"A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or not be new or patentable, whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence."

In Am. Fibre Co. v.. Buckskin Fibre Co., cited above, this court sustained a process "for reducing fibrous sheets to a soft and pliable condition, consisting in first moistening them and then pounding while in a moist condition.”

It is not enough to say that it was not new in milling to gradually reduce a material to its several constituents by a series of breakings and screenings. The breaking operations of Johnson were applied to a most peculiar material and the thorough separation of the fuzzy, silky lint from the capsules of the cotton seed, a most unusual and difficult operation. This delinting, in order to save the lint in its best condition, must be so done as not to cut it up. This last consideration was not presented in any of the gradual reduction processes known to the milling of grain. But not only did commercial considerations require the separation of the lint fiber without injury, but the successful separation of the detached lint from the commingled mass of broken hulls and fiber by the screening steps of Johnson would be practically unavailing unless the fiber reached the gauze screen of the separator without the comminution which resulted from the old methods of breaking the hulls. So it is that Johnson's successive screenings for successful results depend upon the method in which the antecedent operation of breaking has been conducted.

It is therefore no anticipation of his process to find a general resemblance in the fact of a series of successive breakings and screenings. Each breaking and each screening under his plan had regard to the peculiar material to be handled and its condition as a result of the preceding operation upon it. A process patent can only be anticipated by a similar process. Carnegie Steel Co. v. Cambria Iron Co., cited above. No such similar process has been shown, and the evidence leaves little reason to doubt either the novelty or great utility of Johnson's process as secured by the first claim of his first patent. Such a process may be wholly independent of the particular machinery or appliance used, and is something more than the functions of the machine in which it is employed. Am. Fibre Co. v. Buckskin Fibre Co., 72 Fed. 508, 18 C. C. A. 662.

This brings us to the patentability of the mechanism employed which is the subject of the second claim of the patent. The steps of the Johnson process may be carried out in any apparatus adapted to do the things in the order which he prescribes. The claim does not include. any peculiar or novel form of disk, nor disks operated in any novel manner. The vertical rotary disk of the Cogswell mill, a device open to all and well known, were in fact used by him. The disks were, therefore,

confessedly old. The novelty is in arranging his disks so that the material to be acted upon shall be subjected to "attrition and concussion" rather than the ordinary method of grinding used by Bohn and by the Burnett, Sears & Burnham devices. But the construction and arrangement of the "vertical rotary disks" of the claim is described in his specifications only as one by which "the hulls and kernels are broken or split without cutting the fiber." That result is either a consequence of attrition as distinguished from grinding or we are not informed as to how it is attained. The arrangement, then, must be such as shall result in a mass of seed and hulls being rubbed against a similar mass and not against the hard grinding surface of the disk. This is a purely mechanical arrangement, presumptively within the competency of one skilled in this line of business.

The next step is the forcible ejection of the broken mass into a separator below. But this, too, is a result of the oppositely rotating disks at a suitable velocity. The separator described as "the horizontal separator, B," arranged beneath his mill, is not unlike in essentials of construction or function the separators of the old art. The rotary brushes journaled within the trough of the separator force the mass of broken hulls and fiber into contact with the screen or wire gauze forming its bottom, with the result of forcing the finer particles of hulls through the meshes, the detached fiber or lint, being "restrained" from passing through, "are passed out at the end of the separator" into a chute there placed leading to a second mill. This second mill is like the first, except that the disks are arranged closer together, so as to break up any particles of hulls which were too large to pass through the screen of the first separator, and also to "accomplish a further separation between the hulls and fiber." The material reaching the second mill is now subjected a second time to attrition and conducted to a second separator like the first. To this second separator the broken hulls which passed through the screen of the first separator are conducted by a properly arranged chute, and, together with the larger particles or hulls which had failed to pass through the screens of the first separator, are given a second treatment like that of the first separator, "so that every particle of fiber may be separated and a uniform grade of food stock produced." Now, the essential difference between what Johnson does and what Bohn and others were doing consists in the fact that the separation between the fiber and the broken hulls occur, or is intended to occur, in Johnson's device as a result of forcing the bran through the meshes, leaving the fiber behind, while in the older devices the separation occurs after both hulls and fiber have passed through the screen, the hulls dropping by gravity into one receptacle, while the fibre, so far as detached, is carried by an air blast to a more distant place of deposit. It cannot be denied that all of the elements which enter into Johnson's combinations are old, nor that the function of each element in the new combination is substantially what it was before combined. That the combination and arrangement is not that of any former device for separating cotton seed or hulls from the attached fiber may be conceded. But it is difficult to see that these elements, when combined, constitute anything

more than an aggregation in which each element accomplishes a distinct result without co-operation with any other.

In Goodyear Rubber Co. v. Rubber Wheel Co., 116 Fed. 363, 370, 53 C. C. A. 583, 590, we said:

"The here bringing together of old parts, allowing each to work out its own effect without producing some new machine or product, is not invention. Α combination of old elements, to be patentable, 'must produce a different force or effect or result, in the combined forces or processes, from that given by their separate parts. There must be a new result produced by their union; if not, it is only an aggregation of separate elements.' Reckendorfer v. Faber, 92 U. S. 347-357, 23 L. Ed. 719. 'In a patentable combination,' said Mr. Justice Matthews, speaking for the court in Pickering v. McCullough, cited above [104 U. S. 310, 26 L. Ed. 749], 'of old elements, all the constituents must so enter into it as that each qualifies every other. It must form either

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a new machine of a distinct character and function, or produce a new result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions. Otherwise, it is only a mechanical juxtaposition, and not a vital union."

But we are further of opinion that the device of the patent does not involve a patentable invention. That no device in existence could be employed according to the method of Johnson we concede. A rearrangement of the parts of any known device would have been essential to carry out his method. But the fundamental discovery was that by subjecting cotton seed or hulls to a series of treatments by attrition and by screening the fiber was saved in its best condition. When he disclosed his process, he disclosed enough to enable any mechanic familiar with the art or industry to which this discovery belonged to construct the apparatus essential to the employment of the patented process. Thus his claim is for "the vertically rotary disks, a, a." Referring to his specifications, we find that these disks are to be arranged. "in close proximity and revolved rapidly in opposite directions." But his disks are not novel in the arrangement and operation, so far as described. The details are left to the ingenuity of the one desirous of using his method. The "disks are so constructed and arranged that the hull and kernels are broken or split without cutting the fiber." Manifestly, as he has said that he broke the hulls by attrition, the arrangement must be one which will subject the material to attrition or we have no direction concerning the construction and arrangement of his disks so as to avoid cutting the fiber. The arrangement and construction of the disks, then, is one which is clearly within the common knowledge of a mechanic familiar with the art. There is nothing novelthat is, nothing involving invention-about "the horizontal separator, B." The fiber does not pass through its meshes because it has been detached in an uninjured condition and therefore is "restrained” from passing through the meshes of the separator, as it would do, along with the fine bran, if comminuted as usual when subjected to grinding as distinguished from attrition. We fail to find that the construction of an apparatus to employ the method of his process claim involved patentable invention. When he disclosed his plan for the treatment of the peculiar material, its simplicity conveyed to any one skilled in the

industry all the knowledge necessary to supply it. We think, therefore, that the claims under both patents in issue are invalid for want of patentable novelty.

A vigorous effort has been made to show that Emil Bohn, of Galveston, Tex., the inventor of the two patents issued to Emil Bohn heretofore referred to, was the first and real discoverer of the process or method secured to Johnson by the first claim of his first patent as well as of the device of that patent. We have given attentive consideration to this contention, and are convinced that the whole defense is without any solid foundation whatever. Bohn was working upon the plan of his patent, and there is nothing in evidence which shows that he ever had any conception of the process of Johnson up to the time that he quit the service of Johnson and his associates; his method and his devices having proven commercially of little if any value. Certain it is that Johnson's process was not the method of Bohn's, and Johnson's device is not that of Bohn's patent. There is no evidence of serious import that Bohn ever made a plan or model or set up a device adapted to employ Johnson's process, or that he ever conceived of the complete reversal of his own methods which was necessary in the working according to Johnson's discovery.

We have rarely heard a case in which the evidence to show that a patentee was not the real inventor or discoverer of the patented process or means which is of so weak and uncertain a character as that presented by the present transcript. The alleged infringing device made and installed by the Foos Manufacturing Company for the Southern Cotton Oil Company at Memphis, Tenn., is a substantial duplication of the device of Johnson. It embodies that device with certain additions or modifications, wholly colorable in character. The Foos Company were, upon the evidence in this record, familiar with the device employed by the Tennessee Fiber Company for employing the method of Johnson's patent, and had themselves constructed parts of it, and were familiar with the mode of operating the complete plant. This knowledge they utilized by building and installing a plant substantially similar, adapted and intended to be employed according to the process or method of the Johnson patent. This was done and their purpose of supplying plants avowed because they did not regard Johnson's patent as valid. In this they erred.

They have infringed the process of Johnson because they supplied the apparatus adapted to employ Johnson's process with intent that the plant should be or would be operated as that put in for the Tennessee Fiber Company. It was therefore guilty of contributing to the infringement of the first claim of the Johnson patent. Heaton Peninsular Button Co. v. Eureka Specialty Co., 77 Fed. 288, 25 C. C. A. 267, 35 L. R. A. 728; Thomson-Houston Electric Co. v. Ohio Brass Co., 80 Fed. 712, 26 C. C. A. 107.

The complainants are entitled to a perpetual injunction. The decree dismissing the bill must be reversed, with the costs of both courts, and remanded, with direction to enter a decree in accord with this opinion and for such further accounting as may be deemed necessary.

On Rehearing.

This case comes on now to be heard upon a petition to disallow all costs under sections 973 and 4922, Rev. St. [U. S. Comp. St. 1901, pp. 703, 3396], and to modify the opinion of the court in respect to the scope of the Johnson's process claim. The suit was upon two patents. The first included three claims, one for a process and two for a mechanism by which the process might be employed. We sustained the process claim' as valid and found infringement. Only one of the mechanical claims was in issue, and that only was passed upon. That we held invalid as not involving invention. The second patent contained four claims for improvements upon the mechanical claims of the first patent, but only two were in issue, and those were held invalid as not involving invention.

It is now insisted that as the complainant did not, before suit, file a disclaimer in the Patent Office of the claims found to be invalid, no costs should be recovered by the appellant patentee in this court. Sections 973 and 4922, Rev. St., read as follows:

"Sec. 973. When judgment or decree is rendered for the plaintiff or complainant in any suit at law or in equity, for the infringement of a part of a patent, in which it appears that the patentee, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first inventor, no costs shall be recovered, unless the proper disclaimer, as provided by the patent laws, has been entered at the patent office before the suit was brought." "Sec. 4922. Whenever, through inadvertence, accident, or mistake, and without any willful default or intent to defraud or mislead the public, a patentee has, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first inventor or discoverer, every such patentee, his executors, administrators and assigns, whether of the whole or any sectional interest in the patent, may maintain a suit at law or in equity, for the infringement of any part thereof, which was bona fide his own, if it is a material and substantial part of the thing patented and definitely distinguishable from the parts claimed without right notwithstanding the specifications may embrace more than that of which the patentee was the first inventor or discoverer. But in every such case in which a judgment or decree shall be rendered for the plaintiff no costs shall be recovered unless the proper disclaimer has been entered at the patent office before the commencement of the suit. But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer."

The effect of these provisions is to save the claims which are valid if they are definitely distinguishable from those parts of the patent claimed without right, whether there has been a disclaimer or not. But, if there has been no disclaimer entered in the Patent Office before suit brought, it is specifically provided that the patentee shall not recover any costs. O'Reilly v. Morse, 15 How. 120, 121, 136, 14 L. Ed. 601; Seymour v. McCormick, 19 How. 97, 107, 15 L. Ed. 557; Gage v. Herring, 107 U. S. 640, 646, 2 Sup. Ct. 819, 27 L. Ed. 601; Metallic Extraction Co. v. Brown, 110 Fed. 665, 49 C. C. A. 147; Fairbank v. Stickney, 123 Fed. 79, 59 C. C. A. 209; and Kahn v. Starrels (C. C. A.) 136 Fed. 597; Ide v. Thorlicht, 115 Fed. 137, 150, 53 C. C. A. 341.

But does the statute apply to this court when the trial court has erroneously denied relief upon those claims of the patent which were in