667,

BIlUMENTlU'L 11. BURRELL

(Cfrcqit OQ1I/1't,

et oZ.

fr. D. New

Yor1£. October 10, 1890.)

1.

PATEN'1'!l FQR INVENTIONs':"Ninv MANUFAOTURE.

Patent ·No. 844,483; grailted to Moritz Blumenthal, June 29, 1886, is for new manufactures,-the two chemical products, chymosin and pepsin, \lncombined wit1;l each other and practically free from foreign substances. Chymosin and pepsin are ferager.t, found in the rene ments, the former a curdling agent, the latter a nets of calves and hogs; which had, on account of their· curdling properties, been used in. the form of a liquid in .the manufacture of cheese, but the liquid cOntained Ob.i6C.ti.onab1e matter, au·d its curdlins powers v.a.ried accor.ding.. to the predominahce. of chymoslilin the stomachs treate¢ At the time of the patent chymosin had not been produced in a pure state. Held, that the chymosindescribed in the patent was a new and patentable product. ' T1;le article actually produced being merely the in a powder form, differing from previous extracts Only in containing more of the curdling princip1e,·and less,of t.he useless or deleterious matter, is not a patentable product, though it con· an insignificant proportion of pepsin and other forelgD matter.

2.

SAME.

In Equity. On bill for injunction. Steele &7 Kna'Uth, (A. 11. Brieaen, of couui;el,) for complainant. E. S. Jenney, for defendants. W J. The patent in suit (No. 344,433) granted to Moritz Blumepthal, of Prussia, June 29, 1886, is for new manufactures,-the two chemical products,chymosin and pepsin, uncombined with each other, and practically free from foreign substanc6&. The first claim is for chymosin "uncombined with pepsin," as described; the second is for pepsin "uncombined with chymosin," as described; and the third is for "chymosin or pepsin uncom1;>ined with each other, in combination with an indifferent preservative," as described. Chyinosin and pepsin are ferments found in the rennets or stomachs of calves and hogs, the former predominating in calf rennet and the latter in bog rennet; but they are unlike in their properties, chymosin being a coagulating agent, and pepsin a digestive agent. On aQcount of its coagulating properties calf rennet has long been in extensive use for curdling milk by cheese makers in the form of a liquid obtained by cutting up the stomachs and macerating them in a salt solution containing from 5 to 10 per cent. of salt. Such a liquid contains collected gastric juices of the stomach, incl uding, belMes chymosin and pepsin, more or less of the objectionable mucous and albuminous matters of these juices; and its curdling power varies to the predominance of chymosin in the stomachs treated. The patentee states in his specification that before his invention neither chymosin nor pepsin had ever been obtained in all absolutely pure state, and that each, as theretofore obtained, contained a compound of both, besides mucous, albuminQus, and other impurities, which impart an offensive smell and taste to the products. The questions in the case are the chymosin of the claim was at the,time of the alleged innew product in sense, whether the d.efend.ha;v:e jnfringed The pepsin claim is not in controversy;

668

J'EDERAL REPORTER,

vol. 43.

but the complainant insists t4.at the rennet powder made by Chris. Hansen, of Copenhagen, and sold in this country compressed in the form of tablets by the defendants, is the chymosin of the first and third claims of the patent. Inasmuch as the claims are for the product, irrespec.tive of the processes by which it may be made, it is 'unnecessary to consider wlwther, in view of .the prior state of the art, Dr. Blumenthal's process for treating rennet to produce his extract was a new discovery.. lithe product was new it is immaterial whether the process was new or old. As described in the specification, the product of the first claim is a of rennet which separates itself out of a rennet solution from the pepsin and other rennet matters of the solution in the form of white flocculent substance, and is collected on a filter and dried. It is an amorphous, white, gelatinous substance, insipid and odorless, greatly resembling in appeMance hydrate of alumina. It may be kept for years without deterioration, and is not injured by temperatures reaching as high as 35° centigrade. The product of the second claim is the chymosin of the first claim mixed with a neutral preservative, such as an alkali soluble in water or sugar. By the terms of each claim the product is uncombined with pepsin. According to the testimony in the record Dr. Blumenthal conceived the idea that the curdling ferment of rennet could be obtained isolated from all other rennet constituents, and in a dry state;· and in the years 1880 to 1882 he made experiments with a view of obtaining such a product. The patent in suit, and another (No. 388,471) which was granted March 22, 1886, for the processes of making chywosin and pepsin, are the outcome of these experiments. At that time,liesides the rennet prepared in the way which has been mentioned', 'liquid extracts of rennet, prepared by adding boracic acid to the ordhlary'solution, it, had been introduced to some extent among dairymen, and so had powdered fennet made by drying and pulverizing the rennets; 'but both the liquid and powdered rennet were prepared by processes which did not contemplate the sflparation of the chymosin from the pepsin; and mucous and albuminous matters. Like the ordinary: liquid of rennet, they were the extracts of the collected was variable, depending upon gastric juices. Their coagulating the comparative coagulating and foreigl1 constituents of the renners used, and the liquid extracts, by reason of their chemical ingredients, sometimes imparted uoxiousflavors to the cheese. According to Dr. Blumenthal, bef6re his chyniosin was Inade, no pure coagulating ferment for commercial:purposes had ever been made. He testifies, and so do his expert witnesses; that he was the first to make a product isolated from foreign ingredients having the curdling principle alone, in a dry state. In the langua:geof Dr. Bischoff, while pepsin had been separated in an approximately pure form, "chymosin was not krlown as an isolated subswnce; especially not in the form of a dry powder, and as a article." . The only evidence offered by the defl:lndants to controvert the testimony of Dr. Blunienthaland the ·other expert witnesses for the complainant, or to show that'the product described arid claimed in the patent was not a

BLUMENTHAL

669

new article, consists of various publications relating to the subject of rennet and its extracts. Of those the only ones of the slighest value as anticipating references are those which describe Deschamps' process, Hammarsten's process, Scheffer's process, and Soxhlet's process. Deschamps, in treating of "laab" prepared from calf's stomach, speaks of it as containing "a peculiar matter, which the author calls' chymosin, '" and gives a process by which a precipitate is obtained, insoluble in wa... ter unless the water is acidulated, which "curdles milk, though not with the power of the original laab." Hammarsten describes the curdling ferment by the term "lab," and points out that it is very difficult to get a liquid free from pepsin containing lab, while, on the contrary, it is to get a liquid free from lab, but rich in pepsin; and gives tolerably a process of obtaining a liquid free from pepsin in which "a not inconsiderable amount of the lab" remains. Scheffer describes a process' for treating hog rennet to obtain pepsin, and does not offer a hint about the prodllction of chymosin. Soxhlet gives a process for obtaining from a rennet extract a precipitate which consists not of pure ferment, but mainly of mucous, which carries with it the bulk of the ferment, and which "may be utilized to prepare very concentrated rennet extracts for experimental purposes." All these references may be disposed of by the observation that so far as can be collected from them the attempt to extract the pure curdling principle of rennet had not passed the region of laboratory experiment, and the thought of extracting it in the form of a dry ferment capable of commerical use had not originated. It is obvious that such a product as the patent describes will contain a known and unifonncamount of the active curdling principle, free from all the useless or noxious constituents of rennet. As distinguished from the old rennet extracts, whether liquid or powdered, containing more or less of pepsin and other constituents, such a product would be not merely descriptively new but substantially new. The evidence for the complainant to support the charge of infringement consists of a comparison by chemical analysis of the Hansen rennet powder sold by the defendants with the article known as "Dr. Blumenthal's Rennetine." The analysis of the Blumenthal rennetine does not show that'it ischymosin uncombined with pp.psin, or that it has any of the novel characteristics of the chymosin of the patent. The evidence indicates that it is a rennet powder containing but an insignificant proportion of pepsin to chymosin, and but little mucous and albuminous matter. Possibly and probably it is a purer and better rennet extract than had been made for commercial use before the alleged invention of Dr. BlumenthaL But, if the product produced by his process is nothing more than an old extract of rennet in the form of a powder, differing from those previously known only in having more of the curdling principle and less of the useless or deleterious matter, it is not the subject of a valid patent. A patent for a product destitute of properties or characteristics by which it can be identified and distinguished irom an old product, and which rests merely upon the difference in the degree of.excellence between the two, and not in kind, cannot be sustained.

N"''tCho18,21 Wnll. 112;:: 'Wood Paper Patent, 2B ,wan. 56&; p.Woo8t8r v; Oalhoun,l1 Blatchf.215j; ExcelRiOrNeedle 00. v. Union Needle 00l; 28 Blatchf.147, 152, 82 Fed.' Rep. 221; Hatch v. Moffitt;· 15 Fed. Rep. 252. , ' 'The ·testimony' of complainant's expert denotes that· Hansen's rennet .powder is richer in pepsin, imd.'containsmore of the mucous and albuminous' matters, than Blumenthal's rennetil1e. According to the tes,timolly; introduced by the defendants the Hansen product, is made by treating calves' rennets according to the process practiced by Scheffer in treating hogs' stomachs to obtain pepsin, described in the publication which has been referred to. Theil': theory is that, when his process is employed ,in the treatment of hogs? stomachs, a product is obtained which 'is .strbtlgin pepsin, andweak·in chymoRin, and when that process is artll,16yedto treat calves'stomachs, the product is an extract strong in chyinosinandwE'ak in pepsin. In any view of the case the charge of infringement is not establW1ed. The bill is thertllore dismissed.

LEE t1.

UPSON &

HART

Co. et 01.

(Circuit OCY/J,rt, D. Connectf.cut. October 4, 1890.)
PATEN'!:S POR INV1:'N'l'IONS-ANTIOIPA,TION-EVIDBNCm.

The invention described in letters patent No. 865,819, issued July 5,1881, to Horatio Jordan, for improvement in the art of welding the ends of metal tubes. and . consisting in but-welding the ends of tubular metallio blanks, like those theretofore used, is near the dividing line. between the work of an iuventor and of a meohanic; and the eVidence of cutlery manufacturers that they'had but-welded such bllinks before the patentee"s invention being a natural and probable occurrenoe, is sumcient to satisfy the court of the fact of anticipation.

InEquity. . Bill by William W. Lee against the Upson & Hart Company and others, to restrain the defendants; from infringing letters patent No. 865,8J.9; issued July 5; 1887, to Hotatio Jordan,· for improvement in the -art of welding the ends of metaltubes. For former opinion I 800 42 Fed. Rep. 580. Edward S. Beach, for complainant. John P. for defendants. SHIPMAN,J. This is a petition of the plaintiff for a rehearing of the above-entitled cause. The bill was dismissed, upon the ground that the invention desoribed in the patent in suit, known as the " Jordan Patent," -had been anticipated. 42 Fed. Rep. 580. The plaintiff. asks for a ra'hearing on account of the insufficiency of the defendants' testimony up,on this point The case showp.d that the Jeraldsand Lawton blank for 'a hollow knife-handle, which preceded Jordan'8, was a tubular metallic ,blank, having at one end projecting lips which were bent inwardly, edge