1. Reissued letters patent No. 6870, hearing date April 6, 1875,
granted to William J. Wilson "for improvements in processes for
preserving and packing cooked meat," are void, all the elements
therein described being old, and the aggregation of them bringing
out no new product, nor any old product, in a cheaper or otherwise
more advantageous way.
2. The first and third claims of reissued letters patent No.
7923, bearing date Oct. 23, 1877, granted to John A. Wilson "for
improvement in sheet-metal cases," are void for want of
novelty.
THE first case is an appeal from the Circuit Court of the United
States for the Northern District of Illinois, and the second and
third are appeals from the Circuit Court of the United States for
the Southern District of Illinois.
By stipulation of the parties, these cases were argued together
as one case.
The bills of complaint were filed by the Wilson Packing Company,
Arthur A. Libbey, Archibald McNeil, and Charles P. Libbey, and they
charge the Chicago Packing and Provision Company, the St. Louis
Beef-Canning Company, and the other defendants with the
infringement of several reissued letters patent of the United
States, of which the complainants are the assignees and owners.
Only two of these letters are relied on. First, reissued letters
patent No. 6370, granted to William J. Wilson, dated April 6, 1875,
upon an application filed April 2, 1875, "for improvements in
processes for preserving and packing cooked meat," and second,
reissued letters patent No. 7923, granted to John A. Wilson, dated
Oct. 23, 1877, upon an application filed Oct. 15, 1877, for
"improvement in sheet-metal cases." The bills were dismissed on
final hearing, and the complainants appealed.
The original patent of William J. Wilson bears dated March 31,
1874. The specification is as follows:
"Be it known that I, Wm. J. Wilson, of Chicago, in the County of
Cook and State of Illinois, have invented certain new and
useful
Page 105 U. S. 567
improvements in processes for preserving and packing cooked
meats, and I do hereby declare that the following is a full, clear,
and exact description thereof."
"The nature of my invention consists in a process for packing
cooked meats for transportation in a compressed form, while heated
with cooking, into an air-tight package so as to preserve the meat
in its integrity and retain all the natural juices and nutritious
qualities of the meat."
"In carrying out my invention, the meat is first cooked
thoroughly at a temperature of 212� Fahrenheit, so that all the
bone and gristle can be removed, and the meat yet retain its
natural grain and integrity. The meat is then in proper condition
for eating, and is wholesome and palatable. A measured quantity of
this cooked meat is then, while yet warm with cooking, pressed by
any suitable apparatus into a previously prepared box or case, with
sufficient force to remove the air and all superfluous moisture,
and make the meat form a solid cake. The box or case is then closed
air-tight upon the meat."
"The meat is thus packed and compressed in its natural state --
that is, without disintegration or desiccation -- and it retains
all the juices and nutritious qualities of the meat, the
compression only removing the superfluous moisture. The meat thus
put up is available at all times, even when cooking is
impracticable, as it is already cooked before it is packed. It is
more economical, as it is compressed and reduced in weight one-half
from the uncooked weight, being free from bone and gristle, and put
up in a compact, portable shape for transportation, rendering the
usual expensive cooperage unnecessary. Besides this, there is a
great saving in the cost of transportation. A barrel containing two
hundred pounds uncooked meat weighs, gross, three hundred and
twenty pounds, meat, salt, brine, and barrel, while by my process
it would weigh only one hundred and ten pounds gross, making a
saving in cost of freight alone of nearly two-thirds."
"The box or case may be made of wood or metal, or both combined,
of any suitable form or shape, and of any desired dimensions."
The claim is thus stated:
"1. The within-described process for packing cooked meats for
transportation, by compressing the same into an air-tight package
so as to preserve the meat in its integrity and retain all the
natural
Page 105 U. S. 568
juices and nutritious qualities of the meat, substantially as
set forth."
"2. As a new article of merchandise, cooked meat put up in solid
form, in its natural state, without disintegration or desiccation,
in hermetically sealed packages, as set forth."
The differences between the specification and claim of the
reissued and those of the original patent of William J. Wilson are
these:
First, the second clause of the specification of the reissued
patent omits the words "while heated with cooking," contained in
the corresponding clause of the original; second, "preferably" in
the third clause of the specification is inserted before "while yet
warm with cooking;" third, the first claim of the reissued patent
omits "while heated with cooking," contained in the first claim of
the original patent. In all other respects, the specifications and
claims are identical. Therefore his patents are the same except
that the reissue covers the process of packing the meat cold if
preferred, while the original requires that it shall be packed
while warm with cooking.
There is nothing in either patent in regard to the boiling or to
any preliminary corning or curing of the meat.
On Oct. 26, 1880, while the cases were pending below, and after
the testimony-in-chief of the defendants had been taken, the
patentee and the complainants filed in the Patent Office a
disclaimer of the word "preferably" where inserted in the
specification of the reissued patent, and also of any process
described and claimed by which meat in any other than a warm or
heated condition is to be compressed into the packages.
On the same day, they filed a disclaimer of any interpretation
or legal construction of the specification of the reissued patent
broader than is conveyed by the words
"the meat is first cooked thoroughly by boiling it in water, so
that all the bone and gristle can be removed and the meat yet
retain its natural grain and integrity."
The claim was thus restored to what it was originally, except in
the original patent it is limited by the second disclaimer to the
packing of meat cooked by boiling. As amended by the disclaimers,
the claim of the reissued patent is as follows:
Page 105 U. S. 569
"
First, the within-described process of packing, for
transportation, meats cooked by boiling, by compressing the same
while heated with cooking into an air-tight package, so as to
preserve the meat in its integrity, and retain the natural juices
and nutritious qualities of the same."
"
Second, as a new article of manufacture, meat cooked
by boiling, put up while heated with cooking, so as to form a solid
cake in the package in its natural state, without disintegration or
desiccation, in hermetically sealed packages, as set forth."
It will be seen that the invention, after the disclaimers were
made, is a process consisting of the following elements:
1. The thorough cooking of the meat by boiling in water at a
temperature of 212� Fahrenheit, and the removing of the bone and
gristle.
2. The pressing of the meat while warm with cooking into a box
or case with sufficient force to remove the air and superfluous
moisture, so as to make the meat form a solid cake.
3. The closing of the box or case air-tight upon the meat.
It also covers the product of this process as described in the
second claim.
The defense sets up want of novelty, and avers that the process
described in the reissued letters patent of William J. Wilson is
also described in prior English, French, and American patents,
which are specified, and that it was practiced by many persons
whose names and residences are given, at various dates prior to his
application.
The specification in John A. Wilson's letters patent declares
that the
"invention relates to hermetically sealed cans used in packing
meats or other articles, and it consists in a pyramidal-shaped can
having rounded corners, and both ends slightly flaring to form
shoulders against which the head or end pieces rest."
Figure 1 is a perspective view of the can. Figure 2 is a
transverse vertical section of the same, reversed.
"
a represents the body of my can made in the form of a
truncated pyramid with rounded corners, and with any desired number
of sides, though I prefer to make it with four sides. Both ends of
the body are made slightly flaring so as to form interior shoulders
of offsets
a, against which the heads B and C are to rest.
The edges of these heads are turned outward, as shown,
a
b, and the
Page 105 U. S. 570
flaring edge
d of the end of the can is turned over the
flange
b, and the three thicknesses of metal pressed
together by machinery, with or without solder, so as to make
air-tight joints."
"In packing cooked meats, it is done by means of a plunger
through an aperture in the large head B, which opening is
afterwards hermetically sealed by means of a cap or plate D."
"The can is to be opened at the larger end at or near the
shoulder
a by means of a suitable can opener, so that when
the can is reversed, a slight tap on the smaller head C will cause
the solidly packed meat to slide out in one piece, so as to be
readily sliced as desired."
image:a
The claims which are in controversy in this case are the first
and third, which are as follows:
"A can for packing food, hermetically sealed and constructed of
pyramidal form, with rounded corners and offset ends to support the
heads, said heads being secured as shown and described."
"3. An improved article of manufacture, solid meat compressed
and secured within a pyramidal case or can, so that said can forms
a solid mould for the meat, and permits its discharge as a solid
cake, substantially as described."
MR. JUSTICE WOODS, after stating the case, delivered the opinion
of the Court.
The patent granted to William J. Wilson does not specify
Page 105 U. S. 571
what kind of box or case was required, nor what kind of meat was
to be used in its processes, whether corned or fresh, nor in what
manner or by what process it was to be compacted in the case or
box, provided sufficient force was used to remove the air and all
superfluous moisture and make the meat form a solid cake, nor the
degree of warmth necessary in the meat when it was put in the case
or box. Neither does it state the method by which the case is to be
sealed up. It is simply required to be "closed air-tight upon the
meat," the air having first been excluded from the case by cramming
the latter full of meat.
The patent, therefore, apparently covers only the process of
cooking meat by boiling, and while it is still warm pressing it
compactly in cases and sealing it up air-tight.
The second disclaimer of Wilson is a substantial admission that
his patent only covers the process in which the boiling of the meat
is one of the elements. That is to say, anyone may pack cooked meat
for transportation by compressing it while heated with cooking into
air-tight hermetically sealed packages, so as to preserve it in its
integrity and retain all its natural juices and nutritious
qualities, substantially as set forth in the patent, and not
infringe the patent, provided he does not cook the meat by boiling.
If any other method of cooking the meat should be adopted, there
would be no infringement.
The patentee and the complainants, it appears, were induced to
make this disclaimer by the evidence introduced by the defendants
in this case, especially the patent of A. S. Lyman, dated June 22,
1869, "for an improved mode of preparing and pressing roast meat in
a condensed and concentrated form," and it amounts to an admission
that they could not sustain the process covered by their patent
except as applied to boiled meats.
We are clearly of opinion that a change in the mode of cooking
the meat from broiling, roasting, or steaming to boiling, all the
other parts of the process remaining unchanged, cannot be called
invention, and does not entitle the party who suggests the change
to a patent for the process.
"All improvement is not invention, and entitled to protection as
such. Thus
Page 105 U. S. 572
to entitle it, it ought to be the product of some exercise of
the inventive faculties, and it must involve something more than
what is obvious to persons skilled in the art."
Pearce v. Mulford, 102 U. S. 112.
See also Rubber-Tip Pencil Company v.
Howard, 20 Wall. 498;
Hotchkiss
v. Greenwood, 11 How. 248;
Stimpson
v. Woodman, 10 Wall. 117.
If meat cooked by roasting or steaming, and put up in a given
mode formed a valuable article of commerce, the cooking of the meat
in other ways, as for instance by boiling, would naturally occur to
anyone engaged in the business of packing such food for the
market.
But we think there is nothing new in the process covered by the
patent under consideration. Clearly all its separate elements are
old and well known, and have been long used. This is not
controverted. The evidence shows that the process of boiling meat,
packing it while warm in cans, and sealing it air-tight had long
been used before the original application of Wilson. There is, it
is true, much conflict in the evidence, but, taken all together, it
leaves no doubt in our minds that the process of cooking meat,
lobsters, and other articles of food by boiling, and, while warm
from the cooking, compacting them in cans, which are then sealed up
air-tight was practiced in many places and for many years before
his application.
Complainants, however, insist that there are two elements in
their process which, taken in connection with the others above
mentioned, form a combination never used before the date of his
patent.
The first of these is the subjecting of the cases, after they
are packed and sealed air-tight, to what is known as the Appert
process. This consists of placing in hot water the cans, after they
have been filled and sealed up, and thereby heating them. They are
then removed and punctured, and the heated air and gases in the
cans are allowed to escape. The puncture is immediately closed by a
drop of solder.
The contention is that all this is made a part of the process
covered by the Wilson patent by the description of the new article
of merchandise covered by the second claim as "cooked meat" "in
hermetically sealed packages." It is insisted that the term
"hermetically sealed packages" implies, among those
Page 105 U. S. 573
dealing in canned goods, that the packages have been subjected
to the Appert process.
We think that this is an unwarrantable stretch of the meaning of
that claim. The article of merchandise which it covers is produced
by the process disclosed by the specification and first claim. The
second claim expressly states that it covers cooked meat put up in
solid form, &c., "in hermetically sealed packages, as set
forth."
Recurring to the specification and first claim, we are not left
in doubt about what, as there set forth, is the process of sealing
the cases or cans hermetically. The invention is declared to
consist in a process for packing cooked meats into an air-tight
package. The method of doing this is thus described:
"A measured quantity of this cooked meat is, while yet warm with
cooking, pressed by any suitable apparatus into a previously
prepared box or case with sufficient force to remove the air and
all superfluous moisture and make the meat form a solid cake. The
box or case is then closed air-tight upon the meat."
The process is simply to exclude the air from the case by
filling it compactly with cooked meat still warm, so that the
cover, when applied, will rest on the meat, and then closing the
case by fitting on the cover air-tight.
There is no suggestion here of anything further to be done to
make the package a hermetically sealed one. The process described
leaves it hermetically sealed. There is no hint that the Appert
process is to be subsequently applied as a part of the process
covered by the patent. On the contrary, that idea is excluded by
the terms of the second claim, "hermetically sealed, as set
forth."
It is further contended by the appellants that the process
disclosed by the patent includes the cooking of the meat to be
canned by plunging it into water already heated to the boiling
point. That is, the process of cooking is commenced by placing the
meat in water already heated up to 212� Fahrenheit. By this method
of cooking, it is said that the meat is preserved in its integrity,
and all its natural juices and nutritious qualities are
retained.
We think that the plan of beginning this process of cooking by
putting the meat in water already heated to the boiling point
Page 105 U. S. 574
is not set forth in the specification or claims. The conditions
that they prescribe would just as well be filled by placing the
meat in cold water which is then heated to the boiling point and
allowing the meat to remain in it until cooked thoroughly. No
person, on reading them, could extract the idea that there was any
advantage to be gained by heating the water to the boiling point
before placing the meat in it to be cooked, or that any such method
was in the mind of the inventor. This part of the process is
clearly an afterthought, and not intended by him to be covered by
this patent when he applied for it. It is evident that the part now
under consideration is nowhere described in the specification in
full, clear, and exact terms, as required by law. On the contrary,
it is not described at all.
The Appert process and the cooking of meats by plunging them
into water already heated to the boiling point may be of great
advantage to the canned meats put up by the complainants and their
alleged superiority to the products of other parties may be
attributed to these practices. But the trouble with complainants'
case is that these elements are not included in the process
disclosed by the patent which they allege is infringed by the
defendants.
Out conclusion is therefore that there is nothing new in the
process described in the patent. All the elements of the process
are old. They are merely aggregated, and the aggregation brings out
no new product, nor does it bring out any old product in a cheaper
or otherwise more advantageous way. This disposes of the first
claim of the patent under consideration. If that claim cannot
stand, it follows that the second claim, which is for the product
made by the employment of the process described in the first claim,
is also invalid.
We are of opinion, therefore, that the patent is void for want
of invention and for want of novelty in the process described
therein.
We shall next consider that branch of the case which rests on
the letters patent to John A. Wilson for improvements in metallic
cans for containing cooked meats.
The defenses set up to this branch of complainants' case are
Page 105 U. S. 575
that the devices covered by the patent are not new, and that the
defendants do not infringe.
The evidence clearly shows that none of the defendants uses cans
"with offset ends to support the heads, said heads being secured as
shown and described" in the patent. The cans which they use are
made by turning a flange of the head down over the outside of the
shell of the can and fastening the head in place with solder. This
method of fastening the heads and bottoms of the cans was practiced
by Gibbie and Perl before the date of Wilson's application for his
patent. It was also described in the fifth addition of the French
patent of Emile Peltier, dated April 1, 1859.
All, therefore, that is left to consider is whether the shape of
the can described in the patent is new, and whether the defendants
use it.
The shape of the can described in the patent is pyramidal, with
round corners and with four or more sides.
It is admitted on the record by counsel for the complainants
that prior to the date of the Wilson patents, conical tin cans were
made and used for canning alimentary substances, and sealed
air-tight.
If it be conceded that the change of a conical can to a
pyramidal can, with rounded corners, involves invention, the
complainants are met with distinct and unequivocal evidence that
cans used for containing preserved food, and closed air-tight,
having four or more sides and pyramidal in form, with rounded
corners, were mentioned in the fifth addition to the patent of
Emile Peltier, before referred to, and that the machinery for
making them was therein described.
The cans used by the defendant the St. Louis Beef Packing
Company, and by the defendants Robert D. Hunter and others, and the
Chicago Packing and Provision Company, are all included in the
descriptions of the Peltier patent. The defense of want of novelty
set up by the defendants against the first claim of the patent must
therefore prevail.
What has been said leaves nothing for the third claim of the
patent to rest on.
There is nothing new either in the shape, construction, or
material of his cans. There is in the record abundant evidence
Page 105 U. S. 576
that long before the date of his patent, cooked meat was packed
in cans so that they served as a mold for the meat, and the meat
formed a solid cake. The use of a pyramidal can, which was old, for
the purpose of receiving the meat cake, which was also old,
involved no invention.
The use of vessels with flaring sides as receptacles and moulds
for edible substances is as old as the art of cookery.
Our conclusion is that both the first and third claims of the
patent are void for want of novelty.
The result of the views expressed is that the action of the
court below dismissing the bills of complaint was right.
Decrees affirmed.
NOTE --
Packing Company v. Clapp, appeal from the
Circuit Court of the United States for the Northern District of
Illinois, was argued at the same time with the cases disposed of in
the foregoing opinion, and by the same counsel. It involved the
validity of both claims of the reissued patent of William J.
Wilson, and the first and third claims of the reissued patent of
John A. Wilson. Upon these questions the opinions of the judges of
the court below were divided, and a decree dismissing the bill was
thereupon entered in accordance with the opinion of the presiding
judge.
MR. JUSTICE WOODS, in giving the opinion of the Court, remarked,
that the views expressed in the foregoing cases disposed of this
case.
Decree affirmed.
