195 F. 264 | 9th Cir. | 1912
(after stating the facts as above).
Section 4920 of the Revised Statutes (U. S. Comp. St. 1901, p. 3394) provides, among other things:
“In any action for infringement the defendant may plead the general issue, and. having given notice in writing to the plaintiff or his attorney thirty days before, may prove on trial any one or more of the following special matters: * * * That it had been in public use or on sale in this country for more than two years before Ms application for a patent; * * * and in notices as to proof of previous invention, knowledge, or use of the thing patented, the defendant shall state * * * where and by whom it had been used. * 's * And the like defenses may be pleaded in any suit in equity for relief against an alleged infringement; and proofs of the same may be given upon like notice in the answer of the defendant, and with the same effect.”
This being a suit in equity, the notice required by the statute was given in defendant’s answer, and the amendment thereto; but it appears with respect to the use of the alleged invention by Edwin Hayden his residence was given as being in the city and county of San Francisco, and the time of his use of the process from about the year 1883 continuously for man}' years, but it is not alleged where the process was used. The defendant gave notice of the person who it was alleged had used the process, and liis residence, and the time when it was used. If this notice was not deemed sufficient, it was open to the complainant to except to the answer for insufficiency on the ground that the place of use had not been stated. Having failed to interpose such an exception to the answer, the defendant now contends that under the sixty-first equity rule (29 Sup. Ct. xxxii) the answer must be deemed and taken to be sufficient. That rule provides for exceptions to answers on the ground of insufficiency, and, where no exceptions are filed, “the answer shall he deemed and taken to be sufficient.” Defendant makes the further answer to this objection that it wras not urged in the Circuit Court, and it has not: been assigned as error on this appeal. It appears from the record that all the particulars, including the place of use, were stated in the evidence, and, although this evidence was objected to by the complainant, it does not appear that the complainant was in any way prejudiced by the omission of the allegation from the answer, or the introduction of the evidence. The complainant had abundant time in which to in
We think, under the circumstances, the objection must be deemed to have been waived. In any event, the evidence was admissible without notice to show the state of the art. Morton v. Llewellyn, 164 Fed. 693, 694, 90 C. C. A. 514, and that is sufficient for this case.
But, whatever may be deemed to be the scope of that decision, this court will not be limited by its terms. As -said by the Circuit Court of Appeals for the First Circuit in Millard v. Chase, 108 Fed. 399, 401, 47 C. C. A. 429, 431:
“It is a thoroughly settled rule, as to patentability and the range of the claims in a patent, inasmuch as these matters concern the' public at large, the court will not allow parties to frame their issues in such a way as to take from it the scrutiny of all the questions which may be involved.”
The rule applies to this case, and requires us to examine the range of the claims and all the material questions involved in the patentability of the process in controversy.
We will first consider the range of the claims. The process as there set forth may be applied to either dried fruit or raisins. We are only concerned in this case with its application to raisins, as described in claims numbered 7, 8, 9, 10, 11, and 12.
The seventh claim is for “the process of treating raisins,” the essential elements of which consist “in heating the raisins and then cooling them.”
The eighth claim is for the same heating process of treating raisins, with the added element,' “and then subjecting them to a current of air,” whereby they are “quickly cooled.”
The ninth claim is for the treatment of raisins, the essential elements of which consist in subjecting them to “a current of warm air-,” whereby they are heated, and then subjecting them to “a current of cool air,” whereby they are “quickly cooled.”
The tenth claim returns to the essential element of the primary method of the seventh claim in treating the raisins, “which consists in heating the raisins and then cooling them,” with the added effect, “whereby the points of attachment of the stems are rendered brittle,
The eleventh claim repeats the essential elements of the tenth claim with the added effect, “whereby the raisins and the points of attachment of the stems are rendered hard and brittle, and then subjecting the raisins to abrasive and separating treatment, whereby they are stemmed and cleaned.”
The twelfth claim is a combination of the ninth and eleventh claim, having the essential elements of the ninth claim, consisting of “a current of warm air” for heating the raisins, and “a current of cool air” whereby the raisins are “quickly cooled,” and the essential element of the eleventh claim, “subjecting the raisins to abrasive and separating treatment whereby they are stemmed and cleaned.”
The process as here described and claimed does not appear on its face to be either new or novel. The treating of raisins by “heating the raisins and then quickly cooling them,” as described in the seventh claim, is certainly not new or novel. There is not a cook in the country who has had occasion to prepare dried fruit or raisins for domestic purposes who has not practiced the art of “heating and cooling them.” If we go a step further, and apply “a current of hot air” to heat or dry the raisins, we do not add anything new or novel to the method of treatment: nor do we do so if we then add “a current of cool air” whereby the raisins are “quickly cooled.” Currents of air for heating and cooling purposes are old methods and well known in the treatment of dried fruits and raisins.
“A machine is a concrete thing, consisting of parts or of certain devices and combination of devices. The principle of a machine is properly defined to be ‘its mode of operation,’ or that peculiar combination of devices which distinguish it frota other machines. A machine is not a principle or an idea. The use of ill-defined abstract phraseology is the frequent source of error. It requires no great ingenuity to mystify a subject by the use of abstract; terms of indefinite or equivocal meaning. Because the law requires a patentee ' to explain the mode of operation of his peculiar machine, which distinguishes it from others, it does not authorize a patent for a ‘mode of operation as exhibited in a machine.’ Much less can any inference be drawn, from the statute that an inventor who has made an improvement in á machine, and thus effects the desired result in a better, or cheaper manner than before, can include all previous inventions, and have a claim to the whole art, discovery, 1 or machine which -he has improved.”
Referring now to the process as described in the claims and sub-' stantially set forth in and illustrated by the specification, we find1 that the process of applying currents of warm air for heating purposes and currents of cool air for cooling purposes are specifically described as the functions of the heater and cooler for which application for a patent was made by Forsyth on September 30, 1897. But the specification goes further, and declares that “known forms of driers may be used for heating the fruit and known forms of cooling apparatus may be used for cooling the fruit.” In view of this declaration in the specification, we do not deem it necessary to dwell now on this feature of the process. But we do. find that, there are two paragraphs in the
“1st. In some instances the temperature may be raised as high as 150° Fahrenheit, more or less, the degree of heat being governed to some extent by the duration of the treatment and a temperature in the neighborhood of 100° Fahrenheit or lower being at times sufficient, if sufficiently prolonged."
There was evidence introduced tending to show that a chemical change takes place in the raisins when subjected to this temperature, but this is clearly the operative effect of the treatment with which we have nothing to do, except to be informed of its usefulness; whether it is new or novel will be considered later.
The second feature is:
“After the proper condition of the raisins has been reached, they should be transferred to the cooler, where they will be quickly cooled to a temperature in the neighborhood of normal temperature, or lower, and will thereby be brought to a hard and brittle condition and the points ■ of attachment of their stems made brittle. This hard and brittle condition will continue only for a limited time, and the stemming and cleaning should therefore be performed promptly or within a few hours.”
Then follows a reference to a process of stemming and cleaning which is clearly the function of the stemming and cleaning apparatus, and no part of the process, and is not so claimed.
We come now to the question: What was the state of the art with respect to these features of the process at the time Forsyth applied for his patent for the process under consideration?
In the court below Edwin Hayden was called as a witness for the defendant. He testified as to his experience in drying raisins. His testimony reduced to a narrative form, is substantially as follows:
“I was engaged in the dried fruit business at 818 Battery street, San Francisco, from 1880 to 1893, renovating all kinds of fruits, prunes, peaches, raisins, pears, nectarines, pale plums, and, in fact, every kind of fruit. Raisins came to us in bags and boxes. We received large quantities of raisins in sacks that had been sweated, and some of them were mildewed, and necessitated the breaking up of the layers and redrying, and the ragged bunches were stemmed and the good bunches were put back in the boxes to form the layers again. The. first step was the overhauling of the raisins. Those that were damp went into the dryer and were redried. The dryer was a Plummer dryer. It was a number of shelves upon which we placed the trays, and the heat came from below in a large furnace. The time the raisins were left in the dryer depended upon the amount of heat and the consistency of the fruit. Some raisins would be a little damp and others would be very wet, so Wet that they would almost drip, and they were very soft, so soft that it was impossible to stem them or put them back in the envelope. When we took the raisins out of the dryer, they had to be cooled off before being'sent the steinmer. The raisins were cooled mostly by natural draught. Our factory was about 100 feet long. The raisin room was in the upper part, the secorfd story. The first story was devoted to the dryér, and I allowed the heat to pass through the dryer, and up to what I called the hot room, and there the raisins were distributed upon trays, and, when they had sufficiently dried, all the doors were opened and the cars run out. I had them •on cars, and the cars were run into this long room, and the natural draught we have in San Francisco, generally between 11 and 4 o’clock every day, was sufficient lo cool the raisins off, and to cause the stems to stiffen up so they •could be freed' from the berry. We also employed artificial means for cooling*272 !the raisins. We had a blower, and, if I was in a hurry with the raisins, T would put the blower on them. I could do as much work with the blower in one hour’s time as I could do in half a day with the natural draught. Sometimes I did not use the blower at all. It was not necessary in every 'case.- Sometimes the raisins would be sufficiently dried in the dryer with the natural draught—sufficiently dry to stem without using the blower. We" 1 used the blower off and on. The purpose of the blower was to expedite mat- ■ ters. Never perceived any difference in the treatment of raisins when cooled off naturally and when cooled by the blower. The effect of treating the raisins by artificial heat was to destroy the granulating power of the saccharine substance in the raisins. It prevented the raisin from sugaring. After the raisins were cooled, we ran them through the stemmer, and made loose raisins of them. We used the Fresno stemmer. That was a wire cone in a- wire- cylinder, and the inner cone revolved, and the outer cone was stationary. It would stem the raisins. It would take off a great many of the cap or butt stems. We did not have at that time any necessity for taking off the cap stems, any more than for the looks of them. It made them more: salable. If the raisins were very dry, about 40 per cent, of the cap stems would be removed.”
Thomas J. Little was also called as a witness on behalf of the defendant. His testimony, reduced to a narrative form, is substantially as follows:
“I was employed by Edwin Hayden from 1884 to 1895; employed about 9 ór 10 years. Hayden was engaged in the drying and evaporating of fruits, and renovating fruits, including l'aisins. The method employed by Hayden for drying raisins was the drying process. The raisins that came in was what we call London layers, done up in papers, and the papers were all wet, and everything (of that kind, and we would have to take them out of the papers and then we would pick out the best, and then we would put them back in the boxes as London layers, and what would not make London layers we would run through the stemming machine, and make loose muscatels of them. The building where this was carried on consisted of two stories and the basement or furnace. On the first floor was the dryer, and the second floor was used as a hot room, and we had trapdoors in the top of the dryer that opened into the hot room, and the hot room was fixed with racks all aromad it, three feet from the floor, and we used trays to fit in these racks. We spread the raisins on these trays, and then opened the trapdoors, and let the heat.come up to the raisins. The heat right in the dryer would be too strong ■for the raisins. It would spoil them. When the raisins were properly dried, we would take them out and pick out the best, and would make London layers again. We had a lot of girls to pack them up, and those not fit for the purpose of packing would be ram through the stemmer, and we would make what we called loose muscatels of them. After they were taken out of the hot room, we put them in these racks. These racks were made on casters to roll anywhere, and I think they would hold 24 trays, something in that neighborhood, and they were taken out of the dry room and pushed aap where the draught would get to them to cool them before they were stemmed. It would not do to stem them with the heat on. They had to cool off to make the stems brittle. To make a draught we would take a window out there- and then open the door, and set the trays in between them, and that would let a draught run right through; or we would take and run them through the fan-mill. We sometimes used a fan-mill. We would cool them with a blower, and while going around it would make quick work. The blower was a machine. They had a wheel with a shaft on with a pulley attached, and by putting the belt on the flywheel, and keeping that flying around with an engine, made a draught. We used this at times; not all the time. The ■ purpose of- using the machine was to make quick work. By natural draught it would take four or-five hours to cool the raisins, and with the fan-mill two or three hours. Lots of the raisins were stemmed—tons and tons of them. The stemmer was a cone-shaped arrangement. It was a wire cone inside another, cone, as near as I can tell, four or five feet long, and two*273 feet at one end, and about a foot at the other. The stems were,taken off. The cylinder revolved and carried the raisins down, and as the raisins went 'down it was tearing the stems off. That was to remove the stems and the dirt or anything else that was on them. It acted as a sieve, and it even segregated what we call the sultanas from the other raisins. It removed a Mg part of the butt-stems from the raisins. The purpose of heating the raisins was to put them in shape to be salable. When they came in, they were all wet, and would not be salable at all. The heat would melt the sugar so you could not see it, and make the raisins look natural. We cooled the raisins to get the stems brittle so we could stem them. When the raisins came out of the hot room, whatever sugar was on the face of them would melt off, and the stems were so that when we started to cool them they would become brittle. Take the raisins when they were all sweated and wet, as a matter of course the stems are limber and soft, and we could not do anything with them in the stemmer machine, as it would tear the raisins all to pieces before we could stem them. When they came out of the heater, they were soft; and it was necessary to cool them. In cooling they stiffened up.”
The testimony of these two witnesses is vigorously assailed and criticised by the appellant for several reasons, among others, that their testimony is dependent on the frailty of human memory; that the process usedi by them was not made public; and that the process was abandoned. Perhaps standing alone this testimony ought not to be held sufficient to overcome the prima facie evidence of novelty and invention furnished by the letters patent to Forsyth; but there is evidence in the record that is not open to these objections. Evidence of this character is the book of Gustav Eisen, entitled:
“The Raisin Industry. A Practical Treatise on the Raisin, Grapes, Their History, Culture and Curing, published by II. 8. Crocker & Co., Stationers and Printers, 1890.”
This book was issued from the press eight years before Forsyth made application for his patent for the process in controversy. The author makes many suggestions for the handling and treating of raisins, and) describes the mechanism of drying, stemming, and grading machines used for that purpose. In describing the process of treating raisins, the author says:
“The loose raisins, provided they are properly or sufficiently dried, are ready to be handled as soon as brought from the vineyard. A loose raisin, or a bunch from which loose raisins are to he made, must be overdried rather than underdried; at any rate, it must be so dry that no juice will come out of it when the raisin is squeezed heavily or even torn. But a matter of greater importance even is that the stems should be brittle or sufficiently dry to break off readily. If they do not break, the raisins cannot be easily separated from the stem. The stem, instead of breaking off, will tear off, and the raisins will be open to the entrance of air, which will cause them io undergo a chemical change, to sugar and deteriorate. As soon as a perfectly dried sweat box of third-grade or loose raisins enters the packing house, it should be taken to the stemmer. Any delay in this is injurious to the raisins, as they will rapidly undergo a sweating or equalizing, causing the steams to soften and to lose their brittleness.”
We have here the heating and cooling process to the same effect, and in very much the same language, as that employed in the Forsyth specification. Furthermore, reference is, made to the chemical change in the contents of the grape, which is made an important feature in the evidence and argument supporting the Forsyth patent. The fact
Evidence of prior inventions in the same department of industry is also important in showing the state of-the art. It appears that on September 8, 1885, a patent was granted to Ambrose Blatchly and Andrew J. Hatch for a desiccating or drying apparatus which subjected fruit in trays to a current of warm air from a furnace for the purpose of drying the fruit, and that on November 29, 1887, Ambrose Blatchly was granted a patent for an improvement in fruit dryers, consisting of a heater and blowing or draft mechanism, by which the air was caused to flow through and over trays of fruit. These two patents are for mechanical devices, and not processes, but they show that the process of treating fruit with currents “of hot air” was in the stage of a mechanical 'function when Forsyth applied for his patent.
The case of Mowry v. Whitney, 81 U. S. (14 Wall.) 620, 20 L. Ed. 860, is cited by the appellant as being a parallel case supporting the novelty of the process in controversy. The process there involved the application of heat in the manufacture of cast-iron car wheels. The car wheel is there represented as consisting of an outer rim, a central hub, and a circular plate. It is there stated that it was essential that the rim should be hard because it had to endure friction in moving over the rails of the track, while the hub and plate must be soft and tough because they had to resist strain. The problem was to produce a car wheel having a hard rim and a soft hub and plate; but, as all the parts of the wheel were cast in one piece, the problem was difficult of accomplishment. The unequal cooling of the different parts produced a strain on the different parts which greatly impaired the strength of the wheel. Various devices had been made to guard against and to remedy the mischief resulting from the inherent and inevitable strain, caused by the unequal contraction in cooling. But it does not appear that in any of them the idea existed of making a car wheel with chilled tread, straight plates, and solid hub, • annealed and cooled so as to leave it uninjured by the strain attendant upon the unequal cooling of the thick and thin parts. Annealing of some kinds of castings was known and practiced, but it does not appear to have ever been applied to cast-iron car wheels prior to the discovery made by Wlhitney of a process by which annealing could be applied •successfully to,, car wheels. It was a new and novel process as applied to car wheels. As stated by the Supreme Court in its opinion:
“A new and previously unknown result is obtained, namely, tbe relief of the plate of the wheels from inherent strain without impairing the chilled tread, a result which, though anxiously sought, had not been obtained before Whitney’s invention.”
We do not see how the novelty of the process in that case, which was not before known, can be said to sustain the novelty of the process in this case. The application of heat and the process of cooling had been applied to dried fruit and raisins long before Forsyth made the application for a patent for his process and the process was substantially the same. What Forsyth really did was to devise and secure .from others- efficient apparatus and appliances for the treating and
We concur in the opinion of the court below that the patent in suit is void for lack of novelty.
The decree of the court is therefore affirmed.
WOLVERTON, District Judge. I concur.