Cerealine Mfg. Co. v. Bates

GROSSCUP, Circuit Judge, after the foregoing statement of the facts, delivered the opinion of the court. The most that can be said for the first claim of the Gent patent is that- the hard, dry flake containing soluble starch and dextrine is a new article of manufacture or commerce. Before determining whether, as such, it is patentable, it is well to look into the second, or process claim of the Gent patent, and determine in what respects the process is new, and whether, as a process, it is patentable. It is not our purpose to review, in extenso, the previous art; it is sufficient to point out in what respects the Gent process has been anticipated in the prior art. It is shown beyond question that. a process that clips and hulls cereals, such as barley, wheat and oats, and then compresses the purified residue through rollers warmed by friction, so that there issues a perfectly cool meal, not ground to powder, but flattened, was used in roller mills previous to the Gent patent. The difference between this process and the process described in the Gent patent is two-fold: First, in the prior art the clipped and hulled cereals were barley and wheat; in the Gent process it is corn; and secondly, in the prior art, the cereal, after clipping and hulling, had not been moistened by steam before going through the rollers, so as to hold the particles together after passage through the rollers — a distinguishing feature of the Gent process. It is also undeniable that prior to the Gent patent there were, in the special manufacture of cereal food products, a moistening and steaming prior to the passing of the crushed cereal through rollers. The cereals used in these manufactures were wheat, barley and oats, which, having been hulled so that the outer or woody shell was removed, and then moistened and steamed and thus softened, were passed through warm compressing rollers. The result of this process was a flake, preserving in its integrity the berry of the grain. Had the berry been previously clipped, the inner coating, as such, would have disappeared, and the kernel, properly moistened and toughened, would have doubtless taken on the form of a hard, dry flake. The difference between this product and the Gent product resides in the fact that in this product the integrity of the berry is, for the reasons named, preserved, while in the Gent product it is not; the cause of this difference being found in the clipping of the Gent process, whereby the inner sheath'is broken up. In the general manufacture of wheat flour prior to the Gent patent, the rollers were heated by friction. It is manifest that if the manufacturers of flour had clipped the berries of corn as they did the berries of wheat, and before passing the grits thus resulting through the rollers, hád subjected, them to a sufficient degree of steaming and moistening, the .flour would have issued from the rollers (the rollers being sufficiently .warmed} in the form of hard, dry flakes.. The essen- • [279] tial difference, therefore, between such general flour manufacture and the Gent patent is, that Gent, to some degree of heat, steamed and moistened the grits, and to some degree of heat, also, wanned the rollers, — a feature of manufacture not-specially looked after by the general flour manufacturers. It is also manifest that if the special manufacturers of food products from wheat, oats and barley, prior to the Gent patent had clipped the berries of the cereal, the product issuing from the warm rollers would have been a bard, dry flake, such as the Gent product. Whatever advance, therefore, Gent made over these special manufactures resides in the fact that the cereal hulled — an old step — , and softened and toughened — an old step — •, has, before compression by the rollers, been likewise clipped — a step also old in general flour manufacture. At most, therefore, all that Gent has done to modify the previous general process of flour manufacture was to introduce the moistening and toughening, and, to some degree, warm rolling; all he has done to modify the previous special processes of manufacturing cereal foods was to clip the berry — a step that had been used in the general manufacture of flour. It is doubtful indeed if Gent is entitled to credit for these modifications; but for the purposes of this decision they may be conceded. Do any of these modifications make his process patentable? First, then, in respect to the clipping: In the first application to the Patent Office the first step of the process was described as consisting of the separation of the hulls and impurities from the kernels of corn, by subjecting the com to a dry clipping and cracking operation; the second step as consisting in the steaming of the granular particles for the purposes of softening and toughening; and the third step as the "warm rolling of these soft, tough, and wet granules for the purposes of pressing- -them into flakes. The application, thus stated, was rejected, for the reason that all these steps appeared in the former art; and in this rejection Gent acquiesced, by amending, so that the second step consisted of softening and toughening the grannies vjlthout coohmg the same. This is a concession that a process, otherwise like his, including the clipping and hulling, but in which the toughening is accompanied or brought about by cooking, would amount to no infringement upon his claim. In other words, the prior art is admitted by Gent to have included every step of his process, except as it is modified by the absence of cooking. There is, therefore, by Ms own concession, no novelty in the mere fact that the grain is clipped, though such process includes the softening and toughening necessary to produce a flake product. Is there any moistening or steaming in the Gent process different from that in the manufacture of prior food products? If so, it is not pointed out in the description of the patent, unless the difference resides in an absence of cooking. But there is no serious claim anywhere in this case that the absence of cooking is a chemical or mechanical cause that brings about the hard, dry flake. . It is conceded that the grit, either in the steaming or warm rolling, must be subjected to a heat in excess of one hundred and thirty-five degrees [280] Fahrenheit, in order to develop dextrine, and chemical authorities place the necessary heat at two hundred and eighty-four degrees Fahrenheit and upwards. Tt is nowhere claimed by appellant that a heat of less than two hundred and eigh1y-four degrees Fahrenheit will produce the dextrine found in the flakes. The appellant points to no place in the process where this heat is applied, and can, upon the state of the prior art, point to no step in the process distinctively different from the moistening and steaming, or the warm rolling that characterized the manufacture of previous cereal foods. Indeed, counsel for the appellant nowhere point out in the Gent process the efficient cause producing the hard, dry flake. They are contented with the insistence that because the hard, dry flake, in fact, contains soluble starch and dextrine, there is in hiding somewhere in the process the cause of such a result. We are asked to pronounce this process patentable, not because we can see wherein the novelty resides, or that the efficaciousness of the process is due to such novelty, but because the product is, in some respects, different from anything going before. The statement of a process upon the part of a patentee, to be sustainable, must not only clearly distinguish the old from the new, so that the novelty claimed is obvious, but must point out the new steps so definitely, that one wishing to use that process for the production of the desired product, will have a clear chart before his eye. In this essential the Gent process utterly fails. An inspection of the description discloses its progressive steps — hulling and clipping; steaming and moistening; compression through warm rollers — but ■as we have shown, none of these are new. What degree of steaming or moistening is not made apparent; what should be the warmth of the rollers does not appear. The user would be obliged, with this chart before him, to experiment, just as Gent doubtless experimented, before he obtained a hard, dry flake. The patent would be no guide; it would not even facilitate the production of the hard, dry flake. It leaves the world, as would-be manufacturers, just where it found Gent — with valuable general information on the subject, but with no definite formula. As- a process patent, therefore, the Gent claim fails. Is the hard, dry flake a new article of manufacture within the meaning of the patent law? New articles of manufacture must not be confounded with a new article of commerce. The latter may be novel and highly useful, even to the displacement in commerce of its predecessors, but is not, on that account, patentable. Powdered sugar succeeded to loaf sugar; ground coffee to coffee in the berry, and as articles of commerce largely supplanted sugar and coffee in their previous forms, but no one claims that, within the meaning of the patent law, such change, though new and useful, constituted a new article of manufacture. Steel, on the other hand, when first made, as the result of the combination of carbon and iron, was an essentially new manufacture. It introduced a practically new metal into the uses of mankind. It differed so essentially from its ingredients in their former state, [281] that the change was not a mere modification, but was a creation. No one would classify steel with iron; it is a distinct species. Is this true of the hard, dry flake of the Gent patent? The whole emphasis of appellant’s contention is placed upon the fact that, unlike flour, the flake is not laminated, but through the presence of soluble starch and dextrine the granules cohere, and a flake results. The development of dextrine is urged as the efficacious novelty giving to this product its merit. But dextrine is inherent in every cereal containing starch which has been subjected to a certain degree of heating. It is found in breads that have been twice baked in a high degree of heat; it is the well known result of heat applied to soluble starch; it is doubtless present in the wheat and barley flake of previous cereal foods. The Gent product may be brighter in color, more desirable in commerce, and more useful, than its predecessors, but is composed of no ingredients previously unknown, and is the result of no essentially new combination of old ingredients; nor is it, so far as we can see, the result of any new mechanical or chemical process. At most, it is an advance only upon the old art in the direction of perfection — a step merely, in the mechanical evolution of cereal foods and general flour making. There is no clear line of demarcation between what may be called new articles of commerce, not patentable though useful, and new articles of manufacture patentable as such. Each instance brought to the attention of the court must be determined more or less upon the situation peculiar to itself. We think it sufficient to say that no result of a machine or process is patentable independently, where It is apparent that such result is a degree only in advance, in the evolution of an art that is as wide as is the manufacture of cereal foods and flour. The Gent patent is, in our judgment, in no just sense, a new product; but only a modification or advance upon products already as widely known as the civilized breakfast table. Patents can not rightly be made to cover every change in the betterment of material conditions. The growth of the art of cereal foods, unless something distinctively new in specie is contributed, is the growth of common public thought, and, therefore, independently of the process (which may be protected) belongs to the public. But, while this hard, dry flake is doubtless the output of appellant’s mills, we are not at all satisfied that it is the result of the Gent process. It is manifest that starch will not be quickly converted into dextrine, except under a temperature of from two hundred and eighty-four degrees to three hundred and twenty degrees Fahrenheit. In what part of the patent is this provided? Not in the warm rolling, for no degree of temperature is there mentioned; not in the steaming and moistening, for that expressly must not proceed as far as cooking. We can put our finger on nothing in the patent directions that is responsible for the evolution of dextrine. Dextrine -is doubtless present in the flake, but has it not been developed by cooking? If so, the process actually employed is different from the process pointed out in the patent; so'different, that, as described in [282] the first Gent application, it was rejected, on account of the prior art. We are not satisfied that the appellant, in practice, is not following the directions of the first Gent application, while in theory, for the purposes of these suits, relies upon the amendment. This doubt exempts the defendant, both in the process employed, and the result ■produced, from a judgment of infringement. The decree of the Circuit Court will be affirmed.