NÉTERER, District Judge
(after stating the facts as above).
The purpose of plaintiff’s invention, patent No. 1,149,495, is to feed material into the furnace—
“primarily to make a lining for the furnace, though primarily it gives up any values it may contain to the hath.” “A moving temporary lining of the furnace chambers.” “A dike shutting the molten interior of the metallic bath away from contact with the walls of the furnace chambers.”,
Patent 1,302,307:
“To protect the walls of a reverberatory furnace by feeding ores into the furnace through feeding ports leading into the upper part, where it may have unrestricted downward movement to the floor, causing it to form an embankment resting along the walls between the bath and the walls.”.
In plain words, the Siemens furnace has inclined surface walls closed at the top by a brick arch having openings through which ore is introduced by gravitation onto the inclined surface, where it is exposed to intense heat, the molten metal flowing to the bottom, leaving the inclined surface exposed to the heat, the walls being protected from the corrosive action of the metal bath, “particularly at the surface line of the matte, where the brick is repeatedly destroyedand the Carson furnace has walls extending vertically from the floor, closed at the top by a brick arch having openings near the walls through which ore is discharged unrestricted in a vertical downward movement to the floor near the walls, and forming sloping embankments against the walls and protecting them from the heat and corrosive action of the metal bath.
[777]*777While the Siemens furnace in the patent No. 2,413 is a small affair compared to the furnace of the present day, and was a blast furnace in reducing iron ore, yet the specifications provided that it may “ * * * be used to advantage for the fusion and reduction of copper * * * ore. * * * ” There is this difference in construction: The Carson wall is vertical, and the Siemens wall has a 60 per cent, incline. In each, however, the ore may be deposited in a similar fashion. The ore embankment between the matte and the wall in the Carson patent is thicker than in the Siemens patent. The angle of repose of the ore in the furnace in each patent must be the same. The angle oí repose is the slope at which the ore or material deposited will attain without any sliding effect.
While the Siemens furnace is inefficient compared with modern smelters, in principle, however, Siemens taught the ’ art of dropping ore on a slope exposing a large surface to intense heat, the exposed charge, smelting, running down in rivulets towards the center of the furnace, and exposing fresh surface to the heat; this being repeated, and new charges being added as necessary by the use of slides through which the ore is introduced, resting on the floor of the hearth and against the walls, and protecting the walls from the heat of the furnace and erosive action of the bath. ‘This is also the Carson idea:
“The materials pass by gravity into the furnace and form a border or levee resting on the hearth and against the walls of the furnace, and act as an inside lining to protect the same from scorification and erosion by the bath. * * *”
Again:
“Ideal smelting charges can be fed, and the portion next to the furnace wall never reach the point of fusion, while that portion in the interior of the furnace will be in a high state of fusion. * * * And in some cases it will be unnecessary to build the furnace walls with brick, as the refractory material can rest against plates held in place by steel beams, which may also support the roof.”
Figure 1:
“15, are gates or dampers to control the flow of the refractory material ■ through the orifice, 6.”
In fact, there is no difference, except “in some cases” the substitution of plates “held in place by steel beams” for brick walls.
The objection of the plaintiff to the impracticability of the Siemens patent appears overcome by the construction of the furnace at the Garfield smelter, where the angle formed by the floor and vertical wall was filled in with brick to make an inclined surface of 60 degrees, as in the Siemens patent, and upon ore being introduced in the openings in the roof, the angle of repose of the ore was found to be from 30 to 50 degrees, depending on the character of ore introduced, and this incline did not operate against the protection of the wall from heat, and sustains Claim 4, Siemens British patent 2,413, and the furnace was successfully operated in a commercial way for more than one year, and was, it is said, in operation at the time of this trial. This would make it appear that the substance of the Siemens invention may not be held inefficient because of alleged imperfections in minor matters [778]*778affecting the substance of the invention claimed (Pickering v. McCullough, 104 U. S. 310, 26 L. Ed. 749), or application to new uses in the art (Lovell Mfg. Co. v. Cary, 147 U. S. 623, 13 Sup. Ct. 472, 37 L. Ed. 307). The angle of. repose of the flotation concentrates in defendant’s furnace is not more than 30 degrees.
It appears that the Siemens British patents anticipated and render invalid the claim of the Carson patent, No. 1,149,495. In thus concluding, I am not unmindful of Siemens’ statement in his application for American patent No. 113,584, 1871. It was to remedy what he considered inefficient and ineffectual in practice in his British patent, No. 2,413, that he took out two subsequent British patents, and in his specifications for the American patent, making reference thereto, he says:
“Notwithstanding these improvements, it was difficult to realize all the conditions necessary to insure satisfactory results. The reduction of iron ore in close retorts or muffles is essentially a slow and expensive process and the pulverulent iron produced thereby, upon being introduced into the melting furnace, floats upon the metallic bath for a considerable length of time without being incorporated with it. Being exposed in the meantime to the oxidizing and sulphurizing action of the flame, the metallic oxide thus produced corrodes the banks of the metal bath, and, being a nonconductor of heat, causes the fluid metal below to set.”
Nor to the conclusion of the Board of Examiners in the Patent Office, in its decision on the Carson appeal in patent application, No. 1,-302,307, saying that, in view of the United States patent admissions:
“We do not feel warranted in giving full credit to Siemens’ statement in his fourth claim, that the malls are protected from the heat, and corrosive action of the slag and cinders of the metallic hath hy the interposition of the ore itself.”
This statement has .no application to the 1866 patent. He was not speaking about raw ore. He'did not say that the walls were not protected from the heat and corrosive effect of the slag and cinders of the metallic bath by-the ore itself, as claimed in his patent, nor did he say anything to detract from his statement in his fourth claim in Patent No. 2,413. He had reference to a product of closed retorts or mufflers, which are not present in patent No. 2,413, but are separate apparatuses introduced by his patents of 1867 and 1868, and it is the oxidizing of this product, pulverulent iron, when subjected to the action of steel smelting furnaces, which corrodes the banks of the metal bath in the steel furnace, but this is a separate apparatus. And again referring to patent No. 2,413, in his 1871 patent, he says:
“It was found, however, in practice it was difficult to realize all of the conditions necessary to insure a satisfactory result.”
It was not found impossible, but difficult, and from the language employed in his 1871 patent it would appear that there was no difficulty with the raw ore, as set forth in the fourth claim, supra, and that the first or preparatory process relating to the treatment of raw ore may bé carried out in a ftirnace resembling in form a copper smelter, and is to have the charging doors “at the sides or in the roof.” (All italics mine.)
At bar and in the hrief plaintiff asserts patentable novelty to “a new process of smelting,” which consists of “side charging” all smelting [779]*779ores, and nothing but the smelting ores, and obviating the use of fettling material whatsoever.
Plaintiff may not by interpretation change his patent, and claim what he has heretofore abandoned, or what has been denied by the Patent Office. Leggett v. Avery, 101 U. S. 256, 25 L. Ed. 865; Hestonville Ry. Co. v. McDuffee, 185 Fed. 798, 109 C. C. A. 606; Hubbell v. U. S., 179 U. S. 77, 21 Sup. Ct. 24, 45 L. Ed. 95; Sutter v. Robinson, 119 U. S. 541, 7 Sup. Ct. 376, 30 L. Ed. 492; Roemer v. Peddie, 132 U. S. 313, 10 Sup. Ct. 98, 33 L. Ed. 382; Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 14 Sup. Ct. 627, 38 L. Ed. 500; Weber Electric Co. v. Freeman, 256 U. S. 668, 41 Sup. Ct. 600, 65 L. Ed. 1162. The claim now contended for was either abandoned or waived by patentee, or was rejected by the Patent Office. File wrappers, pages 2 to 12, 37, 38, 47, 75, 77, 82, 120, 121, 122, 142, 155, 156, 158, 161, 162, and 167.
In the construction of a patent, the understanding of the patentee at the time of its issuance may be considered as illuminative of the range within which it was understood at the time the patent issued. Victor Talking Mach. Co. v. American Graphophone Co., 151 Fed. 601, 81 C. C. A. 145; Goodyear Dental Vulcanite Co. v. Davis, 102 U. S. 222, 26 L. Ed. 149; Reece v. Globe Button Mach. Co., 61 Fed. 958, 10 C. C. A. 194; United Shoe Mach. Co. v. Greenman, 146 Fed. 759, 77 C. C. A. 22; St. Louis Street Mach. Co. v. American Street Mach. Co., 156 Fed. 574, 84 C. C. A. 340; St. Louis Trust Co. v. Studebaker Corp., 211 Fed. 980, 128 C. C. A. 478. For a fair un derstanding the claims and specifications must be read together. 1900 Washer Co. et al. v. Cramer et al., 169 Fed. 629, 95 C. C. A. 157; O. H. Jewell Filter Co. v. Jackson, 140 Fed. 340, 72 C. C. A. 304; Henry v. City of Los Angeles, 255 Fed. 769, 167 C. C. A. 113; Brooks v. Fiske, 15 How. 212, 14 L. Ed. 665; Mossberg v. Nutter, 135 Fed. 95, 68 C. C. A. 257. The claim of the plaintiff’s first patent was anticipated by the prior art, and the claims of the second patent must rest upon the first patent, as “the same inventive idea embodies the claims of both patents.” Mosler Safe & Lock Co. v. Mosler, 127 U. S. 354, 8 Sup. Ct. 1148, 32 L. Ed. 182.
There is no proof that there is any difference in the inventive concept underlying the apparatus and process in the two Carson patents and in the general principles specified and claimed in the Siemens patents. The law is satisfied by a description which those skilled in the art can understand. Diamond Rubber Co. v. Cons. Tire Co., 220 U. S. 428, 436, 31 Sup. Ct. 444, 55 L. Ed. 527.
The issue here is clearly a question of fact, the burden is on the plaintiff, and infringement must be established by clear and convincing testimony. Fried, Krupp Aktien-Gesellschaft, v. Midvale Steel Co., 191 Fed. 588, 112 C. C. A. 194. “The absence of actual fact proof is not met by the presence of expert speculations, no matter how voluminous,” and “claims should cover what the patentee has invented and not what he imagines he has invented.” Lovell v. Seybold Wash. Co., 169 Fed. 288 at page 290, 94 C. C. A. 578 at page 580.
[780]*780From what has been said it is unnecessary to consider the effect of the disclaimers, or the Bender article, or further consider the divisional patent. In practical application and operation, in so far as it has relation to the tendered issue, the defendant has adopted the principle of the Siemens furnace and'process of smelting.
Decree for defendant.
Cases cited by plaintiff and examined by the court; Ajax Metal Co. v. Brady (C. C.) 155 Fed. 415; Andrews v. Cross (C. C.) 8 Fed. 269; Barbed Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 36 L. Ed. 154; Brown v. Zaubitz (C. C.) 105 Fed. 242; Bowers v. Pacific (C. C.) 81 Fed. 571; Chapman v. Wintroath, 252 U. S. 137, 40 Sup. Ct. 234, 64 L. Ed. 491; Carnegie v. Cambria, 185 U. S. 403, 22 Sup. Ct. 69846 L. Ed. 968; Cluett v. Claflin (C. C.) 30 Fed. 922; Consolidated Co. v. Hassam, 227 Fed. 441, 142 C. C. A. 132; Diamond Rubber Co. v. Tire Co., 220 U. S. 435, 31 Sup. Ct. 444, 55 L. Ed. 527; Deering v. Winona, 155 U. S. 300, 15 Sup. Ct. 118, 39 L. Ed. 153; Dodge v. Post (C. C.) 76 Fed. 809; Dunkley v. Central (D. C.) 277 Fed. 1005; Diamond Co. v. Carr, 217 Fed. 400, 133 C. C. A. 310; Electrical Co. v. Julien (C. C.) 38 Fed. 134; Eames v. Andrews, 122 U. S. 40, 7 Sup. Ct. 1073, 30 L. Ed. 1064; Electric Co. v. Winton (C. C.) 104 Fed. 815; Hunt v. Cassidy, 53 Fed. 257, 3 C. C. A. 525; Heinz v. Cohn, 207 Fed. 547, 125 C. C. A. 197; Klein v. Russell, 19 Wall. 466, 22 L. Ed. 116; Los Alamitos v. Carroll, 173 Fed. 280, 97 C. C. A. 446; Lalance v. Habermann (C. C.) 53 Fed. 378; Manhattan v. Helios (C. C.) 135 Fed. 785-802; National Co. v. Brake Beam, 106 Fed. 693, 45 C. C. A. 544; O'Rourke v. McMullin, 160 Fed. 933, 88 C. C. A. 115; Petroleum v. Reward, 260 Fed. 177, 171 C. C. A. 213; Parker v. Stebler, 177 Fed. 212, 101 C. C. A. 380; Rubber Co. v. Goodyear, 9 Wall. 788, 19 L. Ed. 566; Ross v. Montana (C. C.) 45 Fed. 425; Sessions v. Romadka, 145 U. S. 29, 12 Sup. Ct. 799, 36 L. Ed. 609; Schwartzwalder v. N. Y., 66 Fed. 152, 13 C. C. A. 380; Simplex v. Pressed Steel Co., 189 Fed. 70, 110 C. C. A. 634; Stebler v. Riverside, 205 Fed. 738, 124 C. C. A. 29; Symington v. National, 250 U. S. 386, 39 Sup. Ct. 542, 63 L. Ed. 1045; Tuck v. Bramhill, 24 Fed. Cas. 259; Taylor v. Archer, 23 Fed. Cas. 731; Turrill v. Railroad Co., 1 Wall. 491, 17 L. Ed. 668; Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825, 36 L. Ed. 658; Walker on Patents, § 198; Winans v. Denmead, 15 How. 330, 14 L. Ed. 717; Brush v. Electric Co. (C. C.) 52 Fed. 974; Bower's v. S. F. Bridge Co. (C. C.) 91 Fed. 410; Hogg v. Emerson, 6 How. 485, 12 L. Ed. 505; Eibel v. Ontario, 261 U. S. 45, 43 Sup. Ct. 322, 67 L. Ed. 523.
Cases cited by plaintiff and not examined by the court: Ames v. Howard, Fed. Cas. No. 326, 1 Sumn. 482; Ex parte Reid, 15 O. G. 882; Ex parte McDougally 18 O. G. 130.
• Cases cited by defendant and examined by the court: Aron v. Manhattan Ry. Co., 132 U. S. 84, 90, 10 Sup. Ct. 24, 33 L. Ed. 272; Atlantic Works v. Brady, 107 U. S. 192, 2 Sup. Ct. 225, 27 L. Ed. 438; Blake v. San Francisco, 113 U. S. 679, 5 Sup. Ct. 692, 28 L. Ed. 1070; Brown v. Piper, 91 U. S. 37, 23 L. Ed. 200; Carnegie Steel Co. v. Cambria, 185 U. S. 403, 22 Sup. Ct. 698, 46 L. Ed. 968; [781]*781Cartridge Co. v. Cartridge Co., 112 U. S. 624, 5 Sup. Ct. 475, 28 L. Ed. 828; Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 11 Sup. Ct. 846, 35 L. Ed. 521; Deering v. Winona Harvester Works, 155 U. S. 286, 295; 15 Sup. Ct. 118, 39 L. Ed. 153; Diamond Rubber Co. v. Cons. Tire Co., 220 U. S. 428, 31 Sup. Ct. 444, 55 L. Ed. 527; Dunbar v. Eastern Elevating Co., 81 Fed. 201, 26 C. C. A. 330; Dunbar v. Meyers, 94 U. S. 187, 24 L. Ed. 34; Fisher v. Automobile Supply Co. (D. C.) 201 Fed. 543; Grinhell Washing Machine Co. v. E. E. Johnson Co., 247 U. S. 426, 38 Sup. Ct. 547, 62 L. Ed. 1196; Hailes v. Albany Stove Co., 123 U. S. 582, 8 Sup. Ct. 262, 31 L. Ed. 284; Heald v. Rice, 144 U. S. 737, 26 L. Ed. 910; Henry v. City of Los Angeles, 255 Fed. 769, 780, 167 C. C. A. 113; Hestonville Ry. Co. v. McDuffee, 185 Fed. 798, 109 C. C. A. 606; Holmes Electric Protective Co. v. Metropolitan Burglar Alarm Co. (C. C.) 33 Fed. 254; Knox v. Quicksilver Mining Co. (C. C.) 4 Fed. 809; Laas v. Scott (C. C.) 161 Fed. 122; Leggett v. Avery, 101 U. S. 256, 25 L. Ed. 865; Lovell v. Seybold Machine Co., 169 Fed. 288, 290, 94 C. C. A. 578; Lovell Mfg. Co. v. Cary, 147 U. S. 623, 13 Sup. Ct. 472, 37 L. Ed. 307; Lovell McConnell Mfg. Co. v. Oriental Rubber & Supply Co., 231 Fed. 719, 146 C. C. A. 3; McCreary v. Massachusetts Fan Co., 195 Fed. 498, 115 C. C. A. 408; Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 20 Sup. Ct. 708, 44 L. Ed. 856; Miller v. Eagle Mfg. Co., 151 U. S. 186, 14 Sup. Ct. 310, 38 L. Ed. 121; Minerals Separation, Ltd., v. Butte Co., 250 U. S. 336, 39 Sup. Ct. 496, 63 L. Ed. 1019; Mineral Separation, Ltd., v. Hyde, 242 U. S. 261, 37 Sup. Ct. 82, 61 L. Ed. 286; Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 429, 14 Sup. Ct. 627, 38 L. Ed. 500; Mosler Safe and Lock Co. v. Mosler, 127 U. S. 354, 8 Sup. Ct. 1148, 32 L. Ed. 182; National Malleable Castings Co. v. Buckeye, 171 Fed. 847, 96 C. C. A. 515; Palmer Pneumatic Tire Co. v. Lozier, 90 Fed. 732, 33 C. C. A. 255; Pennsylvania Railroad Co. v. Locomotive Truck Co., 110 U. S. 490, 4 Sup. Ct. 220, 28 L. Ed. 222; Railway Co. v. Sayles, 97 U. S. 554, 24 L. Ed. 1053; Roemer v. Peddie, 132 U. S. 313, 10 Sup. Ct. 98, 33 L. Ed. 382; Strause Gas Iron Co. v. Wm. M. Crane Co., 235 Fed. 126, 148 C. C. A. 620; Sutter v. Robinson, 119 U. S. 530, 541, 7 Sup. Ct. 376, 30 L. Ed. 492; Thatcher Heating Co. v. Burtis, 121 U. S. 286, 7 Sup. Ct. 1034, 30 L. Ed. 942; United States Hog-Hoisting Machine Co. v. North Packing & Provision Co., 158 Fed. 818, 819, 86 C. C. A. 78; Vandenburgh v. Truscon, 261 U. S. 6, 43 Sup. Ct. 331, 67 L. Ed. 507 (1923); Victor Talking Machine Co. v. Thos. A. Edison, Inc., 229 Fed. 999, 144 C. C. A. 281; Weber Electric Co. v. Freeman, 256 U. S. 668, 41 Sup. Ct. 600, 65 L. Ed. 1162; Wellman v. Midland Steel Co., 117 Fed. 826, 55 C. C. A. 47; Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136; Winston v. Croton Falls Construction Co., 194 Fed. 123, 114 C. C. A. 201; Application of Taylor, 52 App. D. C. 249, 285 Fed. 983; Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 Fed. 288, 292, 92 C. C. A. 206; Baldwin v. Kresl, 76 Fed. 823, 22 C. C. A. 593; Christie v. Seybold, 55 Fed. 69, 76, 5 C. C. A. 33; Concrete Appliances Co. v. Meinken (C. C. A.) 262 Fed. 958; Eck v. Kutz [782]*782(C. C.) 132 Fed. 758, 763; Gold v. Gold, 187 Fed. 273, 109 C. C. A. 615; Goodyear Dental Vulcanite Co. v. Davis, 102 U. S. 222, 26 L. Ed. 149; Haughey v. Lee, 151 U. S. 282, 14 Sup. Ct. 331, 38 L. Ed. 162; Henry v. City of Los Angeles, 255 Fed. 769, 167 C. C. A. 113; Higgin v. Watson (C. C. A.) 263 Fed. 378; Hubbell v. Fitzgerald (D. C.) 283 Fed. 790; Hunnicutt-Charles Co. v. A. B. Gaston Co., 218 Fed. 176, 177, 134 C. C. A. 56; O. H. Jewell Filter Co. v. Jackson, 140 Fed. 340, 72 C. C. A. 304; Jones v. Sykes Metal Lath Co., 254 Fed. 91, 94, 95, 165 C. C. A. 501; Kohn v. Eimer (C. C. A.) 265 Fed. 900; Morse Chain Co. v. Link-Belt Co., 164 Fed. 331, 333, 90 C. C. A. 650; Mossberg v. Nutter, 135 Fed. 95, 99, 68 C. C. A. 257; Otis Elevator Co. v. Portland, 127 Fed. 557, 62 C. C. A. 339; Palmer v. Lozier, 90 Fed. 732, 33 C. C. A. 255; Paramount Hosiery Co. v. Moorhead Knitting Co. (D. C.) 251 Fed. 897; Reece v. Globe Button Hole Mach. Co., 61 Fed. 958, 10 C. C. A. 194; St. Louis Street Mach. Co. v. American Street Mach. Co., 156 Fed. 574, 84 C. C. A. 340; St. Louis Trust Co. v. Studebaker Corp., 211 Fed. 980, 128 C. C. A. 478; Thomson-Houston v. Ohio Brass Co., 80 Fed. 712, 26 C. C. A. 107; Thomson-Houston Elec. Co. v. Hoosick Ry. Co., 82 Fed. 461, 27 C. C. A. 419; Thomson-Houston Elec. Co. v. Jeffrey Mfg. Co., 101 Fed. 121, 41 C. C. A. 247; Twentieth Century Machinery Co. v. Loew Mfg. Co., 243 Fed. 573, 156 C. C. A. 153; United Shoe Mach. Co. v. Greenman, 146 Fed. 759, 77 C. C. A. 22; Victor Talking Mach. Co. v. American Graphophone Co., 151 Fed. 601, 81 C. C. A. 145; Washer Co. v. Cramer, 169 Fed. 629, 95 C. C. A. 157; Willard v. Union Tool Co., 253 Fed. 48, 51, 65 C. C. A. 646; Wood-Paper Patent Case, 23 Wall. 566, 23 L. Ed. 31; Eibel v. Ontario Paper Co., 261 U. S. 45, 43 Sup. Ct. 322, 67 L. Ed. 523; Evans v. Associated Automatic Sprinkler Co., 241 Fed. 252 154 C. C. A. 172; Hubbell v. U. S., 179 U. S. 87, 21 Sup. Ct. 28, 45 L. Ed. 100; Pickering v. McCullough, 104 U. S. 310, 26 L. Ed. 749; Brooks v. Fiske, 15 How., 212, 14 L. Ed. 665; Miller v. Eagle, 151 U. S. 186, 14 Sup. Ct. 310, 38 L. Ed. 121.
Cases cited by defendant and not examined by the court: Ex parte Ehredriech, 1904 Com. Dec. 75; Gallagher v. Hien, 115 O. G. 1330; Gilbert & Barker Mfg. Co. v. Walworth Mfg. Co., Fed. Cas. No. 5,-418, 2 Ban. & A. 271; Haskell v. Miner, 1904 Com. Dec. 131; Marsh v. Dodge & Stevenson Co., Fed. Cas. No. 9,115, 6 Fish. Pat. Cas. 562; Needham v. Washburn, Fed. Cas. No. 10,082, 4 Cliff. 254; Norden v. Spaulding, 114 O. G. 1828; Paul v. Johnson, 109 O. G. 807; Phelps v. Hardy, 77 O. G. 631; Roe v. Hanson, 99 O. G. 2550; Scott v. Cruse, 154 O. G. 252; Sherwood v. Drewsen, 130 O. G. 657; Smith v. Brooks, 112 O. G. 953; Ex parte Webster, 1902 Com. Dec. 456; Wyman v. Donnelly, 104 O. G. 310; Gibbons v. Peller, 124 O. G. 624; Gilman v. Hinson, 1906 C. D. 634; Kitchen v. Smith, 39 App. D. C. 500; McNeal v. Macey, 106 O. G, 2287; Paul v. Johnson, 109 O. G. 807.