Royer v. Coupe

delivered the opinion of the court.

This is a suit in equity, brought-in the Circuit Court of the United States for the District of Massachusetts, by Herman

The specification of the patent is as follows: “After the removal of the hair from the hide by means of sweating—a process familiar to every tanner — the hide is dried perfectly hard. Then it is inserted in water for ten to fifteen minutes, long enough to lose its extreme stiffness. In this condition the process of fulling is commenced. This may be' done in a machine constructed for this purpose and patented by me 'May 12, 1868, under No. 77,920. Before the hide is passed into the machine the second time it is stuffed with a mixture twenty parts tallow, two parts wood tár and one part resin. About two pounds of this mixture is put on a steer hide in a warm .liquid'state with a brush: After the hide leaves the machine the second time, it is ready, for the next operation. It is then moistened with water four or five times during the day. The next day it is stretched arid cut into pieces, suitable for belting. Eor purposes of lacing the thinnest hides are selected, and after they have gone through the same mode of treatment as hides for belting, they are shaved, oiled and hung up to get perfectly dry, when the hide is cut into strings. In order to more fully understand my mode of preparing hides, I avoid the use of lime, acid or alkali, for just to the amount a hide is impregnated with such substances it suffers in its tensile strength and.toughnessa slow but constant, dissolution is going on with hides so impregnated. If the effects of the aforesaid substances are in some way neutralized, which must be.a chemical one, the hide suffers again in this process. (The power to resist abrasion, and the extreme tensilé strength for which pure rawhide is noted, are irreparably lost. [I am aware that hides and skins have been pi’epared by a fulling- or bending operation to render theip. pliable, biit this mode alone does not answer for the preparation, of machine belts and lacing. It is necessary to make use of a. preparation substan-

' The claiiá is as follows: “The treatment of the prepared rawhide in the manner and for the purposes set forth.”

The bill of complaint is in the usual form. The answer sets up want of novelty and non-infringement. It also avers that the process set forth in the patent is composed- of a series of ■steps, consisting of (1) .the removal of the hair from the hide by means of sweating; (2) drying the hide perfectly hard; .(3) then softening the hide slightly by soaking in water; (4) fulling the hide; (5) stuffing the hide with twenty parts of tallow, two parts of wood tar, and one part of resin ; (6) fulling the hide, a second time; (7) repeated'moistenings with water; and (8) stretching and cutting into belting. It • avers .that the supposed importance of the. plaintiff’s alleged invention is the avoidance of the use of lime, acid or alkali in the treatment of ' the hides, and the consequent avoidance of the use of any chemical agents to neutralize the action of such lime, acid of alkali; that the process employed by the defend-.ants is substantially different from that of the patent; that" the process of removing hair by sweating the hide was known and practised long before the supposed invention of the plaintiff; that the"'process of fulling hides is indispensable, and has been practised ever since the ai't of tanning and'curing hides was known; that the process of stuffing hides with tallow and greasy substances, and with various admixtures of resinous substances,- tallowand other materials, had been known from the earliest days of the-..art of manufacturing leather ;• and - that a patent was granted • to the defendant 'William Coupe,

The opinion of the Circuit Court is reported in 38 Fed. Rep. 113 . It held that the process of the patent consisted of the series of eight steps above set forth in the answer. It considered the questions whether the claim was intended to cover all, or only a part, of the eight successive steps; and whether it meant thé method of preparing rawhide in the manner set forth, or -whether the -words in the claim, “ prepared rawhide,” signified a hide which had been subjected to one or more of'the eight steps, and the claim was limited to the subsequent steps of the process. The court went on to say that that inquiry was important because, if the claim covered all of the eight steps, the defendants did not infringe it, for the reason that they did not use the first step of the process, namely, the removal of the hair from the hide by means of sweating, they making use, for that purpose, of the liming process, which the plaintiff stated, in his specification must be avoidéd. The court held that the claim, covered, and was intended to cover, the \wbole treatment described by the'plaintiff, and not a part of that treatment; that the claim meant the same as if it read .“the method of preparing rawhide in the manner set forth ; ” and that the words “ prepared rawhide ” meant the finished, product, and not the hides subjected to one or more of the steps of the process described. The court then referred to the contents of the file-wrapper of the case in the Patent Office,..as throwing light upon the real scope of the patent.

The specification, as originally filed, contained, in its de: scriptive part, substantially the same description as the patent when issued; but the claim originally made was in these words: “ The use of a mixture of wood tar, resin and tallow, applied to hides made into leather by a • mechanical process,, substan

.The patent of May 12, 1868, .thus referred to, is the same patent of that date mentionéd in the specification of the patent now-in suit. The specification of No. 77,920 says: “The nature of our invention is to, provide an improved .machine-for converting rawhides into leather, of that class which-» is used for belting,-lacings and other'purposes1 where it'; is necessary to preserve the native strength and toughness ■ without destroying or.-impairing the. natural fibres or grain ‘ of the leather. . In order to accomplish our object, we employ a machine- mounted on a suitable frame, having a vertical ■slotted shaft,-.to which is attached, at its base, a bevelled wheel between two bevelled pinions upon a horizontal shaft.

. In a communication from Boyer’s attorney to the Patent Office, of October 9, 1873, it is stated that the material prepared according to the plan of Boyer,]set forth-in his application'for No. 149,954, is a superior article; that the-use of tallow and tar .upon leather was old, but rawhide fulled was not-leather; and that the materials named acted with the rawhide very differently from what they did with leather. The same communication erased the second claim introduced June 10, 1873, namely, “Second. A belt or rope of rawhide prepared in the manner and with the materials specified, as a. new article of manufacture.” In response to that letter, the Patent Office, on October 17, 1.873, informed Boyer, that, independently of the process set forth' in patent No. 77,920, “ for -which protection has already been granted,” a claim for the treatment- of rawhide, in the -manner described in. „the specification then pending might receive favorable consideration, and that the body of the specification should be amended.

The opinion of the Circuit Court states, that on June 10, 1873, as appeared by the file-wrapper and. contents, the plaintiff sought to limit his claim to a method of preparing rawhide for belting'1 by the fulling and bending operation and the preserving mixture; that that claim was rejected, and he acquiesced in the decision; that the Patent Office intimated that a claim'for the treatment of rawhide .in the mode described in his patent might be allowed; that the plaintiff accordingly amended his specification and claim in conformity wfith that suggestion, and the patent was .consequently granted; that in view of the prior state-of the art, the plaintiff was not entitled to a broad claim for a process which should embrace only the fulling and bending operation and .the preserving mixture composed of tallow, tar and resin, for both of these things, as applied to converting hides into leather, were old; that it followed that the only subject-matter of invention which the plaintiff could properly claim was the whole process described in "his patent, comprising the different steps therein set forth ; that the most that could be said of the plaintiff’s patent was that it was for an improved process; that, in' that view, it must be shown that the defendants used .all the different steps of that process, or there could be no infringement; that the defendants did not use the sweating process, which was the first step in the plain tiff’s "treatment, and therefore did not infringe; that the patent had been construed by Judge Drummond, in the.Circuit Court of the United States for the Northern District of Illinois, in Royer v. Chicago Manufacturing Co., 20 Fed. Rep. 853 , in which it was said: “ If this .is a valid patent for a process, it must be limited to the precise, or certainly, substantial, description which has been given in the

"We are of opinion that the views set forth by the Circuit. Court are sound, and that the decree must be affirmed. The words in the claim, “ prepared rawhide,” refer to the completed article as prepared for final use by the treatment set forth iu the specification; and the claim is one for the treatment or process by which .rawhide is put into the condition, resulting from the treatment it. receives by the entire process . applied, to it. After the hair is removed from the-hide by the process of sweating, and it has afterwards lost its stiffness by being inserted in water, it is subjected to “ the process of fulling,” with a mixture of tallow, wood tar and resin applied to it. The specification states, in substance, that Boyer’s mode of “ preparing hides ” comprehends, as a part of such mode,. the sweating of the hides, because the specification states that in such mode of “preparing hides” he avoids “the use of lime, acid or alkali.” Therefore, the sweating must necessarily be' included as a part of the preparation' “ of the prepared rawhide ” mentioned in the claim, and therefore is a part of “ the treatment ” claimed.

The plaintiff contends that the treatment covered by the claim consist's only in subjecting rawhide to a fulling process,, 'and, at the same time, by the same mechanical action, working into it the stuffing composed of tar, resin and tallow, and' that he was the first to manufacture rawhides into a new article of commerce, called “ fulled rawhide.”

It is well settled, by numerous cases in this court, that under', such circumstances a patentee cannot successfully contend that his patent shall be construed as if it still contained the claims which were so rejected and withdrawn. Roemer v. Peddie, 132 U. S. 313 , 317, and cases there cited. The principle thus laid down is, that where a patentee, on the rejection .of his application, inserts in his specification,, in consequence, limitations and restrictions for the purpose of obtaining his patent, he cannot, after he has obtained it, claim that it shall be construed as it would have been construed, if such limitations dnd restrictions were not contained in it"; See, also, Phœnix Caster Co. v. Spiegel, 130 U. S. 360 , 368; Yale Lock Co. v. Berkshire Bank, 135 U. S. 342 , 379; Dobson v. Lees, 137 U. S. 258 , 265.

The present patent was under- consideration in Royer v. Schultz Belting Co., 40 Fed. Rep. 158 , in October, 1889, in the Circuit. Court of the United States for the Eastern District of Missouri, where Judge Thayer took the same view of .it that was taken by Judge Colt: in the present case, and held that the ..claim of the patent did not cover broadly the method of making belting-leather by stuffing the rawhide by means of a fulling maohine, with a mixture composed' of tallow, wood tar and resin, and that, as the defendants in that case did not use the sweating process, but used the liming process, they did not infringe. Judge Thayer gave much force to the proceedings in the Patent Office, as showing, that Royer modified his claim, which was so worded as to cover the. stuffing process with the preserving mixture, and put his claim into its present form, solely, in view of a communication from-the patent Office.to

As the defendants in the present case do not use the.sweating process,’ but use the liming process, it follows, under' the proper construction of the claim of .'the .patent, that they do not infringe.

Decree affi/rmed.