Rumford Chemical Works v. Lauer

20 F. Cas. 1348, 10 Blatchf. 122, 5 Fish. Pat. Cas. 615, 1872 U.S. App. LEXIS 1454

• Court: U.S. Circuit Court for the District of Southern New York
• Decided: September 13, 1872
• Status: Published

Opinion

BLATCHFORD, District Judge.

Although the announced .decision of the court, on the motion of the plaintiff's for a re-argument, was, that both parties would be allowed to take further testimony as to the novelty of what is covered by the first and second claims of the plaintiffs’ patent, as affected by the description of the three-fourths phosphate in the Lehrbueh and in Gmelin, yet the formal order entered was an unrestricted one, reopening the cause, with liberty to either party to take further proofs, and to bring on the cause for a rehearing on the proofs then already taken and such further proofs as might be taken. A large mass of further testimony has been taken, on all the points involved in the cause, and it has been reargued.

The first two claims of the patent are the only ones involved in this suit. As to them, the contest is as to their novelty. Regarding the second claim as si claim to the described process of making the acid claimed in the first claim as a new manufacture, the process so described consists, so far as substance is concerned, in mixing together 500 pounds of bone ash, (made by grinding burned bones,) and 400 pounds of freshly diluted oil of vitriol, (which is sulphuric acid,) and l(KK) pounds of water, stirring the ingredients from time to time, for about three days, and drying and pulverizing the resultant mass. The resulting pulverized powder is claimed in the first claim, as a new manufacture. It is said, in the specification. to consist of phosphoric acid, super-phosphates, and sulphate of lime, or gypsum, with a small proportion of salts of magnesia and soda.

The process of the plaintiffs’ specification is fully anticipated by the description of Lawes’ process of making a dry superphosphate, which was not before the court on the former hearing. The Lawes process was published in England in 1845, in an article in volume 5 of the Journal of the Royal Agricultural Society of England, entitled: “On the Action and Application of Dissolved Bones.” The article says: “Where calcined bones are used, owing to their containing merely the earthy portions of the bones, and to their being so easily dissolved, a dry superphosphate may be formed. For effecting this, Mr. Lawes * * * gives the following excellent and simple directions for making this superphosphate: Calcined bones are to be reduced, by grinding, to a very fine powder, and placed in an iron pan, with an equal weight of water, (a cast iron though such as are sold for holding water for cattle will do.) A man with a spade must mix the bone with the water until every particle is tvet. While the man is stirring, an assistant empties, at once, into the pan, sulphuric acid, 60 parts, by weight, to every 100 parts of bone. The acid is poured in at once, and not in a thin stream, as commonly recommended. The stirring is continued for about three minutes, and the material is then thrown out. With four common farm laborers, and two pans, I have mixed two tons in one day. The larger-the heap that is made, the more perfect the decomposition, as the heap remains intensely hot' for a long time. It is necessary to spread the superphos-phate out to the air for a few days, that it may become dry.” The evidence shows, that the Lawes process is the same as that of the plaintiffs’ patent. In each, ground calcined bones are mixed with water and sulphuric acid, the proper chemical action and decomposition are allowed to take place, and the result is a dry product, capable of being pulverized. The relative proportions of the three materials — bone ash, sulphuric acid and water —differ somewhat in the two processes. Lawes uses 10 parts in weight of bone, to 10 of water, and 6 of sulphuric acid. The plaintiffs’ prescribe 10 of bone to 20 of water and 8 of sulphuric acid. But, their specification says: “It will be obvious to any practical chemist, that the above described processes of producing this pulverulent acid may be modified in various ways. The proportions of the agents employed may be varied somewhat. without materially affecting the result.” The prescribed quantity of sulphuric acid in the patent is larger, in proportion, to the bone, than in Lawes’ process. But, it is shown to have been a well-known chemical fact, that the greater or less acid strength of the product of such a mixture would bo due to the greater or less relative proportion of sulphuric acid used. There is no invention in so varying proportions, as the specification itself, in effect, states. The process remains, in substance, the same. There can be no doubt that Lawes’ process, if it had been first resorted to subsequently to the issue of the plaintiffs’ patent, would be an infringement of that patent.

The processes being the same, the natural conclusion would be that the products would be substantially alike. The evidence is to that effect. It shows, that the product of the Lawes process, as described, is, to all practical intents and purposes, the same thing as the product of the plaintiffs’ process, and capable of being used for the purposes set forth in the specification of the plaintiffs’ patent. It is no invention, in preparing the article to be used as an ingredient in food, to carefully wash the bones clean. The direction, as to each process, is simply to use-sulphuric acid or oil of vitriol, and calcined' or burned bones, generally. Any impurity of extraneous matter that would exist in the sulphuric acid or the bones, or in the product because of the quality of such acid or of such-bones, in the one case, would exist in the other. The evidence shows, that the Lawes-product is equally non-hygroscopie with that of the plaintiffs’ process; that the one is as-much entitled to the appellation of a dry-powder as the other, and no more; and that the Lawes product has sufficient acid strength,, of a permanent character, for use for the-special purpose of an ingredient in a yeast powder.

The first two claims of the plaintiffs’ patent are, therefore, anticipated by the Lawes process and product. This conclusion makes it unnecessary to consider any of the other matters discussed on the question of novelty.

It was suggested, on the hearing, that, as-the defendant uses starch with his acid, and as the plaintiffs’ patent states, as its preferred method of preparing the acid, the use-of starch in it, the first claim ought, at all events, to be held good for the acid when prepared with starch in it, on the ground.' that starch had never before been used as an ingredient in it. This view was urged, on the idea that the case falls within the 9tli section of the act of March C, 1S37 (5 Stat-194), which provides, that, -when a patentee-claims, in his specification, “to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the first and original inventor, and shall have no legal or just right to claim the same, in every such case the patent shall be deemed good and valid for so much of the invention or discovery as shall be truly and bona fide his own, provided, it shall be a material and substantial part of the thing patented, and be definitely distinguishable from the other parts so claimed without right as aforesaid; and every such patentee, his executors, administrators and assigns, whether of the whole or of a sectional interest therein, shall be entitled to maintain a suit at law or in equity on suet patent, for any infringement of such part of the invention or discovery as shall be bona fide his own, as aforesaid, notwithstanding the specification may embrace more than he-shall have any legal right to claim.” This section has no application to the case. It is designed to allow a patentee to recover on. one claim of his patent, notwithstanding other claims in it are void for want of novelty. But, it requires that the parts claimed without right, and the parts rightfully claimed, shall be definitely distinguishable, as matter of fact, on the face of the claims, that is, be-definitely distinguished from each other in the claims. Here, there is no distinction, in the claims, between acid prepared with starch and acid prepared without starch. If there-■were a claim to the acid prepared with starch, and a separate claim to the acid prepared without starch, there might, under the statute, be a recovery on the former, although the latter were void for want of novelty, provided there had been no unreasonable delay in filing a disclaimer to the latter. The bill must be dismissed, with costs.

At the same time with the foregoing case, the case of the same plaintiffs against John Hecker and George Y. Hecker, founded on the same patent, was heard, being argued by the same counsel.

BLATCHFORD, District Judge. The patent involved in this case is the same one sued on in the case brought by the same plaintiffs against Lauer, just decided. The present defendants are charged with infringe ing all four of the claims of the patent. The first two are disposed of by the decision in the case against Lauer.

The third and fourth claims are as follows: “3. I claim the mixing, in the preparation of farinaceous food, with flour, of a powder or powders, such as described, consisting of ingredients of which phosphoric acid, or acid phosphates, and alkaline carbonates, are the active agents, for the purpose of liberating carbonic acid, as described, when subjected to moisture or heat, or both. 4. The use of phosphoric acid, or acid phosphates, when employed with alkaline carbonates, as a substitute for ferment or leaven, in the preparation of farinaceous food.*'

The proper construction of the third claim is, that it claims the mixing of the acid and the alkali with flour, in a dry state, and stopping at that point, without applying moisture or heat. In other words, it claims the preparing of self-raising flour, containing the powder or powders named in the claim, and requiring merely the application of moisture or heat, to enable it to be leavened. Against the novelty of this claim, the defendants set up a patent granted by the United States, May 1st, 1849, to John Fowler, assignee of Henry Jones, the inventor. The specification of the Fowler patent says, that the invention covered by it consists “in the adding to a certain weight of flour, such quantities of alkalines and acids, sugar and salt, as shall, by the addition of water only, enable such prepared flour to be manufactured into bread, &c., without the use of fermenting matter.” The specification then describes a mode of making the prepared flour, by first mixing with one hundred weight of dry flour ten and a half ounces of fine, dry tartaric acid, and then, after two or three days, mixing with the flour and acid, twelve ounces of bicarbonate of soda, or fourteen ounces of bicarbonate of potassa, in fine powder. twenty ounces of muriate of soda, (common salt,) and eight ounces of loaf sugar, in fine powder. The specification adds: “The quantities of acids and alkalies may have to be slightly varied, according to their quality; but the point to be attained is the neutralization of both. My prepared flour, when used to make bread, biscuits, or other like food, only requires to be made into dough with cold water, in the proportion of ten ounces of water to one pound of flour for bread, and about six ounces to one pound of flour for biscuits, and baked at once in a well heated oven. I do not claim mixing acid and alkali with flour, as a substitute for yeast, nor do I claim mixing one of these ingredients with flour in the dry state, when the other is dissolved, for making bread.” The claim is this: “Mixing both the acid and alkali with the flour in the dry state, sugar and salt being added or not, at will, substantially in the manner and for the purpose herein set forth, as a new article of manufacture.”

In view of the Fowler patent, it is impossible to see any patentable novelty in the third claim of the plaintiffs' patent. The prepared flour made with the ingredients named in said claim contains the phosphoric acid, or the acid phosphate, as a mere equivalent for the tartaric acid of Fowler’s prepared flour; as much so as a screw or a lever is a mechanical equivalent for a pulley. Any pulverulent acid, capable, on the application of heat or moisture, of liberating carbonic acid to make the dough porous, is, in the prepared flour, the equivalent of any other pulverulent acid having the like capacity, so far as regards such prepared flour, before heat or moisture is applied. Everything of substantive, patentable invention, in regard to prepared flour, as composed of an acid in dry powder, and an alkaline carbonate in dry powder, mixed with dry flour, is found in the patent of Fowler. Especially is this so, in regard to the plaintiffs’ patent, in view of the fact that the specification of that patent discloses no mode of practically mixing the ingredients composing the self-raising flour, but merely states that the acid “may be mixed with flour and bi-carbonate of soda,” as a substitute for cream tartar and tartaric acid, “in the practical preparation of self-raising flour.”

The fourth claim is a claim to the use of the acid and an alkaline carbonate, as a substitute for ferment or leaven, in the preparation of farinaceous food. This is a claim to the actual use of such acid and alkali in making raised dough. Nothing is shown which anticipates this claim, and the invention covered by it is patentable. Horsford was the first to use phosphoric acid, or an acid phosphate, for the purpose. It required experiment and invention to find out whether phosphoric acid could be used in place of tartaric acid, practically and successfully, and with safety to health. As it is admitted, and proved, that the defendants have used what is substantially the same acid described in the plaintiffs’ patent, mixed with an alkaline carbonate, as a substitute for leaven, in making bread from flour, they have infringed the fourth claim of that patent, and there must be a decree for the plaintiffs, for an account ■of profits, as to that claim. The question of costs is reserved.

[NOTE. For other cases involving this patent, see Rumford Chemical Works v. Hecker. Cases Nos. 12,132-12,184; Rumford Chemical Works v. Vice, Id. 12,136: Oliver, Fiunie & Co. v. Rumford Chemical Works, 109 U. S. 75, 3 Sup. Ct. 61; Attorney General v. Rumford Chemical Works, 32 Fed. 608.]

On the settlement of the decree, in the case -against the Heckers, the plaintiffs asked to have the court review its decision as to the third claim, and to consider whether, in the light of the decision of the supreme court in the case of Gould v. Rees [15 Wall. (82 U. S.) 187], the third claim was not valid. They also -asked that the decree should direct that the .account to be taken, on the infringement of the fourth claim, should include an account of the profits derived by the defendants from the sale of the mixture described in the third ■claim, on the ground that the defendants, by ■selling such mixture, were joint infringers of the fourth claim, with every purchaser of •such mixture from them, who used it in infringement of the fourth claim.

BTjATCHFORD, District Judge. In respect to the validity of the third claim of the plaintiffs’ patent, I am referred to the ease of Gould v. Rees [supra], decided by the supreme •court of the United States. I do not understand that any different doctrine is laid down in the opinion delivered in Gould v. Rees from that which is laid down in the opinion delivered, in the same court, in Seymour v. Osborne, 11 Wall. [78 U. S.] 516, 555, 556, by the same .judge, Mr. Justice Clifford. In view of the construction given by me to the third claim of the plaintiffs’ patent, and of what is found in the Fowler patent, and even irrespective of the evidence as to what was k. .\-n, prior to the plaintiffs’ patent, in regard to phosphoric •acid, and acid phosphate, and their chemical and other qualities and properties, I am confirmed, on full reflection, in the views and conclusions stated in my former decision in ■this case, and am of the opinion, that, in respect to such third claim, the substitution of phosphoric acid or acid phosphate, in the mixture referred to in such claim, in place of the acid named in Fowler’s patent, was a mere formal and colorable alteration of Fowler’s mixture, within the doctrine of Seymour v. Osborne [Case No. 12,688], and not an invention, and not the subject of a patent.

At the hearing, it was admitted and proved, that the defendants had used what was substantially the same acid described in the plaintiffs’ patent, mixed with an alkaline carbonate. as a substitute for leaven, in making bread from flour. It was, therefore, held, that they had infringed the fourth claim of the patent. The proper decree, therefore, is, that they have infringed the fourth claim, and that they account for the profits in consequence •of their infringement of said fourth claim. Whether such infringement has taken place ■solely by a use of what is named in the fourth claim, irrespective of any selling by the defendants of the mixture claimed in the third ■claim, or whether such infringement has taken place, also, through sales by the defendants of such mixture, in c-onnec-tion with a use of it by the vendees, under the fourth claim, will be a question to arise on evidence to be given, on the accounting, as to the facts attending such sales, in connection with the use, by the vendees, of the things sold.