vessel immersed in the
melted lead, taking care that the lead was not heated above its
melting point, keeping a hose ready to bring in a water jet into
the fire when supposed necessary. In the first experiment in the
bath, the vessel was full; in the second, it was filled about
two-thirds, as doubts were expressed if the patent requires the
vessel to be full or not. Of the results I have the samples here.
[Samples exhibited.] In both instances, the smell of the acrolaic
acid was as strong as the results of the first experiments."
"Q. What caused or produced the acrolein in these
experiments?"
"A. As the temperature of melted lead corresponds with the
boiling point of fat, and as the boiling of fat is in fact a
chemical decomposition of the base of the fat, the glycerin, into
acrolein or acrolaic acid, it was anticipated that exposing fat to
so high a temperature would have the effect of destroying the
glycerin and to contaminate the fatty acids with so much acrolein
as to make them comparatively worthless. The result fully answered
our expectations. Acrolein is produced in no other way than by the
decomposition or destruction of glycerin. In the first two
experiments, there was a little agitation, as the vessel was
standing in the charcoal, and from time to time moved up or down to
regulate the heat; in the last two experiments, there was
considerable agitation, as the vessel was rolled about in the
melted lead in order to secure a uniform temperature."
"Q. Is the method described in said specification for producing
fat acids and glycerin, in your opinion, practical, and if not,
why?"
"A. That specification bases the treatment of fats on two
principles: one, a special, very ingenious apparatus, about the
practicability of which I, however, am much in doubt. The other,
the action of water and heat combined on fat in a close vessel. The
objection, however, is that the temperatures prescribed
Page 86 U. S. 332
in the specification are altogether too high, and that no
provision is made to keep the particles of fat and water in a
continually varying contact by means of circulation of some
kind."
"Q. Why is this contact and circulation necessary?"
"A. It has been ascertained, first by Chevreul and later by
other chemists, that fats are composed of one base, glycerin, and
three or more acids, stearic, margaric, and oleic, and that the
action of water will be sufficient to separate those substances;
the water, having a strong affinity for glycerin, has the power to
abstract this base from the fats, and Berthollot stated more than
ten years ago that water will rapidly, at 360�, or slowly at
ordinary temperature, resolve all fatty bodies into the acids and
glycerin. Circulation is only necessary to hasten the process."
"
Cross-examined"
"Q. What temperature, in your judgment, would be about as low as
it would be proper to use as a practical one for decomposing of
fats in the arts for the manufacture of candles?"
"A. When water alone is used under pressure, the most profitable
temperature ranges from 350� to 390�. When we are below this, the
time is too long. When we go beyond this, to above 400�, 430�, the
melting point of tin, 500�, the melting point of bismuth, and 615�,
the melting point of lead, as Mr. Tilghman prescribes in his
patent, we decompose the glycerin entirely destroy it and
contaminate the fatty acids with acrolein."
"Q. Prior to the experiment with what you call Mr. Tilghman's
mode, state precisely what experiments you had tried to enable you
to express an opinion as to the temperature at which fat will begin
to decompose into acrolein."
"A. I have never tried any experiments expressly for the purpose
to verify this temperature, but I have had plenty occasion, during
my labors in different laboratories, to observe this change
incidentally, and so has, I believe, every cook; but I was ahead of
the cook in making an estimate of the temperature, and always
adopting at about 620�, the boiling point of fat, or the melting
point of lead, and this view is fully confirmed by the experiments
stated."
"Q. Who took part in the experiments you have described, to
verify what you call Mr. Tilghman's process? Who was present, and
where were they tried?
Page 86 U. S. 333
"
"A. Dr. Doremus, myself, Mr. Verdin, senior (Mr. Mitchell's
partner), and two or three men assisting to regulate the fires
&c. The experiments were tried at Mr. Mitchell's factory."
"Q. Was no glycerin left undecomposed in your experiments with
what you call the Tilghman process?"
"A. In some of the four experiments there was."
"Q. Why was it left undecomposed in some and not in others?"
"A. I don't know."
"Q. Why did you not mention in your examination in chief that
you sometimes obtained glycerin?"
"A. Because I made all my statements by memory. They were quite
long, and it is very natural to forget some particular when the
attention is not called to it by a direct question, as is done
now."
"Q. Did you ever see or try Mr. Tilghman's apparatus as
described in his patent?"
"A. I like to see anyone who saw it in successful operation. I
never saw it; and it is the impression generally entertained by
those who understand those matters that it never has been, nor
never will be, except by some important modifications, or rather
change."
"Q. Name every person skilled in the art of treating fats
practically whom you know entertain and have expressed to you this
opinion."
"A. Among the practical men I know is, of course, at the head of
the list Mr. Mitchell, Mr. Verdin, and Mr. Verdin, Jr., and all the
intelligent employees in their factory. With other practical men I
had not occasion to converse on the subject, but no scientific man
will doubt that they are right."
"Q. Why do you yourself pronounce Mr. Tilghman's apparatus
impracticable?"
"A. In the first place, because it does not provide for a
circulation sufficient to bring the particles of oil and water in a
continually varying contact. In Mr. Tilghman's apparatus, the fat
is only pushed forward with the water by means of a piston, through
a long tube coiled up, escaping at one end in proportion as it is
pressed in at the other extremity. The first extremity is closed by
a safety valve charged to stand a pressure of not less than 130 to
150 atmospheres. Now, it is doubtful that if this safety valve is
once opened by the pressure of the force pump, if not by the
expansion of the steam necessarily formed
Page 86 U. S. 334
when some exit presents itself, a great deal more of the
contents will escape than is forced in at the other end. This is a
view which I cannot help entertaining till seeing it to be
erroneous by the practical operation of said apparatus, always
supposing the apparatus to be constructed exactly as the patent
describes it."
"Q. If fat or water are kept in a perfect state of mechanical
mixture while exposed to heat, is any other circulation needed to
decompose the fat?"
"A. You cannot possibly keep fat and water in a mechanical
mixture when at rest or simply pushed forward, as is the case in
Mr. Tilghman's apparatus. To keep them in a mechanical mixture, you
have continually either to bring the water from below over the fat
above, as is done by the circulation process, or may be done with
some pump, or the mixture may be stirred with some kind of wheel,
otherwise fat and water will follow the laws of their respective
specific gravities; the water below, the fat above"
"Q. Question repeated."
"A. Mechanical mixture alone will, of course, promote the
action; but when this is combined with a continual motion and
intermingling of the two substances, the action will be greatly
improved, and insofar circulation may be considered necessary."
2.
Professor Ogden Doremus, resident in New York, who
began the study of chemistry with Dr. Draper in the city just
named; who had been Professor of Chemistry in the Brooklyn Medical
College, in the New York Medical College, in the College of
Pharmacy, New York, and was now (1864) professor of the same
science in the Bellevue Medical College and the Free Academy in the
same city.
"I assisted, in February, 1864, with Professor Vanderweyde, in
performing experiments after the method described in the
specification to Tilghman's patent of 1854."
"[The witness then described at length the apparatus and the
experiments.]"
"The fatty acids produced were not in a pure state. Acrolein was
produced at each operation. It was produced by the
Page 86 U. S. 335
high temperature to which the tallow was heated in the presence
of water. The temperature, however, was not higher than that
indicated in Mr. Tilghman's specification as proper."
"
Cross-examined"
"Q. What do you know about the condition of that apparatus at
the time you tried that experiment, and of its previous use?"
"A. I know not what use it had been put to prior to the
experiment, but believed it to be in a fitting condition for an
honest investigation of the subject."
"Q. Who put the fat into it?"
"A. The tallow and water were weighed out by Mr. Verdin, in the
presence of Professor Vanderweyde and myself; they were poured into
the apparatus by a workman from the story above, Dr. Vanderweyde
accompanying him, the other remaining below."
"Q. Were any means tried in your presence to satisfy you whether
any remains of fat acids might be adhering to the interior of the
vessel in the last operation in it?"
"A. The vessel was simply washed out; I felt satisfied that the
vessel was clean; my impression is, it was hot water, but I am not
certain."
"Q. Did you test any of the results of that experiment as to the
proportion of the fat acids obtained to the whole mass?"
"A. I did not; I made a rough approximation of an analysis, and
should judge there was at least five percent of acid."
3.
The Paris jury of savants, already mentioned,
[
Footnote 14] at the
Exposition of 1855, after stating that Tilghman was the first who
had the idea of undertaking, on a large scale, the saponification
of fatty bodies by water, and after describing the coil apparatus
recommended by him, said:
"Visiting the manufactory of Messrs. Monier & Co., at
Villette, near Paris, we had an opportunity of seeing the trial of
the continuous process in its application to palm oil."
"We are sorry to say that the fatty matter on coming out of the
apparatus was not at all deodorized, and, more besides than that,
that it gave out a strong odor of acrolein. From the point
Page 86 U. S. 336
of view of the quality of the products, this arrangement of
apparatus, then, by no means realized the end which the author has
proposed. Moreover, in our opinion, the chances of deterioration of
a system of apparatus of any kind which works constantly at a
temperature capable of exerting a pressure of ninety to one hundred
atmospheres are such that it is hardly possible that industry will
utilize it, even if the products which it furnishes were
irreproachable."
4.
The jury of the London International Exhibition,
already mentioned [
Footnote
15] as having given Tilghman the credit of saponification by
water, and declared that De Milly had only much improved it, added
that they doubted whether the two methods, "under any modifications
up to that time attempted, successfully compete with the sulphuric
saponification."
III. MANUFACTURERS OF CANDLES
1.
Nathaniel Ropes, resident in Cincinnati, Ohio, a
manufacturer of star candles, sometimes called adamantine candles,
and of lard oil, a witness of the defendant.
"Q. Describe the old process used in your factory by which you
obtained the fatty acids and glycerin, and describe the process now
used there."
"A. We formerly worked in an open tub with about thirteen
percent of lime and about twice that quantity of sulphuric acid; we
now operate in close tanks, copper tanks, and use about a half
percent of lime and about twice that quantity of sulphuric acid,
and have operated under a pressure of about 150 lbs. or 160 lbs. to
the square inch. But I feel satisfied in my own mind that lime
could be dispensed with altogether under a higher pressure,
probably 180 lbs. to 200 lbs., and the same result accomplished in
about the same time -- say six or seven hours -- whereas under a
pressure of only 150 lbs. it would take from twelve to twenty hours
to accomplish a like result, depending upon the quantity of water
and the quality of stock used. We have taken twenty hours, but,
with a better quality of stock and nearly double the quantity of
water, we have accomplished the result in about twelve hours; under
a higher
Page 86 U. S. 337
pressure, the time would be very much shortened. In the
twelve-hour operation, with 2,000 lbs. of prime stearin and the
same quantity of water introduced, 1,000 lbs. each time, a
beautiful result was produced. The separation was perfect and the
stock well crystallized. We have continued on since using a half
percent of lime, as we prefer doing this to adding a greater
pressure than 150 lbs. or 160 lbs. to our works, as we incur less
risk from explosion. We have not repeated the operation since then
without any lime, not because we don't think them practicable, for
I fully believe that under pressure -- say of 200 lbs. to the
square inch, which would give something like 400� Fahrenheit, I
should suppose -- as good a result could be obtained in as short a
time as with a half a pound of lime under a pressure of only 150
lbs. to the square inch. This last is, as I say, a matter of
opinion, without having tested it."
"Q. Describe your works; also describe the mode of their
operation when you first began; under whose superintendence; what
changes you made in its operations by experimenting therewith, and
how long you experimented therewith before finally adopting your
present mode of operation."
"A. We generate steam in an iron boiler, about thirty feet in
length and forty inches diameter. Another boiler is connected with
our copper tanks by means of iron steam pipes, with stopcocks
attached, for letting off or on the steam from the first named
boiler; steam is made to operate on the crank inside, that revolves
by means of a pulley. The steam agitates the stock inside of these
boilers. When sufficiently cooked it is forced off through pipes to
an open tub on the second floor. The tank was first brought on in
January, 1860; it was introduced under the superintendence of Mr.
B. C. Tilghman, brother of the patentee; he operated or
experimented for several months; he had never had an opportunity of
operating with lard stearin; he was willing, if I would find the
stock, to operate without any compensation, and we did so operate
for several months; after that, as long as I continued to operate,
I was to pay him, and am still to pay him twenty cents a hundred.
Mr. Tilghman desired the place and the opportunity where he could
exhibit this operation to other manufacturers, and he proposed, if
I was not satisfied with the operation and the working of the
apparatus, to take it away without expense to me; but I was so well
satisfied with it that I purchased
Page 86 U. S. 338
of him the tank and its connections probably five or six months
after its first introduction -- in August, 1860. I have made no
particular changes since that time, with the exception of
introducing this other tank, and from that time forward we have
continued to operate in this and no other way."
"Q. State when you first introduced lime, and the quantity."
"A. We introduced it from the start, a half percent."
"Q. Describe the construction and the operation of the mixer or
stirrer, and whether or not the mixer is essential, in mixing
together the ingredients in your decomposing tanks, to the
decomposition of the fats."
"A. The shaft is constructed with wings, or more properly arms,
through its whole length, so that when it revolves it keeps the
whole of the stock in agitation. To show the importance of this,
the arms upon my shaft on the new tank are not sufficiently
extended, and the stock would collect at one end of it, and we
would have to take off the main head and clear it out. I am now
extending the shaft in my new boiler to its full extent, so that
the stock may be well agitated throughout the full extent of the
boiler. We have had no trouble with the small boiler, which was
constructed under Mr. Tilghman's directions. This fault that I
speak of was only with my new tank. Under this mode of operation,
which I have adopted, the mixer or stirrer is essential to the
decomposition of the fat. At the same time, other apparatus might
possibly be constructed in which the mixer or stirrer might be
dispensed with."
"Q. In the boiler furnished by Mr. Tilghman, or in your own
tanks, state whether or not you have ever produced free fatty acids
or glycerin without the use of the stirrer or agitator just
described."
"A. No sir, we never have. We have never tested it without the
use of the stirrer. We never have attempted it."
"Q. State whether or not, after your process is completed, the
glycerin water contains free fatty acids; if yea, how are the free
fat acids separated from the glycerin water?"
"A. I don't think there is any free fat acids connected with the
glycerin water. They are separated by the process."
"Q. State whether or not water is used in the old process as
well as in the new."
"A. It could not be used to the same advantage as under the new.
If I understand Mr. Tilghman's process, it is to produce
Page 86 U. S. 339
a free fat acid with one operation, under pressure, either with
or without lime; but if so much lime is used as to produce a lime
soap, it goes without his process, right or wrong. Of course water
is used in the old process, but in diminished quantities. We dilute
our sulphuric acid with water, and a sufficiency is used, of
course, to boil up the lime soap."
"Q. In the practical operation of your process, as introduced by
Mr. Tilghman, state whether or not you use any other agents than
those employed formerly in the old process."
"A. No, sir; none other. No other agents, and these (with the
exception of water, which we use largely) in very small
quantities."
"Q. State where, if at any place within your personal knowledge,
soap or candles are manufactured from free fat acids produced by
the use of water alone, at a high temperature and pressure, without
the use of any alkali."
"A. I can't say that I know of any place. I don't know about
other establishments, of my own personal knowledge."
"Q. State where, if at any place, the manufacture of free fat
acids by water alone, at a high temperature and pressure, has been
tried under the direction of B. H. Tilghman or B. C. Tilghman, and
desisted or discontinued in whole or in part, and afterward some
alkali used in the process."
"A. I don't know of any place where it has been tried and been
discontinued -- that is, voluntarily discontinued."
"Q. State whether or not, in your own factory, in the two
operations you have mentioned, of twelve and twenty hours
respectively, such was the case."
"A. No, sir; we did not. We never, in our factory, adopted the
use of water alone except with a view of testing the practicability
of it. We preferred in our factory to use a half percent of lime,
with a pressure of 150 lbs. to the square inch, rather than to
subject our works to the higher pressure which would be necessary
to produce the result without lime. It is only with reference to
safety that we have not discontinued the use of lime altogether,
and subjected our works, boiler and tanks, to a higher
pressure."
"Q. State whether or not anyone in your factory has ever mixed a
fatty body with from a third to a half of its bulk of water, and
placed the mixture in any convenient vessel in which it can be
heated to the melting point of lead, until the operation
Page 86 U. S. 340
was completed, the products being free fat acids and a solution
of glycerin."
"A. No, sir."
"
Cross examined"
"Q. State as nearly as you can how many pounds of stock you have
worked into good stearic acid with the Tilghman process, and
without the use of any lime."
"A. About 8,000 lbs. altogether. About 6,000 lbs. successfully;
a very good result from 8,000 lbs."
"Q. Are you or not satisfied that the Tilghman process, without
the aid of any lime, is a practical process?"
"A. I think it is, sir."
"Q. Could you have continued to work that process without any
lime regularly and daily?"
"A. I think so, sir; yes, I think so."
"Q. Was not this 6,000 lbs. of stearic acid made into
merchantable candles? What was their character?"
"A. They were made into candles; they were first rate candles --
no better; they were unexceptionable. All were made into candles,
with the exception of about 150 lbs., which quantity of the stearic
acid was retained for Mr. Tilghman, and a portion of it to be
retained at home as a sample of what could be accomplished without
the use of lime."
"Q. Can you produce a specimen of that stearic acid?"
"A. I have a specimen here. [Marked by the commissioner.]"
"Q. How many pounds of stock have you worked with the apparatus
and process of Tilghman since you first commenced?"
"A. I took it off from my books last night, as you requested.
From February 1, 1860, to April 1, 1863, 1,127,000 lbs. under that
process."
"Q. How many pounds of lime and how many of sulphuric acid did
you save by the Tilghman process on each 100 lbs. of stock worked
by you, as compared with the old process used prior to the
introduction of Mr. Tilghman's process?"
"A. Well, we saved about twelve and a half pounds of lime and
twenty five pounds of sulphuric acid on the hundred pounds of
stock."
"Q. In your opinion, is it or not owing to the decomposing power
of highly heated water under pressure that this saving is due?
Page 86 U. S. 341
"
"A. Yes, sir; I think so."
"Q. Have you paid Mr. Tilghman twenty cents on every 100 lbs. of
fat you have worked since April, 1860? Do you continue to pay him
that amount?"
"A. I have paid him since August 1, 1860, twenty cents on every
100 lbs. I think it was from August 1, 1860, that I contracted to
pay him. I have not paid him all, but I am ready to pay him the
balance when called on. The arrangement still continues."
2.
Nathaniel Ropes, Jr., a witness of the defendant,
was also examined, and confirmed, so far as he was examined on the
same topics, the testimony of N. Ropes, his father. He stated among
other things that in using Tilghman's process, the firm generally
employed one-half percent of lime; that a saving of lime and acid
was effected by this process, as compared with the old process used
prior to the introduction of Tilghman's process, of ten and a half
to twelve and a half pounds of lime to a hundred pounds of fat;
twice that quantity of vitriol; and that this saving was due to the
chemical action of highly heated water under pressure on the fat;
and that this chemical agent of highly heated water, under
pressure, was not, so far as the witness knew, used prior to the
introduction of Tilghman's process.
3.
Florence Verdin, a partner of the defendant, already
described, manufacturer of stearic acid and candles:
"I have tried several experiments in which I followed the
specification of Tilghman's patent. There was very little glycerin,
and it was very poor. The acrolein had injured it so much that it
would not have been salable. The fatty acids also were very poor,
affected by the acrolein. Candles made from these fatty acids might
be freed from the smell of the acrolein with additional expense.
The value of the fatty acids as they come out of the vessel would
be impaired in value at least one cent per pound."
"The process described in the specification would not in my
opinion be of any value to a manufacturer of candles or of stearic
acid. The use of the apparatus as there described would not be safe
to the operatives in charge of it. There would be danger of
explosion from the heat and pressure specified. I think I
Page 86 U. S. 342
should make my will before I would operate with them. With the
heat and pressure mentioned in the specification, the valves
therein mentioned will not keep tight. The process described in
that specification is not anywhere adopted that I know of."
"
Cross-examined"
"Q. What heat are said valves exposed to in the apparatus
described in complainant's patent?"
"A. The melting point of lead."
"Q. Examine the drawing now shown you of the complainant's
patent, and state what valves in said apparatus are exposed to any
heat above 212�."
"A. There are none. I was mistaken. I had seen the drawing
before, but was under the impression that the valves were nearer to
the boiler."
"
Reexamined"
"Q. From your present knowledge of the position of the valves in
the complainant's drawing and the mode of operation, is or is not
the complainant's apparatus a practical mode of accomplishing his
object?"
"A. I think not."
4.
C. H. Grant, resident in Philadelphia, of the firm
of C. H. Grant & Co., manufacturers of adamantine candles, a
witness of the defendant, testified, in substance, among other
things, thus:
"We now use the distillation process, with the use of sulphuric
acid. From the fall of 1859 to nearly the beginning of 1862, we
used the Tilghman process, under a license from him, but not
continuously. Our interests are in his favor. We did not employ the
coil apparatus, but a cylindrical digester with spherical ends,
procured from Mr. Tilghman. We used it in connection with high
pressure, 160 lbs. to the square inch. We used the process a
portion of the time without lime. The fat during its treatment was
agitated by paddles on a shaft running through the digesters from
end to end. We voluntarily abandoned the use of the Tilghman
process because we found it was costing us too much. The process
was unprofitable -- that is to say the profits were not equal to
what they would have been by the sulphuric acid process. Mr.
Tilghman was at our manufactory frequently, and suggested all the
modes of treatment. We expected,
Page 86 U. S. 343
as well as I can recollect, to produce decomposition by water
alone in about six hours, but I think we were about twice that
time. Except possibly by double hot pressure, which we never tried,
we could not by the use of water with heat and pressure alone
produce such a decomposition as would make merchantable candles. It
is my opinion that a person of ordinary skill in the branch of
manufacture to which this patent relates, with the patent as his
guide and without experiment, could not decompose fat by water,
heat, and pressure so as to produce a valuable result."
"
Cross-examined"
"There was a difference of opinion between myself and my partner
as to the policy of abandoning Tilghman's process. I always
advocated the process, and was unwilling to abandon it so long as
there was the least hope of success. Since we abandoned the
process, it has not been generally abandoned by other
manufacturers. I know of no manufacturers in the United States who
are now working by the old lime saponification process, though
there may be some. I cannot name any manufacturer in the United
States besides ourselves who has abandoned the use of Tilghman's
process after having once adopted it. I do at this moment believe
that fat can be decomposed by the action of water, at a high
temperature and pressure, into fat acids and solution of glycerin.
I believe that the intimate mixture of the fat with the water is an
important circumstance in producing this decomposition. I believe
that the higher the temperature and pressure employed, the more
quickly the decomposition will be produced. I believe that the
pressure should be made to correspond with the temperature
employed, so as to prevent the water escaping as steam. Except
agitation, which is of use only to produce mixture of the fat and
water, I do not believe that any conditions besides intimate
mixture of fat and water, a high temperature, and a pressure
sufficient to prevent the water from escaping as steam, are
necessary to produce the decomposition of fat into fat acid and
glycerin. Which of these three conditions we were unable to produce
in the apparatus we used I don't know. If we had used twice as much
water, or continued the operation twice as long, or taken a second
charge of water, I believe that we would have made better
decomposition. "
Page 86 U. S. 344
5.
Mr. E. S. Wayne, manufacturer of candles in
Cincinnati, a witness of the defendant, testified that Tilghman's
process with the coil apparatus was practical but not
economical.
6. Soon after the issue of his patent, Tilghman began to modify
the apparatus described in his specification. Of this it did not
appear that he made any secret. One of his letters to Messrs.
Thomas Emry & Son, manufacturers of candles in Cincinnati,
produced by the defendant, was thus:
"LONDON, June 25, 1856"
"GENTLEMEN: I have received from Mr. Davenport your favor of
30th May last. Our experiments in the factories here and in Paris
have shown that, on the large scale, the decomposition of fats by
water is more conveniently effected by modifying the apparatus
originally proposed so that the fat and water are exposed to a
comparatively lower heat and pressure for a longer time, instead of
a very high pressure for a few minutes; and a considerable quantity
of material is
treated at one charge, in an ordinary steam
boiler lined with lead or copper and provided
with an
agitator in place of using the continuously working pumps and
coil of pipes. At a pressure of 225 lbs. per inch, tallow, or palm
oil, or lard stearin is completely decomposed in five hours. In the
course of a few months we shall probably have going on at Price
& Co.'s works an apparatus on the above plan capable of
treating
several tons per day. Until my process is in
actual use in England, I have decided not to begin its introduction
into the United States, and therefore cannot at present reply to
your request as to terms of sale. As soon as
it is well
established here, I intend returning home, and will
immediately communicate with you. . . ."
"I remain, very respectfully yours,"
"R. A. TILGHMAN"
7.
Mr. G. F. Wilson, already mentioned as the managing
agent of Price & Co.'s candle works in London (which company,
as has been mentioned, paid to Tilghman �1000 sterling a year), and
whose statement in a public lecture delivered by him in January,
1856, that Tilghman's discovery, as carried out by his coil
process, would draw from all the admission that it was a beautiful,
original chemical idea,
Page 86 U. S. 345
well carried out; in that same lecture, and in immediate
sequence to this statement, added:
"It has yet to be proved how far it can compete successfully
with distillation."
Adding further:
"We have made an arrangement with Mr. Tilghman which will give
us the means of testing its commercial merits."
Mr. Wilson, in a public lecture delivered previously (of
September, 1855), after referring to the fact that until of late
times no practical modes of obtaining glycerin other than in an
impure state had existed, said:
"A new process for decomposing neutral fats
by water under
great pressure coming under our notice, led us to look again
more closely into our old distilling processes, and the doing this
showed, what we had often been on the brink of discovering, that
glycerin might be distilled."
"In
our new process the only chemical agents employed
for decomposing the neutral fat, and separating its glycerin,
are steam and heat; and the only agents used in purifying
the glycerin thus obtained are heat and steam; thus all trouble
from earthy salts or lead is escaped. Distillation, however,
purifies the impure glycerin of the old sources."
8.
Mr. Tilghman, who was examined as a witness and who
stated the fact of the agreement to pay him �1000 sterling a year,
stated further that though he had been in some of the factories of
Price & Co., he had not been in
all, nor had he been
in all the parts of all the factories which he did visit, and being
requested to speak "of his personal knowledge" of what processes
&c., Price & Co. used, stated that he had no personal
knowledge whatever as to what process they employed for decomposing
fats, what form of apparatus was used by them, or what degree of
heat.
9.
Monsieur Monier, whose
stearinerie had now
apparently failed or otherwise come to an end, thus testified:
"We made numerous experiments immediately after signing the
contract. Mr. R. A. Tilghman was present and worked with
Page 86 U. S. 346
his brother during ten or fifteen days. Mr. R. A. Tilghman, on
leaving the factory, left his brother to represent him with my firm
and to continue and direct alone the experiments described in the
patents. The results of these first experiments, as well as of
those which followed, were entirely useless and productive of no
good. They took place in our factory at Villette, near Paris, by
means of a little apparatus brought from London by Mr. Tilghman.
[Described by the witness, and obviously the coil apparatus.] It
was placed in a furnace of fireproof brick and received all the
heat of the furnace, the flame of which completely enveloped it,
and which brought it to an excessive heat, of which it was
impossible to ascertain the degree of intensity, as there was no
instrument which would indicate the degree of heat. A suction and
force pump was firmly established and fixed at some distance from
the apparatus. This pump was worked by hand, and being connected
with one end of the coil in the cast iron block, threw into the
said coil a mixture of water and fatty matter contained in a vessel
from which it drew it, and forced it to traverse all the turns of
the coil, and forced it out of the other end of the said coil
encased in the block of iron, which was, as I have already said,
heated to an excessive degree. Although the mixture of water and
fatty matter was, during its passage in the coil, subjected to a
temperature which I estimate to have been above five hundred
degrees (500�) and a pressure of more than twenty atmospheres, the
decomposition of the fatty matter was never complete, and never
produced fat acids and glycerin, but only an altered fatty matter
which, when washed, produced acrolein to such a point as to fatigue
the workmen who assisted at the experiments. The experiments, in
conformity to the indications of Mr. Tilghman, possessor of the
patent for making fat acids and glycerin, lasted about six months.
The first fifteen experiments were made by the Messrs. Tilghman,
aided by two workmen, in my presence, and they alone directed the
work; and after the departure of Mr. R. A. Tilghman, the patentee,
they were all directed by his brother. None of the numerous
experiments succeeded. After the failures with the little apparatus
brought from London by Mr. Tilghman, his brother caused to be
constructed successively three apparatus. The first was composed of
a hollow iron tube, and was made by Perkins, in London, and put in
a bath of melted lead in order to always have at least three
hundred degrees
Page 86 U. S. 347
of heat. The second, which was also composed of a hollow iron
pipe, was constructed in Paris, and put in a bath of melted zinc in
order to always have at least five hundred degrees of heat. The
third and last was constructed with the Perkins pipe divided into
three equal parts, of which each part was placed in a block of cast
iron, by Davidson, iron founder at La Villette, and under the
superintendence of Mr. Tilghman's brother. This last apparatus was
placed in a furnace of fireproof brick, constructed upon the plan
of Mr. Tilghman's brother and under his direction, and at a
temperature the elevation of which I never determined, but which
certainly much surpassed that of melted zinc. It is easy to see
that Messrs. Tilghman paid no attention to the process patented,
but made at our factory and at our expense not serious experiments,
but trials to find the means of overcoming the difficulties which
arrested them. This is shown by the fact that all which Mr.
Tilghman demanded was instantly given him, and that he often used
two kilograms of fatty matter in one day, and always without any
results. I have no plans or drawings of the apparatus which Mr.
Tilghman had made. The experiments made at our factory by Messrs.
Tilghman cost the firm of Monier & Co. more than forty thousand
francs, counting the money given to the brother, which was, I
think, between 12,000 and 15,000 francs. The contract made between
Mr. Tilghman and our firm was annulled by common consent because
the process never produced fat acids and glycerin. I affirm that it
is impossible to decompose fatty matter and obtain fat acids and
glycerin by the method indicated in Mr. Tilghman's patent."
"Sometime after the first experiments were discontinued and the
first contract annulled with Mr. Tilghman, Mr. De Fontaine Moreau,
in whom we had great confidence, announced to us the return to
Europe of Mr. Tilghman with a new process, based upon the
principles of the method already patented, and urged us earnestly
and decided the firm, much to my regret, I assure you, to join the
firm of Charles Leroy & Durand, candle manufacturers at Paris,
to whom he had already spoken, for the trial of the new process,
the success of which he said was certain, as Mr. Tilghman had
already obtained admirable results in the United States. A new
contract was made between Mr. Tilghman and my firm, representing
also Messrs. Charles Leroy & Durand, upon the same basis as the
first, Mr. De Fontaine Moreau
Page 86 U. S. 348
again representing Mr. Tilghman, the patentee. New experiments
were made at La Villette by Mr. Tilghman's brother during two or
three months, and, like the first, produced neither fat acids nor
glycerin."
"In my opinion, a mixture of fatty bodies and water, exposed in
a close vessel at a high temperature, and under a strong pressure,
cannot decompose the fatty bodies to the point of producing fat
acids and glycerin."
10.
Mitchell offered to show to the complainant operations
with an apparatus alleged by Mitchell to have been made in
accordance with the specification in the complainant's patent.
Which offer, for certain reasons stated, the complainant declined.
[The history of this matter appears
supra, pp.
86 U. S.
327-329.]
REDUCTION TO PRACTICAL USE
REBUTTAL BY THE COMPLAINANT
1. To rebut the testimony of Monier given in 1867, Tilghman
proved that suspecting that a certain De Milly, a large
manufacturer of candles in France, was using his patent, he had
requested his agent, Mr. Fontaine Moreau, to inquire how this was;
that Mr. Fontaine Moreau had inquired of Monier, and that Monier
had thus answered him:
"SOCIETE GENERALE DE STEARINERIE"
"LA VILLETTE (near Paris), July 17, 1857"
"MY DEAR FRIEND: I received your letter of yesterday. Not only
does De Milly work by the Tilghman process, but also he has sold to
many candle manufacturers, amongst others to MM. Petit &
Lemoult, the right to work his patent in France in their factory at
Grenelle. Mr. De Milly has also sold in Belgium and in Austria, so
that while the Messrs. Tilghman are in London and suspect nothing,
Mr. De Milly reaps a harvest in selling that which he has stolen
from them. But what can anyone here say of all this so long as the
Messrs. Tilghman are content to suffer themselves to be robbed? You
know De Milly. He does not lose his time. So he is more and more
eager to offer his processes. He has offered them to us many times.
If the Messrs. Tilghman wish to draw any profit from their patent,
they ought to prosecute him for infringement as soon as
possible.
Page 86 U. S. 349
Let them think of it seriously. I am too much interested in the
question to admit of my giving them advice which might perhaps be
misinterpreted. I must be content with wishing that Mr. Tilghman
should have the courage to defend his intellectual property -- that
is to say, his honor."
"Your very devoted"
"MONYER"
2. In regard to Tilghman's inability, when requested by the
defendant's counsel, cross-examining him as a witness, to state on
his "personal knowledge" what processes, forms of apparatus, and
what degrees of heat were used at Price & Co.'s factory, it
appeared by the testimony of the defendant Mitchell that he,
Mitchell, before July, 1865, which was before this suit arose, had
asked Tilghman why he had not personally inspected their mode of
working, and why he did not know how they worked.
"He stated in reply that Mr. Wilson, who was the managing
director of that company, was trying to invent a process of his
own, and would not allow him to inspect it."
3. One of the defenses set up in the answer, it will be
remembered, was that the apparatus described by Tilghman as the one
which he believed was the best to carry his invention into effect
was dangerous from the degree of heat required. On that point this
testimony was given:
Joseph Nason, mechanical engineer and constructor of
steam apparatus for warming buildings, for heating evaporators
&c.
"I have had two years' experience as an assistant to Mr.
Perkins, during which I have applied the apparatus to many purposes
requiring very high pressures and temperatures, among which I will
mention the generators of steam for Perkins' steam gun, heating
ovens for baking bread, and for heating various processes requiring
temperatures as high as 600� Fahrenheit and upwards. I cannot state
precisely the maximum of temperature at which such an apparatus
could be used without injurious or dangerous results, but I can say
positively not less than 650� or 700�. I have known the apparatus,
working at the temperature of 600� and upwards, to be in daily use
for many years
Page 86 U. S. 350
without injurious or dangerous results, without inconvenience,
and without any considerable depreciation. With ordinary care, I
should consider an apparatus constructed in accordance with the
descriptions and drawing of the coil apparatus in the patent of
Tilghman, a perfectly safe practical apparatus for heating the
materials to a lead melting heat. I do not see that any practical
difficulty would be incurred in its operation. So long as the
temperature be limited to the melting point of lead, an apparatus
as strongly constructed as those with which I have been familiar
would be almost absolutely secure against explosion. I should
consider such an apparatus used at lead melting heat much safer
than an ordinary form of steam boiler at a pressure say of 180
lbs."
REDUCTION TO PRACTICAL USE
EVIDENCE CLAIMED BY BOTH PARTIES
In addition to the evidence which has been grouped, as on the
preceding pages, [
Footnote
16] as tending apparently to sustain either the complainant's
case or the defendant's, there was some evidence which perhaps it
was not quite easy to say, until the construction of the patent was
settled, which side it sustained. It was claimed by each side. Such
was,
1.
A statement by Mr. Wilson, already more than once
mentioned. In the public lecture referred to on page
86 U. S. 313,
as given in January, 1856, he said:
"
I went with my chemist assistant, Mr. Payne, to see Mr.
Tilghman's little apparatus at work, and in the course of some
experiments which it led us to try, or rather to try over
again, it struck me that steam passed into the fat at a high
temperature should effect by a gentle process what Mr. Tilghman
aimed at effecting by a violent process -- the resolving of the
neutral fat into glycerin and fat acids. We proved that this was
so, and that the glycerin distilled over in company with the fat
acids, but no longer combined with them."
"In July, 1854, we took out a patent for this process, by which
many hundred tons of palm oil and other fats have now been worked,
and which has given to the arts and medicine a body never before
known, either in France or here, even in the chemist's
Page 86 U. S. 351
laboratory -- glycerin which had passed over in the form of
vapor without a trace of decomposition."
2. In July, 1857, Tilghman introduced into Price's candle
factory in London, an
ordinary long boiler with a revolving
stirrer, working at a temperature of about 400� Fahr. (225
pounds pressure), and having a capacity of treating two and a half
tons of fat daily. This appeared by a letter of his own, given in
evidence, like the one just above by the defendant.
"LONDON, July 20, 1857"
"TO M. DE FONTAINE MOREAU."
"DEAR SIR: In compliance with your request, I proceed to
describe the present state of the apparatus for decomposing fats,
as it is now being worked at Messrs. Price & Co.'s."
"As I have before mentioned to you, it consists of a boiler
thirty-two inches diameter and thirty feet long, made of iron
nine-sixteenths thick and lined with copper."
"It is heated by an interior copper serpentine,
'a retour
d'eau,' which is supplied with steam from a smaller tubular
boiler (thirty two inches diameter by ten feet long, with eighteen
flues, three inches diameter). It also has a tube pierced with
holes to inject free steam. The apparatus is worked at a pressure
of from 200 lbs. to 225 lbs. per square inch (fourteen to fifteen
atmospheres); it is charged with two and a half tons palm oil and
three quarter tons water, and the oil is perfectly decomposed in
four and a half hours after the above pressure is attained.
The
decomposition would be effected in shorter time if a larger
proportion of water was employed and if agitation and mixture of
the materials was produced by the injection of free steam from the
pierced tube, but as one object is to get the glycerin in a
strong state (the demand for glycerin being just now greater than
they can supply), they prefer for the present to work it as
described."
"Price & Co. are now thinking of putting up another
apparatus, which will probably be constructed to work at a pressure
considerably higher than above mentioned, so as to shorten the time
of decomposition, and also will
be made to work continuously,
so as to avoid loss of time in filling and emptying."
"Very truly yours,"
"R. A. TILGHMAN "
Page 86 U. S. 352
This apparatus continued at work at Price's factory down as late
as 1865, as appeared by a letter of Tilghman admitted in
evidence.
"PRICE'S PATENT CANDLE COMPANY"
"LONDON, July 13, 1865"
"R. A. TILGHMAN, ESQ."
"Philadelphia"
"DEAR SIR: I thank you for your letter of 19th of June, which I
have laid before the directors today, and they will be much obliged
if you will, as you kindly offer, procure for us tracings of the
working drawings of the apparatus now in use for your process in
America, and most approved of by you."
"You are right in supposing that the apparatus we have now at
Battersea is just what you saw or heard about when you were here.
There is a stirrer in each vessel, but plainly insufficient for the
proper contact of the water with the fatty body. I should think we
may very probably use our present digesters for the outer iron
vessels of your apparatus, putting them, of course, upon their
ends. They are very much the shape of the vessels you describe. You
do not mention what quantity of water you put to the fat. I should
think it might be well to put it in at two doses, drawing off the
first where it has taken up the bulk of the glycerin and then
finishing off with fresh water, to take the last part of it away,
using this water again as the first water for a fresh charge of
fat; but very likely you already do this. The whole of your letter
now being replied to, as well as of the previous one, was of much
interest to us. If any further matters occur to you as worth
mentioning in connection with the working of the process on your
side, we shall be much obliged by your stating them when you write
again."
"I am, dear sir, yours, faithfully,"
"J. P. WILSON"
On the 15th of May, 1860, Tilghman took out another patent. The
specification and claims in that patent were thus:
"Be it known that I, Richard Albert Tilghman, of Philadelphia,
Pennsylvania, have invented a certain
new and improved
method of decomposing fatty and oily substances, and I do
hereby declare that the following is a full and exact description
thereof: "
Page 86 U. S. 353
"My invention
relates to the process of obtaining free
fat acids and solution of glycerin from fatty substances by the
action of water at high temperatures and pressures, and it is
applicable either when water alone is used or when, in addition to
the water, a portion of alkali is used to aid the chemical
action."
"I have observed in working this process that though the action
of the water in extracting the glycerin from the fat is rapid at
first when the water is fresh and the fat contains all its
glycerin, yet as the decomposition advances and the fat gradually
loses and the water takes up the glycerin, that the decomposition
becomes slower and slower, so that to extract the last portion of
glycerin from the fat with a moderate quantity of water requires a
considerable time when the lower range of pressures are used."
"Now if we use a large proportion of water to a given quantity
of fat, the decomposition may be made sufficiently complete in a
moderate time; but this has the inconvenience of occupying a
considerable portion of the vessel or apparatus used, and thereby
diminishes the quantity of fat that can be treated therein."
"Now my invention consists in
applying the water to the
fat in
several successive portions. I remove the first
portion as soon as it becomes partly saturated with glycerin, and I
add successive portions of fresh water to the partly decomposed
fat, which fresh water is more active in taking up the last
remaining glycerin of the fat, and
thereby I render the
decomposition more rapid and complete, and can treat a larger
quantity of fat in a given apparatus."
"My invention can be applied to any of the different forms of
boilers or tanks used for the decomposition of fats by water at a
high temperature or pressure, either with or without lime, which
are now well known and need no detailed description. Instead of
putting nearly an equal or more than an equal bulk of water to the
fat, I put in say only one-third of the bulk of the fat, and after
this has been stirred up with the fat, and exposed to a high
temperature and pressure during some time (say from two to three
hours, if working at from 120 lbs. to 150 lbs. per square inch), I
allow the water to settle, and blow it out of the tank. A similar
quantity of water, which has been previously heated up to the
working temperature of the apparatus
Page 86 U. S. 354
in a separate close iron vessel, is then forced into the tank by
steam pressure, and is stirred up with the fat, and after two or
three hours' mixture is settled and blown out as before; and this
is repeated until sample show that all the glycerin has been
extracted and that the fat is well decomposed."
"I will now describe another method of applying my invention to
practice whereby the operation is made continuous -- that is, the
raw or neutral fat, either by itself or previously mixed with a
small quantity of alkali, is introduced in a continuous stream, or
nearly so, at one end of the apparatus, and the decomposed fat or
fatty acids issue continuously, or nearly so, from the other end of
the apparatus, while at the same time the water enters where the
fat acids issue, and following the opposite route to that taken by
the fat issues as a solution of glycerin from that part of the
apparatus where the raw fat enters. By this method, the fat which
has lost nearly all its glycerin is brought in contact with fresh
water containing no glycerin, and the water partly charged with
glycerin comes in contact with raw fat containing all its natural
glycerin."
"In the arrangement of this form of apparatus, there are two
features which form distinct parts of my invention. As fat and
water dissolve each other to a very slight extent, their action
upon each other is much accelerated by large surface of contact.
This large surface of contact has generally been produced by a
mechanical agitation and mixture of the two liquids, but as this
mixture is almost incompatible with a perfectly continuous form of
apparatus, I have devised plans whereby these advantages of large
contact and renewal of the water may be obtained by other means,
either in continuous or intermittent forms of apparatus."
"1. I arrange the fat and water in numerous shallow layers, so
as to obtain large surface of contact."
"2. I cause the fat and water, arranged in shallow layers, to
flow in opposite directions, so as to bring fresh water in contact
with partly decomposed fat."
"The following is a description of the
apparatus, it
being understood that if any alkali is used (which is generally in
but small proportions, say one-half to one percent of the fat), it
should previously be combined with the fat."
"[Here follows a description of the apparatus, and the schedule
proceeds:] "
Page 86 U. S. 355
"What I claim as my invention and desire to secure by letters
patent is:"
"
In the process of decomposing fats into fat acids and
glycerin by means of water at a high temperature or pressure,
either with or without the presence of an alkali,"
"1st.
Applying the water in several successive
portions, and removing those portions when partly saturated with
glycerin."
"2d.
Arranging the fat and water in shallow layers, so
as to give an increased surface of permanent contact between
them."
"3d.
Causing the fat and water arranged in shallow
layers to
flow in opposite directions, so as to bring
fresh water in contact with the partly decomposed fat."
"R. A. TILGHMAN"
In 1867, ten factories in the United States were working the
water process under license from Tilghman, but none of them
probably with heat so high as 440� Fahr., or without the aid of
certain amounts of alkali, as described by C. T. Jones,
supra, p.
86 U. S.
325.
III
AS TO THE MATTER OF INFRINGEMENT
THE COMPLAINANT'S SIDE OF THE QUESTION
On this matter, Professors Booth, Rogers, Genth, Bridges, and
Gibbs, all testified that the defendant's process was identical
with Tilghman's.
"It is the same,"
said Professor Booth.
"I consider it to be identical,"
said Professor Rogers, an expression iterated by Professors
Bridges, Genth, and Wolcott Gibbs.
THE DEFENDANT'S SIDE OF THE QUESTION
Professor B. H. Rand, lecturer on chemistry at the
Franklin Institute from 1853 to 1862; Professor of Chemistry in
Philadelphia College of Medicine, 1853 to 1858; in the Medical
Department of Pennsylvania College, 1859 to 1861, in the Central
High School, 1859 to 1864; and since 1864 in the Jefferson Medical
College:
"There is, in my opinion, a great difference in the mechanical
surroundings and conditions forming part of the processes of
Page 86 U. S. 356
the complainant and defendant, respectively. The process of the
complainant requires a very high temperature. It also requires
vessels of very great strength, 'the working pressure' being stated
as not likely to exceed '2,000 lbs. to the square inch.' The
conditions of complainant's process could not possibly be realized
in the defendant's apparatus. The complainant's patent speaks of
subjecting the mixture, in the continuous apparatus, at the desired
temperature, for ten minutes; the defendant's requires as many
hours. Again, the requirements of the patent that"
"the vessel must be closed and of great strength, so that the
requisite amount of pressure may be applied to prevent the
conversion of the water into steam,"
and "no steam or air should be allowed to accumulate in the
tube, which should be kept entirely full of the mixture," do not
exist in defendant's processes, because the vessels employed by him
are not full, or nearly so, and steam, the source of the heat used,
is constantly present during the continuance of the processes. In
my opinion, therefore, the mode of working in the two processes is
essentially different.
"Again, it is may understanding of the patent of the
complainant, that it describes and claims a process in which the
decomposition of fats is effected by the sole action of water in
the liquid form, highly heated in close vessels."
"
With this understanding of it, it is my belief that
defendant's processes are substantially different in a chemical
sense."
It is obvious that on this matter of infringement, Professor
Rand assumes the close construction of Tilghman's patent to be the
true one. Doubtless experts of the other side assumed the broad one
to be. So that here, as in a large degree in the question of
practicalness, the construction of the patent was the fundamental
question.
In this view of Professor Rand concurred:
Mr. E. S. Renwick, residing at Milburn, New Jersey, and
occupied principally as expert in the trial of patent causes and in
soliciting patents, and
Mr. E. S. Wayne, of Cincinnati, chemist and druggist,
engaged practically and theoretically for the last thirty years in
chemistry, formerly Professor of Chemistry in the Ohio Medical
College, Cincinnati, and of pharmacy and chemistry
Page 86 U. S. 357
in the Cincinnati College of Pharmacy. Mr. Wayne, after stating
that he was fully satisfied that the patent of Tilghman described a
different process from that of Mitchell, because, among other
reasons,
"it describes a different apparatus," added on a
different topic:
"I am of the opinion that the liquid water in Tilghman's process
is of itself of no value beyond furnishing the elements of water
for the decomposition, and that heat alone is the agent causing the
decomposition of the fats by water; and the pressure he claims and
uses is the only way to obtain the heat necessary for this
decomposition. The water is only necessary so far as it furnishes
the elements of water in chemical equivalent to the fact to form
respectively fat acids and glycerin. Steam in its chemical
relations in this decomposition is equivalent and identical with
water. All that steam requires is the same temperature. This is
given to it by superheating [
Footnote 17] it to the point necessary for the
decomposition. Fat acids and glycerin is the result. Could water be
heated without pressure to the temperature necessary for the
decomposition of fatty bodies, the same result would follow as with
the use of pressure, namely, fat acids and glycerin."
"Hence, I can perceive that there is no new discovery of the
decomposition of fatty matters by the agency of water alone, and
conceive the facts in relation to it have been known, mentioned,
and experimented with prior to the complainant's patent. Water and
steam for the decomposition of fats require a high temperature, and
the higher the temperature, the more rapid the decomposition; but
the introduction of another agent in the decomposition, such as an
alkali, or water containing a small percentage of sulphuric or
sulfurous acid, or neutral lime soap, the decomposition of fats
into fat acid and glycerin will take place at a much lower
temperature than can be effected by steam or water alone."
In regard to the range of heat allowed by Tilghman's patent,
Renwick said:
Page 86 U. S. 358
"
The temperature relied upon is one exceeding the melting
point of tin (440�F.), and not exceeding the melting point of
nitrate of potash (660�F.), the temperature of the melting point of
lead (612�F.) being the temperature for general practice."
Mr. Justice Nelson, in giving the opinion of the court below,
held:
"1. That Tilghman's invention consisted of a
process
for producing free fat acids and solution of glycerin from fats and
oils."
"2. That"
"for this purpose he subjects the fatty or oily bodies to the
action of
water at a high temperature and pressure, so as
to cause the elements of these bodies to combine with water, and
thereby obtain at the same time free fat acids and glycerin."
"3. That Tilghman proposes to do this in any convenient vessel
of the requisite strength, and that although under the law he
describes two vessels or apparatus for doing it, there is no claim
for any special vessel or machine."
"4. That Tilghman's patent does not require that the vessel
should be absolutely
full of water and fat. [
Footnote 18]"
"5. That Tilghman's patent does
not require the use of a
heat so
Page 86 U. S. 359
high as melting lead, but merely prescribes it as a maximum, and
announces that no fixed degree of heat can be given, as the
different fatty or oily substances that may be used will require
different degrees, and that by starting the vessel at a low heat
and gradually increasing it, the best temperature may be
ascertained for the particular substance used."
"6. That upon a proper interpretation of the patent, the process
could be and had been proved to have been carried into successful
operation by both the means pointed out by the patentee."
"7. That"
"prior to the date of Tilghman's invention there were but two
modes known or in practical use for decomposing fatty substances
and obtaining from them fatty acids and glycerin. One called the
lime saponification, and the other known as the distillation
process,"
and that they were different from patentee's, more expensive and
tedious, and have generally gone out of use in this country and
England since appellee's invention.
"8. That Tilghman was the first person that discovered the
chemical fact that fatty or oily substances could be decompose, and
that the fatty acids and glycerin separated by the action of water
at a high temperature and under pressure."
"9. That it is immaterial to inquire whether defendant's vessel
or machinery is similar to that described in Tilghman's patent;
they constitute no part of his invention."
"10. That the defendant has manufactured fat acids and glycerin
from fatty bodies by the action of water at a high temperature and
pressure, according to the process explained by appellee in his
specification, and hence had infringed his patent."
Mr. Justice Nelson accordingly decreed for the complainant.
The case afterwards came up before Judge Blatchford on
exceptions to the master's report or otherwise. That learned
justice on different occasions said:
"It is manifest, that the defendant decomposes fatty bodies into
fat acids and glycerin by the action of water at a high temperature
and pressure, and thus uses the plaintiff's process."
As to Mr. Justice Nelson's views
"that the plaintiff's specification did not require either that
the vessel containing the mixture of water and fatty matter should
be entirely
Page 86 U. S. 360
filled therewith, or that no steam was to be permitted in
it,"
he said:
"On full consideration, I concur in his views, and have no doubt
that his interpretation of the specification in regard to them was
correct."
To the defense of want of practicalness, he said:
"The defendant has entirely failed to show that the plaintiff's
process, carried out as described in his patent, is not practicable
or practical. It was put in practical operation in London in 1857,
a patent having been taken out for it in England by the plaintiff,
January 9, 1854. It was put in operation in Cincinnati, Ohio, in
1869, and has been in use, under license from the plaintiff, in the
United States ever since, there being ten factories in the United
States working under such license."
On the other points he agreed with Mr. Justice Nelson, and in
conclusion said:
"The great merit and value of the plaintiff's invention, not
only in the manufacture of candles but as a process for obtaining
pure glycerin for use in the arts, are shown by evidence. The case
is a clear one on all points."
Decrees were finally entered for Tilghman for $335,661 as the
amount of the profits, with interest, which the defendant had made
by infringement.
The merits of Tilghman's patent had also been before Justices
McLean and Leavitt, in Ohio, in
Tilghman v. Werk, October,
1860. There was a concurrence of opinion between those judges about
the case, and Mr. Justice McLean was to deliver the opinion of the
court in it. His death having supervened, it was delivered in
February, 1862, by Leavitt, J. That learned justice said that he
had "no hesitation in concluding that the attempt to invalidate the
plaintiff's patent for want of originality had wholly failed," and
that it was shown by "actual and successful experiments," made
alike by experts and by the practical manufacturers, Ropes and
Grant, who made no mention of any difficulty from a want of
exactness in the specification as to the degree
Page 86 U. S. 361
of heat required, that free fat acids and solution of glycerin
could be produced by Tilghman's process. Referring to the language
of the specification in reference to the temperature of the heated
water, he said:
"The specification seems to be sufficiently explicit. There is a
precise degree of heat, the melting point of lead, 612� Fahr.,
recommended and prescribed as sure to produce a good result in
changing common fatty bodies to acid and glycerin; and a lower
temperature, the melting point of bismuth, 510�, when palm oil or
similar substances are to be operated upon. And it clearly does not
render the specification liable to objection for want of certainty
and clearness, that the patentee states that the degree of heat may
be carried above these figures without injury. Nor is the
sufficiency of the description impeached by the fact that the
desired result has been produced at a lower temperature of water.
There is a fixed rule given which may be safely followed, while it
is made known that the manufacturer may safely depart to some
extent, from this rule, if from experiment and a just exercise of
discretion it should be expedient to do so."
"DECREE ACCORDINGLY"
The matter came up also subsequently to all these decisions
before Mr. Justice Emmons, in the Ohio Circuit Court, in the cases
of
Tilghman v. Werk, and of
Tilghman v. Shillito.
That learned justice there said that
"were he to consider this matter uninfluenced by precedent, he
feared that he should be compelled to give the patent a more
limited construction than it had received,"
and to hold "that the claim included only those higher degrees
of heat at which lead and other substances mentioned in the patent
will melt."
He added, however, that without a violation of judicial
propriety, he could not disregard the judgments of his own court
and of the coordinate one in New York, adding:
"Especially is this so where the judge delivering the opinion
has taken so leading a part in all the discussions on the subject
in the court of last resort.
Page 86 U. S. 378
"
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
Exclusive jurisdiction, in all actions at law and suits in
equity arising under any act of Congress granting or confirming to
inventors the right to their inventions or discoveries, is
conferred upon the circuit court, subject to the condition that the
final judgment or decree in such a controversy may be removed here
for reexamination.
On the third of October, 1854, letters patent were granted to
the complainant for a new and useful improvement in processes for
purifying fatty and oily substances of animal and vegetable origin
and which contain glycerin (glyceryl) as their base. His invention,
as the patentee states, consists of a new and improved mode of
treating such substances in order to produce fat acids and solution
of glycerin which, as he says, was not known or used before his
application, and the recital of the patent is that it shall take
effect from the ninth day of January preceding the date of the
instrument. By virtue of the said letters patent, as the
complainant alleges in his bill of complaint, he acquired the
exclusive right to make and use the described improvement and to
vend the same to others to be used, and he also alleges that the
respondent, prior to the time when the bill of complaint was filed,
without his license and in violation of his rights, engaged in
making and using his patented process, and that he, the respondent,
intends to continue to make and use the same, as set forth in the
bill of complaint. Service was made and the respondent appeared and
filed an answer setting up several defenses, as follows:
1. That the complainant, on the ninth of January, 1854, was not
the original and first inventor of the improvement described in the
said letters patent.
2. That the result described in the specification and claims of
the patent cannot be accomplished, so as to be practically useful,
by the method and apparatus described in the specification.
3. That the respondent never practiced or used the patented
process of the complainant as charged in the bill of complaint, or
in any other manner. He admits that he is
Page 86 U. S. 379
engaged in manufacturing candles, and that in manufacturing such
articles he uses water and steam at high temperature, and that he
also uses such pressure as arises from the expansive force of hot
water or steam in a close vessel, but he denies that he uses any
such method, process, or apparatus as those described in the
letters patent of the complainant.
4. That the patented processes described in the specification
were well known to chemists and men of science and to manufacturers
long before the alleged invention of the complainant, and were also
used and practiced by them and were descried in printed
publications before the complainant filed his application for a
patent.
5. That the use of a close vessel of sufficient strength to
resist the pressure of water when heated, or any pressure needed
when using water to decompose other substances, was known to, and
practiced by, men of science and manufacturers in this country and
elsewhere long before the alleged invention; that highly heated
water when used as described is an elementary principle open and
free to all, and that such a principle is not one that is subject
to a patent; that a prior knowledge of the alleged invention was
possessed by many other persons, and that the same was described in
many printed publications, as fully set forth in the answer.
Issues of the kind cannot be intelligently determined without a
clear understanding of the nature and scope of the invention
secured by the letters patent, as it is the patented invention
which it is alleged the respondent has infringed, and in order to
such an understanding it becomes necessary, as a preliminary step
in the investigation, to construe and define the claims of the
patent, as the most efficient means of ascertaining the precise
nature and extent of the inquiry involved in the respective issues
presented in the pleadings.
What the patentee claims as his invention is the process of
manufacturing fat acids and glycerin from fatty or oily substances
by the action of water at a high temperature and
Page 86 U. S. 380
pressure, which, beyond doubt, is the true object of the
invention described in the specification, as plainly appears from
the description of the means employed by the patentee to decompose
the described substances and to produce the described result. His
invention, as the patentee states, consists of a process to produce
fat acids and glycerin from the described fatty and oily substances
by subjecting the substances to the action of water at a
temperature and pressure, so high as to decompose those substances
and cause the elements of the same to combine with water, and by
such means to produce fat acids and solution of glycerin, which is
the described result. Specific description is also given as to the
relative quantity of water to be used, and of the character of the
vessel to be employed, as means to create the high temperature and
pressure and to decompose the original substances, and cause the
elements of the same to combine with the water to produce the
result described in the patent. Such substances, the specification
states, must be mixed with a quantity of water, equal in bulk to
one third or one half of the fatty or oily substance to be
subjected to the patented process, and that the mixture of the
substance and the water must be placed in some convenient vessel in
which it can be heated to the melting point of lead and be kept at
that temperature until the operation is complete. Undoubtedly the
mixture may be placed in any convenient vessel of sufficient
strength to resist the internal pressure when the solution is
heated to the point described in the specification, but it is
equally clear that any vessel not strong enough to resist such a
pressure would not be a convenient one for such a purpose, nor is
anyone of less strength within the contemplation of the patentee,
as he states with emphasis that the vessel must be closed and of
great strength, so that the requisite amount of pressure may be
applied to prevent the conversion of the water into steam, and he
might have added, to prevent the vessel from bursting. High
temperature, in the view of the patentee, is indispensable, and
inasmuch as the vessel must be closed it follows that the vessel
must be one of great strength, as the high temperature
Page 86 U. S. 381
will necessarily produce very great internal pressure. Hence the
requirement is that the vessel must be one of great strength, and
the patentee suggests, as the best mode of carrying his invention
into effect, that the mixture, prepared as described, be passed
through a tube or continuous channel, heated to the before
mentioned temperature, that is, to the melting point of lead.
Figures of the several parts of the described apparatus for
performing the operation are given in the drawings, and the
inventor proceeds to state, that in applying his process and
carrying it into effect he places the fat or oil to be subjected to
the process in the receiving vessel shown in the drawings, with
from one third to one half its bulk of warm water, and to effect
the described result he employs a piston with a perforated disk,
arranged to work up and down, in the receiving vessel, which being
kept in rapid motion will cause the fat or oil and the water to
form an emulsion or intimate mechanical mixture, which is the
mixture to be subjected to the high temperature and pressure. But
the heat is to be applied in another vessel, as shown in the
drawings, and for the purpose of removing the mixture to such other
vessel the inventor employs a force pump, like those in use for
hydraulic presses, by means of which he drives the mixture into and
through a long coil of very strong iron tube, which being placed in
a furnace is continued there until the mixture is heated to the
temperature of melting lead. Attached to the opposite end of the
coil is a refrigerator or cooling apparatus, but the inventor
states that he prefers that the high temperature of the mixture
should be maintained for ten minutes before the product passes
through that part of the coil immersed in water, by which it is
cooled down from its high temperature to 210� Fahr., after which it
escapes through the exit valve to the vessel prepared to receive
the product of the patented process. High heat applied in the
manner and by the means described is unquestionably the agent
employed by the patentee to decompose the fatty and oily substances
to be subjected to the patented process, and it is equally certain
that he contemplates that the temperature
Page 86 U. S. 382
shall be so high that the fatty and oily substances, as mixed
with the water, in the manner before explained, will be decomposed
and converted into fat acids and solution of glycerin in a brief
space of time, not exceeding ten minutes, as he gives no intimation
that it will ever be necessary to continue the mixture in the
heated coil beyond that length of time.
Rapid manipulation and high heat are therefore the leading
characteristics of the described process, as the great pressure
mentioned is only the consequence of the high heat, but as the high
heat is indispensable to produce the described result, and as the
vessel containing the mixture to be heated must be closed, it is
quite obvious that the vessel must be one of very great strength,
else it would prove to be a very inconvenient one, as it would be
likely to burst. Support to that conclusion is found in the
description which the inventor gives of the character of the tubes
which he employs as the vessel for heating the mixture. He employs
coils of tube for the purpose, arranged in such a manner that a
considerable length of the same will occupy but a moderate space,
the coils being kept about a quarter of an inch apart from each
other. Tubes of the kind are made of iron, and the inventor states
that they are one inch in the external diameter with a half inch
bore, encases with solid cast iron, which also covers the outer
coils or rows of tubes to the thickness of half or three quarters
of an inch, to ensure uniformity of temperature in the different
parts of the coil and to give strength to the apparatus and to
protect it from injury by fire. Much additional confirmation to the
conclusion that the process of the patentee contemplates high heat
and rapid manipulation is also found in the other parts of the
specification. Evidently the inventor is of the opinion that the
operator must be exposed to imminent danger unless the vessel is
one of very great strength, as he states that he deems it prudent
to test the strength of the apparatus by a pressure of ten thousand
pounds to the square inch before taking it into use. Such a test he
deems prudent before using the vessel, but he expresses the opinion
that the working
Page 86 U. S. 383
pressure necessary in using the degree of heat required will not
be found to exceed two thousand pounds to the square inch, which
admission of itself is sufficient to maintain the conclusion that
high heat is the agent which the inventor in his process employs to
decompose the substances subjected to the patented process. Certain
substances, such as palm oil, the inventor represents, may be
decomposed and converted into fat acid and glycerin under his
process when the temperature is at or below the melting point a
substance but he states that the heat in decomposing such a
substance may be raised considerably above the melting point of
lead without any apparent injury, and he adds that the decomposing
action of the water becomes more powerful as the heat is
increased.
Considered as a whole, these several considerations show to a
demonstration, in the judgment of the court, that the invention
described in the specification and embodied and claimed in the
patent is the use of great heat in the manner described to
decompose the described substances when properly prepared, by being
pulverized or broken into small particles and mixed with water, and
cause the elements of the decomposed substances to unite with the
particles of the heated water by which the mixture is converted
into fat acids and solution of glycerin. Manifestly great heat,
applied in the method described, is the principal agent, but water
is an essential ingredient, as without it the product of
decomposition would be destroyed in the operation.
Evidence that the inventor contemplates that the change in the
substance shall be accomplished in a brief space of time abounds in
the specification. Ten minutes is the maximum time suggested that
the high temperature should be maintained while the mixture is
flowing through the heated tubes before it passes into the
refrigerator, but the patentee also states that it is important for
the quickness and perfection of the decomposition that the oil and
water should continue, during the passage of the emulsion through
the heating tubes, in the same state of intimate mixture as they
were when the mixture was driven into the heated coil, and to
that
Page 86 U. S. 384
end the inventor states that he prefers to place the series of
heating tubes in a vertical position, so that if any partial
separation takes place while the liquid passes up one tube, the
change may be corrected as the liquid passes down the next.
Suitable means are pointed out to indicate to the operator the
state of the heat in the tubes, and for that purpose the inventor
suggests the making of certain indicators or gauges showing the
melting point of certain metals and other substances, of different
and known degrees of fusibility, and he gives the series which he
has used, which consist of tin, melting at 440� Fahr.; bismuth,
510� Fahr.; lead, 610� or 612� Fahr.; nitrate of potash, 660�
Fahr.; and he describes the mode in which such gauges may be
constructed. Palm oil will be decomposed by heat at 510� Fahr., and
the inventor mentions that as the lowest gauge for the treatment of
any known fatty or oily substance to be subjected to the patented
process under consideration.
Ordinary fats, such as beef tallow, or the tallow of sheep,
require the heat to be raised to 612� Fahr., which is the melting
point of lead. Mention is made in the series set forth in the
specification of the melting point of tin, which is 440� Fahr., but
the mention of that chemical fact was doubtless made as a guide to
the operator in carrying up the heat to the point necessary to
decompose the respective substances, such as palm oil or the
ordinary tallows, all of which require the heat to be raised to a
point higher than the melting point of tin.
No different conclusion can be reached, as there is nothing in
the record which gives any countenance to the theory that the
melting point of tin, 440� Fahr., was given as a gauge of heat
which, under the process of the patentee, would decompose any known
fatty or oily substance in such a manner as would enable the
operator to manufacture the product described in the patent.
Substances are mentioned in the specification which, under the
described process, would require the heat to be raised to the
melting point of bismuth and to the melting point of
Page 86 U. S. 385
lead, but the specification does not make mention of any
substance of the kind which can be decomposed as required at the
melting point of tin, nor does it mention anyone which for the same
purpose would require the heat to be raised to the melting point of
the nitrate of potash. Probably the former was mentioned for the
guidance of the operator, as before explained, and it may be that
the latter was given for a corresponding purpose as the maximum
limit for the operator in raising the heat to decompose such fatty
and oily substances as the ordinary beef tallow or the tallow of
sheep, which require the heat to be raised to the melting point of
lead in order to produce a good result under the patented
process.
Two other requirements of the specification support the theory
that high heat is the principal agent of the patented process, and
that the vessel to be used for heating the mixture must be kept
closed during the process of decomposition, and be one of
sufficient strength to sustain, without bursting, an internal
pressure of at least two thousand pounds to the square inch. One is
that the exit valve is required to be so loaded that when the
heating tubes are at the desired working temperature the valve will
not be opened by the internal pressure produced by the application
of the heat to the mixture, so that when the pump is not in motion
none of the mixture will escape at the other end of the apparatus;
and the other requirement is that "no steam or air shall be allowed
to accumulate in the tubes, and that the tubes shall be kept
entirely full of the mixture."
Argument to show that the vessel used for heating the mixture
must be kept closed is unnecessary, as the terms of the
specification expressly require it, and the patentee to that end
directs that if practicable the ends of the tubes should be welded,
and if not, that they be connected by certain described joints to
accomplish the same purpose, evidently regarding a compliance with
the requirement that "the vessel must be closed" as an
indispensable condition.
Half or one third of the mixture to be subjected to the patented
process is water, and the condition set forth in the
Page 86 U. S. 386
specification is imperative that the vessel used for heating the
mixture must be closed, that the requisite amount of pressure may
be applied to prevent the water from being converted into steam;
and it is also an express condition that no steam or air should be
allowed to accumulate in the tubes, for reasons which will be
obvious to any who will carefully examine the described method of
producing the described result.
Means of a mechanical character are prescribed in the
specification for intermingling the fat and the water into what is
called an emulsion, which is the mixture to be subjected to the
patented process, but the difference between such an intermingling
of one substance with another, which may be accomplished by a
stirrer or by the churning process, and the actual union produced
by chemical affinity between two or more substances, is as wide as
one thing well can be from another. Such an intermingling of fat
with water does not work any chemical change in either substance,
as it creates at best but a temporary affinity. Consequently the
water, if the mixture is left for a sufficient length of time
undisturbed by the stirrer or piston, will separate from the
particles of fat and settle at the bottom. Widely different results
flow from chemical affinity, as such an affinity will produce a new
and distinct substance, uniting, it may be, the constituents or
properties in whole or in part of substances as different as fat
and water.
Fats consist of several constituents closely united in
indefinite proportions, of which olein, margarin, and stearin are
the only ones usually recognized and defined by chemists; the
former constituting the oily and the two latter the solid principle
of the united substance. [
Footnote 19]
These constituents or elements are held together by chemical
affinity, the consistency of the united substance depending upon
the respective proportions of the constituent parts. High heat will
overcome the affinity by which the constituents are united and
decompose the substance. Different
Page 86 U. S. 387
kinds of fat, however, require different degrees of heat to
effect the decomposition of the united substance, varying in
intensity from 510� Fahr., the melting point of bismuth, to 610� or
612� Fahr., the melting point of lead, which are the very
temperatures mentioned as required in the specification of the
complainant's patent. But it should be remarked in this connection
that the decomposition of such a substance by heat alone will not
produce fat acids or solution of glycerin. [
Footnote 20]
Free fat acids and solution of glycerin are what the patentee
promises as the result of a proper application of the patented
process. Those acids, it is conceded, are oleate, margarate, and
stearate, which, it is claimed, the process will produce, together
with the solution of glycerin, but it is clear that heat alone will
not produce either of those fat acids or the solution of glycerin,
as the three acids and the glycerin are chemically combined in the
original substance with the oxide of glyceryl as an acidifying
base. Temperatures such as described will decompose the fat, but
unless some chemical agent, such as water, lime, soda or potash, is
present to take the place of the oxide of glyceryl to acidify the
olein, the margarin, and the stearin, or to oxidize the said
several constituents and to convert the same into oxide of olein,
margarin, and stearin, neither of the fat acids required, to-wit,
oleate, margarate, or stearate, can be obtained from the
decomposition of fats by heat, as the oxide of glyceryl, which was
their base in the original substance, is separated by the Act of
decomposition; nor is it possible, unless water or its equivalent
be present when decomposition takes place, to obtain solution of
glycerin, for reasons equally conclusive through somewhat
dissimilar in the chemical sense, as the presence of water or its
equivalent is required in the latter case to hydrate the glyceryl
and convert the same into the solution of glycerin. Without the
presence of water or its equivalent constituents neither the fat
acids mentioned nor solution of glycerin will be obtained
Page 86 U. S. 388
by heat, but with it the three fat acids mentioned and solution
of glycerin will be produced if the operator complies with all the
other conditions described in the specification. [
Footnote 21]
Viewed in the light of these suggestions, as the question should
be, it is quite clear that the two conditions last named, to-wit,
that the heating vessel must be kept entirely full of the mixture
and that no steam or air must be allowed to accumulate in the
vessel employed to impart the heat, are material and indispensable
conditions of the patented method of producing fat acids and
solution of glycerin from the described substances, as without a
compliance with those requirements there might not, and probably
would not, be present when decomposition takes place any equivalent
of a base to take the place of the oxide of glyceryl and to unite
with the olein, margarin, and stearin to convert the same into the
three fat acids known as oleate, margarate, and stearate. These
three constituents in the fat, to-wit, olein, margarin, and
stearin, are combined with the oxide of glyceryl as a base, and
when decomposition is effected under the influence of heat, some
chemical agent, such as water or its equivalent must be present,
which can take the place of the oxide of glyceryl to change the
three constituents of fat just named into the oxides of olein, of
margarin, and of stearin. [
Footnote 22]
Some chemical agent must also be present to take the place of
the constituent which was combined with the glyceryl to produce the
solution of glycerin, as represented in the specification; and it
does not appear to be controverted that in all methods heretofore
practiced water or its equivalent has always been present for such
purpose, and it is manifest that the requirement that water or its
equivalent shall be present to accomplish that purpose, in the
specification, is an indispensable condition, as the new substance
would otherwise be destroyed by the operation, which requirement
cannot be fulfilled unless the vessel is kept
Page 86 U. S. 389
entirely full of the mixture, as otherwise steam and air will
accumulate and fill the vacuum.
Water must be present in the mixture to furnish the requisite
constituent to unite with the olein, margarin, and stearin, and to
oxidize the same, else it will be impossible to obtain the
described fat acids; and the presence of water in the mixture when
the decomposition takes place is also equally indispensable to
furnish the requisite constituent to take the place of the oxide
evolved by the operation from the glyceryl and to unite with the
other constituents of the same to produce solution of glycerin,
which the specification alleges is one of the results to be
obtained from the decomposition in the method therein described.
Unless water or its equivalent be present to furnish such
constituent to take the place of the oxide evolved from the
glyceryl, the same heat that separates the glyceryl from the other
constituents of the fat in the mixture will convert the same into
acrolein, which is an offensive substance destitute of any useful
quality, or, in other words, the glyceryl will be converted into a
substance which is neither new nor useful, and of course the
process to obtain it would not be the proper subject of a patent.
[
Footnote 23]
Nothing provided in the patent or suggested by the patentee will
secure the presence of water when decomposition takes place, unless
the vessel be closed and be kept entirely takes place, unless the
vessel be closed and be kept entirely full of the mixture, as
otherwise the water will be converted into steam, and steam and air
will accumulate in the heating vessel. No means are described or
suggested to add water to the mixture after the mixture is forced
into the heating vessel, and it is plain that nothing of the kind
can be successfully accomplished without some material change in
the apparatus.
Beyond all doubt the conditions mentioned appertain to the
described method patented by the complainant for producing fat
acids and solution of glycerin from fatty and oily substances of
animal and vegetable origin, which contain
Page 86 U. S. 390
glyceryl as their base, but it is equally clear that the
patentee does not claim the described apparatus as any part of his
invention, and that he is not the original and first inventor or
discoverer of the scientific truth that such fats as beef tallow
and palm oil may be decomposed by heat or by heat and water
combined, nor of the scientific truth that fat acids of commercial
value may be obtained from such substances as tallow and palm oil
by means of heat or by heat and water.
Power to issue letters patent is conferred upon the Commissioner
of Patents, and inasmuch as such grants are executed by public
authority and in pursuance of an act of Congress, the rule is that
the patent, when introduced in evidence by the complaining party in
a suit for infringement, affords a
prima facie presumption
that the patentee is the original and first inventor of what is
therein described and claimed as his invention. Application for a
patent is required to be made to the commissioner appointed under
authority of law, and inasmuch as that officer is empowered to
decide upon the merits of the application, his decision in granting
the patent is presumed to be correct. [
Footnote 24]
Sufficient has already been remarked to show what the alleged
invention is as construed and defined by the court. Having
ascertained that matter, the next inquiry is, whether the
complainant is the original and first inventor of the
improvement?
1. Persons seeking redress for the unlawful use of patented
inventions must allege and prove that they are the original and
first inventors of the same, and that the party defendant is guilty
of the alleged infringement. In the first place, the burden to
establish both of those allegations is upon the party instituting
the suit, but the rule, as before explained, is that where the
complainant or plaintiff introduces the patent in evidence, if it
is in due form, it affords a
prima facie presumption of
its correctness, which, in the absence
Page 86 U. S. 391
of opposing proof, will entitle the complaining party to relief.
Availing himself of that rule the complainant introduced his patent
in evidence, which is sufficient to show that he is the original
and first inventor of his improvement, as construed and defined by
the court, unless sufficient evidence to overcome that presumption
and to establish the contrary allegation of the answer is exhibited
in the record. [
Footnote
25]
Whether tested by the language of the claim or by that of the
patent, or by the language embodied in the two introductory
sentences of the specification, it is equally clear that the
patentee, at the time the patent was granted, did not pretend that
he was the original and first inventor or discoverer of the
scientific truth that high heat or water heated to a high
temperature would decompose such fatty and oily substances as those
mentioned in the specification of his patent, and the evidence in
the record shows that such a pretense, if it had been made, could
not have been supported for a moment.
Opposed to that proposition it is suggested that the patentee
claims "the manufacturing of fat acids and glycerin from fatty
substances by the action of water at a high temperature and
pressure," which must be admitted subject to the universal
qualification that the legal construction of every such claim is
that the patentee means to limit the same to his described method
or process; or, if it be a machine, to his described means of
obtaining or of accomplishing the described result. Usually the
claim contains the words as described or substantially as
described, or words of like import, which are everywhere understood
as referring back to the descriptive parts of the specification.
Words of such import, if not expressed in the claim, must be
implied, else the patent in many cases would be invalid as covering
a mere function, principle, or result, which is obviously forbidden
by the patent law, as it would close the door to all subsequent
improvements. [
Footnote
26]
Page 86 U. S. 392
Doubtless, an invention may be good though the subject of it
consists in the discovery of some principle of science or property
of matter, never before known or used, by which some new and useful
result is obtained, and such an invention or discovery may be the
subject of a valid patent without including in the claim any new
arrangement of machinery to accomplish the object, provided the
inventor describes, as required in the patent law, the method,
process, or means of applying the invention to practical use and of
obtaining the described new and useful result. [
Footnote 27]
Limited, as explained by reference back to the descriptive parts
of the specification, the claim may well be regarded as in due
form, but it is quite clear that it would be invalid if it is not
so limited, as it has always been held that a patent embraces
nothing more than the improvement described and claimed as new, and
that anyone who afterwards discovers a method of accomplishing the
same object, substantially and essentially differing from the one
described, has a right to use it and to vend it to others to be
used. [
Footnote 28]
Apply that rule and it is clear that the invention must be
limited to the described method of producing free fat acids and
solution of glycerin from the fatty and oily substances therein
mentioned, as the patent states that the patentee alleges that he
has invented a new and useful improvement in processes for
purifying such fatty and oily substances, and the opening sentence
of the specification describes the invention as a new and improved
mode of treating fatty and oily substances, and the patentee, in
describing his invention, states that it consists of a process for
producing free fat acids and solution of glycerin from such fatty
and oily substances as are therein particularly described, and
there is not a word either in the specification or claim of the
patent to warrant the conclusion that the patentee or the
Commissioner of Patents, at the time the patent was granted,
regarded the patentee as the original and first inventor or
discoverer of
Page 86 U. S. 393
the scientific truth that such fatty and oily substances may be
decomposed by high heat or water heated to a high temperature.
Unquestionably the method or process embodied in the patent
includes high heat and rapid manipulation, but the patentee is not
the original and first inventor of the scientific truth that heat
or water at high temperature will decompose such fatty and oily
substances as those mentioned in the specification. Different
gauges of heat to be employed in applying his process are certainly
given in the specification, as before explained, but it is a great
mistake to suppose that the gauge for decomposing such fats as beef
tallow or the tallow of sheep admits of any variation except what
is authorized by the word "about," or that the gauge given for
decomposing palm oil may be varied from the melting point of
bismuth, except so far as the authority to diminish the temperature
may be inferred from the words "at or below," which words, when
properly construed, mean substantially the same thing as the word
about, when the latter is used to qualify the temperature
designated as the melting point of lead.
Attempt is made in argument to show that the respective gauges
given in the specification to specify the required degree of heat
are subject to a much wider variation, and that the patentee did
not intend to require that the mixture should be exposed to any
higher temperature than that which should prove to be requisite to
accomplish the described result. Suppose that could be admitted,
still it is not probable that the admission would much vary the
case if the apparatus employed should not be changed, and all the
conditions for applying the process should remain in full force, as
rapid manipulation is an express condition in applying the process
of decomposition, which, it is believed, cannot be accomplished in
the time allowed unless the high temperature is maintained.
Support to the theory that the gauges given admit of a wider
variation than is here supposed is attempted to be drawn from the
sentence in the specification which immediately
Page 86 U. S. 394
follows the statement that the decomposition of the water
becomes more powerful as the heat is increased. Fatty matters such
as palm oil, says the patentee, may be changed into fat acids and
glycerin at or below the melting point of bismuth, but he states in
the same connection that the heat in such a case has been carried
considerably above the melting point of lead without any apparent
injury; and he adds that the decomposing action of water becomes
more powerful as the heat is increased. Then follows the sentence
which is invoked as supporting the theory that the gauges of heat
given in the specification, to-wit, the melting point of bismuth
and the melting point of lead, are subject to indefinite
variation.
By starting the apparatus at a low heat, says the patentee, and
gradually increasing it, the temperature giving products most
suitable to the intended application of the fatty substance
employed, can easily be determined. Evidently the sentence should
be examined in the light of the context, and when so examined it is
quite clear that the patentee never intended to employ the language
in any such sense as that which the complainant ascribes to it, as
he was speaking of palm oil, which is decomposed at the melting
point of bismuth, and had just remarked that the heat, in applying
the process to that substance, had been carried considerably above
the melting point of lead without any apparent injury.
Water, said the patentee, becomes more powerful to decompose
such substances as the heat is increased, and then adds, as a
precaution to the operator, not to carry it too high above the
gauges given. You can easily determine what is best in any given
case by starting the apparatus at a low heat and gradually
increasing it to the gauge given or above, as may appear to be best
from the particular substance subjected to the process and the
quality of the product obtained by the operation. Not an intimation
is given in the sentence that any less heat will accomplish the
purpose than that that indicated by the gauges mentioned in the
specification. On the contrary, the language employed, if it
Page 86 U. S. 395
warrants any substantial variation from the prescribed gauges,
justifies the inference that the heat may be increased above the
temperatures mentioned rather than diminished.
High temperature and pressure are among the leading
characteristics of the invention, as appears from the claim and
every part of the specification. Doubtful expressions may be
subject to construction, but where the language employed is clear
and unambiguous it must speak its own construction in the
specification of a patent as well as in any other grant issued by
public authority. Intention in every case, it may be admitted, is
the primary rule of construction, but language invoked to support a
particular theory must be such as is fit, when it is compared with
the whole instrument, to express the imputed intention, else the
theory in question cannot be supported, as courts of justice cannot
legislate nor can they add to a grant or contract any stipulation
or condition which it does not contain. Consequently, the theory of
the complainant that the sentence under consideration warrants the
conclusion that the claim of the patent includes low as well as
high heat must be overruled. [
Footnote 29]
Additional observations respecting the apparatus employed by the
patentee are unnecessary, as he expressly states that he does not
intend to claim it as any part of his invention. Enough has already
been remarked also to show what is the nature and scope of the
invention and to point out what the question is which is involved
in the first issue presented in the pleadings. Construed and
defined as explained, the first issue respecting the patent must be
found for the complainant, as the proofs in the record bearing upon
the question of novelty are not sufficient to overcome the
prima facie presumption that the patentee is the original
and first inventor of what is described in the patent as his
invention. [
Footnote 30]
2. Grant all that, still it is insisted by the respondent
that
Page 86 U. S. 396
the result described in the specification and claim of the
patent cannot be accomplished so as to be practically useful by the
method and apparatus described in the specification.
Whoever discovers that a certain useful result will be produced
in any art, machine, manufacture, or composition of matter by the
use of certain means is entitled to a patent for his invention,
provided he specifies the means he uses in a manner so full and
exact that anyone skilled in the science to which it appertains
can, by using the means he specifies, without any addition to or
subtraction from the described means, produce precisely the result
he describes. Such description must be correct, as it is settled
law that the patent is void if the described result cannot be
obtained by the described means. [
Footnote 31]
Nor does it make any difference whether the effect is produced
by mechanical principles or by chemical agency or by the
application of discoveries in natural science, as in either case
the requirement of the Act of Congress is imperative that the
patentee must describe the method, process, or means he employs in
full, clear, and exact terms, and the end which the invention
accomplishes.
Inventions, in order that they may be the proper subjects of
letters patent, must be new and useful. Utility in most cases is a
question of fact, as it usually depends upon the evidence resulting
from actual experiment. There are two modes, says Mr. Curtis, in
which the utility of an invention may be impeached, the second of
which is where it appears that it is not capable of being used to
effect the object proposed, which is the question presented in the
second defense set up by the respondent. [
Footnote 32]
Cases arise also, even where the means described will accomplish
the described result, when it cannot be held that the invention is
useful if it appears that the operator, in using the described
means, is constantly exposed to imminent danger, either from the
explosive tendency of the substance
Page 86 U. S. 397
to be used or from the liability of the vessel to burst which is
required to be employed as means of accomplishing the patented
result. Where the patentee finds it necessary to employ any such
dangerous means to accomplish the described end it cannot be held
that his invention is useful, within the meaning of the patent law,
even though it appears that the operator, when no such disaster
happens, may be able to work out the described result by the
described means, as it is quite clear that Congress, in making
provision to secure to inventors the exclusive right to their
discoveries, never intended to promote any such as were in their
nature constantly dangerous to the operator in employing the
described means to accomplish the described result. [
Footnote 33]
Apply these rules and it follows that neither an invention which
will not enable the operator to accomplish the described result nor
one which constantly exposes the operator to the loss of his life
or to great bodily harm can be regarded as useful within the
meaning of the patent law.
Patents were granted to the supposed inventor by the proper
public authorities in England, France, and Belgium, as well as by
the proper public authorities in the United States, but the
respondent insists that the described result cannot be obtained by
the means and in the mode of operation described in the
specification, and that the invention has never been reduced to
practice by the use of those means or in that mode of operation,
either in the United States or in anyone of the foreign countries
where the same has been patented.
Both branches of the proposition are controverted by the
complainant and many depositions and other proofs upon the subject
were introduced at the hearing. Witnesses were examined by the
complainant to prove the affirmative of the issue, but none of them
appear to sustain his views in that behalf unless the scope of the
invention is extended beyond the means and mode of operation
described in the specification as construed and defined by the
court. Proofs
Page 86 U. S. 398
of the kind, if they exist, could easily have been procured, as
both the complainant and his brother, who acted as his agent in
efforts to introduce the invention in the United States, were
examined as witnesses in the case.
Licenses were given by the complainant in some instances, and he
called Charles T. Jones, one of his licensees, to prove the
affirmative of the issue under consideration. It appears by his
deposition [
Footnote 34]
that he became a member of a certain firm in 1849, and that the
firm were engaged in the manufacture of candles; that they first
used the process of saponification with about fourteen percent of
lime in an open vessel; that they decomposed the lime soap thus
obtained by sulphuric acid, using for the purpose two and a half
pounds of sulphuric acid to each pound of lime; that they continued
to use that process until the fall of 1859, when they introduced
the process of saponification under pressure of about one hundred
and thirty pounds to the square inch, with only six or seven
percent of lime and with a corresponding diminution of sulphuric
acid. Subsequently they abandoned the second process used by them
and introduced another, which the witness calls the process of the
complainant.
On cross-examination he was asked whether water was not used in
their first process and whether he ever knew any process by which
fats were decomposed into fat acids and a solution of glycerin
without the intervention of water; to which he answered, water was
used in the first process described, but in quantities only
slightly in excess of that requisite for preparing the milk of
lime; and he added that he did not know that the decomposition of
neutral fats into fat acids and a solution of glycerin had ever
been accomplished without the intervention of water.
Counsel for the respondent also requested the witness to
describe the process used by his firm which he calls the
complainant's process. His answer is, in substance and effect, as
follows: he places the melted fat to be treated in a large vessel
with a quantity of water equal at least to
Page 86 U. S. 399
one-half the bulk or weight of the fat, and subjects the melted
fat and water to a steam pressure of three hundred pounds to the
square inch for a period of about five hours, keeping the water and
fat in intimate contact by pumping the water from the bottom to the
top of the vessel and discharging it on the upper surface of the
fat in order that the water may make its way to the bottom of the
same, to which he added that he preferred to use half of one
percent of lime, for the reason, as he states, that that quantity
of alkali enables him to perfect the decomposition in four hours at
a pressure of two hundred and fifty pounds to the square inch with
material economy of fuel and of wear and tear of machinery; and he
states that since ascertaining the advantages of the lime, he has
adhered to that mode of operation.
Responsive to another question, he states that the apparatus was
first put in operation, under the superintendence of the
complainant, in September, 1863; that the vessel used was
manufactured in Philadelphia; that it comprises a tube thirty eight
feet in length and thirty eight inches in the internal diameter;
that it is made of iron plates of the thickness of a half inch, and
a copper tube of nearly the same length, thirty five inches in
diameter, which is placed inside of the iron tube so as to leave an
annular space of about one and a half inches between the copper and
the iron vessel, whose estimated capacity is about ten thousand
pounds of oil and water, but the quantity of fat usually put into
the vessel at one time is about six thousand pounds, with about
four thousand pounds of water, all of which is placed in the copper
vessel, which serves to fill the vessel within three feet of the
head or top; and he states that when the decomposition is perfected
the water holding the glycerin in solution and the fat acids are
discharged into their respective receptacles.
Two vessels are used instead of one, as directed in the
specification, because iron is cheaper than copper, and to secure
greater strength to resist the requisite pressure and to save the
iron from contact with the fat acids, which discolors
Page 86 U. S. 400
the product and rapidly corrodes the iron to such an extent that
it will soon render the vessel unfit for use.
Satisfactory products, as the witness states, may be obtained by
the process without lime, though he adheres to the statement that
he prefers to use it in order to diminish the pressure which would
otherwise be required, and for the economy which it effects in
fuel, labor, and time, but he states without any qualification that
no one in their manufactory ever mixed any fatty or oily substance
with water, in the proportions given in the complainant's
specification, and placed the mixture in any vessel in which it
could be heated to the melting point of lead until the operation
was completed and thereby obtain free fat acids and solution of
glycerin.
Even without any discussion, it is obvious that the means and
mode of operation practiced by the witness are widely different
from the method or process described in the specification of the
complainant's patent. Instead of working in a vessel entirely full
of the fat and water and under a pressure sufficient to prevent the
presence of steam, the operation under the process of the witness
is performed in a vessel only partly filled, which is open at the
upper end and enclosed in another vessel, and the heat is applied
by the introduction of steam from boilers outside. Other
differences also exist, as for example, instead of being worked at
a temperature of 510� or 612� Fahr., and in a vessel capable of
sustaining an internal pressure of two thousand pounds to the
square inch, the process of the witness is worked at a temperature
represented by a pressure of only three hundred pounds to the
square inch, which is a latitude of deviation not warranted by any
language to be found in the complainant's specification.
Two other differences may also be mentioned which are equally
persuasive to show that the method or process practiced by the
witness is substantially different from that embodied in the patent
of the complainant. Instead of the fat and the water being
maintained during the entire operation in a state of intimate
mechanical mixture, as required
Page 86 U. S. 401
in the specification, a pump is provided, not to force the
mixture into the heating vessel, but to be kept constantly at work
to draw the water from the bottom of the vessel and to discharge it
on top of the charge of fat, in order that it may percolate down
through the fat and supply the deficiency occasioned by the fact
that the water is constantly being converted into steam.
Ten minutes is the maximum time allowed for the operation in the
complainant's specification, but the method or process employed by
the witness, instead of effecting the decomposition in ten minutes,
requires at least four or five hours, even when he uses a shall
proportion of lime to assist the chemical action of the heated
water.
Besides the differences between the two methods already pointed
out, there are others which may be suggested, equally striking and
of a character equally persuasive, to show that the two methods are
substantially different, as, for example, the apparatus employed by
the witness consists of two vertical cylinders, one within another,
instead of a coil of tubing, with an annular space between the two,
as before explained, of an inch and a half.
Fat and water in nearly equal proportions are charged into the
inner cylinder, leaving a vacant space at the top of the same of
about three feet. Like the coil of tube, the outer cylinder is
steam-tight, but the inner one is open at the top. Steam for the
operation is generated in two separate boilers, which is introduced
through the top of the outer cylinder to the space between the two
and through the upper end of the inner one, which is open, to
facilitate the circulation of the steam in order that the fat and
water in the inner cylinder may be heated to the temperature
represented by a pressure of two hundred and fifty to three hundred
pounds to the square inch, and the witness testified that he
regarded the use of the pump and the use of some lime as essential
to the use of the apparatus with the greatest economy.
Licensees of the complainant were also examined by the
Page 86 U. S. 402
respondent, to-wit, Nathaniel Ropes and Nathaniel Ropes, Jr.
[
Footnote 35] These
witnesses have had great experience in manufacturing candles, and
they testify that they know of no place in this country where
candles or soap are manufactured from free fat acids produced by
water alone at high temperature and pressure without the use of
alkali. They both describe the old saponifying process as
consisting in the treatment of fact by water heated in an open
vessel, lime being mixed with the water, by which the glycerin was
separated from the other constituents of the fat, leaving what some
manufactures call lime soap, or fat acids and lime, which latter
ingredient was afterwards removed by sulphuric acid, the residuum
being free fat acids.
Changes were made in their mode of operation early in the year
1860, which alterations were introduced to them by the brother of
the complainant, who experimented in their manufactory several
months before he put the apparatus adopted in operation. By that
plan, they use water in equal proportions with the fat, with a half
percent of lime and double that quantity of sulphuric acid, the
whole being heated to a temperature representing a pressure of
about one hundred and fifty pounds to the square inch in a closed
vessel for twelve hours. Formerly they conducted the operation in
open tubs, using thirteen percent of lime with double that quantity
of sulphuric acid, but since the new method was introduced by the
agent of the complainant, they have substituted closed copper tanks
in the place of the open tubs, using, however, the same agents to
effect the decomposition of the fatty substances, though in
different proportions.
Copper tanks are used as receptacles for the fat and the water,
but the steam to communicate the heat is generated in a large iron
boiler thirty feet in length and forty inches in diameter, with
which the copper tank is connected by means of steam pipes
furnished with stop cocks as regulators in the use of the steam.
There is also a shaft in the
Page 86 U. S. 403
tank having radial arms, which shaft is kept in rotation to
cause and preserve an intimate mechanical mixture of the fat and
the water during the whole operation.
Instead of having the tank constantly filled with the fat and
water, the fact is that it is never filled, nor is the mixture kept
under a pressure sufficient to prevent the accumulation of steam
and air, as directed in the specification of the patent described
in the bill of complaint. Empty space is left in the tank above the
fat and water at the outset sufficient to allow boiling, which
space of course would be filled with steam and air. Heat is
communicated to the mixture by introducing steam from the large
iron boiler into the copper tank, creating a temperature causing a
pressure of one hundred and fifty pounds to the square inch.
Several months were employed in making the experiments before
the method now in use was finally put in practice by the
complainant's agent. He tried it without lime at a pressure of two
hundred pounds, allowing twenty-four hours for the operation, but
the result was not satisfactory. Dismissing that method, he next
tried the experiment with fat and water in the proportion of two to
one, allowing twenty hours; still the result was unsatisfactory.
Next he tried the compound of fat and water in equal proportions,
using only half of the water during the first part of the
operation, then discharging that and putting into the charge the
other half of the water, and he found that the operation produced a
good result in twelve hours. Some of the experiments were without
lime, but the witnesses state that inasmuch as they found that by
the addition of lime they could accomplish the work at a pressure
of one hundred and fifty pounds to the square inch and in less
time, they have ever since continued the use of lime in their
business.
Much discussion of the process introduced on that occasion is
unnecessary, as it appears that instead of working at a heat equal
to the melting point of lead in a vessel capable of sustaining an
internal pressure of two thousand pounds, these licensees of the
complainant use a certain percent of lime at a pressure not much
above one hundred and fifty
Page 86 U. S. 404
pounds, and it appears that they decompose the fat in a vessel
not filled with the mixture, nor provided with a mechanical
stirrer, and leave a vacant space in the vessel sufficient for
circulation, in which steam is not only generated but is introduced
from a separate boiler. Differences such as these require no
comment except to say that the method is entirely different from
that described in the patent in question and to add that it
corresponds much more nearly to the method described in a patent
dated May 15, 1860, subsequently obtained by the complainant, and
which was introduced in evidence by the respondent.
Reasons exist besides those disclosed in the testimony of those
witnesses to support the conclusion that the complainant never
supposed that his patent conferred the exclusive right to use
temperatures and pressure to decompose fats with water alone much
below the gauges given in his specification, and that he had come
to doubt, several years before those experiments were made, whether
the patented method or process could be accomplished so as to be
practically useful by the means and in the mode of operation
pointed out in the patent.
His letter, dated London, June 25, 1856, addressed to a certain
firm in Cincinnati, [
Footnote
36] affords strong support to that conclusion, in which he
states that our experiments in the factories here and in Paris have
shown that on the large scale, the decomposition of fats by water
is more conveniently effected by modifying the apparatus originally
proposed so that the fat and water are exposed to a comparatively
lower heat and pressure for a longer time, instead of a very high
pressure for a few minutes. By which means he suggests in the same
letter that a considerable quantity of material may be treated at
one charge in an ordinary steam boiler lined with lead or copper,
and may be provided with an agitator in the place of using the
continuously working pump and coil of pipe, and the suggestion is
that
Page 86 U. S. 405
at a pressure of two hundred and twenty five pounds to the
square inch, tallow, palm oil, or lard stearin may be completely
decomposed in five hours.
Nearly two years before the date of that letter, to-wit, on the
twenty-fifth of March, 1854, the complainant took out a patent in
England for the same invention as that described in the patent in
issue in this case, and the proofs show that he made various
efforts to introduce it into practice in that country. He remained
there, it seems, from 1854 to 1859, and it appears that in June,
1854, he exhibited his process in the old form to George F. Wilson,
the managing director of the Price Patent Candle Company, and the
company entered into a contract with the complainant respecting the
same, by which he assigned the said letters patent and the
privileges thereby granted to the said company, and that the said
company, in consideration of the assignment, covenanted to pay him
an annuity of one thousand pounds sterling from the month of
October of the following year during the continuance of the patent,
subject to various conditions, and among others to be terminated by
giving notice to the complainant as therein provided; the company
were also to have the use of several other patents therein
described, which have since expired.
Proofs were also exhibited showing that the said company have
ever since paid the stipulated annuity, but there is no
satisfactory evidence in the case to show that they have ever
applied the process to produce fat acids and solution of glycerin
by the means and in the mode of operation described in the
specification, as construed and defined by this Court. Some use, it
may be presumed, has been made of the patent by the assignees, but
what that use is does not very satisfactorily appear. It does
appear, however, from a paper read before the British Association
in September, 1855, by the general director of the company, to whom
the complainant testifies that he exhibited his process the year
previous, that he stated that in our new process the only chemical
agents employed for decomposing the neutral fat and for separating
its glycerin are steam and heat, and that
Page 86 U. S. 406
the only agents used in purifying the glycerin thus obtained are
hear and steam. [
Footnote
37]
Strong confirmation of that is also derived from a paper read by
the same person at a session of the Society of Arts, held in that
country January 25, 1856, also put in evidence by the complainant,
[
Footnote 38] in which the
author says, in speaking of the patented process, "It has yet to be
proved how far it can compete successfully with distillation,"
adding that they had made an arrangement with the inventor which,
as he expresses himself, will give them the means of testing its
commercial merits, and then he proceeds to state that on witnessing
a trial of the process in the small tube apparatus, it struck him
that steam passed into the fat at a high temperature should effect
by a gentle process what the patentee aimed at effecting by a
violent process, to-wit, the resolving of the neutral fat into
glycerin and fat acids, finally stating that they had proved that
the fact was so and that the glycerin distilled over with the fat
acids though it was no longer combined with those products,
evidently showing that the process employed by them was at that
time widely different from that claimed by the complainant.
Application for a patent was also made by the complainant to the
proper authorities of France during the same year, and it appears
that the application was successful, as he immediately commenced
negotiations through his patent agent with the firm of Monier &
Co., doing business near Paris in that empire, for the sale of the
patent, which negotiations resulted in a contract of sale. Pursuant
to that contract, he transferred the patent to that firm subject to
the condition that the process would effect the results promised by
the grantor.
Numerous experiments were subsequently made under the
superintendence of the patentee or his brother, for a period of six
months, all of which produced results which the evidence shows were
entirely useless. They were made in the first place, as the senior
partner of the firm states, [
Footnote 39]
Page 86 U. S. 407
by means of a small apparatus brought from London by the
patentee, which consisted of a hollow iron tube of serpentine form,
incased in a cast iron block from which the two ends of the tube
projected -- one for receiving the fatty substance used in the
experiments for decomposing the same, and the other for discharging
the product.
High heat was required for the purpose, and with that view, the
apparatus was so placed in a furnace constructed of fireproof
bricks that it received all the heat, the flames of which
completely enveloped it, and which brought it to an excessive heat,
but the witness cannot give the degree of heat, as the apparatus
did not contain any gauge to indicate its intensity.
Fatty matter and water were put in a vessel prepared for the
purpose, which was provided with a bronze suction and force pump
worked by hand and connected with one end of the iron coil
projecting from the cast iron block, by which the mixture of fatty
matter and water was drawn from the receptacle and was forced into
and through the iron coil of tube, as the same was encased in the
iron block, and out at the opposite end of the same, where it was
discharged into another receptacle prepared for the purpose. By
means of the furnace, the iron tube and the block in which the coil
was incased were "heated to an excessive degree," estimated by the
witness to exceed 500� Fahr. with an estimated pressure of more
than twenty atmospheres. Both the patentee and his brother worked
at the experiments ten or fifteen days, but the decomposition of
the fatty matter, as the witness states, was never complete, and
that they never produced fat acids and glycerin, the product being
only an altered fatty matter, which, when washed, showed acrolein
to such an extent as to fatigue the workmen who assisted at the
experiments. Fifteen of the experiments were made by the patentee
aided by two workmen, in the presence of the witness, and he states
without qualification that none of the experiments succeeded.
Three new apparatuses were subsequently constructed by the
brother of the patentee, acting as his agent. Two were
Page 86 U. S. 408
constructed in Paris and one in London. Experiments were
subsequently made by the brother of the patentee, and in some
instances without any regard to the patented process, the aim being
to find out if possible the means of overcoming the difficulties
manifested in the prior attempts to produce the promised
results.
None of his efforts, however, succeeded, though the experiments
were continued until the expenditure exceeded forty thousand
francs, and it appearing that fat acids and glycerin could not be
produced by the process, the contract was annulled, and the witness
affirms that it is impossible to decompose fatty matter and obtain
fat acids and glycerin by the method indicated in the complainant's
patent. He admits, however, that his firm were subsequently
induced, on the return of the patentee to that country, to join
with another firm engaged in manufacturing candles to make a new
contract with the same party upon the same basis as the first
contract, it being represented that the patentee would introduce a
new process, based upon the principles of the patented method,
which promised certain success and admirable results. Such a
contract was accordingly made, and new experiments were prosecuted
for a period of two or three months, but, like the first efforts in
that direction, the experiments failed to produce either fat acids
or glycerin. How much these last experiments cost the witness does
not state, but he does state that the experiments were productive
of no good, as they produced neither fat acids nor glycerin.
Remarks respecting the Belgium patent are unnecessary, as no
proof was offered to show that the process was ever introduced into
practice in that country.
Having failed to accomplish such results in those countries as
would show that his process would be practically useful if applied
by the means and in the mode of operation described in the
specification, and probably having become convinced that the
decomposition of fats by water could be more conveniently effected
by modifying the described apparatus so that the fat and water
would be exposed to a lower
Page 86 U. S. 409
heat and pressure for a longer time, as expressed in his letter
of the twenty-fifth of June, 1856, the patentee left England in
August or September, 1859, and returned to the United States.
Conclusive proof that the patentee did not accomplish results in
France which would show that the patented process, applied by the
means and in the mode of operation set forth in the specification,
is exhibited in the record of the other case between the same
parties, which was heard at the same time. Reference is made to the
report of the jury upon organic chemistry made the third of
December, 1855, to the international exhibition held in Paris,
which is made an exhibit in that case.
Chemists, say the jury, liken neutral fats to compound ether,
which was the hypothesis put forth by Chevreul in his
investigations of such matters. Ether, it was known, may be
decomposed by being heated to a high temperature in close vessels
with water, and from that persons were led quite naturally to
attempt to effect in the same way the decomposition of neutral
fats, and they state that experience has confirmed the assumed
theory, which, as the jury say, is the origin of the new processes
of saponification to which they refer, and they add that it was the
patentee in this case who first had the idea of applying such
reaction on a large scale, which they verify by an extract from the
specification of the patent; [
Footnote 40] but, as they report, they visited the
manufactory of Monier & Co., where they had the opportunity of
seeing the trial of the process in its application to palm oil, and
they conclude their report upon the subject as follows: [
Footnote 41]
"We are sorry to say that the fatty matter, on coming out of the
apparatus, was not at all deodorized and, more besides than that,
that it gave out a strong odor of acrolein. From the point of view
of the quality of the products, this arrangement of apparatus,
then, by no means realized the end which the author has proposed.
Moreover, in our opinion, the
Page 86 U. S. 410
chances of deterioration of a system of apparatus of any kind
which works constantly at a temperature capable of exerting a
pressure of ninety to one hundred atmospheres are such that it is
hardly possible that industry will utilize it, even if the products
which it furnishes were irreproachable."
Made public, as the report was, more than two years before the
patentee returned to the United States, it may be presumed that it
came to his knowledge before his return.
On the fifteenth of May, 1860, the new patent referred to was
granted to him in this country, [
Footnote 42] which affords the most conclusive proof that
the alleged invention is one of a very different character from
that described in the specification of the patent in issue in this
case, and yet he states under oath that he verily believes that he
is the original and first inventor of the improvement, and that to
the best of his knowledge and belief it had not been known or used
before his application for the patent, which is utterly repugnant
to the pretense that anything which is embodied in that patent was
included in the one granted to him more than five years before the
latter application was filed.
Experience seems to have greatly modified the views of the
patentee, as he now characterizes the improvement as a new and
improved method of decomposing fatty and oily substances, and
alleges that it is applicable either when water alone is used, or
when, in addition to water, a portion of alkali is used to aid the
chemical action; and he also alleges that to extract the whole of
the glycerin from the fat with a moderate quantity of water, when
the lower range of pressure is used, requires considerable time,
and he actually states that his invention consists in applying the
water to the fat in several successive portions.
High temperature and pressure are represented as the agents of
decomposition, but in the view of the complainant as expressed in
that specification, the high temperature required may be only that
which is represented by a pressure of one hundred and twenty to one
hundred and fifty pounds to the
Page 86 U. S. 411
square inch. Gauges to indicate the required temperature are
dropped, and all idea of rapid manipulation seems to be discarded
as the terms "a considerable time" or "from two to three hours" are
substituted in the place of "ten minutes."
Vessels of very great strength are no longer required, as the
patentee states that his invention may be applied to any of the
different forms of boilers or tanks used for the decomposition of
fats by water at a high temperature or pressure, meaning doubtless
that the terms high temperature and pressure shall be understood in
the same sense in which he employs them in a subsequent part of the
same paragraph. Water may be supplied when wanted, and of course it
is of no moment even if some of it is converted into steam; nor
does the specification contain any requirement that the heating
apparatus shall be kept entirely full of the mixture or that
neither steam nor air shall accumulate therein during the time
required for decomposition, or, in other words, the old
specification is divested of everyone of its extreme conditions,
and the inventor, under his new patent, is left free to claim every
means and every mode of operation which the ingenuity of man ever
did or ever can invent or discover. Further remarks respecting it,
however, may be omitted as it is not the subject of litigation in
this case.
Chemical and mechanical experts were examined as witnesses on
both sides in about equal numbers. Those called by the complainant
express the opinion that the patented process may be applied by the
means and in the mode of operation described in the specification
so as to accomplish useful results and of a character to give
commercial value to the new product. On the other hand, those
examined by the respondent express opinions widely different, and
most or all of them are of the opinion not only that the means and
mode of operation described in the patent cannot be so applied that
the invention will be practically useful, but several of them state
that the attempt to apply it without the exercise of extraordinary
precautions must be attended with danger to the operator.
Page 86 U. S. 412
Most of the expert witnesses made experiments in applying the
process, and in the course of their examination were required to
state the results of the same as supporting their opinions, but
experiments made, as most of these were, with small apparatuses
admitting only a small charge of the fatty substance or mixture to
be treated are not entitled to much weight in determining such an
issue, however satisfactory the analysis may have been to the
chemist who conducted it, as the issue necessarily involves very
difficult questions of mechanics as well as of chemistry.
Taken as a whole, the evidence convinces the Court that the
patentee never did succeed in introducing his invention into
practical use by the means and in the mode of operation described
in the specification to such an extent as would warrant he court in
finding that issue in his favor.
Doubts of a very serious character are also entertained by the
Court whether the patented process, unless divested of its extreme
and unparalleled conditions, can ever be reduced to practice by the
means and in the mode of operation described in the specification,
so as to practically useful or safe to the operator, but the proofs
are very conflicting upon the point, and inasmuch as it is
impossible to foresee what future experiments may do in the way of
overcoming the existing doubts and difficulties, the Court is not
inclined to rest their decision entirely upon that ground.
3. Passing from that, the next question is whether the proofs
show that the respondent practiced and used the patented process of
the complainant, when properly construed and defined, as charged in
the bill of complaint.
Such an inquiry cannot be intelligently considered without first
ascertaining what the respondent's process is, as it is obvious
that the two processes must be compared in order to determine
whether they are substantially the same in principle and mode of
operation, or substantially different, which is the criterion by
which to determine every such issue as the one under
consideration.
Factories have been erected by the respondent for
manufacturing
Page 86 U. S. 413
candles, and he is largely engaged in that business, but he
denies that he uses the alleged improvement of the complainant or
any method of decomposing neutral fats embracing the means and mode
of operation described in the specification of the complainant's
patent. He admits that in his process of manufacture he uses water
at high temperature, and steam, and that he also uses such pressure
as arises from the expansive force of hot water or steam in a close
vessel; that he is engaged in manufacturing candles under and in
pursuance of letters patent granted by the United States of the
twenty-fifth of January, 1859, to Wright and Fouche, as
subsequently amended, but he denies that he employs either the
method, process, or apparatus described in the complainant's
specification.
Appropriate means are at hand to enable the court to make the
comparison, as the patent under which the respondent works was
given in evidence at the hearing. [
Footnote 43] On the face of the patent, it purports to be
a new and useful improvement in process for decomposing fats, and
it appears that the inventors obtained a patent for the improvement
in France two years before the complainant left England to return
to the United States and more than three years before the
complainant obtained his new patent in this country, in which he
left out all of the extreme and unexampled conditions of the old
patent and in which he stated under oath that he verily believed he
was the original and first inventor of the improvement, and that it
had never been known or used before his then application was
filed.
Wright and Fouche describe their invention in their
specification as a new apparatus destined to produce chemical
decomposition by means of superheated steam and water, and that it
is chiefly intended for the decomposition of fatty substances into
fat acids and glycerin, and they particularly describe the means to
be employed and the mode of operation when the patented method is
applied to that purpose. Drawings are annexed to the specification,
which
Page 86 U. S. 414
contain figures of the apparatus to be employed in applying the
patented process in the decomposition of fatty substances to obtain
fat acids and glycerin.
Two vessels constructed of iron or copper are required for the
purpose -- one is called the boiler in the specification, which it
is said may be of any form, and the other is called the cylinder,
and is placed on a base and elevated higher than the boiler. Both
are required to be sufficiently strong to resist a pressure of from
ten to twenty atmospheres, and of a capacity varying according to
the requirements of the manufacture, and they are connected by a
tube extending from the bottom of the boiler to the bottom of the
cylinder, and also by another tube, called in the specification the
tube for ascension to conduct the superheated water from the boiler
to the upper part of the cylinder, which terminates in the interior
of the cylinder by a rose jet, or holes may be made in the end of
it so as to distribute the water uniformly in the cylinder and to
insure the intimate contact between the superheated water and the
fatty substance subjected to the process. Fatty substances to be
subjected to the process are placed in the cylinder, which, with
other things, is furnished with a pressure gauge to indicate the
pressure in the apparatus used with devices to indicate the height
and level of the substance and of the water in the cylinder.
Everything being arranged as described for applying the process,
the boiler is completely filled with water and the cylinder is
filled with water to one-third of its height, and then it is filled
to the level of the upper cock, shown in the drawings, with the
fatty substances to be decomposed, the latter substance or
substances being above the water in the cylinder, which is still
not filled, there being a vacant space in the cylinder above the
fatty substance. Heat is then applied to the boiler, which is
placed in a furnace where it may be exposed to fire. By the
direction, the heat is to be gradually applied until the pressure
gauge indicates a pressure of ten to twenty atmospheres, according
to the nature of the fatty substance to be decomposed.
Minute description is then given of what it is claimed
Page 86 U. S. 415
takes place in the apparatus. Superheated water, it is said,
acquires an ascending motion, whence it results that the heated
water in the boiler ascends through the described tube into the
cylinder, and being forcibly drawn out through the holes in the
described rose jet, passes through the fatty substance to the
vacant space above, where the temperature being reduced, it
descends through the other described tube to the bottom of the
boiler, where it is again heated, and then recommences its
ascending motion as in the first instance, and so on during the
operation.
Suggestion is made that the operation may be continued from five
to eight hours, according to the nature of the fatty substance
composing the charge and the degree of heat and pressure applied,
and it is claimed that the result will be that the fatty substance
will be decomposed and that the product will be fat acids and
glycerin.
In their specification, they admit that it is a well known
scientific fact that fatty substances may be decomposed by water
under the influence of heat and pressure, which could not well be
denied in view of the fact that water or its equivalent was used in
all the prior processes of saponification, and of the great mass of
other evidence to support that proposition which is embodied in
this record. Consequently, those inventors do not claim to be the
discoverers of that scientific truth. All they claim is that their
invention consists of an apparatus wherein water and the fatty
substances are heated separately in two different boilers, the
first boiler being heated in the furnace, called in the
specification the source of heat, while the second boiler, called
the cylinder, is heated from the first boiler.
Unlike as the two processes are in so many material
characteristics, it seems almost a work of supererogation to enter
much into details, as the dissimilarity is apparent in the whole
description of the respective inventions, except that both
contemplate the employment of heat and water in effecting the
decomposition of fatty substances, and even in that respect, they
are widely different, as the patentees under whose patent the
respondent works employ only
Page 86 U. S. 416
moderate heat, as compared with the other process, never
exceeding in practice what is represented by a pressure of one
hundred and eighty pounds to the square inch, and they also employ
steam as well as water in a vessel which is never filled with the
fatty substance or with water or with both combined.
None of the other characteristic conditions of the complainant's
invention is found in the specification of the patent under which
the respondent works, full proof of which is shown in the
enumeration of those conditions, which are as follows:
1. That the fatty substances to be treated must be first mixed
with water equal in bulk to one third or one half of the fatty
substance.
2. That for that purpose, the fatty substance and the water in
the proportions mentioned must be put into the described receiving
vessel, where it must be subjected to the action of the piston with
the perforated disk until it causes the fat and the water to form
an emulsion or intimate mechanical mixture.
3. That the mixture so formed must then be driven by a force
pump through the connecting tube into the heating vessel, whether a
coil of iron tubing or other convenient vessel and be subjected to
a high degree of heat and pressure for ten minutes to effect the
decomposition of the fatty substance.
4. That the heating vessel must be closed and of great strength,
so that the requisite amount of pressure may be applied to prevent
the conversion of the water into steam.
5. That the heating vessel must be filled with the mixture and
kept entirely full of it throughout the operation.
6. That the only means suggested to fulfill the condition is the
forcing pump, as the provision is that if necessary, the speed of
the forcing pump should be increased.
7. That the heating vessel must be kept full of the mixture, so
that no steam or air shall accumulate in the heating vessel, and to
preserve the intimate mechanical mixture of the fatty substance and
the water, as the description does
Page 86 U. S. 417
not suggest any means to supply any deficiency of water in any
other way, whether occasioned by evaporation or by its being
converted into steam.
8. That the temperature required for the operation, if the fatty
substance be such as palm oil, is 510� Fahr., or if such as beef
tallow or the tallow of sheep, it must be carried to 610� Fahr., or
the melting point of lead.
9. That the heating vessel should be tested before taken into
use by a pressure of ten thousand pounds, and should be of
sufficient strength to be safe at a working pressure of two
thousand pounds to the square inch.
10. That the apparatus must be furnished with gauges to indicate
the required heat to be applied in the operation, and with a
refrigerator near the exit end of the apparatus to cool down the
product from its high temperature below 212� Fahr. before it is
discharged into the receiving vessel.
Compare these conditions with the specification of the patent
under which the respondent works and it is clear that he does not
use any such method, process, or operation as those described in
the letters patent of the complainant.
Witnesses have been examined by each party as experts to assist
the court in making the comparison, but they differ so widely in
their statements as to afford the Court but little aid in the
solution of the question. Attention is also drawn to the fact that
several circuit judges have decided otherwise, to which the proper
reply seems to be that the proofs before the Court are much fuller
than on any former occasion, and that the conclusion stated is the
best one the Court can form after having given the whole record an
attentive examination.
Expert witnesses on both sides have been examined also upon the
issue of infringement, but they differ so widely in opinion that
their testimony affords the Court but little aid in deciding the
question, which after all must depend chiefly upon the comparison
of the descriptive portions of the two specifications. [
Footnote 44]
Page 86 U. S. 418
Two things are not the same under the patent law when one is in
practice substantially better than the other in a case where the
second improvement is not gained by the use of the same means or
known mechanical equivalents. [
Footnote 45]
Patent laws have for their leading purpose the encouragement of
useful inventions. Practical utility is their object, and it would
be strange if with such object in view the law should consider two
things substantially the same which practically and in reference to
their utility are substantially different. [
Footnote 46]
Slight differences in degree cannot be regarded as of weight in
determining the question of substantial similarity or substantial
difference, but in all cases, the question whether the difference
in degree is sufficient or insufficient to prove the alleged
infringement is a question of fact to be determined by the jury in
an action at law, or by the court in a suit in equity. [
Footnote 47]
Differences, however, so great as are exhibited in this record
relieve the case, in the judgment of the Court, from all doubt, and
warrant the conclusion that the process under which the respondent
works is substantially different from that of the complainant.
On the twenty-third of November, 1867, the patent of the
complainant was extended for seven years from the expiration of the
fourteen years for which the original patent was granted.
Subsequently, to-wit, on the sixth of March, 1871, the complainant
instituted a second suit against the respondent founded upon the
extended patent, which is number 340 on the calendar. Both cases
were heard at the same time. Suffice it to say in respect to the
latter that the pleadings, issues, and proofs in the two cases are
substantially the same, and that the latter must be disposed of in
the same way as the preceding case.
Decrees were entered in these cases respectively in the
Page 86 U. S. 419
circuit court in favor of the complainant, each of which must be
reversed.
Decree in each case reversed with costs, and the cases
respectively remanded with direction to dismiss the respective
bills of complaint.
JUSTICES SWAYNE, STRONG, and BRADLEY dissented.
MR. JUSTICE DAVIS took no part in the judgment.
[
Footnote 1]
Testimony in the case showed a great variety of these things,
the common barrel churn being one of the simplest and best known.
De Milley's vertical boiler, with an agitator going up and down,
used A.D. 1834, was another form. Alliott's vertical boiler, with
centrifugal pump to draw water from bottom and to spread it on the
top, used A.D. 1851, was another. Radley & Meyers' revolving
mechanical agitator, used A.D. 1851, in a closed boiler having a
safety value, was yet another. The automatic circulation by the
ascending power of a column of heated water, it was testified, was
used in an apparatus of Floyd, A.D. 1795.
[
Footnote 2]
In the patent itself, there were besides, some descriptions and
drawings of parts of the apparatus modified. With neither of these,
however, is it necessary to embarrass the reader -- REP.
[
Footnote 3]
From 340� to 420� Fahr.
[
Footnote 4]
The melting point of bismuth.
[
Footnote 5]
5 Stat. at Large 117.
[
Footnote 6]
Infra, pp. 379-390.
[
Footnote 7]
Infra, pp. 390-418.
[
Footnote 8]
The records contained 1048 closely printed 8vo. pages.
[
Footnote 9]
Vol. 1, part 3, p. 751.
[
Footnote 10]
Vol. 2, p. 252.
[
Footnote 11]
Vol. 2, p. 886.
[
Footnote 12]
Specimens of which are exhibited in the American Department.
[
Footnote 13]
Page 7.
[
Footnote 14]
Supra, p.
86 U. S.
307.
[
Footnote 15]
Supra, p.
86 U. S.
313.
[
Footnote 16]
From p.
86 U. S. 306 to
p. 350.
[
Footnote 17]
By "superheating" steam is meant applying heat directly to steam
which has been already generated by the action of heat on water.
This latter sort of steam is called "saturated steam," the former
"superheated steam." -- REP.
[
Footnote 18]
"We cannot agree," said the court, when speaking of this
point,
"that a fair construction of the specification tends to the
conclusion either that the vessel was to be entirely filled or that
no steam was to be permitted in it. No doubt it is true, as urged
for the defendant, if thus filled and the vessel closed, and the
contents heated to the point of melting lead, or under a pressure
that would prevent the existence of steam, the process would be
utterly impracticable, and doubtless the patentee knew this would
be the result as well as any of the experts. It would require but
the commonest knowledge and experience in the business of life to
reach such a conclusion. This moderate degree of knowledge, at
least, should be kept in view in construing the general terms of
the description."
"Besides, the patentee does not direct that the vessel should be
entirely filled. This is an inference of the learned counsel from
the direction that the vessel must be closed and be of great
strength so that the requisite amount of pressure be applied to
prevent the conversion of the water into steam."
"All that was intended, as is apparent from the context, by the
patentee was that the pressure should be so great as to prevent the
body of the water in the vessel from passing into steam, as the
heated water was the element that separated the fatty acids and
glycerin. That there would necessarily be some steam must have been
obvious to the patentee as well as to anyone of common
observation."
[
Footnote 19]
1 Regnault's Chemistry § 1592.
[
Footnote 20]
Turner's Chemistry, by Johnston, 8th edition, p. 456.
[
Footnote 21]
Silliman's Chemistry, 25th edition, p. 441.
[
Footnote 22]
3 Miller's Chemistry, 370, § 1141; 2 Ure's Chemical Dictionary,
5th edition, 379.
[
Footnote 23]
2 Watts's Chemical Dictionary 894; Attfield's Chemistry 394;
Silliman's Chemistry, 25th edition, p. 44, § 763.
[
Footnote 24]
Agawam Co. v.
Jordan, 7 Wall. 597.
[
Footnote 25]
Seymour v.
Osborn, 11 Wall. 538.
[
Footnote 26]
78 U. S. 11
Wall. 547; Curtis on Patents § 242.
[
Footnote 27]
Househill Co. v. Neilson, 1 Webster's Patent Cases,
683; Curtis on Patents, 4th edition 279;
Foote v. Silsby,
2 Blatchford 260.
[
Footnote 28]
O'Reilly v.
Morse, 15 How. 119; Curtis on Patents, 4th edition,
§ 163.
[
Footnote 29]
Green v. Wood, 7 Q.B. 178; Potter's Dwarris
199-200.
[
Footnote 30]
Railroad Co. v.
Stimpson, 14 Pet. 458; Curtis on Patents, 4th
edition, § 472.
[
Footnote 31]
O'Reilly v.
Morse, 15 How. 119; Curtis on Patents 189.
[
Footnote 32]
Curtis on Patents, 4th edition, § 449.
[
Footnote 33]
Curtis on Patents, 4th edition, §§ 106 and 449.
[
Footnote 34]
See supra, p.
86 U. S. 321 --
REP.
[
Footnote 35]
Supra, pp.
86 U. S.
336-341 -- REP.
[
Footnote 36]
Supra, p.
86 U. S. 344 --
REP.
[
Footnote 37]
Supra, p. <|86 U.S. 345|>345 -- REP.
[
Footnote 38]
Supra, pp.
86 U. S.
344-345,
86 U. S. 350 --
REP.
[
Footnote 39]
Supra, pp.
86 U. S.
345-348 -- REP.
[
Footnote 40]
Supra, pp.
86 U. S.
307-308 -- REP.
[
Footnote 41]
Supra, pp.
86 U. S.
335-336 -- REP.
[
Footnote 42]
See supra, pp.
86 U. S. 353-355 -- REP.
[
Footnote 43]
See it
supra, pp.
86 U. S.
298-304 -- REP.
[
Footnote 44]
Hill v. Thompson, 1 Webster's Patent Cases 232;
Turner v. Winter, ib., 77.
[
Footnote 45]
Curtis on Patents, 4th edition, § 330.
[
Footnote 46]
Ib, § 331.
[
Footnote 47]
Caboon v. Ring, 1 Clifford 621.