989.

or necessary for the most satisfactory operation of their levice." Robinson v. Sutter, 10 Biss. 100; S. C. 8 Fed. Rep. 828.

The issue as to novelty, upon the proof, was also decided against the defendants, for the reason that the two devices relied upon-one described in the Oppelt patent of June 16, 1874, and the other in the Wenderoth patent of July 16, 1878-both use metal tanks and a metal tobacco holder. It was shown that contact with metal taints and injures the tobacco operated upon, and that the free admission of steam wets, and, to some extent, cooks, the tobacco; and the conclusion of the circuit court was that "the porous wooden tobacco holder devised by Robinson seems, from the proof, to stimulate that slow fermentation and action in the constituent elements of the leaf which is required to make the whole mass homogeneous.'

Unon a showing made by the defendants, a rehearing of the cause was granted, and further proofs taken. Upon that hearing it was made clearly to appear, from the testimony, that the artificial resweating of tobacco had been effected, long prior to the application for the complainants' patent, by means of the application of steam in a chamber adapted for that purpose, applied to the tobacco while in the ordinary tobacco cases in which the leaf tobacco comes packed, just as the defendants were found to have practiced. The case, however, was decided against the defendants upon another ground, as appears from the opinion of the judge holding the circuit court. Robinson v. Sutter, 11 Fed. Rep. 798. He said: "The distinctive feature of complainants' device for resweating tobacco is the water-tank in the bottom of their outer chamber, so that, by keeping this water at the proper temperature, the atmosphere of the outer chamber can be kept warm and humid, whereby the process of resweating will be induced and carried on to whatever extent shall be deemed desirable." The devices used prior to Robinson's invention, and proven as anticipations, which would avoid his patent for want of novelty, were found not to meet that point in the description of the complainants' device, inasmuch as the outer tank in each. into which the steam entered for the purpose of heating and moistening the tobacco, had specific provision, made in it for drawing off the water formed by condensation of the steam, instead of being arranged so as to hold a body of water in order to equalize and maintain the temperature of the vapor in the room or tank.

The defendants had also introduced in evidence, as an anticipation, a patent granted in 1865 to one Huse. His invention is described in his special cation as follows:

"I take the tobacco, by preference, after it has been desiccated and packed in the usual manner in hogsheads or cases, and which it is well known are not by any means so close as to exclude steam. I place these hogsheads or cases, or both, in a chamber of convenient size, and which can be closed up steam-tight, and I then introduce heat and moisture by means of steam apparatus, such as generally employed for heating buildings; the coils or congeries of pipe being arranged in any suitable manner for a proper distribution of the heat. Some of the pipes, about one-half of them, are to be pierced with very small holes, to permit the scape of steam into the chamber. It will be found best to raise and maintain the temperature at about 150 degrees Fahrenheit, and for about forty-eight hours for tobacco which has been well desiccated, a longer time being required when treated before it has been well dried. At the end of the time specified, the tobacco should be examined, and so soon as nicotine is well developed, which will be indicated by the evolution of ammonia, the steam must be shut off, the chamber opened, the hogsheads or cases opened, the tobacco all opened and shaken and thoroughly dried, which is best done in an open and well-ventilated room; and after it has been well dried the tobacco will be found to be thoroughly cured and ready of use, and further fermentation so completely stopped that it can be repacked and kept for any desired length of time. In this way I avoid all the evil consequences

of the method heretofore practiced, while at the same time it will enable the planter to put his crop of tobacco in market in a comparatively short space of time.

"What I claim as my invention, and desire to secure by letters patent, is the process, substantially as herein described, of curing tobacco, which process consists in subjecting it to the action of artificial heat and steam to induce the required fermentation until nicotine is evolved, and then stopping the further progress of fermentation by opening the packages, and thoroughly drying every part, substantially as described."

In respect to this, the circuit court said: "As for the Huse patent of 1865, it was only a box heated with steam-coils, in which the tobacco was to be placed and heated by the radiation of heat from the pipes and the introduction of live steam. 11 Fed. Rep. 798.

"9

There was, accordingly, a decree entered in favor of the complainants for an injunction, and for the recovery of $3,309.30 damages found by the master. The defendants have brought the present appeal.

It sufficiently appears from the evidence that, if the essential and sole characteristic of the complainants' invention consists in a substitution of a close wooden box to hold the tobacco while being subjected to the process of resweating, for metal tobacco holders previously in use, either the practice of the defendants in using as a tobacco holder the ordinary tobacco cases in which the leaf tobacco comes packed, during the process of resweating, is not an infringement, or, if it be so held, the complainants' invention was anticipated by others long prior to its date. This is shown by the Huse patent, and it is proven to have been employed by others, particularly by Louis Specht in the tobacco factory of August Beck & Co., in Chicago.

It only becomes important, therefore, to consider the ground finally taken in support of the decree, which involves the question whether the appellees are entitled to claim the water-tank in the bottom of the outer chamber, and the use of water in it, whereby the atmosphere of the outer chamber can be kept warm and humid, so that the process of resweating may be induced and carried on to any desirable extent. In this connection it becomes important to consider the proceedings in the patent-office in the granting of the patent, as shown by the file-wrapper. It appears from the transcript of the record in the case that the defendants offered in evidence a copy of this file-wrapper and contents, which was objected to as incompetent and not sufficiently verified. No ruling of the circuit court seems to have been made upon the objection, and the paper, although described as marked, "Defendant's exhibit, copy of the file-wrapper and contents of the Robinson patent," is not certified as a part of the evidence, and is not contained in the transcript. It does not, therefore, appear that the paper was ever before the court below, or consid. ered by it in the hearing of the case. In this court, however, on the hearing, by consent of parties, the file-wrapper and contents were ordered to be made a part of the record. From that paper it appears that the original specification, on which the application for a patent was based, declared that the petitioner had invented certain new and useful improvements in the method as well as apparatus for steaming leaf tobacco.

In setting out the object of the invention, he said: "The object of this invention is to provide suitable means whereby the leaves may be subjected to the process of sweating by means of steam or water under the influence of heat, and to that end my invention consists of that process, and in the apparatus by means of which I carry on the said process, substantially as hereinafter specified." It was also stated that "B is a tank or vessel for containing water and receiving the steam generated by the boiler, A;" and that "steam may also be generated in the space by filling the latter partly with water, and by applying heat directly to the bottom of the tank, B. A good result will be accomplished by keeping the water hot, though not to a degree

sufficient to generate steam to any appreciable extent." The claims were set out as follows:

"First. The method or art, substantially as described, of treating tobacco, to-wit, by placing the leaves in a tight vessel, surrounded, or partly surrounded, by a chamber for containing water, and subjecting the tobacco to heat by heating the water in the said chamber, and keeping it to the proper temperature by means of heat applied to the said chamber continuously during the operation of sweating the leaves, substantially as and for the purpose, specified.

*540

"Second. The method or art, substantially as specified, of treating tobacco, to-wit, by placing the leaves in a tight vessel surrounded by a steam and water tight chamber, and by introducing steam into the said chamber, substantially as and for the purpose specified.

"Third. The apparatus, substantially as described, for treating tobacco, to-wit, the tight vessel or tank, B, the tight vessel, C, made of wood and suspended in the tank, B, and a steam generator or heater, all combined and operating together, substantially as and for the purpose specified.

"Fourth. The combination of the boiler, A, the tight tank, B, made of wood, the tight vessel, C, made of wood, and suspended in the tank, B, and the pipes, D and E, entering the tank, B, and the boiler, all arranged and operating substantially as and for the purpose specified."

This application was filed on the twenty-eighth of February, 1879, and rejected by the patent-office on the sixth of March, 1879. Thereupon the applicant filed certain amendments to his specification, by striking out everything that related to the method or process for steaming leaf tobacco, and all that had reference to the use of water under the influence of heat, as contained in the tank, B, and the first two claims. Amendments were also made by inserting other parts of the specification as it now stands; among others, the following: "I make the vessel, C, of wood, as an essential feature of my invention, in order that the steam may sweat or percolate through it from the tank, B, and so that the tobacco will not be tainted by contact with the metal." And also the following: "The steam producing moisture in the vessel, C, by sweating or percolating through it from the space, b, in addition to the moisture originally in the tobacco before it was confined in the vessel."

On the tenth of April, 1879, the examiner informed the applicant that he "should specifically set forth that the structural plan of the device is old, and that the improvement consists alone in making the vessel, C, of wood instead of metal, and sufficiently porous to permit the steam to percolate through it."; Thereupon the applicant filed an amendment by inserting the following: "I am aware that the general structural plan of the apparatus hereinbefore described is old, excepting that the vessel, C, for receiving the tobacco has not, so far as I am aware, heretofore been made of wood, but of metal. The making of the vessel, C, of wood, and sufficiently porous to permit the steam to percolate through it, constitutes the essential feature of this invention. When metallic vessels are employed to receive the tobacco, it is liable to be tainted, and in such cases is merely heated, but not subjected to the moistening influence of steam or vapor percolating through the vessel containing the tobacco, as when this vessel is made of wood sufficiently porous to admit of that result. I do not, therefore, here intend to claim the general structural plan of the said apparatus independently of a vessel, C, made of wood, sufficiently porous to allow the steam to percolate through it."

On the twenty-fourth of April, 1879, the examiner wrote to the applicant as follows: "The specification should be amended by omitting all statements that the applicant has an improved process, or is the inventor of such.

The statement of invention, and reference to the state of the art, both require correction, as the invention is an improved apparatus only."

Thereupon further amendments were made, resulting in the specification and claims as they now stand, and the patent was granted.

A comparison of the patent as granted with the application very conclusively establishes the limits within which the patentee's claims must be confined. He is not at liberty now to insist upon a construction of his patent which will include what he was expressly required to abandon and disavow as a condition of the grant. Shepard v. Carrigan, 116 U. S. 593, S. C. 6 Sup. Ct. Rep. 493, and cases there cited. It appears, therefore, distinctly that the patentee has no claim for a process of steaming tobacco by means of steam, or steam and a body of hot water, nor by any process whatever. His invention must be limited to the apparatus, and as to that he was expressly required to state that its structural plan was old, and not of his invention. What is meant by the structural plan of the apparatus is the arrangement of the vessels for holding the tobacco, for confining the steam and water, and for supplying the steam; and the precise improvement which is alone the subject of the patent is the substitution of a wooden vessel for holding the tobacco while being resweated in place of a metallic one. So that the ultimate question in the case is reduced to this: whether, in such an apparatus, the use of the cases or boxes or packages in which the tobacco leaves are originally packed by the producer is equivalent to the wooden tobacco holder mentioned in the complainants' specification. If it is not, there is no infringement; if it is, as we have already seen, it had been anticipated for many years by the practice of other persons. It is expressly described in the Huse patent of 1865, where the inventor states as follows: "I take the tobacco, by preference, after it has been desiccated and packed in the usual manner in hogsheads or cases, and which it is well known are not by any means so close as to exclude steam. I place these hogsheads or cases, or both, in a chamber of convenient size, and which can be closed up steam-tight, and I then introduce heat and moisture by means of steam apparatus, such as generally employed for heating buildings; the coils or congeries of pipe being arranged in any suitable manner for a proper distribution of the heat. Some of the pipes, about one-half of them, are to be pierced with very small holes to permit the escape of steam into the chamber. And the same thing was done at the establishment of August Beck & Co., in Chicago, before the date of Robinson's application, and by several others.

For these reasons we are of opinion that the decree below was erroneous. It is therefore reversed, and the cause remanded, with instructions to dismiss the bill.

(119 U. S. 335)

CLARK POMACE-HOLDER Co. v. FERGUSON.1
(December 6, 1886.)

PATENTS FOR INVENTION-NOVELTY-MECHANICAL SKILL-LETTERS PATENT No. 187,100. Held, that letters patent No. 187,100, of February 6, 1877, to John Clark, for an "improvement in cheese-formers for cider-presses," are void, on the ground that the rack on which to place the pomace, and the use of a cloth to cover the pomace ly ing on the rack, being old, the only novelty was the use of a guide-frame smaller than the rack; and in the making of such guide-frame or rack of the desired size there was no invention involved, but only ordinary mechanical skill and judgment.

Appeal from the Circuit Court of the United States for the Northern District of New York.

In Equity. Bill to restrain infringement of patent. Bill dismissed. Plaintiff appeals. Wm. H. King,

Walter E. Ward, for appellant, Clark Pomace-holder Co. for appellee, Ferguson.

'Affirming 17 Fed. Rep. 79.

BLATCHFORD, J. "This is a suit in equity brought in the circuit court of the United States for the Northern district of New York, for the infringement of letters patent No. 187,100, granted to John Clark, February 6, 1877, for an "improvement in cheese-formers for cider-presses," on an application filed September 11, 1876. The specification and drawings of the patent are as follows:

"The object I have in view is in laying up a 'cheese' for the cider-press, where each layer is folded up in a cloth, to secure uniformity of thickness of

all the layers in the mass or cheese, and thus secure uniform pressure on its entire area, and to avoid all tendency to break the pomace frames or racks. To this end it consists in the employment of a guide-frame in combination with extended pomace racks, as more fully hereinafter set forth. Figure 1 is, a perspective view, showing the manner of laying up a cheese in press. Figure 2 is a cross-section at a, x. In the drawing, A represents the lower frame