Opinion of the Court.

254 U.S.

used for making candles; they might be used for soaps; they might be used for edible purposes.

"By the passages I have read he has very carefully specified what the product is so that any chemist would know for what particular purposes it might be useful.

"Q. 64. In the process of hydrogenation as described in the Normann patent from which you made citations; that is, the British patent No. 1515 of 1903, what would your conclusion be as to the edibility of the resultant product when the material hydrogenated was among those suggested by him, olive oil?

"A. If an edible olive oil was started with one would certainly obtain an edible hydrogenated product.'

It is in evidence that this method, shown by Normann, is a practicable one, and may be used for the making of edible food products of the kind here involved.

With the knowledge disclosed in the Normann patent conclusively presumed to be known by the patentee, was it invention to apply the known process to vegetable oils? In this connection the history of the application for the patent in suit in the Patent Office is interesting and instructive. It is true that claims one and two were finally allowed, and the patentee is entitled to the presumption which arises from the granting of them. But it appears in the history of the application for the Burchenal patent, found in the record, that as originally presented it contained two claims not so broad as the ones now in suit, and a third claim for "A semi-solid hydrogenized oil," was added by amendment. All of the claims were rejected, the examiner saying:

"The composition of lard and of cottonseed oil as to the glycerides olein and stearin that they contain is well known. To make a product from cottonseed oil that shall simulate lard the content of stearin should be increased. [Referring to patents.] It is thought therefore that if the problem of simulating lard from cottonseed oil were

presented to an oil chemist, an incomplete hydrogenization of the cottonseed oil would at once suggest itself to him as a solution of the problem. All the claims are accordingly rejected on the above ground of lack of invention. Claim 3 is further rejected on the product formed by the above cited patents."

Replying to the communication of the examiner amendment was made canceling claim 3. Further consideration was requested on claims 1 and 2, upon arguments which were presented. The claims were afterwards rejected upon reference to patents to Kayser of September 26, 1911, and November 14, 1911, the examiner stating that these patents were adapted to hydrogenize glycerides, the latter one specifically mentioning its adaptability for cottonseed oil, and that the process could be arrested at any time during its progress and thus an incompletely hydrogenized article be produced.

Subsequently the specifications were amended, giving more definitely the percentages of olein, linolin and stearin. The patentee concludes the amended specifications, stating "It will thus be seen that we have produced an ideal food product, which is high in olein, low in linolin and lesser-saturated fats, and with only enough stearin to make the product congeal at ordinary temperatures;" additional and more limited claims were added, but ultimately the patent, containing the broad claims here involved, was granted.

It is true, as the Circuit Court of Appeals states in its opinion, that the applicant never did acquiesce in the examiner's action rejecting his claims, and finally obtained what he had in the first place asked for.

This record establishes that it was known before Burchenal took up the subject that a vegetable oil could be changed into a semi-solid, homogeneous, substance by a process of hydrogenation arrested before completion and that it might be edible. This much of the art was public

property and open to general use. The product of this process was known and open to public use. To supply such products as the patentee has described in the broad claims in suit may have been new and useful, but does not in our opinion arise to the dignity of invention, and is an advance step which would occur to one skilled in the art when investigating and considering the subject. It follows that the decree of the Circuit Court of Appeals must be reversed and the cause remanded to the District Court with directions to dismiss the bill on the ground that claims 1 and 2 are void for the reasons stated in this opinion.

Reversed.

DE REES v. COSTAGUTA ET AL., INDIVIDUALLY AND AS CO-PARTNERS COMPOSING THE COPARTNERSHIP OF DAVID COSTAGUTA AND COMPANY, ET AL.

APPEAL FROM THE DISTRICT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

No. 341. Submitted October 11, 1920.-Decided December 6, 1920.

A jurisdictional appeal, directly to this court from the District Court under § 238 of the Judicial Code, will not lie where the question of jurisdiction presented and decided involved only principles common to courts in general and not the jurisdiction of the District Court as a federal court. P. 173.

Whether the allegations of a bill are adequate to justify the relief sought, is not a question of jurisdiction. Id.

Where the jurisdiction of the District Court is invoked against nonresident defendants under Jud. Code, § 57, to enforce a lien on property within the district claimed to result from a contract between them and the plaintiff, a decision quashing service by publication, followed by a judgment dismissing the bill, upon the ground that

166.

Argument for Appellant.

the contract alleged creates no lien upon or right in rem in such property, does not involve the jurisdiction of the court as a federal court. Id. Chase v. Wetzlar, 225 U. S. 79, distinguished. Questions arising under the Constitution are not presented in this case. P. 174.

Appeal dismissed.

THE case is stated in the opinion.

Mr. Marion Erwin and Mr. Frederick M. Czaki for appellant:

The District Court had general jurisdiction of the parties.

All the requisite elements existed to give the court jurisdiction of the subject-matter under § 57, Jud. Code. Goodman v. Niblack, 102 U. S. 556; Louisville & Nashville R. R. Co. v. Western Union Telegraph Co., 234 U. S. 369; Chesley v. Morton, 9 App. Div. 461. Distinguishing: York County Savings Bank v. Abbot, 139 Fed. Rep. 988; Jones v. Gould, 149 Fed. Rep. 153; Wabash R. R. Co. v. West Side Belt R. R. Co., 235 Fed. Rep. 645.

The constitutional principle invoked against the exercise by the court of the power to dismiss the bill, in part on ex parte affidavits in opposition to the jurisdictional averments of the bill, in the manner and form in which it was done, raised and raises a constitutional question not merely incidentally collateral to the general jurisdiction of the court derived from the Constitution, but which goes to the power of the court to deprive the plaintiff without due process of law of his right of property in the suit, by a procedure which deprived him of such right. The constitutional question goes to the marrow of the jurisdictional question, and we think that the court has plenary jurisdiction over the whole case under § 238, Jud. Code. We know of no decision of this court which covers this matter, unless it be by inference, Filhiol v. Torney, 194 U. S. 356.

Argument for Appellees.

254 U.S.

A constitutional question may become "involved" or "drawn in question" by the decision or action of the court as well as by the acts of the parties (Chappell v. United States, 160 U. S. 499, 507, 509), and if it exists it is immaterial whether there is or not a certificate as to the jurisdiction, so far as investing this court with plenary power to review the entire case. The constitutional question being paramount, the limitation on review is not operative, certainly not where the one involves the other. The limitation is operative only where there is a jurisdictional question and questions other than constitutional ones involved.

Section 37 of the Code gave the court no power under the circumstances to dismiss for want of jurisdiction without any plea to the jurisdiction on which evidence might be taken and witnesses examined pro and con. Hartog v. Memory, 116 U. S. 588; Turpin v. Lemon, 187 U. S. 51, 58; Hurtado v. California, 110 U. S. 516, 539. And here the court in fact reached its conclusion, not on the face of the bill merely, but in part through facts set up in the opposing ex parte affidavits as interpretative of the contract. But in the manner in which it proceeded it deprived plaintiff of due process of law and his constitutional right to invoke the jurisdiction of the court for protection of his property right, and thus it was without jurisdiction to dismiss the bill upon the ex parte evidence it so received and considered.

Mr. Walter H. Merritt for appellees. Mr. A. Delafield Smith was also on the brief.

They cited, on the jurisdictional question: Fore River Shipbuilding Co. v. Hagg, 219 U. S. 175, 177; Swift & Co. v. Hoover, 242 U. S. 107; Empire State-Idaho Mining Co. v. Hanley, 205 U. S. 225, 232; Louisville Trust Co. v. Knott, 191 U. S. 225; Bache v. Hunt, 193 U. S. 523; Blythe v. Hinckley, 173 U. S. 501; Illinois Central R. R. Co. v.