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It is my judgment that any person having knowledge of the art, with the Hardie patent (as a publication) before him, could have made the Bettendorf truck, The functional use of the two-sized opening may not have been described in words, but its use and purpose was obvious. Given a Schaffer or smiliar bolster and a Hardie side frame, it would not even require skill in the art to observe the function or make the adjustment.

“A patent cannot be invalidated by a structure which can only be altered into an anticipation by the use of inventive skill.” Waterbury Buckle Co. v. Aston, 183 Fed. 120, 105 C. C. A. 410.

I cannot conceive that the discovery of the function of the twosized opening (the structure being fully described) involved “the use of inventive skill."

But the art was not limited to the Hardie patent when Bettendorf made his invention. On August 7, 1900, nearly three years previous, patent No. 655,386 had been issued to Woods for "certain new and useful improvements in car truck frame." It cannot be disputed that in its claims and specifications this patent disclosed the functional purpose of a two-sized opening-not in the same form, it is true, but the principle and utility were there disclosed, and this patent was a publication.

When Bettendorf invented his side frame, he is supposed to have had the Hardie publication and the Woods publication before him.

"While he may not have had any knowledge of them whatsoever, he is deemed, in a legal point of view, to have had this [these] and all other prio: patents before him." Duer v. Corbin Cabinet Lock Co., 149 U. S. 223, 13 Sup. Ct. 853, 37 L. Ed. 707.

"But it is said that defendant has failed to show any single patent or prior publication which contains all the elements of any of the contested claims, and that 'the question of anticipation' cannot be determined upon a showing from the history of the art that one of the elements may be found here, and another there and so on throughout the entire number. Clearly the facts of the present case do not admit of, much less require resort to, such a course here; too many parts of the present structure are found, as we have seen, in a single prior patent, not to speak of their repetition in each of several earlier patents. It is true, however, that the method suggested by counsel might not of itself justify condemning a patent. It is equally plain that the suggestion is not an answer to the question that must be met here; it overlooks the evidential tendency of the prior art in a given case either to establish or to negative the presence of invention. It scarcely need to be said that courts may and do look into the prior art, for the purpose of ascertaining whether the elements of a claim are new or old, and, if old, whether through the means of comparison so afforded the skill of the mechanic, or indeed the faculty of the inventor, was required to organize the elements of the claim and to adapt them so as to accomplish the result attained. It is not perceived, nor do counsel suggest, what better source of information, what means more calculated to lead the mind to a right conclusion, can be found than in the prior art. True, prior art becomes at times a source of confusion, and even abuse. Still, to insist that claims disclose invention or discovery, where their substantial equivalency in elements, in mode of operation and results, plainly appear in two or more earlier patents or publications, though not all in one patent or publication, is to ignore the very terms of the patent act. Above all, counsel's theory is opposed to the settled course of judicial decision. As was said, in holding a claim to be void for want of invention, in Dilg v. George Borgfeldt & Co., 189 Fed. 588, 590, 110 C. C. A. 568, 570 (C. C. A. 2d. Cir.):

Although all the elements of the claim may not be found in any one patent, it is clear that

they are all to be found in different patents. No single patent may anticipate, but they all have a bearing upon the question whether invention or mechanical skill was involved or required. Again, in Duer v. Corbin Cabinet Lock Co., 149 U. S. 216, at 222, 13 Sup. Ct. 850, at 853 (37 L. Ed. 707), when affirming a decree dismissing the bill in a patent suit, Mr. Justice Brown said: 'In view of the advance that had been made by prior inventors, it is difficult to see wherein Orum displayed anything more than the usual skill of a mechanic in the execution of his device. All that he claims as invention is found in one or more of the prior patents.'' Keene v. New Idea Spreader Co., supra.

[2] A patent being a publication, the drawings of a patent being a publication, it must follow that, where the invention is sufficiently described in one or more patents (even though they be held void for some statutory reason), so that a skilled mechanic can take the publications and from them, without the exercise of the inventive faculty, produce the structure, with its functions, that such structure is not patentable because it has already been disclosed to the public. The whole matter comes down to a question of contract rights. Assuming that Bettendorf created his invention without any actual knowledge of the Hardie or Woods patents, yet the law fixes certain specific conditions which must exist to entitle him to the monopoly provided by a patent. The law seeks to confer the benefits and privileges of a patent upon the person who is "first to confer on the public the benefit of the invention." Cayler v. Wilder, 10 How. 477, 13 L. Ed. 504.

In contemplation of law, the Hardie publication and the Woods publication gave to the public a description of the very car truck described in the Bettendorf patent. There was nothing subtle or deeply scientific in the constructions described. The patentable novelty was one of those things so simple that one is astonished that it was not thought of by some one long prior to Hardie. Having the Schaffer or a similar bolster in mind, it needed little more than a suggestion to enable even an unskilled person to see that the lower portion of the opening should be enlarged, so as to permit the bolster to be entered without removing guides, lips, or lugs, which miglit be necessary to hold it in place in operation.

For these reasons, I am convinced that the Bettendorf patent, limited to construction without journal boxes, is void by reason of prior publication, and this conclusion renders it unnecessary to consider the other defenses. As heretofore stated, there is no question made that the Bettendorf patent, construed as integral with journal boxes, is valid; but, so construed, infringement is not shown.

The application for dismissal of the complainant's bill will be granted, and there will be a decree for the defendants upon the cross-bill in accordance with the foregoing, and a judgment against Bettendorf Company for all costs, excepting these made prior to the filing of crossbill. Counsel will prepare such decree, and submit it to counsel for the plaintiff in the cross-bill, who may file objections and submit for determination.

I do not find it necessary to review the question as to the title of the Bettendorf Company, in view of this determination,



(District Court, D. Montana. August 25, 1917.)

No. 8.



The Sulman, Picard & Ballot patent, No. 835,120, for a process of ore concentration by air bubble flotation, is valid, and while, as construed by the Supreme Court, and since the disclaimer of claims 9, 10, and 11, it is limited to a process the results of which are obtained by the use of oil "amounting to a fraction of 1 per cent. on the ore,” infringement is not avoided by the use of a larger percentage of oil, where the process is the same, and the excess of oil is either without effect or renders the process


A disclaimer of claims of a patent, filed 107 days after a decision of the Supreme Court adjudging them invalid, and which conforms to the

language of the decision, is timely and sufficient. In Equity. Suit by the Minerals Separation, Limited, and others against the Butte & Superior Mining Company. On final hearing. Decree for complainants.

Henry D. Williams, William H. Kenyon, and Lindley M. Garrison, all of New York City, and Odell W. McConnell, of Helena, Mont., for plaintiffs.

W. A. Scott and Thomas F. Sheridan, both of Chicago, Ill., and J. Bruce Kremer, of Butte, Mont, for defendant.

BOURQUIN, District Judge. This is trial on the merits of the suit reported in 237 Fed. 401. It involves the patent and claims of the Hyde suit, wherein the Supreme Court (242 U. S. 261, 37 Sup. Ct. 82, 61 L. Ed. 286) held the patent valid, but some claims invalid. The issues are as in the Hyde suit, viz, novelty, invention, infringement, and in addition defenses of unreasonable delay and defects in disclaimer of the invalid claims, and estoppel by reason of statements by plaintiffs' counsel to the Supreme Court in arguing the Hyde suit. The evidence herein is that submitted during 25 days and also the record in the Hyde suit. So far as heretofore known, the nature and history of the discovery and invention (a process of ore concentration by air fotation) are fairly set out in reports of the Hyde suit (242 U. S. 261, 37 Sup. Ct. 82, 61 L. Ed. 286; 214 Fed. 100, — C. C. A. --; (D. C.) 207 Fed. 956), of the Miami suit (244 Fed. 752, — C. C. A. --; (D. C.) 237 Fed. 609), and of foreign suits cited in footnote on page 754 of 244 Fed., page - of C. C. A. This suit is an important contribution, and yet it discloses that, though the use of the process is very wide, extensive and growing, its simplicity, economy, and success still surprise and gratify the metallurgical world, and its laws or principles of operation still interest and puzzle the scientists. "In the beginning it was very little knowledge and mostly guesswork, and since then there has been every year a little For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

245 F.-37

more knowledge and still a great deal of guesswork," testifies one of defendant's experts, Prof. Bancroft, of Cornell, a physical chemist of note, acquainted with the process since 1906, and lecturer upon it since 1912. Though speaking for himself alone, the learned doctor's estimate might well be applied to all, practical layman and expert scientist alike.

At the same time, though heretofore somewhat ambiguous and obscure, present knowledge warrants the conclusion that the gist of this remarkable and valuable process and the actual discovery and invention are that, whereas, theretofore in ore concentration air had been used in desultory and fugitive bubbles as a makeshift incident of and supplement to oil and skin flotation, air can be made to do all the work by creating in water ore pulp modified by a suitable oily contaminant an infinitude of bubbles. It is the first of its kind, and the patent sufficiently discloses it and methods to those skilled in the art.

Ambiguity and obscurity were as much due to the extreme mechanical simplicity of the process as to the inability then and now to know and explain all its laws or principles. The tendency was to attach prime importance to reduction in amount of oil used, when in fact this is but a necessary incident (for which there are substitutes if not equivalents) to the creation of the infinitude of bubbles that do the work. Despite this tendency, and to overlook the simple and obvious, the patent fairly clearly sets out the various ways and means to create this infinitude of bubbles and that they do the work. The tests to determine which kind and amount of “oily substance yields the proportion of froth or scum desired," that flotation is "mainly from the inclusion of air bubbles," the froth, the agitation, all are so many guides in the patent, pointing the skilled operator to and including the infinitude of bubbles and the degree of agitation and amount of soap or oil to produce such bubbles, as surely as the word "crystallization" points to appropriate temperature in Commercial Co. v. Canning Co., 135 U. S. 189, 10 Sup. Ct. 718, 34 L. Ed. 88, and the words "uttered sound” by the “human voice” to articulate speech in the Telephone Cases, 126 U. S. 531, 8 Sup. Ct. 778, 31 L. Ed. 863.

Of the new evidence herein are learned dissertations upon the philosophy of the process, upon the philosophy of bubbles, the heart of it, by Profs. Bancroft, of Cornell, and Taggart and Beach, of Yale, and Drs. Sadtler, of Philadelphia, and Grosvenor, of New York. From these it is gathered that the mere introduction of particles of air into a liquid does not create bubbles, but that they are created by subsequent agitation, either applied, or self-agitation. Air particles, introduced into pure water, are incapable of creating bubbles. The reasons are the surface tension of the water, and the lack of viscosity to create a sufficient film about the air particles, compel the escape of the air particles into the atmosphere, and no bubble is formed. Some soaps and oils possess the quality to lessen this surface tension of water and to give or increase this necessary viscosity. Their addition in appropriate quantity to water enables air particles introduced

therein to create bubbles. Rather, the meeting and coaction of water, oil, and air create a film composed of all three, and which surrounds the air particles. This film is more viscous than the mass of the water, and, rising to the surface, the tension of which (and of the film) has been reduced by the oil, maintains itself as an air bubble. This quality of oil is of first importance in the process. Another of lesser importance, and which all oils possess, is the “preferential affinity for metalliferous matter over gangue.” Of lesser importance because it is now known (and patented) that, given another contaminant than oil, but which possesses the like bubble-making quality, though not the said "preferential affinity,” the process is equally successfully worked. Air also possesses this "preferential affinity," and in view of the foregoing it well may be that the capture as well as the flotation of the metallic particles is more due to the great volume of air than to the infinitesimal oil. That in this process air without oil cannot capture and retain the metallic particles seems due to its inability to create bubbles without oil. And why this capture in any case is still of the unsolved phenomena of the process. On the other hand, water has a preferential affinity for gangue over metalliferous matter; that is, it wets the former more readily than it does the latter. And this contributes to the process, in that oil and air displace water from the surface of metalliferous matter more easily and quickly than from gangue, and so more readily capture and float the former than the latter. At the same time, despite these preferential affinities, ini successful operation of the process the bubbles generally float more gangue than metal, more in quantity, but not in proportion, and why is also unsolved.

There are "critical proportions" of any oil used in this process; perhaps not a sharp divide, but rather a broad one. For the amount of oil to produce sufficient and efficient bubbles must depend on many other factors, viz. the working cell space, amount of water, degree of agitation, kind and amount of ore, and perhaps on occasion amount of metallic content, kind of oil, etc. For example, if a ton of ore be agitated in a lake of water, doubtless a lake of oil will be necessary to create sufficient bubbles to capture the metal in the ore. But with bona fide operations in a good, workmanlike manner, with the proportion of space, water, agitation, etc., such operations and manner dictate, the range in amount of oil will be narrow and well within 1 per cent. on the ore. These “critical proportions” are like those known to and solved by every child with its pipe and bowl of suds. Too little soap, the bubbles are few, small, fragile, and break quickly. Too much soap, they flow from the pipe in a torrent, are heavy, and refuse to float. The right amount of soap, the "critical proportions," his bubbles are large, detach readily, and float high, far, and for long. So is it with the bubbles in this process. With excess oil, but not enough to defeat bubbles altogether, though of fair aspect to the eye, the bubbles will not do the work. In the excess oil in the films the metallic particles do not cling, but swim or slide to the bubble's lower surface, "neck off," detach, and sink. The untechnical workman recognizes there are "critical proportions”

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