*On October 31, 1888, William R. Jones [449] made application for two letters patent, one stated to be for a new and useful improvement in apparatus "for mixing molten pig metal," the other for a process declared to be "a new and useful improvement in methIn 1855 and 1856 Sir Henry Bessemer ob- ods of mixing molten pig metal." The ap tained various patents covering his discov- plication for the first or apparatus patent ery for producing malleable iron and steel was several times rejected, and, after vari by forcing currents of air through molten ous amendments, was finally allowed. This iron. The appliance described was a re- patent may be dismissed from view, as it is fractory lined vessel, called by Bessemer a not involved in this controversy. The first converting vessel, which came to be desig-application for the process patent-which nated as the converter or the vessel. With is the patent under consideration in this out going into detail, it suffices to say that, case was rejected. Thereupon a new and for various reasons, the method of Sir Hen- amended application was presented. This [448]ry Bessemer *proved not to be as advanta was also rejected, when a second amendgeous as had been expected. Indeed, it was ment was made, and the application was not until Mushet patented a method of de- finally allowed. carbonizing iron by completely blowing it and adding ferromanganese or speigel-eisen

patent, it is unnecessary to repeat them in | denial of infringement and an averment of detail, and therefore a mere outline of them want of patentable novelty. is now given. The patent was entitled "Method of Mixing Molten Pig Metal." The primary object of the invention was stated to be "to provide means for rendering the product of steel works uniform in chemical composition." It was also stated that: "My invention is not limited to its use in connection with converters, since sim-ant filed what is termed a "petition for disilar advantages may be obtained by casting the metal from the mixing vessels into pigs for use in converters, puddling furnaces, or for any other uses to which pig iron may be put in the art." It was further stated that: "My invention may be practised with a variety of forms of apparatus,—for example, by merely receiving in a charging ladle a number of small portions of metal taken from several ladles or receiving vessels containing crude metal obtained at different times or from different furnaces, mixing being performed merely by the act of pouring into the charging ladle, and other like means may be employed."

After the evidence for the defendant was all in and several witnesses had been examined in rebuttal, the complainant, on March 30, 1897, stated "that at the hearing of the cause he will urge infringement of the second claim only of the patent in suit." At the close of all the evidence the complainclaimer," praying that the court would receive in evidence a certified copy of a disclaimer of portions of the specifications, which on that day had been sent to the Patent Office for filing. The trial court admitted the disclaimer in evidence. The portions of the specifications covered by the [451] disclaimer are printed in italics in the patent as reproduced in the opinion of the court. The disclaimer need not be further noticed at this time.

It was, however, declared that it was preferable to use the device covered by the apparatus patent, and a description of the same was set out. That device may be thus described: It consisted of a covered tilting tank of large size, "holding, say, 100 tons of metal [more or less]," lined so as "to retain the heat of the molten contents 450]of the vessel and to prevent chilling thereof," with receiving and charging spouts, a gas-heating appliance contained in the discharging spout, and so constructed that, after being fully charged with molten metal, drawn from the furnaces into ladles and poured into the reservoir, as the metal was poured out for use a considerable residue would remain in the reservoir to mix with an incoming charge.

The patent embodied two claims which read as follows:

"1. In the art of refining iron directly from the smelting furnace, the process of equalizing the chemical composition of the crude metal by thoroughly commingling or mixing together the liquid metal charge and subsequently refining the mixed and equalized charge, substantially as and for the purposes described.

It was shown beyond question that in November, 1895, the defendant had erected at its works a reservoir of the capacity of about 300 tons, for the storage of molten metal drawn from its blast furnaces, the metal so stored being held in the reservoir for the purpose of treatment in the converters. This reservoir was described by a witness in the following condensed manner: "It was cylindrical in shape, with slightly convex ends, and in turning [for the purpose of pouring out the metal] it revolves upon the center of the cylinder. It is supported upon cradles of rollers, and the motion is imparted to the reservoir by hydraulic cylinders." As this cause, as already stated, does not involve the Jones apparatus patent, no question of infringement of the mechanical device embraced in such patent can possibly arise. In this reservoir the molten metal as tapped from the furnaces was stored continuously, and the reservoir was drawn upon with like continuity to supply molten metal for treatment in the converters. While it is not asserted that the use of the reservoir, as just stated, caused the metal stored therein to become uniform in its chemical constituents, it is conceded that the method pursued counteracted the inconvenience of sudden variations in the metal as drawn for converter purposes.

"2. In the art of mixing molten metal to There is controversy, however, whether secure uniformity of the same in its constit- the defendant, in reservoiring its molten uent parts preparatory to further treat-metal, irrespective of the supply and dement, the process of introducing into a mix- mand, intentionally retained in the resering receptacle successive portions of molten voir a considerable residuum. From the metal ununiform in their nonmetallic con- view taken by me, however, it is unnecesstituents (sulphur, silicon, etc.) removing sary to pass on this contention, since the portions only of the composite molten con- principles deemed by me applicable to the tents of the receptacle without entirely cause will be wholly unaffected, even if it draining or emptying the same, and succes- be conceded that the defendant, in operatsively replenishing the receptacle with fresh ing its reservoir, in filling it with molten ununiform additions, substantially as and metal, and in drawing the same off for use for the purposes described." in the converter, designedly held in the reservoir a considerable residuum of molten metal in order that the metal which was subsequently charged into the reservoir might commingle with that retained.

On December 2. 1895, the Carnegie Steel Company, Limited, which had acquired full title to the Jones patents, commenced the present suit against the Cambria Iron Company for an alleged infringement of the foregoing process patent. The defenses made by the answer were substantially a

The cause was decided by the circuit court in favor of the *complainant. The[452] court held that the second claim of the pat

was decided that the defendant had the right to reservoir its molten metal, and that its method of doing so did not infringe the patent. The court decided that the disclaimer was not warranted by the statute, but that in any event it was ineffective to alter the true meaning of the patentThereupon the decree of the circuit court was reversed.

ent referred alone to metal direct from the retention in reservoiring of a considerable blast furnace intended to be Bessemerized in residuum, even though the same was desiga converter, and that the object was, not nated as a dominant pool, and if it did that the obtaining, by mixing, a molten metal the method was not patentable in view of substantially uniform in its chemical con- the state of the art, and that the proceedstituents, but the avoidance of abrupt vari-ings in the Patent Office demonstrated that ations between the various charges supplied this was in effect conceded by Jones. It to the converter. The patent was construed as not contemplating the mixing of batches of metal; that is, the filling up of the apparatus and a drawing down to a "residue" before replenishing. The gist of the Jones idea was stated to be "the creation and maintenance of a great pool of metal between the blast furnaces and converters, through which all the incoming and outgoing metal must pass," by which means abrupt variations were prevented, although neither a uniform molten metal nor a uniform product was thereby obtainable. Indeed, the court said: "In Jones, uniformity is a nonessential-in fact, a nonattainable-attribute of product, and is a necessary nonsequence of material used."

While the court found that reservoiring was well known in the art at the time the Jones patent was obtained, and that mixing necessarily resulted from such reservoiring, it held that the Jones method was patentable, because the reservoiring known to the art contemplated storage, and not the prevention of abrupt variations; that although a mixing of the metals was of course the inevitable result of the reservoiring, such fact did not preclude the validity of the Jones patent, because prior to its grant the mixing arising from reservoiring was incidental to storage, while under the Jones method the storage was incidental to the mixing. The court said:

This court now reverses the decree of the circuit court of appeals, adopts the views of the circuit court, and in effect affirms the decree of that court. The court expressly upholds the theory of a dominant pool, and decides that the Jones patent related, not to the obtaining of uniform molten metal by mixing in a reservoir, and a resultant uniform product, but solely to the procur ing, by means of reservoiring, molten metal which would not abruptly vary in its chemical constituents when drawn from the reservoir for use in a converter. The opinion of this court now, as did that of the circuit court, expressly concedes that reservoiring of molten metal was well known in the art at the time the Jones patent was applied for, and that mixing was the inevitable result of such reservoiring; but it is decided that this fact did not operate to deprive the Jones method of novelty or to relieve[454] the defendant from the charge of infringe ment.

My mind is unable to assent to the construction which the court affixes to the patent, and as it is conceded that the method used by the defendant does not infringe unless the patent has the import which the court has given to it, the reasons for my dissent would perhaps be most directly

"Now that mixing of some character took place in the ladle during these operations; that where it took place the resultant was a homogeneous average of all constituent ingredients contained,- -are facts to gainsay which would be to question nature's laws; but the indisputable fact re-made manifest by stating what seems to me mains that such mixing was accidental, eccentric, and nonsystematic, and therefore not of a systematic, regular, functional type or for a systematic, functional purpose.'

to be the true construction of the patent. Doing so, however, is for the moment pretermitted, for two reasons: 1. Because to my mind it seems that even if it be granted, A decree was entered reciting that the arguendo, that the patent is susceptible of patent in question was valid as to the sec- the construction which the court has placed ond claim thereof; that the defendant, "by upon it, on the face of the opinion, the con [453] reason of the use of a certain method of clusion reached is wrong; in other words, mixing molten pig metal, as in the said the opinion of the court to me seems selfcomplainant's bill set forth, has infringed destructive. 2. Because if the concession the said recited letters patent as to the sec- of the court be accepted, that reservoiring ond claim thereof, and has violated the ex- and mixing were well known in the art, then clusive rights of the said complainant there- it follows, from a consideration of the reeunder." It was adjudged that recovery be ord, that the patent, as construed by the had of the gains and profits made by the court, was wanting in patentable novelty. defendant and the damages sustained by That is to say, if the admissions of fact complainant, and a master was appointed made in the opinion of the court are right, to ascertain the amount of such gains, prof-its conclusion is demonstrated by the record its, and damages. The defendant was, in to be unsound.

general terms, enjoined from any further Let me briefly advert to the opinions of infringement of the second claim of the let-this court and of the circuit court, to point tera patent and of the exclusive rights of out the reasons which constrain to the first complainant thereunder. proposition just stated. The circuit court An appeal was taken to the circuit court concluded that the reservoiring of molter of appeals. That court held that the sec-metal from cupola and blast furnaces for ond claim of the patent did not cover the use in casting or in converters was well

known to the art at the time the Jones pat- | location of words. If, then, the distinction ent was applied for. It also declared as folhas significance, as of course it must have, lows: "That mixing of some character took since the court makes it the basis of its place in the ladle during these operations; that where it took place the resultant was a homogeneous average of all constituent ingredients contained,-are facts to gainsay which would be to question nature's laws." But this was held not to establish that at the time the Jones method was patented that method as now construed was known to the art or had been anticipated, because, in the prior practice, the mixing "was accidental, eccentric, and nonsystematic, and therefore not of a systematic, regular, functional type, or for a systematic, functional pur-first, the advantages resulting from mixing, pose;" that such mixing was incidental to 455]storage, while in the Jones method storage was incidental to mixing. This court ap provingly adopts and elaborately restates

these views.

Now, my reason does not enable me to conceive how, consistently with the view of the prior state of the art as to mixing and reservoiring which is admitted, the conclusion as to the patentability of the Jones

method as construed can be sustained.

decision, it can only mean this, that those who practised the reservoiring of molten metal before the grant of the Jones patent mainly contemplated storage, and did not in their minds take into view the inevitable mixing which would arise therefrom by a law of nature; therefore, in the minds of the person so reservoiring, the storage was the primary, and the mixing the incidental, consequence. But, on the contrary, as those reservoiring metal after the Jones patent must be considered to have contemplated, therefore, in their minds, the mixing is the principal and the storage the accessory. But this is only again to say that while the Jones method was old it is to be treated as new because it covered the intention of those

who stored metal for the purpose of use.

Aside from this, it seems to me the concession that the placing of molten metal in a reservoir for use as required was well known at the time the Jones patent was isIt would seem to be beyond question that, sued is inconsistent with the ruling now as it is held that the mixing resulting from made, that the Jones patent validly em the storage as practised prior to the grant braced the retention in a reservoir of a mass of the Jones patent was the resultant, as of such metal, now described by the court stated, of a well-known law of nature, it as a dominant pool. The elementary import must follow that the qualifying words "ac- of the right to reservoir, as applied, not only cidental, eccentric, nonsystematic, and func- to molten metal, but other fluids, is the tional type or purpose" could only relate to storing of the fluid for use as required, and the conduct of the persons who practised this implies the drawing off as desired, the the method prior to the Jones patent. This replenishing at will, and the keeping of such must be unless it can be said that a well- residuum or reserve supply as may he known law of nature was accidental, eccen- deemed best. It may not be doubted that tric, nonsystematic, and nonfunctional. The to say that one who stores fluid for use is qualifications, then, applying, not to the law obliged, whenever he draws any off, to draw of nature, but to the conduct of parties, the all off before replenishing, is to say that reasoning must come to this: such party has not the right to reservoir. Although the method attributed to the Jones patent was If it be meant by the court that the right well known to the art at the time that to reservoir carries with it the right to draw patent was issued, and hence it was intrin-off or to retain at will, unless the person sically wanting in patentable novelty, nev- reservoiring intends to retain a residuum for ertheless such method must be held to have a particular purpose, the reasoning reduces embodied invention because the well-known itself again to the proposition that the Jones not the process described practice was carried out by individuals in a patent covers, varying and irregular manner. But this is therein, but the mind and intention of the only to say that while the Jones method was individual who may exercise the right to old, it must be treated as new because of the reservoir molten metal. That is to say, my conduct of individuals in applying the reason does not enable me to understand method and their intentions. And this re- how the right to reservoir can be admitted, duces itself to the proposition that the Jones and yet such right be at once denied by a[457] patent as construed covered the mere inten- construction of the patent which imposes the right to reservoir, tion or mind of persons. The reasoning is qualifications on equally applicable to the distinction which which, in effect, renders its beneficial exeris asserted to exist between storing and the cise impossible. In other words, I fail to mixing incidental thereto, and mixing with see how the exclusive right can be conferred incidental storage. The mere form of ex- to do the very thing which the court admits pression cannot create a distinction where was well known at the time the patent to none exists, or destroy a law of nature. As Jones was issued. The conflict which by me it cannot be conceived that various mind perceives between the facts admitted charges of molten metal can be stored in a upon the face of the opinion and its conclucommon reservoir without resulting mixing, sion is expressly pointed out by the opinion it follows necessarily, by the law of diffu- itself, where it is said: "If the contents of sion of fluids, the mixing is the secondary the mixer used by the defendant were al result arising from and created by the pri- lowed habitually to become empty in carrymary act of storage. It is impossible that ing out its process there would be no inthe secondary force can be caused to become fringement." That is, if in the use of its [456]*the first and creating power by a mere col- reservoir the defendant did not habitually

y

retain a residuum there would be no in- some another. As it is melted in each eufringement. But the admission that the pola, it did not all melt at the same time, occasional use of a residue would be no in- and if we had drawn it directly from the fringement concedes that the patent did not cupola into the small ladle from which we embrace the right to use a residue, for if it poured the wheels, one wheel might have was covered by the patent it would be an been poured out of very hard iron, another infringement to avail of it even occasionally. wheel out of very soft iron, and so every Thus it must follow that the exclusive right shade between. There would have been no which the court upholds is expressly de- uniformity in our work. But by taking it clared to relate, not to the process, but to from the three cupolas, all melting the same the mere habit of the defendant. charges of iron, and collecting them in a molten state, the inequalities of melting were all overcome and a uniform product produced."

For the purpose of demonstrating the second proposition previously adverted to, let me now recur to the state of the art as depicted by the record, in order to point out that even if the Jones patent embodied the process which the court now attributes to it, that process was wanting in patentable novelty. In doing this, for convenience, the subject is thus divided: (a) The use of molten metal drawn from cupolas for foundry purposes, before the invention of Bessemer, as well as the foundry practice and the Bessemerizing practice by the indirect process after such invention and before the grant of the Jones patent; (b) the direct process of making steel from blast-furnace metal prior to the grant of the Jones patent. Foundry and Indirect Bessemer Practice Before the Grant of the Jones Patent.

2. The Wheeling Foundry Practice: Kirk on Founding of Metals, 1875, thus described a foundry practice (italics not in original):

*"In melting iron I should recommend [459) melting it hot, and as fast as possible. A quantity of molten iron should be kept in the cupola or in a large ladle, so as to give the different brands of iron a chance to miz. In most all the foundries at Wheeling, West Virginia, the cupolas are from the time the blast is put on until the never stopped bottom is dropped. A large ladle is set on trestles in front of the cupola, in such a manner that the iron can run into it from the cupola and be poured out into the smaller ladles at the same time. The iron is all run out of the cupola as fast as it is melted, and is mixed in a large ladle. I think this is a good way of mixing iron. See alloys."

3. The Altoona Practice: At the Altoona

wheel works of the Pennsylvania_railroad, from 1871, the cupola metal was designedly stored and mixed. The early reservoir ladle, of seven tons' capacity, received the metal from two cupolas, and was thus described:

1. The Whitney-Car-Wheel Practice: At the Whitney car-wheel works in Philadelphia, commencing in 1847, remelted pig metal from several cupola furnaces was tapped at [458]intervals *into a large reservoir ladle having a capacity of from twelve to fifteen tons. From this the molten metal was poured into charging ladles having a capacity of but 600 pounds. A considerable residue was always maintained in the reservoir ladle. The "A. The ladle turns on two trunnions, and principal purpose, as testified to by wit- has chains leading from these trunnions nesses having personal knowledge of the sub-down to the hydraulic cylinder shown on ject, was to secure, as a consequence of the mixing resulting from the reservoiring, the production of a practically uniform product. Excerpts from the testimony of John R. Whitney contain a clear statement on the subject:

"When the [large] ladle was nearly full we began to pour from it into the smaller ladles, each one of which held enough for one wheel. If it was an ordinary size wheel it held enough for one wheel, and if the wheels were smaller ones it held enough for two or three. As that drew the molten iron from the ladle, and the iron continued to melt, the ladle was constantly being filled from the cupola, and it was kept full until all the iron charged in the three cupolas was melted and the bottoms dropped. Then the iron was continued to be poured out of the large ladle until it was all used, those two methods making the uniform mixture; that is, we mixed it in a solid state, first by our charges and then in the molten state in the large ladle.

the drawing, one chain being wound in one direction on one trunnion and other being wound in the other direction on the other trunnion, and the two chains being connected at opposite ends of the piston rod."

In describing the regular way of working each day the witness said (italics not in original):

"In the first place each cupola is charged with about forty tons of metal. We charged about forty tons in each cupola; then after we have this done we put the blast on and begin to melt, and as soon as ever the bed in the cupola is filled up with molten metal we tap it out into the receiving ladle or reservoir, which fills the reservoir about one-half full, then we stop the cupolas up again until the iron raises to the eyeholes, then they are tapped again, and this second tap generally fills the reservoir; then after the reservoir is full, we begin to pour the metal out into smaller ladles, then send it around to the molders for pouring into the wheel molds.

"As the mixture [of selected iron] was "The custom was to empty the receiving charged into each cupola, as I have stated, ladle about one half; then hold the remainit was made up of irons from various fur-der of iron in the reservoir until the cupolas naces, some iron having one quality and *were ready to be tapped again; and after[460]