Butte & Superior Mining Co. v. Minerals Separation, Ltd.

ROSS, Circuit Judge (after stating the facts as above). Notwithstanding the strenuous contentions on “both sides of this litigation, and the very eláborate preparations and able arguments of many distin [243] guished counsel, we can but regard the case as a very plain one. To start with, the law is too well established, to require discussion or the citation of authorities, that the patentee’s rights under a patent are governed and limited by its valid claims — its specifications being referred to only as illustrative of the true meaning of the claims. It is equally well settled law that the mere result of an invention is not patentable ; nor is froth, or scum, or pine oil, or any other kind of oil, or oleic acid, patentable as such. In their specifications the patentees of the patent in suit declare that their invention “relates to improvements in the concentration of ores, the object being to separate metalliferous matter, graphite, and the like, from gangue by means of oils, fatty acids, or other substances which have a preferential affinity for metalliferous matter over gangue”; but, of the claims of their patent adjudged by the court below to have been infringed by the appellant, not one specifies any particular kind of oil, although the fifth and sixth specify as one of their constituents “a small proportion of oleic acid (which is an acid existing in most fats in combination with glycoral), amounting to 0.02-0.5 per cent, on the ore.” And we do not understand it to be contended that the appellant uses an}>- oleic acid in its process. It is not denied that at the time of the invention in question the affinity of oil for the metalliferous portion of powdered ore, when mixed with water, was well known, as well as the further fact that the agitation of such a mixture with, as well as without, the addition of acid, would carry the metalliferous portions to the surface of the mixture arid the gangue to the bottom; certainly those facts could not be successfully denied, in view of the numerous references to the prior state of the art made in the opinion of this court when this patent was last under consideration here, and when the whole patent was by this court held void as lacking invention. 214 Fed. 100, 130 C. C. A. 576. That judgment was, it is true, reversed by the Supreme Court, 242 U. S. 261, 37 Sup. Ct. 82, 61 L. Ed. 286. In doing so, however, the Supreme Court held invalid claims 9, 10, and 11 of the patent, each of which claims was for “a small quantity of oil.” So that it is plain the appel-lees are not entitled to be protected in the use of “a small quantity of oil” of any kind, which, as is obvious, is a wholly indefinite quantity. In holding claims Nos. 1, 2, 3,'5, 6, 7, and 12 of the patent valid to the extent that it did, the Supreme Court, after pointing out in its opinion that there were many investigators at work in the field to which the process in suit related when the patentees came into it, and that it was while engaged in study of prior kindred processes that their discovery was made, said: “While the evidence in the case makes it clear that they discovered the Anal step which converted experiment into solution, ‘turned failure into success’ [the former patents having- used so much oil as to make its cost prohibitive — our observation] (The Barbed Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 450, 36 L. Ed. 154), yet the investigations preceding were so informing that this final step was not a long one, and the patent must he confined to the results obtained by the use of oil within the proportions often described in the testimony and in the claims of the patent as ‘critical proportions,’ ‘amounting to a fraction of 1 per cent, on tile ore.’ ” [244] Amounting to a fraction of 1 per cent, on the ore is very far from saying amounting to every fraction of 1 per cent, on the ore. A fraction is one thing; every fraction is a very different thing. It is obvious, we think, that if the Supreme Court had meant to extend the scope of claims 1, 2, 3, 5, 6, 7, and 12 of the patent to 1 per cent, of oil on the ore, as is here contended by the appellees, it would not have said anything about any fraction of 1 per cent. — certainly there would have been no necessity for doing so, and certainly the use of such specific language as it employed, without a purpose cannot be justly imputed to that great'tribunal. That the “critical proportions” “amounting to a. fraction of 1. per cent, on the ore,” so protected by the Supreme Court in its decision, does not include every fraction of 1 per cent, on the ore, is, we think, very clearly shown by the same opinion, where, after describing the prior state of the art, the court said: “Into this field of investigation at this state of its development came the patentees of the patent in suit They were experienced metallurgists of London, of inventive genius and with financial resources, and they entered upon an investigation of the processes of oil concentration of ores, which was continued thro,ugh several years, and consisted of a very extended series of experiments, in which the quantities of oil, of water, and of acid used, and the extent and character of the agitation of the mass under treatment resorted to, were varied to an almost unparalleled extent as to each factor, and the results were carefully tabulated and interpreted. It was while pursuing a comprehensive investigation of this character, having, as the evidence shows, the special purpose in mind at the time to trace the effect on the results of the process of a reduction to the vanishing point of the quantity of oil used, that the discovery embodied in the patent in suit was made. The experimenters were working on the Cattermole ‘metal sinking process’ as a basis, when it was discovered that the granulation on which the process depended practically ceased when the oleic acid (oil) was reduced to about five-tenths of 1 per cent ‘on the ore.’ It was observed, however, that, as the amount of oleic acid was further reduced and the granulation diminished,, there was an increase in the amount of ‘float froth’ which collected on the surface of the mass, and that the production of this froth reached its maximum when about one-tenth of 1 per cent., or slightly less, ‘on the ore,’ of oleic acid was used. This froth, on collection, was found to consist of air bubbles, modified by the presence of the minute amount of oil used, and holding in mechanical suspension between 70 per cent, and 80 per cent, of the total mineral content of the mass treated. It was promptly recognized by the patentees that this froth was not due to the liberation of gas in the mass treated by the action of the dilute acid used, and its formation was at once attributed in large part to the presence of the air introduced into the mixture by the agitation, which had been resorted to, to mix the oil with the particles of crushed ore, which air, in bubbles, attached itself to the mineral particles, slightly coated as they were with what was necessarily an infinitesimal amount of oil, and floated them to the surface. The extent of the agitation of the mass had been increased as the experiments proceeded, until the ‘series of Gabbett mixers, fitted with the usual baffles, were speeded at from 1,000 to 1,100 revolutions per minute.’ A careful consideration of the record in this case convinces us that the facts with respect to the process of the patent in suit are not overstated by the plaintiffs’ witness, Adolf Liebman, an expert of learning and experience, when he says in substance: ‘The present Invention differs essentially from all previous results. It is true that oil is one of the substances used, but it is used in quantities much smaller than was ever heard of, and it produces a result never obtained before. The minerals are obtained in a froth of a peculiar character, consisting of air bubbles which in their covering film have the minerals imbedded in such manner that they form a complete surface all over the bubbles. A remarkable fact with regard to this froth is [245] tliat, although the very slight and easily destructible air bubbles are covered with a heavy mineral, yet the froth is stable and utterly different from any froth known before, being so permanent in character that I have personally seen it stand for 24 hours without any change having taken place. The simplicity of the operation, as compared with the prior attempts, is startling. All that has to be done is to add a minute quantity of oil to the pulp, to which acid may or may not be added, agitate for from 2ys to 10 minutes, and then after a few seconds collect from the surface the froth, which wilt contain a large percentage of the minerals present in the ore.’ It is not necessary for us to go into a detailed examination of the process in suit to distinguish it from the processes of the patents relied on as anticipations, convinced as we are that the small amount of oil used makes it clear that the lifting force which separates the metallic particles of the pulp from the other substances of It is not to be found principally in the buoyancy of the oil used, as was the case in prior processes, but that this force is to be found, chiefly, in the buoyancy of the air bubbles introduced into the mixture by an agitation greater than and different from that which had been resorted to before, and that this advance on the prior art and the resulting froth concentrate so different from, the product of other processes make of it a patentable discovery as new and original as it has proved useful and economical.” Nothing, it seems to us, can be clearer from the foregoing quotations from the opinion of the Supreme Court than that it did not intend to extend the monopoly of the patent in suit to the use of 1 per cent, of oil on the ore; for it, in effect, thereby distinctly declares and adjudges that the discovery of the appellee “experimenters” only rose to the dignity of invention when they ascertained that the desired results could be and were obtained by the use of five-tenths (one-half) of 1 per cent, of oil on the ore, with still better results as the quantity was reduced, to the vanishing point at less than one-tenth of 1 per cent. The quantity of oil that gave birth to the invention — five-tenths (one-half) of 1 per cent, on the ore (at which point no more granulation exists) — to the lesser and extreme limit of the minute quantity (less than one-tenth of 1 per cent.) at which the desired result ceases are the “critical proportions” “amounting to a (italic ours) fraction of 1 per cent, on the ore,” to which the appellees’ patent is “confined” by the Supreme Court, as we understand its opinion. And that is just what appears from the present record was the contention of the present appellees before the Supreme Court on the argument of their appeal from the judgment of this court holding that there was no invention in what they did; for it is undisputed that on the argument of that appeal this colloquy occurred between two of the justices and two of the attorneys for the then appellants and the present appellees: “Mr. Justice McReynolds: I would like to ask you when in this process of reducing oil your invention came into existence. “Mr. Kenyon: At about one-half of 1 per cent, of oil. “Mr. Justice McReynolds: Before you got to the one-half of 1 per cent, did you have any invention? “Mr. Kenyon: We were passing from the region of Oattermole, which was a distinct— “Mr. Justice McReynolds: I want to know when your invention came into existence. “Mr. Kenyon: This invention was not reached, I should say from those figures, until about 0.5 — that is one-half of 1 per cent. — of oil was reached. [246] “Mr. Justice McReynolds: At 1 per cent, you liad no invention? “Mr. Kenyon: No. "Mr. Justice McReynolds: At one-half of 1 per cent, you did have invention? “Mr. Kenyon: It began to come; remote, but it began to come. At 0.3 of 1 per cent, the flow vastly increased. At 0.1 of 1 per cent, the flow again vastly increased. “Mr. Justice McReynolds: When this flow is more than one-half of 1 per cent, of oil it does not infringe? “Mr. Kenyon: It does not infringe. “Mr. Justice Pitney: What have you to say in answer to what Mr. Scott said the other day, to the effect that 1.8 per cent., or perhaps more, of oil would give the same result with increased agitation? “Mr. Williams: Absolutely no. “Mr. Kenyon: It would not. “Mr.. Justice Pitney: I understood him to say so yesterday, and I supposed there was something in the record to Justify it. “Mr. Kenyon: Nothing; that will he a part of m.y argument.” It results, from the views above expressed and from the similar ones expressed in the concurring opinion of Judge HUNT, that the decree appealed from must be and is. reversed, and the case-remanded, with directions to the court below to so modify its decree as to accord with the opinions of the majority of this court — the appellant to recover its. costs on this appeal.