1. The doctrine reaffirmed that the earlier printed and
published description of a subject of a patent which is put in
evidence to invalidate a patent must be in terms that would enable
a person skilled in the art or science to which it appertains to
make, construct, and practice the invention as completely as he
could do by the aid of information derived from a prior patent, and
that unless it is sufficiently full to enable such person to
comprehend it without assistance from the patent or to make it or
repeat the process claimed, it is insufficient to invalidate the
patent.
2. Applying the doctrine to this case, the appellant's patent
held to be void.
The appellant was the complainant in the circuit court. He filed
his bill to restrain the infringement by the appellee of certain
letters patent, for which he made an application on March 20, 1875,
and which were issued to him on April 20 following, for an "
improvement in processes of manufacturing middlings flour."
The state of the art, and the purpose of the improvement which
the patent was intended to cover, were set forth in the
specification, as follows:
"This invention has for its aim the better working or
manipulating of grain particles known as middlings, for their
reduction into meal or flour."
"To fully set forth the advantages that this process
possesses
Page 108 U. S. 467
over any of the various processes previously known and in use,
it will be necessary to briefly describe the manufacture as now
practiced."
"It is customary under the ordinary mode of milling to separate
and purify the middlings by the action of the air alone, or air and
bolting cloth combined, then to convey the purified product to
millstones to be ground to a sufficient fineness to admit of the
passage of the middlings flour through the meshes of the bolting
cloth, which is used as a finishing preparer between the stones and
the flour barrels or sacks receiving the finished product. In some
cases, the middlings that are not sufficiently reduced to go
through the meshes of the cloth pass through the ends of the flour
bolts and are brought back onto some of the various purifiers, and
subjected to repurification. This process requires much careful
manipulation, and even then the yellow germ and pellicle of the
grain will be so torn and pulverized by the stones that loose
portions of the same will pass through the meshes of the bolting
cloth into the flour, with injurious effect. The reason why the
germ and pellicle is so torn is that millstones are composed of two
disks -- one revolving, the other stationary receiving the material
to be ground at the eye or center of the stones and compelling it
by centrifugal force to escape at the skirt or periphery of the
stones, passing alternately over face and furrow until it reaches
the periphery, where it is discharged. Such action comminutes the
germs and forms specks that cannot be removed by the purifiers, and
are therefore ground in with the flour."
"In the manufacture of middlings flour, the action of stones on
the middlings is not different from their action on grain, but in
the wheat stones the germ ends and bran are not sufficiently
comminuted by one grinding to pass through the meshes of the cloth
used for the flour known to the trade as 'first run.' I propose to
arrest and remove such germ matter and bran particles by my
improved process before they reach the second grind on the middling
stones by placing between the purifiers or separators and middling
stones one or more sets of rolls which will operate to reduce the
large middlings by a bruising or crushing action, while they simply
flatten out the intermixed germs and bran. Any of the various
purifiers or separators in public use may be employed. A second
important advantage or result of this improved process is the
production of a large yield of high grade
Page 108 U. S. 468
flour. The large middlings or glutinous particles of the grain
require more grinding than do the finer and more starchy particles
removed at the head or first part of the purifiers, and when ground
together, as is generally the case with small mills and frequently
the case with large mills, the meal is considerably heated in the
grinding owing to the miller's requiring the middlings meal to be
of uniform fineness. The disposition and fineness of the small
middlings cause them to 'flour' quicker than the large middlings;
therefore the grinding is unequal, as, in order for the large
glutinous middlings to be ground enough, the small starch middlings
must be ground too much. This impairs the quality of the flour by
deadening it as well as by reducing the germs and bran to such an
extent as to cause them to pass through the cloth. Some mills
therefore run the coarsest middlings to a lower grade of
flour."
"It is plain that with an intermediate reduction, by the
flattening rolls working on the large middlings as above set forth,
the comminution of the middlings under the stones is rendered more
equal, and a larger percentage of high grade flour can be
made."
"I will now describe briefly my mode of milling, referring, for
illustrations, to the accompanying drawing, in which --"
"Fig. 1 is a general side view, partly in section, showing an
apparatus or a series of machines comprising a section of my
purifier A, and Fig. 2 is a like view of the same apparatus, in
part, illustrating the employment of any other purifier, A2."
"Naturally the germs and bran are kept with the large and
valuable middlings or particles of grain by the bolting cloth of
the purifying machines or flour bolts till they reach certain
parts, where the middlings are subjected to strong currents of air
to remove light bran flakes and fuzzy matter. The partially freed
middlings are now passed from the purifier, A or A2, between rolls
or uniformly rotating surfaces B, where the good middlings
particles, being more brittle, are reduced to small granules or to
flour, while the germ and heavy bran matter, being of a soft,
plastic nature, is flattened out, so that on passing it into a
reciprocating or revolving bolt C, clothed with suitable cloth, the
flouring matter is thoroughly removed through the meshes of the
cloth in a fit state of purity to pass to the stones D to be
reground as usual, and the injurious germs and refuse matter are
arrested so as to be run off into suitable receptacles. "
Page 108 U. S. 469
The claim was stated as follows:
"The following is claimed as new, namely:"
"The herein-described process of manufacturing middlings flour
by passing the middlings, after their discharge from a purifier,
through or between rolls and subsequently bolting and grinding the
same for the purposes set forth."
The answer of defendant set up, among other things, as matter of
defense, want of novelty and vagueness and uncertainty in the
specifications and drawings filed by the patentee to describe his
invention.
The circuit court sustained both these defenses and dismissed
the bill. The appeal of complainant has brought up this decree for
review.
MR. JUSTICE WOODS delivered the opinion of the Court.
A grain of wheat may be described generally as follows: It
consists of a pellicle or outside covering known as bran, an inner
envelop consisting of cells and their contents of gluten and
phosphates, the most nutritious portion of the berry, and an
interior white mass composed mainly of starch and albuminoid
matter, extending to the heart of the berry. At one end of the
berry, under an irregularly curved surface layer of bran,
technically called the shield, is the embryo, or germ. The germ is
a yellow, waxy substance, and the bran is consistent and tough. It
has always been the aim of good milling to separate as completely
as possible the bran and germ from the other contents of the berry,
because they not only gave color to the flour, but rendered it more
liable to sour. The main purpose of the improvement described in
appellant's letters patent was to accomplish this result by
removing the bran and germ from the coarse middlings, leaving only
those parts of the grain from which pure white flour could be
produced. The improvement consisted in a process, and did not cover
the several devices by which the process was carried on.
Page 108 U. S. 470
The process was as follows: coarse middlings, from which the
fluffy matter had been eliminated by a well known contrivance known
as a purifier, were passed between one or more sets of rolls, which
reduced the large middlings to a greater degree of fineness, but
flattened out the tough and waxy germs and bran. After the
middlings, with the intermixed germs and bran particles, had been
passed between the rolls, they were carried to a bolting cloth.
This allowed the comminuted middlings to pass through its meshes,
whence they were carried to the stones, "to be reground as usual,"
but the germs and bran particles having been flattened, and their
surfaces enlarged, by the rolls, could not get through the bolting
cloth, and were carried to the end of the bolt, and then run off
into suitable receptacles.
It will be observed that all the separate parts of this process
are old. The use of purifiers on middlings to take out the fluffy
particles, the use of rolls to comminute middlings, the use of
bolting cloths to separate the bran and germs from the flour, and
the use of stones to regrind middlings, all long antedate the
patent of the appellant.
The only field left for invention, therefore, was either a new
order in which the different parts of the process were to be
applied or some new method of using some one or more of the devices
by which the process was accomplished, or both these combined, so
as to produce some new product or some old product in a cheaper or
otherwise more advantageous method. It is claimed for the appellant
that his invention consists
"in interjecting in the old modes, after the purifier, a pair of
smooth rolls of equal diameter, and running at equal speed, and
then rebolting the product and regrinding the middlings"
which pass through the bolting cloth.
We are to inquire whether the defense relied on in this case,
that the invention claimed as his own by the appellant had been
described in a printed publication before his invention thereof,
had been made out.
By section 24 of the act of 1870, it was provided that any
person who had invented any new and useful art, machine,
manufacture, or composition of matter not known or used by
Page 108 U. S. 471
others in this country, "and not patented or described in any
printed publication in this or any foreign country before his
invention or discovery thereof," might obtain a patent
therefor.
In construing the words "described in any printed publication in
this or any foreign country" as they were used in reference to the
same subject in section 7 of the Act of 1836, 5 Stat. 117, this
Court, in the case of
Seymour v.
Osborne, 11 Wall. 516,
78 U.
S. , said:
"Patented inventions cannot be superseded by the mere
introduction of a foreign publication of the kind unless the
description and drawings contain and exhibit a substantial
representation of the patented improvement in such full, clear, and
exact terms as to enable any person skilled in the art or science
to which it appertains to make, construct, and practice the
invention as they would be enabled to do if the information was
derived from a prior patent."
So in
Cohn v. United States Corset Company,
93 U. S. 366,
93 U. S. 370,
Mr. Justice Strong, speaking for the Court, said:
"It must be admitted that unless the earlier printed and
published description does exhibit the later patented invention in
such a full and intelligible manner as to enable persons skilled in
the art to which the invention is related to comprehend it without
assistance from the patent, or to make it, or repeat the process
claimed, it is insufficient to invalidate the patent."
Applying strictly the rule thus laid down, we are of opinion
that the defense of prior publication has been made out.
After a careful consideration of the evidence in the record, we
are forced to the conclusion that the method of making flour set
forth in the specification of appellant's patent was fully and
clearly described in a printed publication before the invention
thereof by the appellant, and that his patent therefor is
consequently void. We refer to a German work put in evidence by the
defendant, entitled Die Mahlfabrication, by Frederick Kick,
published at Leipsic in 1871. We take the following extracts from a
translation of this book.
Page 108 U. S. 472
"Part IV, Rough Grinding with Roll Mills:"
"In the successive process of grit or high milling, the grain is
crushed in its first passage through between the stones -- that is,
broken into parts of different sizes -- groats."
"In the disintegrating process, which follows next, flour, dust,
middlings, partings, and breakings are obtained. With each of these
substances, classified according to size, particles of the hull of
the same size are mixed, or still adhere to the particles of the
grist. By this method of crushing with stones, a partial splitting
up of the hull is unavoidable, and the flour obtained from such
rough grinding is mixed with particles of bran, even from
decorticated wheat, and is therefore discolored."
"If one were able wholly to prevent the disintegrating of the
particles of the hull, the flour produced by rough grinding would
be white."
"This, however, is never fully accomplished; but there is, on
the one hand, a way to diminish the friability of the hull -- by
moistening; on the other hand, many sorts of wheat, under similar
treatment, exhibit this difficulty to a less extent, and therefore
produce white flour,
viz., soft wheat; or, finally,
machines are employed which, in the process of rough grinding,
break up the hull to a less degree, as is the case with roll
mills."
"The roll mills operate partly by crushing and partly by
grinding. They produce breakings, which then pass to the stones for
grinding into flour. The surface of the rolls are smoother than
those of the stones, and the hull is therefore less torn. Of
course, the disintegrating by means of rolls is not appropriate for
every kind of wheat. If soft, mild wheat is passed through the
rolls, it leaves the rolls in a flat, compressed condition;
whereas, with the same treatment, hard (Hungarian) wheat is reduced
to fragments, and so regularly broken."
"The action of the rolls evidently depends upon their relative
position (their distance apart); it also depends on the condition
of their surfaces (whether smooth or changeled); and then again on
their relative motion,
viz., whether both rolls have like
or different velocities."
"If the rolls are so far apart that the wheat sustains only a
moderate pressure, and if they are smooth, then only a breaking of
the grain occurs in the direction of the crease. The berry is
Page 108 U. S. 473
thereby divided into two longitudinal halves, of which many
still cohere at the back, thus resembling an open book."
"In case the rolls are closer together, then, with soft wheat, a
flattening takes place, and the middlings obtained therefrom are
very clean or free from bran. Hard wheat is much more considerably
reduced, and a proper breaking is effected. . . . Rolls with smooth
surfaces operate more by compression; those with fluted surfaces
more in a cracking or breaking manner. In order to give the rolls
at the same time a triturating effect, they are made to revolve
with different velocities."
"Two, three pairs of rolls may be arranged one above another. By
the first pair 'coarse breakings' are produced; by the second,
'first breakings,' etc. Hence, the application of three pairs of
rolls permits a gradual disintegration during a single passage of
the grain through the roll mill. . . . There are (as we shall
explain hereafter) certain varieties of middlings in which the but
partially broken germs constitute thirty or forty percent of the
entire mass, and which, being yellow granules, give to the entire
mass of grit, with which they are intermixed, a yellowish
appearance."
"Now if this kind of middlings is passed through properly
adjusted rolls, the tough germs are only flattened, while the other
granules are broken and can be easily separated by sifting. Instead
of a pair of rolls, a single roll operating against an adjustable
segment of stone or iron may be used. By this latter method, the
substance ground is much more subjected to trituration. The
particles already reduced continue to rub against each other and
against the working parts of the machine until they finally pass
out, in consequence whereof the advantages above mentioned of the
roll mills are greatly neutralized."
We have in this publication an accurate description of the
process covered by appellant's patent.
We have the rolls used for the identical purpose therein set
forth -- namely to reduce the middlings and to flatten out the
germs, so that they can be separated by bolting or sifting, thus
preparing the middlings to be again ground and reduced to middlings
flour.
Appellant insists, however, that the process described by
Page 108 U. S. 474
Kick is not applied to purified middlings, and therefore differs
from his.
But it appears from the well known state of the art that ever
since purifiers were invented, it has been the practice to purify
middlings before reducing them, so that whenever the grinding of
middlings is mentioned, graded and purified middlings are
understood. The process of purifying, in case of gradual reduction,
is as elementary as bolting, and follows every reduction of the
material. When, therefore, Kick speaks of passing middlings through
the rolls for another reduction, he must be understood to mean
purified middlings. But the evidence in the record clearly shows
that the action of the rolls, and their effect upon the product of
the mill, would be the same whether purified or unpurified
middlings, or even wheat, were used.
Appellant further insists that his process differs from that
described by Kick because the rolls mentioned in the latter run
with unequal speed. This contention is founded on a
misapprehension. The extract from Kick's work expressly says that
"the action of the rolls evidently depends . . . on their relative
motion --
viz., whether both rolls have like or different
velocities." Rolls, therefore, with the same or different
velocities could be used in the process described by Kick. His
method included both.
We are also of opinion that the process which appellant claims
as his invention was also clearly described as early as the year
1847 in a publication called Anglo American and Swiss Science
Milling, by Christian Wilhelm Fritzsch, published at Leipsic by
Gustav Brauns. This description of the process of manufacturing
flour is illustrated by drawings, which make it perfectly clear
that the different parts of the process of the appellant were
anticipated and publicly printed more than twenty-five years before
the appellant, according to his own story, conceived the
improvement described in his patent.
Fritzsch describes the process as follows:
"The advantages to be derived from the roll mill consist chiefly
in this: that in operating them, a considerable saving of power
is
Page 108 U. S. 475
achieved as compared with stone mills. Furthermore, the flour
produced is of excellent quality, both in whiteness and
fineness."
"Inasmuch as the wheat is ground in a dry state, the flour
produced is especially adapted, with respect to durability, for
transportation and storing."
"The principle on which all said improvements turn centers
wholly and exclusively in a desire to effect the grinding of wheat
so that not only the largest possible quantity of good middlings
flour is obtained, but also that this may be separated from the
hull or bran in its original purity, or, to express it in plainer
words, to obtain the mealy interior substance without admixture of
any part of the hull."
Then follows a description of the mill by which the reduction of
the wheat to coarse middlings is effected:
"The rough ground product discharged from the mill (in which,
besides middlings, flour has been produced) is thereupon most
conveniently carried into the upper stories of the mill building by
means of an elevator, and is then first transferred to a flour
cylinder for the purpose of separating the flour. The remainder
then goes upon a grit cylinder, where the material is assorted and
separated from the hull in four different grades of middlings. The
middlings thus obtained are thereupon likewise cleaned in the
manner already described, and prepared for flouring."
"The grinding of middlings takes place by a manipulation varying
but little from the process of rough grinding, by means of a
flouring mill, which, together with the crushing mill above
mentioned, constitutes a set or run. We see this flouring mill upon
our plate (fig. 8). Its construction is in the main like that of
the other, only the difference that the upper pairs of rolls are
not fluted like those in figure 7, but have smooth turned surfaces,
and consequently no under layers (wedges). This underlayer (wedge)
is only used with the under pair of rolls, which are finely
fluted."
"The middlings ready for grinding are here also put into the
hopper, as shown, and carried to the first, second, and third pairs
of rolls in the manner described. The upper two pairs of rolls
crush and triturate the middlings to the utmost degree;
therefore,
Page 108 U. S. 477
it remains for the last lower pair of rolls to shake up the
flour."
"This product, thus finely ground, is now transferred to the
cylinder bolt for separating the flour. The bran-like surplus is
carried with the bolts to a stone mill to be completely ground
out."
"The grinding of middlings in the manner above described has
many advantages in its favor, especially in this: that the hull
particles still contained in the middlings are, by this process,
not any longer decomposed or torn up, whereby the possibility of
transfer of them into the flour is avoided."
In this description we have the purifying of the middlings by a
purifier, which is shown in the cut, then the passing of them
between two pairs of smooth revolving rolls of equal diameter,
which are in all respects like the rolls described in the
specification of appellant's patent, and which necessarily perform
the same function. Then the disintegration, or shaking up, as it is
called, of the ribbons or sheets of the material which come from
the second pair of rolls by passing them through the third pair,
which are fluted but are not allowed to touch each other, and then
their transfer to the bolting cylinder, by which the flour is
separated from the bran and germs.
The only difference between this process and that described in
appellant's patent is that the last two sets of rolls but one
mentioned in the process described by Fritzsch completely reduce
the middlings to flour, while in the process under appellant's
patent, the middlings, after passing between the rolls, being
separated from the germs and bran, are again ground between stones;
but the great feature of appellant's process, the flattening of the
germs and pellicle by passing the middlings between rolls, is found
in the method described by Fritzsch.
The advantages from the process described by Fritzsch are
identical with those claimed for the process described in
appellant's patent: first, a saving of power; second, the hull of
the wheat (and necessarily the germ) is not disintegrated and torn
up in passing between the rolls as it would be between the ordinary
millstones, and can therefore be eliminated by the bolt; and,
third, the yield of high grade flour is increased, and
Page 108 U. S. 477
the flour produced is of excellent quality, both in whiteness
and fineness and fitness for transportation and storing.
The printed publications relied on to defeat the appellant's
patent describe the process covered thereby so fully and clearly as
to enable persons skilled in the art to which the invention relates
to carry on the process. In fact, the description of the process in
the printed publications is, to say the least, quite as precise,
clear, and intelligible as in the specification and claim of the
patent.
The earliest date at which the appellant claims to have invented
his improvement is stated by him as in 1872 or 1873. These
publications, therefore, which antedate his invention -- one by at
least one year and the other by twenty-five years -- are fatal to
the validity of the patent.
The decree of the circuit court, which dismissed the bill, must
therefore be affirmed, and
It is so ordered.
