496 OLOUOESTER ISINGLASS &; GLUE CO.
v. BROOKS a.nd others. 13, 1884.}
Oircuit Oourt D. MQ,8sachU8etts.
J.. PATENTS-EXTRACTION OF GELATINE FROM FISH-SKINS.
Letters patent No. 167,123, for a process. of extracting gelatine from fishskins; sustained against letters No. 177,764, granted to another person for a like process, and the latter held to be an infringement. The decisions of the commissioner of patents, though entitled to great weight uP9n questions of priority, are not conclusive.
2. SAME-DECISIONS OF THE PATENT-OFFICE.
In Equity. Browne, Holmes et Browne, for complainant. James E. Maynodier, for defendant. NELSON, J. The original of the plaintiff's patent was granted to John S. Rogers, August 24, 187:5, No. 167,123, for a new and useful process of extracting gelatine or ichthyocolla from salted fish-skins. It was reis8uedJunel, 1880, No. 9,226, and again reissued July 13, 1880, No. 9,296. The in\Tention has proved of great value commercially, and it has certainly the t;nerit of patentability. It is also new, unless it was anticipated by Isaac Stanwood, to whom a patent was granted for the same process, May 23,1876, No. 177,764, and reissued May 17,1881, No.9,715. The specifications and cl!:lims ofboth the original and reissued patent/'! of Rogers are the same in substance, the difference between them in phraseology being slight and imma· to be this: material. In the second reissue he states the "My invention is to utilize such salted skins of fish; and incanying it out the first portion of it is to desalt the skins, such portion of the process causing the removal of the scales from .the skins, it being accomplished by soaking the skins in cool water, and agitating them therein sufficiently to extract the salt froni them. 'rhe water should be changed repeatedly until the salt may have been separated from the skins, after which they are to be put into fresh watel', which should be gradually heated to a boiling temperature. and kept so for three hours, more or less, until the gelatine may have been sufficiently extracted from the skins by the water so heated. Next, the superfluous matt(lr:or matters should be removed from the gelatinouB ;:wlution now procured, and it (the gelatinous solution) should be strained or filtered in order to obtain it in a purified state. Finally, the'liquid is to be suitably evaporated by introducing the solution into pans or moulds, or upon slabs, and exposing to the atmosphere until it may.be sufficiently condenSed for use, whether as an article of food or as a glue for mechanical purposes."
His claim is : "The process, substantially as described, of obtaining gelatine from salted fish-skins, it consisting in desalting and boiling them, separating from the gelatinous solution so obtained the superfluous matter or matters, and reducing it (the solution) by evaporation to the necessary consistency for use, as set forth."
The evidence shows that in the years 1872 and 1873 an extensive business was carried on in Gloucel:lter, in the preparation of what is
GLOUOESTER rSINGLASg & GLUE '00. V. BROOKS.
427
termed dessicated or hopeless sal.t fish. .The process of the manufactu,re consisted in stripping off the skins and removing the bones from the and packing salted fish, and then cutting the flesh into suitable it in boxes for the market. One result was the accumulation of great quantities of the SIrins, then thought to be of no value for any purpose,. which the fish dealers· found considerable difficulty in getting rid of. In November, 1873, Rogers first conceived the idea.of utilizing this waste substance as material for the manufacture of gelatine or glue, and began his experiments at Gloucester. In the following autumn he had so far succeeded as to be able to place upon the market samples of liquid glue extracted from salted fish-skins. On Feb· ruary 27,1875, he filed his applica-tion for a patent.. Stanwood, who was a manufacturer of glue from fish sounds, in Gloucester, begun his experiments in the autumn of 1872, or the following winter, and by a.nd boiling the skins, and then drying the solution, succeeded in obtaining a liquid glue in small quantities. But the glue proving to be of inferior quality, and his customers finding fault with it, he abandoned· his attempts and· did noHesume them until 1876, after Rogers had obtained his patent. The evidence is r.onflictinf:{ ·on this point, but upon the whole it is satisfaetQl'ilyproved that every· thing done by Stanwood prior to the Rogers patentw8is merely experi. mental, and that his experiments, such 8.sthey were, did not reach the perfected process of Rogers. Experienced as he was in the manu· facture of ush glue, he must have appreciated the importance of a new method by which this waste material could be made available as glue stock in his busin.eas.,The presumption is very strong that if he had actually succeeded in diacovering such a method, he would have made more use of the discovery than he is shQwn to have, done. When Stanwood applied for hisreissueplIotent an interference was declared between his application and Rogers' 'original patent. The parties;'a.nd·the decision of the pat. interference was contested by ent office was in favor of Stanwood. The defen.dants rely in their answer upon this decision as- a .final adjudication settling the question of priority in favor of the Stanwood patent. But it is well settled that the decisions of the commissioner of patents though entitled to great weight on questions of priority, are not final, even between those who have been fully beard 'in the interference. Union Paper Bag Mach. Co. v. Crane, 1 Holmes, 429; Wkipplev. Miner, 23 O. G. 2236; [So C.15 FED. REP. 117.] , .' The process used by the defendants in the manufacture of glue is identical with that of the Rogers patent, and infringes it. Decree for complainaJlts.
428
J'EDEIU.L BEl'OBT.B&
& LINCOLN 8.BAMING-MAOmNE CO. v. AMERICAN PRINTING CO. (Oircuit Court, .D. Ma8sachusett8. }'ebruary 18, 1884.)
PATENTS-REIssuE-SmWING-MAcHINE.
The third claim of original letters patent No. 108,827 was for the combination of an annular plate with the stitching and feeding mechanism of a sewingmachine, for the purpose of guiding the fabric. The first and third claims of the reissue, No. 9,176, were for a wheel to feed as well as guide the fabric. Hdd, that the reissue, being more than a mere reproduction of the original 'patent, was invalid as against intervening rights.
In Equity. T. W. Clarke, for complamant. J. L. S. Roberts, for defendant. Before LOWELL and NELSON, JJ. NELSON, J. The plaintiff sues for the infringement of reissue patent No. 9,176, granted to Rayer & Lincoln, assignors by mesne assignments to the plaintiff, April 27, 1880. The original patent, No. 108,827, was dated November 1, 1870. In the original patent the invention is described as "a new and improved sewing-machine attachment." In the specification, the invention is said to consist in certain improvements by which sewing-machines may be adapted to sew the ends of pieces of goods of the same width, one pair after another continuously, and to stitch all kinds of goods where long, continuous seams are required. The invention is described with reference to any sewing-machine of suitable construction and size. D is an annular plate supported in a vertical position by rollers hung in a frame, and so set that. its upper edge is behind the presser·foot a.nd needle-bar of the sewing-machine. In front of the plate there is affixed to the frame a shield, covering all but the upper part of the plate. A toothed ring is secured to the back of the plate, and meshes into the teeth of a mounted on an arbor, which derives motion from the driving-shaft of the sewing-machine. Upon the edge of the plate are hung a series of hooks or points, which can be shifted to conform to '. the width of the fabric. The pieces to be sewed together are hupg upon the hooks, and rest upon a shoulder projecting Irom the plate, and upon the upper edge of the shield. A winged wheel working in front serves to throw the sewed fabric off the hooks. ,When in operation, the plate is designed to move correspondingly with the feed of the sewing-machine. As the plate revolves with the action of the sewing-machine, the pieces are .carried along to and past the sewing-devices"and when sewed are thrown off as they arrive at the winged wheel, the process being capable of continuolls repetition indefinitely. The third claim of the original patent is thuB stated: "( 3) The combination with stitching and feeding mechanism, substantially such as described, of a continuously revolvinll annular fabric-guide. D, as and for ttl' purpose set forth."