Appendix — Minerals Separation, Ltd. v. Hyde

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Petition

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Supreme Court of the United States

MINERALS SEPARATION LIMITED

and MINERALS SEPARATION

AMERICAN SYNDICATE, LIMI-

TED,

Petitioners and Complainants,

against

JAMES M. Hype,

Respondent and Defendant.

PETITION FOR WRIT OF CERTI-

ORARI TO BE ADDRESSED TO THE

JUDGES OF THE UNITED STATES

CIRCUIT COURT OF APPEALS FOR

THE NINTH CIRCUIT.

To the Honorable

THE CHIEF JUSTICE AND ASSOUIATE JUSTICES

OF THE SUPREME COURT OF THE UNITED

STATES.

Your petitioners, Minerals Separation, Limited

and Minerals Separation American Syndicate,

Limited, respectfully show:

Your petitioners are respectively the owner of

and general licensee under United States letters —

patent No. 835,120 to Sulman, Picard and Ballot

of November 6, 1906, for a process of ore concentra-

tion. The defendant James M. Hyde was a former

employe of your petitioners and by them trained in

the process of the patent in suit. The suit is for

infringement of this patent and was brought in the

United States District Court of Montana. The

decree of that Court adjudged the validity of the

patent and infringement thereof and granted an

injunction against the defendant (Rec., pp. 47-49).

The opinion was by Judge Bourquin (Rec., pp.

33-46). The decree was interlocutory in that it di-

rected an accounting of profits and damages, but

an appeal was properly taken to the Circuit Court

of Appeals of the Ninth Circuit, with the result

that the decree of the District Court was reversed

and the dismissal of the Bill ordered (Rec., 1291,

1292). The ground for this reversal was that the

patent was void for the reason that the invention,

although new and useful, involved “a difference of

. degree and not of kind” (Rec., p. 1283).

The process of the patent in suit is known as

the agitation froth process. Essentially it consists

in the violent agitation of a pulp of finely ground

ore and water with a minute quantity of oil, re-

‘ sulting in the production of a mineral froth which

floats upon the surface of the liquid, carrying with

it the valuable metal contained in the ore, while

the gangue or rock particles remain in the liquid.

A small quantity of acid or moderate heat or both

are sometimes additionally employed.

The invention originated in England and was

first patented there, the British patent correspond-

ing to the patent in suit being No. 7803 of 1905

(Ree., pp. 470, 471). The British application was

filed April 12, 1905, and under the provisions of |

the ‘aternational Convention for the protection of

industrial property the application for the patent

in suit was filed in the United States Patent Office

May 29, 1905. Applications for patents for the

same invention were also filed in some twenty-five

countries in different parts of the world in addi-

tion to the United States and Great Britain (Rec.,

p. 443).

‘The moderate use of the invention in Great

Britain and its very extensive use in Australia

were attacked upon the ground of infringement of

prior patents to Elmore for an oil buoyancy pro-

cess of ore concentration, resulting in two litiga-

tions, one terminating in the British House of

Lords in 1909, and the other in the Privy Council

of the British Empire (Lord Chancellor Haldane

presiding) in 1914, wherein it was adjudged that

your petitioners’ agitation froth process was

essentially different from the Elmore process and

did not infringe the Elmore patents, and where-

in several prior patents and.a prior publica-

tion relied upon by the Circuit Court of Ap-

peals for the Ninth Circuit as anticipations of the

patent in suit received the most careful considera-

tion, as will hereinafter appear.

The reasons especially urged for the granting

of this petition, and which will be elaborated be-

low, are summarized as follows:

1st. The decision of the United States Circuit

Xourt of Appeals reversing the judgment of the

United States District Court is at variance with

judgments theretofore rendered by the Privy

Council of the British Empire and by the British

House of Lords respecting the same invention.

2nd. The decision of the United States Circuit

Court of Appeals is in conflict with the decision of

this Court upon a question of law, namely, the

effect of alleged anticipatory inventions where the

prior patents have not been successful and have

not gone into public use, and the later patent

attacked has been successf"] and widely used.

3rd. There is a conflict of adjudication among

different Circuits on a question of law necessarily

involved, namely, the effect of alleged anticipation

by an invention patented subsequent to the origin

of the invention in issue, but upon an application

for patent actually on file but maintained in

secrecy in the Patent Office at the time of the

invention in issue. ~

4th. The rights of British corporations as pat-

entees in the United States are involved and to

that extent questions of international importance

arise.

5th. The questions involved are of gravity and

importance,

I. THE DECISION OF THE UNITED STATES CIRCUIT

CouRT OF APPEALS OF THE NINTH CIRCUIT, WHILE

ADMITTING THE NOVELTY AND UTILITY OF THE PRO-

CESS IN ISSUE, IS AT VARIANCE WITH THE JUDG-

MENTS OF THE PRIVY COUNCIL OF THE BRITISH EM-

PIRE AND OF THE BRITISH HOUSE OF LORDS RELATIVE

TO THE SAME PROCESS AS TO THE CHARACTER AND

EFFECT OF THE ADMITTED NOVELTY OF THAT P#OCESS.

Final judgments, one of the Privy Council and

another of the House of Lords, in complete hiar-

mony with each other and expressing the views f

ten Law Lords of England, viz.: of the Lord

Chancellor, Viscount Haldane, of former Lord

Chancellors Lord Loreburn and the Earl of Hals-

bury, and of Lords Ashbourne, Atkinson, Shaw,

Dunedin,. Parker, Sumner and Parmoor, are in

direct conflict ‘with the decision of the Circuit

Court of Appeals of the Ninth Circuit written by

Judge Gilbert and concurred in by Judges Ross

and Dietrich, both as to matters of law and fact

having material bearing upon the patentability of

the process in suit. The District Court of Mon-

tana (Judge Bourquin) in harmony with the

highest British courts held the patent valid, while

the Circuit Court of Appeals of the Ninth Circuit

has held it to be invalid.

The Privy Council judgment (Ore Concentra-

ton Co. [1905] Ltd. v. Sulphide Corporation, Ltd.,

31 R. P. C., 206, March 6, 1914) is printed in

full in the Transcript of Record herein (Rec.,

pp. 1343-1362). In that case the plaintiffs-appel-

lants, The Ore Concentration Company (1905)

Limited and another were the owners of a New

South Wales (Australian) patent known as

the Elmore patent. The defendant-respondent,

The Sulphide Corporation, Limited, was a li-

censee of Minerals Separation, Limited, one of

the petitioners herein. The process of concen-

trating ores used by the defendant and charged

to be an infringement of the Elmore patent was

the identical agitation froth process forming the

subject matter of the patent in suit herein, No.

835,120, to Sulman, Picard and Ballot, of Novem-

ber 6, 1906. The Privy Council judgment refers

(Rec., p. 1345) to the prior judgment of the Brit-

ish House of Lords, in British Ore Concentration

Syndicate v. Minerals Separation Limited, 27 R.

P. C. 33 (Printed in Appendix hereto). The de-

fendant-appellant in that suit, Minerals Separation

Limited, is one of the petitioners-complainants

here, and the defendant’s process there charged to

be an infringement is the process forming the sub-

ject matter of the patent in suit here, the British

patent No. 7803 of 1905, corresponding with the

patent in suit here, being referred to and quoted

by Lord Shaw (infra, pp. 57-59) as describing the

defendant’s process. The Privy Council judgment

was rendered upon a case different in three speci-

fied particulars (Rec., p. 1345) from the case m

the House of Lords, but these differences did not

relate to the acts of defendant charged as the

infringement.

In the decision of the Circuit Court of Appeals

of the Ninth Circuit it is said:

“When the claims and the description of the

appellees’ patent are compared with the pat-

ents of the prior art, it will be seen that the

only material difference is in the smaller

quantity of oil which the appellees use” (Rec.,

p. 1281. Italics ours).

And further

“To discover that the desired result may

be accomplished with the use of a fraction

of one per cent. of oil when formerly a much

larger quantity of oil had been used, and had

been deemed necessary, is not an invention or

discovery within the meaning of the patent

laws. It is a difference of degree and not of

kind” (Rec., pp. 1282, 1283. Italics ours).

And further

“We hold that to sustain the appellees’ pat-

ent would be to give to the owners thereof a

monopoly of that which others had discovered.

What they claim to be the new and useful

feature of their invention, as stated by their

counsel, is ‘agitating the mixture to cause the

oily coated mineral to form a froth.’ As we

have seen, that feature was clearly anticipated

by the prior art, and when the elements of the

appellees’ claim are read.one by one, it will

be found that each step in their process is

fully described in more than one of the pat-

ents of the prior art, with the single exception

of the reduced quantity of oil which they use.

The patentees of the appellzes’ patent made a

valuable contribution to the art in discovering

the smallest quantity of oil which would pro-

duce the desired result. * * * Their dis-

covery that a small fraction of one per cent.

of oil is sufficient to produce flotation of the

metalliferous matter cannot as we have seen,

be made by itself or in a combination the sub-

ject of a patent. The appellees cannot take

from others the right to use oil economically”

(Rec., pp. 1289, 1290. Italics ours).

In contrast in the Privy Council judgment fi is

said of the respondents’ process there (the process

of the patent in suit here) :

“The real difficulty which their Lordships

have to determine is whether the Respondents

in the process of sevaration which they em-

ploy, entrap or coat and hold or carry the

metallic particles in oil, using oil as the se-

lective agent. The Respondents deny that

they in any wav use the Appellants’ invention,

and say that their process is essentially dis-

tinct, and that its successful operation de-

pends on the law of surface tension. It is

not incumbent on the Respondents to ex-

plain the law on which the success of their

process depends” (Ree., p. 1358).

* * * * we *

“Apart from any question of theory, the

Respondents use oil in their process under

conditions which make it almost impossible to

entrap or coat and hold the metallic particles

by the selective agency of oil. The respond-

ents use a thin oil at a temperature of 120°

Fahr., the quantity is minute, not more than

2 or 3 pounds to a ton of ore, or about 2 or

3 pints of oil to 10,000 pints of water: the

resulting concentrate is practically free from

oil and no mechanical contrivance to separate

the oil from the metallic particles is required

or used; the residue of the first concentration

is further treated without any further addi-

tion of oil” * * * “their Lordships accept

the evidence of Professor Pollock (defendant's

expert) * * * summarized as follows:

Professor Pollock is referred to his earlier evi-

dence, and states that he does not think that

the small quantity of oil introduced in the

Defendants’ process necessarily performs any

other function than permanency in the froth

and extremely minute emulsion. He allows

that there may be oil in excess, and that some

of the particles may get oiled, but states that

this is entirely and absolutely unessential. He

does not however think that more than the

necessary quantity of oil is introduced to

effect concentration, but that having regard

to the nature of the problem it is a matter of

conjecture and exact calculation is not pos-

sible. Finally he reiterates his opinion that

the Defendants’ process can be accounted for

without assuming selection of the metallic

particles by oil” (Rec., pp. 1359, 1360).

In the House of Lords judgment, the Earl of

Halsbury, considering the Elmore patent there in

suit and the prior Everson patent hereinafter re-

ferred to, and contrasting them with the defend-

ant’s process (the process of the patent in suit

here) said:

“My Lords, I am of opinion that the two

inventions are essentially different. I mean.

by the two inventions those which might be

technically described, the one upon. the se-

lective action of oil the other upon surface

tension. That the two processes are in these

respects totally different cannot be denied,

and the acidulation which is supposed to in-

criminate the latter process with infringement

is common to the first process and to another

(Everson) which was invented and patented

before it” (infra p. 46).

In other words, the agitation froth process de-

pends upon the surface tension, the physical law

controlling the production of the agitation froth,

and the Everson and Elmore patents depend upon

the selective action of oil.

Again Lord Shaw said of the defendant’s pro-

cess there (the process of the patent in suit here) :

“they are not promoting a method of separa-

tion which had before been described, but they

are engaged upon a new method of separation.

Instead of relying upon the lesser specific

gravity of oil in bulk they rely upon the pro-

duction of a froth by means of an agitation

which not only assists the process of the min-

ute quantities of oil reaching the minute

particles of metal, but forms a multitude of

air cells, the buoyancy of which air cells, form-

ing round single particles of the metal floats

them to the surface of the liquid” (infra,.

p. 59).

Lord Shaw then gives consideration to the de-

fendants’ process as described in the British pat-

ent corresponding to the patent in suit here, and

then as to the question of infringement by that

process of the Elmore patent ‘says:

“nor do I see my way to hold that there has

been any contravention of the 1901 (Elmore)

patent by the application of the acid to a mix-

ture in which the oil has been reduced from

bulk to the merest fraction, and especially

when froth instead of oil has been secured,

along with the law of capillarity or surface

tension, as the main floating and separating

agent” (infra, p. 60).

Again in the House of Lords decision Lord At-

kinson says of the process of the defendant there

(the process of the patent in suit here) :

“in their process this mysterious affinity of

oil for the metallic particles of the ore is

availed of , yet the oil is used in such relatively

infinitesimal quantities, that the metallic par-

ticles are only coated with a thin film of it,

and the lifting force is found, not in the

natural buoyancy of the mass of added oil, but

in the buoyancy of air bubbles which, intro-

duced into the mixture by the -more or less

violent agitation of it, envelope or become

attached to, the thinly oiled metallic particles,

and raise them to the surface, where they ai

maintained by what is styled the surface ten-

sion of the water” (infra, p. 51).

The House of Lords had before it the British

patent corresponding to the patent in suit and

evidence of the use of the process described there-

in. The Privy Council had before it evidence of

the very extensive use of that process in Australia.

Their views as to the essential characteristics of

that process were reached after the most careful

and exhaustive consideration, and as will be seen

their conclusions are irreconcilable with the opin-

- jon of the Circuit Court of Appeals of the Ninth

Circuit as to the same process.

As to the prior art, there is a marked divergence

of opinion between the three Judges of the Cir-

cuit Court of Appeals of the Ninth Circuit on the

one hand, and the ten Law Lords of England who

participated in the two judgments above referred

to, on the other hand. The Circuit Court of Ap-

peals, after reviewing the patents of the prior art,

including the Haynes British patent No. 488 of

1860 and the Everson United States patent No.

348,157 of 1886 (Rec., p. 1277), held:

“The froths are all similar in appearance,

they all rise to the suriace after the same

amount of agitation, they all gather with

equal efficiency the same quantity of metal,

and all may be removed from the surface in

the same way” (Rec., p. 1285).

In the House of Lords judgment this Everson

patent is repeatedly referred to (the Lord Chan-

cellor, Lord Loreburn, infra, p. 45; Lord Atkin-

son, infra, p. 51; Lord Shaw, infra, p 51; and

by the Earl of Halsbury, in the quotation above

given and the reference to the dilemma put by

Mr. Justice Neville, infra, p. 48, see Justice

Neville’s judgment, High Court of Justice, 25

R. P. C. 741, 756), yet Lord Shaw says that the

process of the defendant there (of the patent in

suit here) is

“a new method of separation” (infra, p. 59),

and then repeatedly quotes, from the Sulman,

Picard and Ballot British patent corresponding to

the patent in suit here, language exactly repeated

in the patent in suit here, evidencing the fact that

the production of a mineral froth by agitation is

eee

the dominant characteristic of this process and

was new.

‘In the Privy Council the full text of the Ever-

son specification was not available, only the claims

having been published in Australia. This is stated

to be the second point of difference between the

House of Lords case and the Privy Council case

(Rec., p. 1345). The disclosure of these claims is

commented upon (Rec., p. 1347), but it is said that

they may be disregarded (Rec., p. 1350). On the

other hand the Criley and Everson publication in

the Engineering & Mining Journal of November

15, 1890, referred to in the decision of the Circuit

Court of Appeals of the Ninth Circuit (Ree., pp.

1285-1286), which had not been pleaded in the

House of Lords case against the particular Elmore

patent finally considered, was carefully considered

in the Privy Council case (Rec., p. 1350) and its

omission from the House cf Lords case stated to

be the third point of difference between that case

and the Privy Council case (Rec., p. 1345). Of

this publication it is said in the Privy Council

judgment:

' “the only information given is that if to a

greased mixture of pulverized metal and rock

you add boiling sulphuric acid in a sufficient

quantity of water in some way a differentia-

tion is effected as between the metal and the

gangue” (Rec. p. 1350).

In contradistinction to this finding of the Privy

Council, the Circuit Court of Appeals of the Ninth

Circuit expressly includes this publication as dis-

closing the production of a mineral froth by agita-

tion, and says the froth in all these processes is

the same except as to the quantity of oil therein,

the agitation is the same, and the efficiency is the

same, as that produted by the agitation froth pro-

cess of the patent in suit (Ree., pp. 1284, 1285).

Again the Haynes British patent of 1860, alsu

expressly included by the Ninth Circuit Court of

Appeals in the prior art processes said to disclose

a similarly efficient agitation froth (Rec., pp. 1284,

1285), is commented upon in the Privy Council

case as follows:

“This document is not more than an indica-

tion of the date at which attention was first

directed to the affinity of oils for metals”

(Réc.; p. 2347).

The divergence of opinion between the British

courts and the Circuit Court of Appeals of the

Ninth Circuit is only partially a difference as to

the facts, since the manner of interpretation of

prior patents ar? Jisciosures is a matter of law.

The diver@irce arises largely from the failure of

the Ninth Circuit Court of Appeals to apply the

proper rules of law in considering the incomplete

and indefinite disclosures of these prior patents

and publication.

The chronological order of the judgments and

decisions in Brifish and American courts as to

petitioners’ agitation froth process is as follows:

1. November 16, 1909. Judgment of House’ of

Lords (the Lord Chancellor, Lord Loreburn; the

Earl of Halsbury, Lords Ashbourne, Atkinson and

Shaw) holding that it is a new method of sepa-

ration, the novelty consisting in the production of

a mineral froth by agitation.

2. July 28, 1913. Decision of Judge Bourquir

of the United States District Court of Montana,

in the present suit (Rec., pp. 33-46) in harmony

with the House of Lords judgment, holding that it

is new, useful and patentable.

3. March 6, 1914. Judgment of Privy Council

of British Empire (the Lord Chancellor, Viscount

Haldane; Lords Dunedin, Parker, Sumner and

Parmoor), in harmony with the House of Lords

judgment, asserting its novelty and characterizing

as indefinite and ineffective two of the identical

prior art disclosures relied upon by the Circuit

Court of Appeals of the Ninth Circuit as antici-

pative.

4. May 4, 1914. Decision of the Circuit Court

of Appeals of the Ninth Circuit, in agreement with

Judge Bourquin’s decision as to novelty and util-

ity, but reversing him as to patentability, and in

conflict with all of the prior judgments as to the

essential character and results of the admitted

novelty of petitioners’ agitation froth process.

As the Privy Council judgment was rendered

after the argument in the Circuit Court of Appeals

(on February 19 and 20, 1914), it was called to the

attention of the Judges of the Ninth Circuit in a

Petition for Rehearing (Rec., pp. 1293-1342) and

was annexed to that petition as additional au-

thority, and is therefore included in the Transcript

of Record filed in this Court (Rec., pp. 1343-

1362). This petition was denied on July 6, 1914

(Rec., p. 1363).

II. THE PROCESS OF THE PATENT IN SUIT 18 ONE

OF WORLD WIDE USE, WHICH HAS RECOVERED, LARGE-

LY FROM WASTE MATERIAL, GREAT TONNAGES OF

VALUABLE METAL AT A PROFIT OF MANY MILLIONS

OF DOLLARS.

Judge Bourquin, in his decision, says of all the

prior disclosures relied upon for anticipation :

“There is little evidence of practical use

of any of these prior processes, and no sub-

stantial evidence that any substantial com-

mercial success has accrued to anv of them,

or that any of them has had any considerable

continuous successful operation. Some have

operated commercially with some small sue-

cess, and some are long since abandoned as

impracticable, experiments, failures” (Rec.,

p. 37).

And of the process of the patent in suit, Judge

Bourquin says:

“Complainants’ process has, in substance

displaced some of the prior, and has firmly

established itself as a new and valuable meth-

od of ore reduction. The evidence shows

many and large plants thereof, built or build-

ing, in widely separated parts of the world.

Its successful operations, practically from

discovery, have recovered, and largely from

waste and tailings, values aggregating near

$9,000.000 and at a profit of near $4,000,000

to the patent owner and its licensees” (Rec.,

pp. 37 38).

In the decision of the Circuit Court of Appeals

of the Ninth Circuit it is said:

“The decision of the Court below appears to

have been largely influenced by the considera-

tion that the appellees’ patent had gone into

extensive and successful use” (Rec., p. 1287).

And it is further said:

“The appellees’ process, originally patented

in Great Britain, has been installed in

Australia, Sweden, Finland, Chile and Wales,

and is in process of installation in Cuba”

(Ree., p. 1287).

It may be added that the record shows that all

the widespread uses above referred to were under

license from your petitioner, Minerals Separation,

Limited, thereby involving recognition in these

countries of the validity of patents of your peti-

tioner, Minerals Separation, Limited, correspond-

ing to the patent in suit here. It appears that the

invention in issue has been patented in twenty-

six countries in all, in Europe, Asia, Africa,

Australia and the Americas (Rec., p. 776). As to

the further enormous growth in the use of the

invention throughout the world generally and this

country, in particular, since the testimony on this

point was closed in London more than two years

ago, there is no evidence in the record.

We have above set forth particulars wherein the

decision of the Circuit Court of Appeals of the

Ninth Circuit and the judgments of the British

courts are in conflict. In the evidence in the pres-

ent suit and in the decision of Judge Bourquin

appealed from it very fully appears that the nov-

elty of the agitation froth process is novelty in

kind and not in we Judge Bourquin says:

“The process in suit is so clearly new that

no exhaustive discussion of facts, cases or law

is necessary to distinguish it from other pro-

cesses or to demonstrate its novelty. The pat-

entees herein discovered a new, cheap, simple,

practical and useful way or process to combine

oil and air, and, by agitation, to float and se-

cure the metallic contents in ore concentra-

tion” (Ree., p. 42).

It appears in the evidence and is in fact stated

in the opinion of the Circuit Court of Appeals that

Petitioners’ inventors were the first to employ oil

in the minute quantity specified in conjunction

with vigorous agitation of the pulp, and the first

to discover the remarkable result that ‘followed.

It appears also in the evidence that this dis-

covery was made in the course of a series of ex-

periments in which the conditions, including the

quantity of oil employed, were progressively varied.

The Circuit Court of Appeals held that while

this discovery was a valuable contribution to the

art, it was merely a discovery of the smallest quan-

tity of oil which would produce an old result and

that the patent was merely an attempted monopoly

of the right to use oil economically in an old

process, :

It is, however, mathematically demonstrated in

the evidence (and is not contradicted) that the

separation and flotation of the valuable metal

could not be accounted for on the theory or by

the. mode of operation of the prior oil flotation

processes. The quantity of oil present was far be-

low the quantity necessary for that sort of opera-

tion.

It appears too in the evidence (and is not con-

tradicted) that when in the series of experiments

referred to a certain point was reached in reduc-

tion of the quantity of oil—a point where the

quantity of oil was already minute—the nature of

the result began suddenly and quickly to change.

and whereas reductions of the quantity of oil

above that point produced progressively poorer re-

sults, continued reduction of the now minute

quantity of oil below that point, produced a rapid-

ly improving result, both unexpected and startling,

accompanied by a wholly novel froth phenomenon,

until the point specified in the patent was reached,

when a maximum effect was produced (Rec., pp.

895-898 ; p. 356).

It appears also in the evidence that these phe-

nomena, inexplicable as they were on the theory

and mode of operation of the prior oil selection

and flotation processes, demonstrated that a new

principle and mode of operation had been intro-

duced.

It also appears in the evidence that the new re-

sults were so superior to anything ever before pro-

duced by any process of the prior art that the new

process succeeded where they had failed, and has

been extensively introduced in commerce all over

the world where they have not been.

The Circuit Court of Appeals held that the sole

advantage of the discovery was in the saving of oil.

It appears in the record, however, that the benefit

of the discovery was in the recovery of millions of

dollars worth of precious and semi-precious metals

from dumps and low grade ores, and from slimes

formerly wasted, where such recovery had not been

previously attempted because no practical process

to that end was known.

It appears in the evidence that the prior oil pro-

cesses had failed, not because of the price of oil,

but because the wrong principle and mode: of opera-

tion had been invoked, and because the discovery

which petitioners’ inventors have since made had

not then been made—the discovery of the right

principle and mode of operation and of the way

to induce it and to utilize it.

It appears in the evidence, just as it appears in

the judgments of the British courts, that the reduc-

tion of the quantity of oil to the minuteness speci-

fied in the patent, in conjunction with the vigorous

action specified, induced a new and different prin-

ciple and mede of operation, and produced a new

and different result.

The following is quoted from the evidence of the

eminent metallurgist and chemist, Dr. Charles F.

Chandler :—

“The process of the patent in suit is-a new

process, not disclosed in any or all of the docu-

ments referred to by complainants or defend-

ants as prior documents. It was to me a most

surprising process. After studving all these

prior documents my surprise is not diminished

that such a process is possible. There is noth-

ing like it disclosed in the prior art and the

failures of other inventors tended to discour-

age rather than encourage the hope that the

economical concentration of ores was capable

of realization in a process utilizing the affinity

of oil for metallic substances” (Ree... Chandler,

pp. 776, 777).

It further appears in the testimony of another

eminent scientist, Dr. Adolf Liebmann, of London,

that the process of the patent in suit “produces: a

result which was never obtained before” (Rec., p.

510), that it is “an entirely novel;-ingenious and,

unexpected process” (Rec., p. 509), that the froth

is of a “very peculiar character * * * consisting

of air bubbles, which in their covering film have

the minerals embedded in such manner that they

form a complete surface all over the air bubbles,”

that though “the very light and easily destructible

air bubbles are covered with a heavy mineral, yet

the froth is stable and utterly different, so far as

this property is concerned, from any froth known

to me”; that “the froth has a long life * * * is

permanent, at least as far as metallurgical opera-

tions are concerned,” that “the difference between

the previous processes and the process of the pat-

ent in suit, is the difference between failure and

success,” that “the simplicity of the operation as

compared with the prior attempts is startling”

(Rec., p. 510).

In both of the English cases the very question of

law and fact at issue (and on which the question

of infringement turned) was whether the novel

procedure of petitioners’ inventors, involving, as it

did, the employment of a minute and almost in-

finitesimal quantity of oil in conjunction with vig-

orous agitation, introduced a substantially new

mode of operation and produced a substantially

new result when compared with the prior Elmore

processes in which a relatively large and substan-

tial quantity of oil was employed.

Similarly in the case before the Circuit Court of

Appeals the very question at issue (on which the

question of patentability necessarily turned) was

whether the novel procedure of pecitioners’ inven-

tors, involving, as it did, the empioyment of a min-

ute and néarly infinitesimal quantity of oil in con-

junction with vigorous agitation, introduced a sub-

stantially new mode of operation and produced a

‘ gubstantially new result when compared with the

oil processes of the prior art, in all of which a

relatively large and substantial quantity of oil

was employed.

Thus the issue of patentability here and the

issue of infringement in the British cases both turn

upon the same identical issue of law and fact, and

on that issue the decision of the Circuit Court of

Appeals is directly contrary to both of the British

judgments.

The Circuit Court of Appeals and your peti-

tioners’ home courts agree that a discovery and

a valuable and important contribution to the

practical art have been made, but they are at

variance as to the principle and mode of opera:

tion involved in the novel procedure.

It is both because a valuabie and important con-

tribution has been made to the practical art, and

because the variance as to its real nature has

arisen between the Courts of Appeals of England

and of this country, that the petitioners respect- .

fully urge that they be accorded the judgment of

this Court on that question.

III. THE DECISION OF THE UNITED STATES Cir

CUIT COURT OF APPEALS OF THE NINTH CIRCUIT IS

CONTRARY TO THE DECISIONS OF THIS COURT AS TO

THE LEGAL EFFECT TO BE GIVEN TO THE FACT THAT

THE INVENTION OF THE PATENT IN SUIT HAS BEEN

SUCCESSFUL AND HAS GONE INTO LARGE PUBLIC USE

WHILE THE ALLEGED ANTICIPATORY INVENTIONS OF

PRIOR PATENTS HAVE NOT BEEN SUCCFSSFUL AND

HAVE NOT GONE INTO PUBLIC USB,

Thus the Circuit Court of Appeals, speaking of

one of the prior patents—the prior patent which

Judge Bourquin characterized as the closest ap-

proximation in the art to the patent in suit—says:

“but the appellees say that the Froment pat-

ent is a paper patent, and that therefore it is

to be disregarded. A paper patent if it fully

describes an invention, whether it be a ma-

chine, device or process, is just as effective

to show anticipation as a patent which de-

scribed an invention which has gone into ex-

tensive use, for a presumption of operative-

ness and of some utility attends the grant-

ing of letters patent’ (Rec., p. 1282. Italics

ours).

Numerous cases are then cited which undoubted-

ly are authority forthe statement that a prior

paper patent which fully describes an invention is

an anticipation. But the Circuit Court of Appeals

of the Ninth Circuit states that none of the prior

patents fully describes the invention, that there is

a “material difference” in the “smaller quantity of

oil which the appellees’ use.” And again, they

. find as a matter of fact that every step of plain-

tiffs’ process is disclosed “with the single exception

of the reduced quantity of oil which they use.” It

was, therefore, an error of law for the Circuit

Court of Appeals to apply to alleged anticipatory

patents which do not in fact fully describe the in-

vention in suit a principle of decision properly

applicable only where the alleged anticipatory

patent ‘fully describes” the invention in. question.

It was further error of law for the Circuit

Court of Appeals to disregard as immaterial on the

question of patentability the fact that plaintiffs’

process was a success where prior processes failed,

and went into large and extensive commercial use

where they did not, the fact being admitted and

found that the plaintiffs’ process differed in some

of its steps, to wit, in the matter of the minute

quantity of oil employed in conjunction with the

vigorous agitation employed, from any and every

process of the prior art.

It appeared in the evidence and was found by

Judge Bourquin, and the finding was not ques-

tioned by the Circuit Court of Appeals, that the

prior processes failed where the process of the pat-

ent in suit has succeeded, and under the decisions

of this Court that fact should have been considered

by the Circuit Court of Appeals and given weight

as tending to show that the departure the patentees

made in their procedure from the processes dis-

closed in the prior art were not obvious but in-

volved patentable invention.

It has been uniformly held by this Court that

where an invention has been successful and has

gone into large public use and where the alleged

anticipatory inventions of prior patents have not

been successful and have not gone into public use,

that a presumption of patentability arises, and

that where there is a material difference, as has

been held to exist by the Circuit Court of Ap-

peals in the present case, that difference being tic

step from failure to success, the invention is pat-

entable.

Barbed Wire Patent, 148 U. 8., 275, 282,

283.

Diamond Rubber Tire Co. v. Consolidated

Rubber Tire Co., 220 U. 8., 428, 435.

‘Carnegie Steel Co. v. Cambria Iron Co.,

185 U. S., 4038.

IV. THIS SUIT INVOLVES THE QUESTION OF AN-

TICIPATION BY AN INVENTION PATENTED SUBSEQUENT

TO THE ORIGIN OF THE INVENTION IN ISsU¥F ON AN

APPLICATION FOR A PATENT ACTUALLY ON FILE BUT

MAINTAINED IN SECRECY IN THE PATENT OFFICE

AT THE TIME OF THE INVENTION IN ISSUE. THERE IS

A CONFLICT OF ADJUDICATION AMONG THE DIFFERENT

CIRCUITS AS TO THIS QUESTION.

The two later patents held by the Circuit Court

of Appeals of the Ninth Circuit to be anticipative,

are the patent to Schwarz, a domestic inventor,

granted December, 1905, and the patent to Kirby,

a resident of Canada, granted January, 1906. The

application for the patent in suit was filed in the

United States Patent Office on May 29, 1905.

The Circuit Court of Appeals of the Ninth Cir-

cuit includes these two patents in the patonts

“which are adverted to as showing the prior art”

(Ree., p. 1277) introducing these particular pat-

ents as follows:

“The Schwarz United States patent No.

807,503, applied for in May, 1904, and granted

in December, 1905” (Ree., p. 1278).

“The United States patent to Kirby, No.

809,959, was applied for December 14, 1905,

and granted January 16, 1906” (Ree., p.

1278).

Thereafter these patents are treated as prior art

and are held to anticipate the invention of the

patent in suit in disclosing the production of a

similarly efficient mineral froth, but by the em-

ployment of greater quantities of oil, the Court

holding that it did not involve invention to reduce

the quantity of oil to a minute proportion—“:

small fraction of one per cent.” (Ree., p. 1290).

To thus treat later patents is in conflict with

the decision of this Court in Bates vy. Coe, 98 U.

S., 31, and with the decisions in the Circuit Court

of Appeals of the Second Circuit, an example of

which is Vacuum Engineering Co. v. Dunn, 209

Fed., 219. It is however consistent with decisions

of the Circuit Court of Appeals of the Sixth Cir-

cuit, such as Dreiwson vy. Hartje Paper Mfg. Co.,

131 Fed. 734 and Electric Controller Co. v. West-

inghouse Mfg. Co., 171 Fed., 83. The conflict of

adjudication betireen the Circuit Courts of Appeals

of the Ninth Circuit in the present suit and the

Sixth Circuit in the cases referred to, on the one

hand, and the Second Circuit, as for example ia

the case referred to, on the other hand, is squarely

presented in the present suit. It is true that at the

argument in the Ninth Circuit Court of Appeals

your petitioners did not raise this question, but re-

ferred to the conflict of authorities and asked an

adjudication on the difference in subject matter

between the disclosures of these patents and the

invention in issue. There was no waiver of the

right of your petitioners to raise that question

in this Court, and the Circuit Court of Appeals

evidently decided the question as one which it

had a right to decide in harmony with the above

decisions of the Circuit Court of Appeals of

the Sixth Circuit, which were cited in defendant-

appellants brief on this question. The question is

one of great importance in the adjudication of the

patent laws, and an authoritative finding by this

Court would prevent much future uncertainty and

conflict among the circuit courts of appeal.

Your petitioners are advised and believe and

therefore assert that the decree of the Circuit

; 24

Court of Appeals for the Ninth Circuit herein is

erroneous and that the matters and questions in-

volved in said decision are of such grave and

general importance that this Honorable Court

should require the said cause to be certified to it

for its review and determination, in conformity

with the provisions of the Act of Congress in such

cases made and provided.

WHEREFORE because of the gravity and im-

portance of the questions involved and in the in-

terest of uniformity of decision, your petitioners

respectfully pray that a writ of certiorari may be

issued out of and under the seal of this Court, di-

rected to the Judges of the United States Circuit

Court of Appeals for the Ninth Circuit command-

ing them and each of them to certify and send to

this Court on a day certain to be therein desig-

nated, a full and complete transcript of the record

and of the proceedings of the said Circuit Court of

Appeals in the case lately depending thereon en-

titled “James M. Hyde, Appellant, versus Minerals

Separation, Limited, and Minerals Separation Am-

erican Syndicate, Limited, Appellees, No. 2346,” to

the end that the decree of said Circuit Court of

Appeals in said case may be reviewed as provided

in Section 6 of the Act of Congress entitled “An

Act to establish Circuit Courts of Appeals and to

define and regulate in certain cases the jurisdiction

of the Courts of the United States, and for other

purposes,” approved March 3, 1891, and that your

petitioners may have such other and further re-

lief or remedy in the premises as to this Court may

seem appropriate and in conformity with the said

Act and that the said decree of the said Circuit

Court of Appeals in the said case, and every part

thereof, may be reversed by this Honorable Court.

And your petitioners will ever pray.

Minerals Separation, Limited,

By S. Greeory,

Director.

Minerals Separation American

Syndicate, Limited,

By 8S. Gregory,

Director.

Henry D. WILLIAMS,

Wa. Houston KENYON,

FrReDERIC D. MCKENNEY,

JOHN H. MILLER,

ODELL W. McConNELL,

Counsel for Petitioners.

State of New York,/ ams

County of New York, | ~~

HENRY D. WILLIAMS being duly sworn says

that he is of counsel for the petitioners Minerals

Separation, Limited, and Minerals Separation Am-

erican Syndicate, Limited; that he has read over

the foregoing and annexed petition and knows well

the contents thereof, and that he has also carefully

read and studied a duly certified copy of the trans-

script of record under the seal of the United States

Circuit Court of Appeals for the Ninth Cireuit in

the case of James M. Hyde, Appellant and De-

fendant, versus Minerals Separation, Limited, and

Minerals Separation American Syndicate, Limited,

Plaintiffs and Appellees; that the matters of fact

stated in said petition are fully supported in and

by said transcript of record and are true to the

best of his knowledge, information and belief.

Subscribed and sworn to before me}

this 30th day of September, 1914. {

HENRY D. WILLIAMS.

Harry C. Lewis,

Notary Public,

(Seal) Bronx Co. No. 36.

Certificate filed in New York County No. 88.

In our opinion the foregoing and annexed peti-

tion for certiorari is well founded in law.

HENRY D. WILLIAMS,

WM. HOUSTON KENYON,

FREDERIC D. McKENNEY,

JOHN H. MILLER,

ODELL W. McCONNELL.

SUPREME COURT OF THE UNITED STATES.

MINERALS SEPARATION, LIMITED and MIN-

ERALS SEPARATION AMERICAN SYN-

DICATE, LIMITED,

Petitoners and Complainants,

against

JAMES M .HYDE,

Respondent and Defendait.

Brief in Support of Petition for Writ

of Certiorari.

The present suit involves the validity of the

United States patent for an invention which is un-

doubtedly one of the most important inventions in

the metallurgical arts, which is widely patented

and widely used, the patent for which is shown to

be respected in Great Britain, Australia, Russia,

Sweden, Chile and Cuba and is in fact unchal-

lenged in all the twenty-six countries in which

it is patented except in the United States. The

decision of the Ninth Cireuit Court of Appeals

holding the invention to be anticipgted and un-

patentable is in conflict with a judgment of the

House of Lords of England and a judgment of the

Privy Council of the British Empire wherein the

same invention and important patents of the prior

art received careful consideration. It is submitted

that this court should cail before it a suit involv-

ing an invention of such world wide importance,

and not permit the United States patent for such

an invention to be destroyed by the adverse judg-

ment of the Ninth Circuit Court of Appeals in con-

flict with the highest courts of Britain and the

British Empire, and also, it may be added, in

conflict with the decision of the trial court from

which the appeal was taken, as to essential mat-

ters of fact as well as law.

The invention is essentially simple. The ore is

ground to powder, mixed with a considerable

amount of water to form a freely flowing pulp, a

frothing agent, oil in this instance, added, in such

minute quantity as to amount to one-tenth of one

per cent. of the ore, two pounds to the ton of ore

and four tons of water, the mixture is violently

agitated, and then run into settling vessels or spitz-

kasten, and a froth rises to the surface carrying

the valuable mineral particles, while the worthless

rock or gangue particles settle in the liquid. This

mineral froth, inches thick upon the surface of the

liquid, is composed of air bubbles armored with

metallic particles, and when this froth is floated off

it is found to contain very nearly all the metallic

content of the ore. The heavier metal particles

have been floated to the surface. The lighter

gangue or rock particles have sunk to the bottom.

Gravity has been reversed by the new phenomenon

of the agitation froth. The process has been and

is largely used in the concentration of copper,

lead and zine ores, and millions of dollars worth

of valuable metal have been and are being recov-

ered by this process, largely from dumps and waste

products, for the benefit of mankind.

It is submitted that the present suit presents a

question such as this Court should take cognizance

of. The good faith of our country is involved.

The owners of the patent are British companies,

of London, England. They have gone to great ex-

pense in the introduction of the invention. As the

Ninth Circuit Court of Appeals says:

“Tt is in evidence that in’ making the pro-

cess known to the public in the United States

the appellees have expended $60,187" (Ree., p.

1288).

And this, it may be added, does not include any of

the expenses of litigation (Rec., p. 840), nor does

it include any of the expense of the long period

of research which culminated in the invention, and

of the further development of the invention abroad

and perfection of apparatus for its use, involving

roughly half a million dollars.

In Westinghouse v. Wagner, 225 U. S., 604, 614,

this Court said:

“The writ was issued in view of the holding

that, though the Master found that the defend-

ant had made a profit of $132,000 from the

sale of infringing transformers, the plaintiff

could vet only recover $1, because it failed to

separate the profits made by its patents from

those made by the defendant’s addition.”

Here petitioners’ inventors have discovered and

disclosed, to the profit of the defendant and the

metal industry of the entire world to the extent of

many million dollars, a process which the Circuit

Court of Appeals of the Ninth Circuit admits was

novel and so useful that it has “gone into extensive

and successful use” and vet denies to it the benefit

of the patent laws of this country on the ground

that this admitted novelty introduced no iew mode

of operation and effected no new result in kind, as

to which simple issue of law and fact the highest

courts of the British Empire have reached the

contrary conclusion. Again we have British sub-

jects who have invested a half million dollars

in an invention in reliance upon the integrity

of the patent systems of the United States and

other countries, whose patent in the United States

will be destroyed, upon assumptions widely variant

from the conclusions of the home courts of the liti-

gants, if this petition be not granted. It may be

noted that the Ninth Circuit includes nearly all of

the rich mineral part. of our country.

It is submitted that the general statement of this

Court as to the reasons controlling its exercise of

the writ of certiorari is applicable here. Such

writs are to be issued

“only when the circumstances of the case sat-

isfy us that the importance of the question in-

volved the necessity of avoiding a conflict be-

tween two or more courts of appeal, or be-

tween courts of appeal and courts of a state,

or some matter affecting the interests of this

nation in its internal or external relations, de-

mands such exercise” (Forsyth v. Hammond,

166 U. S., 506, 514, 515).

Conflict exists between courts of appeals in this

country and in Great Britain as to the principle

and operation involved in the process in issue and

as to the legal effect of prior disclosures. Conflict

also exists between Circuit Courts of Appeal in

this country as to the effect of an application for

a patent filed in the Patent Office and maintained

in secrecy therein until the issuance of the patent,

such issuance being at a date too late to constitute

an anticipation.

This Court has held that the statutes do not

warrant treating such an invention as anticipative,

but the holding was limited to the particular de-

fense of prior patenting. The controlling decision

is Bates v. Coe, 98 U. S., 31. There the second de-

fense was

“That the improvement had been ‘patented

or described in some printed publication prior

to the supposed invention.”

Mr. Justice Clifford says (p. 33) :

“Evidence to sustain the second defense is

sufficient if the patent introduced for the pur-

pose, whether foreign or domestic. was duly

issued or the complete description of the in-

vention was published in some printed publi-

cation prior to the patented invention in suit;

and the patent offered in evidence or the

printed publication will be held to be prior,

if it is of prior date to the patent in suit, un-

less the patent in suit is accompanied by the

application for the same, or unless the com-

plainant introduces varol proof to show that

his invention was actually made prior to the

date of the patent, or prior to the time the

application was filed.

“Neither the defendant in an action at law

nor a respondent in an eauitv suit can be

permitted to prove that the invention de-

scribed in the prior patent. or the invention

described in the printed publication was

made prior to the date of such patent or

printed publication, for the reason that the

patent or publication can only have the effect

as evidence that is given to the same by the

Act of Congress. Unlike that, the presump-

tion in respect to the invention described in

the patent in suit, if it is accompanied by the

application for the same, is that it was made

at the time the application was filed; and the

complainant or plaintiff mav, if he can, intro-

duce proof to show that it was made at a much

earlier date.”

In Drewson v. Hartje Paper Mfg. Co., 131 Fed.,

734, C. CL A,, Gth Circuit, it appears that a certain

patent to Symons was pleaded in the answer as an

anticipation, whereas it was not issued until Sep-

tember 3, 1895, after the filing on June 12, 1895,

of the application for the Drewson patent in suit.

The Court said:

“Symons applied for his patent January 17,

1905, several months before the date of the

filing of the Drewson application. The date

of the first application, in the absence of any

other evidence of the date of an invention,

must be taken as establishing the date of the

first invention. It follows, therefore, that the

patent to Symons not only has the earlier is-

sue date, but prima facie covers the earlier in-

vention, and was therefore entitled to be re-

garded as an anticipating patent” (p. 739).

This contravenes the doctrine of Bates v. Coe,

supra.

In Electric Controller Co. v. Westinghouse Co.,

171 Fed., 83, C. C. A., 6th Circuit, Drewson y.

Hartje Paper Mfg. Co. was cited and followed and

consideration was given to two patents issued after

the filing of the application for the patent in suit,

by reason of the fact that the applications for

these patents were filed prior to the filing of the

application for the patent in suit, although it was

held after full consideration, that these patents did

not in subject matter anticipate the invention of

the patent in suit.

These two cases in the Sixth Circuit were cited

by defendant-appellant in the present suit as au-

thority for a consideration of the two later patents

of Schwarz and Kirby as anticipations of the in-

vention in issue, and the Circuit Court of Appeals

of the Ninth Circuit, without reference to any au-

thorities, rendered its decision in harmony with

these cases in the Sixth Circuit, holding that these

two patents were prior art.

Opposed to these decisions are numerous deci-

sions ii the Second, the Third and the Eighth Cir:

cuits, but a prominent example, particularly ap-

plicable to the present suit by reason of the fact

that Kirby was a resident of Canada, is Vacuum

Engineering Co. v. Dunn, 209 Fed., 219, C. C. A.,

2nd Circuit. Here an alleged anticipating patent

to a foreigner, Schiodt, was granted, after the fil-

ing of the application for the Locke and Dunn pat-

ent in suit, on an application filed earlier than the

earliest proved date of the origin of the Locke and

Dunn invention. The Court said:

“Under section 4923, U. S. R. S., Locke and

Dunn, original inventors, could not be de-

feated by knowledge of the invention in a for-

eign country, when not patented or published

there. It makes no difference that the person

in the foreign country having such knowledge

was also an inventor. Appellant seeks to

avoid the statute on the theory that the for-

eign inventor ‘gave the American public a

knowledge of his invention through the Pat-

ent Office’ when he filed his application. But

in reality by that act he gave the American

public nothing. His application was confiden-

tial; the public could not see it or be informed

of its contents until patent issued upon it.

Before that date came Locke and Dunn with

their application. Under these circumstances

we do not see how the Schiodt patent can be

considered ‘prior art.’ See our opinion in

Westinghouse Mfq. Co. vy. General Electric

Co., 207 Fed., 75.”

It may be noted that in the case above quoted

the defendant was estopped from attacking the

validity of the patent, and could only show that

the claims were of limited scope by reason of the

limitations imposed by the prior art. This does

not affect the reasoning of the decision, however,

as appears in the prior case in the Second Circuit

Court of Appeals cited as express authority. In

this case, Westinghouse Mfg. Co. v. General Elcc-

tric Co., 207 Fed., 75, prior to the earliest proved

date of an invention by Armstrong, an invention

was made abroad by De Kando and reduced to

successful practice abroad, and an eminent Ameri-

can electrician went abroad, had the invention

fully explained to him, inspected its operation,

came back to America with this knowledge and a

full and elaborate description of the invention,

made a written report of the invention shortly

after his arrival here, at various times explained

the invention here to electrical engineers of stand-

ing, and gave a public explanation of the inven-

tion at a meeting of the American Institute of

Electrical Engineers. All this happened before

the earliest acceptable date of origin of the Arm-

strong invention, to wit, the date of filing of the

Armstrong application. De Kando subsequently

filed an application for a patent. The two appli-

cants claimed the same invention and contended

in the Patent Office for identical claims. A patent

was refused upon the ground that Armstrong was

the first inventor. The Court of Appeals of the

District of Columbia affirmed this judgment (De

Kando vy. Armstrong, 37 App. D. C. 314). The

Circuit Court of Appeals of the Second Circuit

accepted the findings of fact and law of the Dis-

trict Court of Appeals and said:

“Reduction to practice in a foreign country

can never operate to destroy a vatent applied

for here, however widely known such reduc-

tion to practice may be, either among foreign-

ers or among versons living here, unless the

invention be patented or described in a

printed publication.”

And in Vacuum Enginecring Co. Vv. Dunn, supra,

the same principle was carried further and it was

held that the filing of an application for a patent

in this country for the invention of a foreigner

could not operate to modify or destroy a patent

applied for here, even though that application sub-

sequently resulted in the grant of a patent prior

to the grant of the patent in issue.

As to the legal effect to be given to the fact that

prior processes were unsuccessful and had not gone

into use and the process of the patent in suit was

successful and largely used, coupled with the fact

that there was a material difference between the

unsuccessful prior processes and the successful

process of the patent in suit, the Circuit Court of

Appeals of the Ninth Circuit has erred in applying

to a case of different prior disclosure the rules of

law applicable only to a case of the same prior dis-

closure. Obviously where the prior disclosure is

the same and is full, complete, definite and clearly

comprehensive, the fact that no use was made of

this prior disclosure is not important. On the

other hand where the prior disclosure required al-

teration, a strong presumption arises from the fact

that no use has been made of this prior disclosure,

of the patentability of the invention which has

been successfully and largely used. In Carnegie

Steel Co. v. Cambria Iron Co., 185 U. S., 403, this

Court gave consideration to a somewhat similar

case. This Court, speaking through Mr. Justice

Brown, said of a defence at pages 421, 422:

“This defence presents the common instance

of a patent which attracted no attention, and

was commercially a failure, being set up as an

anticipation of a subsequent patent. which has

proved a success, because there appears to be

in the mechanism described a possibility of its

having been, with some alterations adaptable

to the process thereafter discovered. As here-

inafter observed, a process patent can only

be anticipated by a similar process.”

Again as to all supposed anticipatory devices

this Court said at page 424:

“Granting that some of these devices may

have been made use of to carry out the Jones

process, none of them in practical operations

seems to have been effective to secure the de-

sired result. A process patent, such as that of

Jones, is not anticinated by mechanism which

might with slight alterations have been adap-

ted to carry out that process, unless, at least,

such use of it would have .occurred to one

whose dutv it was to make practical use of the

mechanism described. In other words, a pro-

cess patent can only be anticipated by a simi-

lar process.”

Consideration is then. given to the things essen-

tial to carrying out the Jones process in suit, and

it was said at page 425:

“None of the prior patents or processes to

which we are referred meets these require-

ments. Indeed, it is scarcely too much to say

that none meets more than one of them. When

we add to this that none of them was ever

used, or was ever susceptible of being used,

without material alteration to carry out the

Jones process, it is evident that the defense

of anticipation bv prior patents rests upon a

slender foundation.”

So in the present suit the Circuit Court of Ap-

peals of the Ninth Circuit said that the reduction

of the quantity of oil to a small fraction of one

per cent. was not disclosed in any of the prior pat-

ents, and the evidence clearly shows that none of

the processes on which the Court relies for antici-

pation was ever used or was ever susceptible of

being used.

In conclusion as to prior devices and disclosures

this Court said in Carnegie Steel Co. v. Cambria

Tron Co., supra, at page 446:

“The surprise is that the manufacturers of

steel, having felt the want for so many vears,

should never have discovered from the multi-

plicity of patents and of processes introduced

into this suit, and well known to the manu-

facturers of steel that it was but a step from

what they already knew to that which they

had spent years in endeavoring to find out. It

only remains now for the wisdom which comes

after the fact to teach us that Jones dis-

covered nothing.”

and then cited the decision of this Court in Loom

Co. Vv. Higgins, 105 U. S., 580, 591, from which the

following quotation is made:

“But it is plain from the evidence, and

from the very fact that it was not sooner

adapted and used, that it did not for years

occur in this light to even the most skilful per-

sons. It mav have been under their very eyes,

they may almost be said to have stumbled over

it; but they certainly failed to see it, to esti-

mate its value, and to bring it into notice

* * * * Now that it has succeeded, it may

seem very plain to any one that he could have

done it as well. This is often the case with

inventions of the greatest merit. It may be

laid down as a general rule, though perhaps

not an invariable one, that if a new combina-

tion or arrangement of known elements pro-

duces a new and beneficial result never at-

tained before, it is evidence of invention.”

It may also be noted that the two cases above

cited and quoted and other decisions of this Court

were considered and cited by Judge Bourquin in

the decision from which appeal was taken to the

Circuit Court of Appeals of the Ninth Circuit

(Ree., p. 41). Judge Bourquin’s presentation there

of the decisions of this Court can hardly be im-

proved upon, and his quotation (Ree., p. 42) from

the case of Diamond Rubber Tire Co. v. Consoli-

dated Rubber Tire Co., 220 U. 8., 428, 435, is here

repeated :

“Knowledge after the event is always easy.

* * * * But the law has other tests of the

invention than subtle conjectures of what

might have been and yet. was not.”

Upon the case made out in the petition it is re-

spectfully submitted that the writ of certiorari ad-

dressed to the Judges of the United States Circuit

Court of Appeals of the Ninth Circuit shoul be

issued as prayed.

HENRY D. WILLIAMS,

WM. HOUSTON KENYON,

FREDERIC D. McKENNEY,

JOHN H. MILLER,

ODELL W. McCONNELL,

Counsel for Petitioners.

Notice.

To THOMAS F. SHERIDAN,

WALTER A. Scorrt,

J. BRucE KREMER,

Counsel for James M. Hyde.

Gentlemen:

Will you please take notice that on Monday the

26th day of October, 1914, at 12 o’clock noon, or

as soon thereafter as counsel may be heard, the

foregoing petition and accompanying brief will be

submitted to the Supreme Court of the United

States at its usual place of holding its sessions in

the Capital at Washington, D. C. for its considera-

tion and action, at which time and place you will

please take such action in the premises as you may

be advised.

HENRY D. WILLIAMS,

WM. HOUSTON KENYON,

FREDERIC D. McKENNEY,

JOHN H. MILLER,

ODELL W. McCONNELL,

Counsel for Petitioners.

Admission of Service.

Service of a copy of the foregoing petition, brief

and notice is acknowledged this 3 sf day of

October, 1914.

APPENDIX.

HOUSE OF LORDS.

ON APPEAL

FROM HIS MAJESTY’S COURT OF APPEAL

(ENGLAND).

Tuesday, 16th November, 1909.

Lords present—

EARL OF HALSBURY.

Lorpd ASHBOURNE.

LorD ATKINSON.

Lord SHAW OF DUNFERMLINE.

MINERALS SEPARATION LIMITED

, Appellants

Vv.

BRITISH ORE CONCENTRATION SYNDI-

CATE LIMITED, AND ANOTHER

Respondents.

Judgment.

THE Lord CHANCELLOR (read by the EarL or

HAtssBuryY): My Lords, the Plaintiffs commenced

this action against the Defendants in respect of

alleged infringement of two separate patents, F. FE,

Elmore’s of 1898 and A. 8. Elmore’s of 1901. In

regard to the patent of 1898 it is not now com

tended that there has been any infringement. In

regard to that of 1901, the Court of Appeal, there-

in reversing Mr. Justice Neville, held that the De-

fendants have infringed. They also found that the

patent was valid.

Elmore’s patent of 1898, related to a process for

separating the metallic from the rocky constituents

of pulverized ore. He mixed the pulverized ore

with water so as to make in effect a pulp. Then

he added thick oil. In the result the water with

the rocky substance, or gangue, as it is called, re-

mained at the bottom of the vessel. The thick oil

entrapped the metallic particles and floated them

to the surface, where they were run off. Repeti-

tion of the process enabled substantially all the

metal to be recovered.

I thus roughly summarise the invention of 1898,

merely to dismiss it from further consideration.

Since it has been admitted that there is no in-

fringement of this patent, I cannot see that it has

any place in the present controversy, into which it

has nevertheless been introduced with no other re-

sult than to confuse the issue by irrelevant con-

siderations.

Three years after the date of F. E. Elmore’ pat-

ent, his relative, A. S. Elmore, thought that he had

made a fresh discovery, and took out his patent of

1901. This is the patent which the Court of Ap-

peals have found the Defendants guilty of in-

fringing. So it is crucial to determine what the al-

leged invention of 1901 is, and how it is described

in the specification. Everything turns upon the

construction of this document.

I think the claim of 1901 is for the addition of

acid to any mixture consisting of pulverised ore,

water and oil which is used for the separation of

mineral substances from the rocky constitutents of

ore by means of the selective action of oil.

In this specification the patentee distinguishes

between what is old and what is new. He tells us

how the selective action of oil has been utilised and

how the separation has generally been done. After

that he tells us of his discovery. In carrying on

this separating process he has discovered that the

selective action of oil is enhanced by acidulation.

That much he asserts is a new discovery. All the

rest of the process described he asserts to be gener-

ally used.

The document is framed with great subtlety, be-

ing partly narrative, partly claim, so woven to-

gether that it is not easy to determine how much

of that which is contained in the narrative ought

to be read into the claim. I have no doubt that

this was designed in order that the claim might be

expanded or contracted as occasion might require

in the interest of the patentee.

Disentangled, in effect, the specification amounts

to this: “There is already in use a process or pro-

cesses for separating mineral substances from

rocky substances by the selective action of oil in a

mixture of ore, water and oi!. Generally, there is

a considerable quantity of water so as to make a

freely flowing pulp, before the oil is mingled with

it. Preferably, thick oil is used, though not neces-

sarily. Whether you use a considerable quantity

of water or not, whether vou use thick oil or thin,

whether you use a few pounds of oil or several tons

of oil to treat one ton of ore, I claim the sole right

to add any acid. I do not tell how much or how

little acid is to be used. That varies according to

the character of the material treated.”

Let me put the same thing in another way. At

the end of the specification the patentee formu-

lates his claim as follows. It is: “The method

herein described of promoting the separation of

mineral substances by the selective action of oil,

by adding to the mixture of ore, water and oil, a

proportion of acid.”

What is “the mixture” here spoken of? For that

we should look to the earlier paragraphs. It is not

one which must at any stage be a freely flowing

pulp, only it is so generally. It is not one that

must contain heavy oil, though it is so preferably.

It may contain any proportion of water, any pro-

portion of oil, and therefore any proportion of pul-

verised ore. In other words, “the mixture” is any

mixture of the named three substances.

I greatly regret to differ from the Court of Ap-

peal in this case, but it seems to me that when this

very skilfully drawn specification is closely read,

the only claim is for acidulation, the only dis-

covery alleged is the merit of acidulation, and the

process to which acid is to be applied is described

in terms so wide that it covers any process, cer-

tainly any known process, of separating mineral

substances by the selective action of oil in a mix-

ture of ore, water and oil.

I cannot agree with Lord Justice Moulton that

the claim in this specification is to “the use of a

small amount of added acid in the process de-

scribed in the specification, ¢. ¢., in a process where

the ore is pulverised and suspended in water so

as to make a freely flowing pulp, and is mingled

with oil so as to cause a selective flotation.” The

specification expressly says it is not confined to

any definite proportion of acid. And. what is

more important, the making of a freely flowing

bh)

pulp is only stated to be what is generally done.

It is not claimed as an essential feature of the

mixture to which acid is to be added.

It is this definition of the 1901 claim, erroneous-

ly as I respectfully think, which lies at the root of

the Judgment of the Court of Appeal.

The construction which I place on the document

opens a door to arguments against its validity,

other than those that were used before your Lord-

ships. I have, however, no difficulty in deciding

this case on grounds which were fully argued.

A. S. Elmore did not discover that the addition

of acid to a mixture of pulverised ore, water and

oil enhanced the selective action of the oil in sepa-

rating mineral substances from the rocky constitu-

ents of ore. That is distinctly stated in Everson’s

Patent. In Everson’s case the mixture was in a

stiff mass, that means there was less water. And

A. 8. Elmore’s Patent of 1901 is so wide in its

claim that it includes any mixture whether in a

stiff mass or in a flowing pulp, with more water

or with less.

Nothing can turn upon any distinction resting

upon the order in which water, oil and acid re-

spectively are applied to the pulverized ore. For

the Patent of 1901 does not impose any order.

Accordingly, I am of opinion that the patent of

1901 cannot be sustained, and that the Judgment

of the Court of Appeal should be reversed.

I desire to add that if, in view of the documents

and the evidence, I could have been convinced in

favour of the Respondents, Mr. Walter's argument

would have convinced me. It was all the more

effective on account of its conciseness, and I con-

fess that it shook my opinion at the time. But, on

mature reflection, I am not able to adopt it.

EARL OF Hatssury: My Lords, 1 am of opinion

that the two inventions are essentially different. I

mean by the two inventions those which might be

technically described, the one upon the selective ac-

tion of oil, the other upon surface tension. That

the two processes are in these respects totally

different cannot be denied, and the acidulation

which is supposed to incriminate the latter pro-

cess with infringement is common to the first

process and to another which was invented and

patented before it.

I do not propose to deal with these propositions

since I entirely agree with what the Lord Chancel-

lor has said on the subject and I do not know that

I should have added anything to his judgment but

for two observations to which I am impelled by

something I read in the judgment of the Court of

Appeal and, indeed, in one observation of Mr. Jus-

tice Neville. One observation refers to the ex-

tremely ambiguous and difficult character of the

specification. The statute requires it to be a dis-

tinct specification of what is the invention. In

construing the specification one has to remember

that it is a document not only assuring a monopoly

to the patentee, which but for the statute would

be contrary to the common law, but so prohibiting

any one other than the patentee doing what he

would be free to do but for the right which is

granted subject to the condition,, among other

things, that he states distinctly what his invention

is. If he designedly makes it ambiguous, in my

judgment the patent would undoubtedly be bad on

that ground; but even if negligently or unskillfully

he fails to make distinct what his invention is, I

am of opinion that the condition is not fulfilled

and the consequence would be that the patent

would be bad.

The other observation which I wish to make

refers to a passage in the judgment or tne Court

of Appeal which I think, with the greatest respect

which I entertain for the learned judges seems to

authorise a somewhat lax interpretation of the

principle of what prior publication of an invention

will render a patent invalid. It is of course im-

possible to lay down an abstract rule where ques-

tions of fact and degree come into play, and the

judgment of the Court of Appeal seems to me to

substitute the words ‘material for the public to

know” for a much simpler phrase, there must be

invention.

Now, I have said elsewhere, there must be in-

vention, whether that invention is to be ascer-

tained by considering something originally discov-

ered or by considering a combination producing a

new result; it cannot but be certain that the stat-

ute of monopolies and the whole branch of the law

make it an absolute condition to the validity of a

patent that there should be what may properly be

called invention and the application of well-known

things to a new analogous use. This is what I said

myself in the case of Morgan v. The Windover

Company (Reports of Patent Cases, No. 7). I

quote it not because I said it myself, but be-

cause in saying it I had the assent of Lord

Watson, Lerd Herschell and Lord Morris, and

indeed I was only re-aftirming that had been

said by Lord Westbury in Harwood vy. The

Great. Northern Railway Company, who gave a

warning which appears to me especially needed

now, when he said “I think the law on this sub-

ject is rightly settled, for there would be no end to

the interference with trade and with the liberty of

adapting any mehanical contrivance” (in that case

the patent was a mechanical one) “if any slight

difference in the application of a well-known thing

should be held to constitute ground for a patent.”

To apply the proposition which I think is in-

tended to be conveyed by the part of the judgment

to which I am referring would, I think, if ap-

plied to the facts as disclosed here, be absolutely

untenable. I think the dilemma put by Mr. Jus-

tice Neville is absolutely unanswerable.

I wish to add how heartily I concur in what the

Lord Chancellor has said as to Mr. Walter’s argu-

ment. and I concur in his judgment.

LorD ASHBOURNE: My Lords, I concur.

LorD ATKINSON: My Lords, in this case an ac-

tion was brought by the present Respondents

against the Appellants for infringement of two

letters patent--viz., No. 21948 of 1898 granted to

Francis Edward Elmore and No. 6519 of 1901

granted to Alexander Stanley Elmore. Mr. Jus-

tice Neville, by whom the case was tried, found

that the earlier of the two was valid, but that the

Defendants had not infringed it.

He did not arrive at any specific conclusion as

to the validity of the second patent, but held that

if the true construction of the specification ap-

pended to it was such that it would be infringed

by what the Defendants, the present Appellants,

had done, it would be invalid for want of novetry.

He, therefore, dismissed the whole action. The

Court of Appeal upheld the Judgment of Mr.

Justice Neville as to the patent of 1898 but set it

aside as to the patent of 1901, and made an order

that judgment should be entered for the present

Respondents as to this latter, for an injunction,

and an inquiry as to damages, and for certain con-

sequential relief. This Appeal is presented against

so much of the Order of the Court of Appeal as

touches the patent of 1901, and the consequential

relief granted in respect of the infringement of it.

The decision of the case turns wholly upon the

construction of the complete specification appended

to this patent.

This specification appears to me to have been

framed, somewhat craftily, in terms of studied

vagueness and ambiguity. The process, protected

by the patent of 1898, while not directly alluded

to, is fairly accurately described in a historical

narrative contained in the first paragraph of the

specification ; but that process is not adopted form-

ally, or expressly as the particular process to be

improved upon by the invention of the sespond-

ents, namely, the acidulation, in the manner de-

scribed of the mixture of oil, water, and pulver-

ised ore, with which the first patent is conversant.

In the specification attached to the first patent,

thick oil was directed to be added to a mixture of

water and pulverised metallic ore, and no specific

mention was made of the required consistency of

the mixture before or after this addition. But a

much wider scope and application is sought to be

given to the second patent than if that course had

been adopted, not by reason of any direct and posi-

tive statement contained in the specification but

the introduction, almost furtively, as it were, into

this historical narrative of two phrases, namely,

the phrase, “preferably heavy oil,” and the phrase

“freely flowing pulp”; while at the same time those

phrases are such that they could be relied upon,

should occasion arise, to narrow the invention

claimed into something less wide than the mere in-

troduction of acid into a mixture, of whatever

consistency, containing oil, water, and powdered

ore in any relative quantities.

The Respondents insist, rightly, I think, that the

earlier patent must, for the purposes of this ap-

peal, be put out of view, and that the language

of the specification of 1901 can alone be looked to

in order to determine what the precise nature of

the invention claimed, in the later patent, really is.

The consequence is that your Lordships are left to

choose between the only three constructions of

which the specification of 1901 is reasonably sus-

ceptible, and, therefore, to decide whether the in-

vention claimed consists (1) in the addition of a

relatively small quantity of acid to a mixture of

powdered metallic ore, oil and water, irrespective

of the relative quantities or consistency of these

component parts, or any combination of two of

them, and irrespective also of the consistency of

the mixture itself; or (2) in the addition of a

similar quantity of acid to a mixture of pulverized

metallic ore, water and oil of any consistency, irre-

spective of the proportion in which the oil may be

present relatively to the other ingredients, provided

only that the water and ore or water, oil and ore,

whichever it may be, have been reduced to a “free-

ly flowing pulp”; or (3) in the addition of a similar

quantity of acid to a mixture of powdered ore, oil

and water, the quantity of oil not being 1 datively

infinitesimal, but so large that having in accord:

ance with some obscure chemical law or afinity

seized upon the minute metallic particles of the

powdered ore in preference to the earthy particles,

it by its own buoyancy floats the former to the

surface.

It could not, in my opinion, be successfuily dis-

puted that the invention claimed must be one of

these three.

If it be the third of them then the Appei'ants

have not infringed, because, though, in their pro-

cess this mysterious affinity of oil for the metallic

particles of the ore is availed of, yet the oil is used

in such relatively infinitesimal quantities, that the

metallic particles are only coated with a thin film

of it, and the lifting force is found not in the

natural buoyancy of the mass of added oil, but

in the buoyancy of air bubbles, which, introduced

into the mixture by the more or less violent agita-

tion of it, envelop or become attached to, the thinly

oiled metallic particles, and raise them to the sur-

face, where they are maintained by what is styled

the surface tension of the water. And if it be the

first of them which is really claimed, then it was

clearly established that the invention was antici-

pated by the invention patented in the United

States by one Carrie J. Everson, in the year 1886,

and the patent of 1901 is therefore bad for want

of novelty.

There only remains invention No. 2. If that be

the invention claimed, the Appellants have un-

doubtedly infringed; on any other supposition the

Respondents must fail. :

But taking the specification as a whole, it is not

possible, in my opinion, to hold that the invention

claimed lies in the mere addition of acid in small

quantities to a mixture of ore, water and a rela-

tively infinitesimal quantity of oil reduced to a

“freely flowing pulp.” That is the construction

contended for by Mr. Walter in his brief but clear

and able argument.

There is not in the specification any express

mention of the use of an infinitesimal quantity of

oil. There is not a phrase in it which suggests it.

There is no indication of the relative quantity of

oil to be used, save what is contained in its first

ae ete AP LAP PORE LEAL |

and fourth paragraphs; and the reasonable infer-

ence to be drawn from these, the inference which

I think any mechanic or workman skilled in

the extraction of mineral matter from ore would

draw, is that the oil is to be used in consid-

erable quantity. In the first paragraph the mode

is described in which the oil is to be separated from

the metallic particles after it has seized them and

lifted them to the surface, namely, usually by cen-

trifugal action. In the fourth paragraph it is

stated that the acid added need not exceed one

five-hundredth part of the volume of oil or water,

as if the quantities of oil and water were to be

the same. The measure here provided for the acid

would appear to be rather ridiculous if applied to

oil, which is itself present in only relatively in-

finitesimal quantities.

The quantity of oil used by the Appellants’ pro-

cess is only two or three pounds in weight to the

ton weight of water or of oil and water, whichever

it be. The five-hundredth part of this would

roughly amount to about one-tenth of an ounce.

The five-hundredth part of a ton would amount ro

about 714 pounds. So that to acidulate a ton

weight of this mixture, the option would be left

to the operator to employ cither one-tenth of an

ounce of the acid, or over 1,130 times as much,

namely, 7% pounds of it. It is scarcely possible to

belicve that such a small quantity of acid as the

one-tenth of an ounce would have any effect what-

ever upon a ton of the mixture; but if it would,

then it is scarcely possible to believe that 7's,

pounds of acid would not have an injurious effect.

The whole passable would indeed seem rather ab-

surd if applied to a process such as the Appellants’,

and leads, I think, irresistibly to the conclusion

that the specification provides for the addition of

a considerable quantity of oil.

The invention described, if indeed it be an in-

vention at all as distinct from a discovery, is there-

fore in my opinion, not the second but the last

of the above-mentioned three.

If so the Appellants have not infringed. For

this reason I think the judgment of the Court of

Appeal was erroneous and should be reversed, and

this Appeal allowed with costs.

LorD SHAW OF DUNFERMLINE: My Lords, the

action, out of which this Appeal arises, was

brought by the Respondents the Plaintiffs, to pre-

vent the Appellants, the Defendants, from In-

fringing two letters patent, viz., that of Francis

Edward Elmore numbered 21948 of 1898, for “Im-

provements in separating metallic from rocky con-

stituents of ores, and apparatus therefor” and that

of Alexander Stanley Elmore numbered 6519 of

1901 for “An improvement in separating mineral

substances by the selective action of oil.” The ac-

tion was tried before Mr. Justice Neville, who held

that the Defendants had not infringed either pat-

ent. Quoad the patent of 1898, that judgment was

affirmed by the Court of Appeal. With regard to

the patent of 1901, viz., “An improvement in sepa-

rating mineral substances by the selective action

of oil,” Mr. Justice Neville’s judgment was _ re-

versed, injunction granted, and an enquiry ordered

as to damages.

My Lords, were it not for the regard which I en-

tertain far the experience and learning of Lord

Justice Fletcher Moulton especially in this class of

suits, and second, for the fact that a somewhat new

development was made of the argument upon the

interpretation of the patent of 1901, I should have

contented myself with simpliciter affirming the

judgment of Mr. Justice Neville, which seems to

me to have reached a sound result, after covering

with care and completeness the whole grounds of

the case. I am of opinion that your Lordships

should revert to that opinion and that the appeal

should be allowed.

As it now stands, the judgment of both Courts

with regard to the patent of 1898 is not challenged

and it is conceded that the Defendants have not in-

fringed that patent. It is further conceded that

certain references may require to be made to it for

the purpose of’a proper construction of the subse-

quent patent of 1901; but, my Lords, I think this

is a process which should mest sparingly be em-

ployed. And it humbly appears to me that tne

construction of the patent of 1901 furnishes suffi

cient material for the determination of the case

without undue reference to the earlier patent to

which I have referred. The complete specification

thus begins: “The selective action of oil has been

utilised for separating metallic substances from

earthy or rocky constituents of ores. This has gen-

erally been done by pulverising the ore, and sus-

pending it in a considerable quantity of water so

as to make a freely flowing pulp, then mingling

with it oil, preferably heavy oil, such as is ob-

tained from petroleum after some of the lighter

oils have been distilled from it. When the mix-

ture rests, the oil, with most of the metallic sub-

stances entrapped in it, floats at the top, and is

separated from the rocky or earthy matters, which

are run off with the water as tailings. The oil is

afterwards separated from the metallic substances

usually by centrifugal action. In carrying on this

separating process I have discovered that in some

cases a slight acidulation of the mixture greatly

enhances the selective action of the oil, so that

metzllic substances, as well as other mineral sub

stances, such as sulphur and plumbago, can be

separated from the earthy matters with which they

are naturally associated better than when there is

no acid present. By this means some metallic

substances can be separated from others, such, for

instance, as “sulphides from oxides.” What, my

Lords, is the discovery or invention which the pat-

entee thus records that he has made? It is a dis-

covery that in some cases acidulation enhances the

selective action of the oil, and this occurs “in

carrying on this separating process.” What, then,

is “this separating process’ thus described? For

this a reference must be made to the previous

paragraph, in which an historical account is given

of that process. It is conducted by pulverising the

ore, suspending it in water so as to make a freely

flowing pulp and mixing it with oil. The separ=-

tion process is effected at what, I think, is a vital

point in illustrating this specification, viz., “when

the mixture rests.” When this mixture thus rests

two laws operate—(1) the affinity of oil for metal

and of water for rocky or earthy material, and

(2) the lesser specific gravity of oil, which floats

to the top of the mixture, carrying with it the par-

ticles of metal and separating itself, the oil with

the metal, from the remaining constituents of the

mixture, viz., the water with the rock or earth.

These are familiar laws and specially pointed to as

operative when the mixture is at rest. That is the

separating process which the inventor described,

and I feel quite convinced that he had no other pro-

cess in his mind. I say so irrespective of the fact

that the oil is described as “preferably heavy.” I

ei k a a A OT A A Ra AAO ae esta niga

ee wero

ibs DORAN RANE te

A RE AI PR i Me An

think that “preferably heavy” simply meant that a

heavy oil would be preferred as an entrapping ma-

-terial for the particles of metal; but whether the

oil was heavy or was light I think it was oil in

bulk that was pointed to, and I cannot think that

any other natural laws than the two that I have

referred to were contemplated. By this operation

the separation by flotation and sedimentation was

effectively achieved. That it was oil in bulk which

was before the inventor’s mind is made very clear

by the later passage in the specification, which re-

fers to the quantity of acid being smaii, “as it

often need not exceed one five-hundredth part of

the volume of o:] or water employed in the opera-

tion.” As is shown by Mr. Swinburne’s evidence,

the quantity of oil required in working this patent

is from one to two-and-a-half tons per ton of ore to

be treated.

The specification ends with the claim in the fol-

Jowi: g terms, viz., “The method herein described

of promoting the separation of mineral substances

by the selective action of oil by adding to the mix-

ture of ore, water and oil a proportion of acid.”

In the most able argument presented at your

Lordships’ Bar by Mr. Astbury the following para-

phrase of the claim was offered—viz.; “In a pro-

cess where the selective action of oil is used for

sepzrating metal from gangue in a freely flowing

pulp the addition to the mixture of ore, water, and

oil st a proportion of acid in the manner described

for promoting or enhancing the oil's separation.”

If this paraphrase is only meant to accentuate the

point of the acidulation, it is of course allowable:

but I do not think that this removes from the

claim, or relegates to a subsidiary position there-

in, the claim for a method—viz., a method of pro-

moting the separation of mineral substances. That

method is the method “herein described.”

My Lords, either (1) the mixture was one in

which when at rest, or nearly at rest, the flotation

in bulk of oil with entrapped particles of mineral

took place and the “method described” was an ad-

dition of acid to a mixture of that character for

the purpose of promoting a separation therein; or

(2) it was a claim to add acid to any mixture of

ore, vil and water, however thick or thin, whether

capable of supporting to the surface particles of

mineral when the mixture was at rest, or in-

capable of doing so except with the aid of other

natural agencies. The latter is a very wide inter-

pretation amounting to a claim by the inventor of

a mcnopoly in the acidulation of a mixture of oil,

ore 2nd water under any circumstances, and to this

I shall make subsequent reference. But, my Lords,

in my opinion the former is the correct interpreta-

tion. I think the invention meant that, and_ in-

deed, thought only of that, and that the reader of

the : pecification and claim would so understand it.

The question is, have the Appellants infringed this

pateat?

In order to determine this question it is neces-

sary to look at the patent under which they work,

viz., 7,803, of 1905, for “Improvements in or re-

lating to ore concentration,” granted to Sulman

Picard and Ballot. The complete specification is

dated 2nd June, 1905. My Lords, one cannot

peruse that specification without being struck by

the tact that at all events the mixture to which

the application of acid was to be made was of a

very different character to that described in the

Elmore patent. And the striking difference occurs

in this, that the oil in the Appellants’ mixture, in-

stead of being from one to two-and-a-half tons per

ton of ore to be treated is only from two to three

pounds per ton of ore to be treated.

The next contrast is this. As already shown the

natural law relied upon in the Elmore patent was

the lesser specific gravity of oil which, operating

in bulk upon the mineral particles, would carry

them to the surface of the mixture when it

rested, and thus effect the separation aimed at,

viz., the separation of those mineral particles

from the rest of the ore. But it would have

been absolutely impossible for such flotation and

separation to have occurred with the minute frac-

tion of oil used in the Appellants’ process, however

much acidulation had been employed. As Mr.

Swirburne says, in his answer to Mr. Justice Ne-

ville, “1340. In Elmore’s process with the drum

revolving two or three times a minute, would that

produce any practical result in the way of capil-

larity?—No. Your Lordship is taking the case of

two-and-a-half pounds of oil. 1341. Yes, a very

smal! quantity of oil?—I think what would hap-

pen would be that the oil would be all sunk with

the mineral at the bottom.” That is to say the

method of separation “herein described” by El-

more in his patent would be promoted by acidula-

tion; but separation would not and could not have

been “promoted” by acidulation in the Appellants’

1905 process. Acidulation or none, there would

have been no separation to promote; the mineral

particles would not be separated by being floated

off to the top, but would be sunk to the bottom

with the remaining solid, viz., the gangue.

How then was the flotation of mineral particles

to the top of the mixture, and thereby the method

of separation of these from the gangue to be ac-

complished? My Lords, it is in the answer to that

that four-fifths of the specification and claim of

the Appellants consist. That is to say, they are

not promoting a method of separation which had

before been described, but they are engaged upon

a new method of separation. Instead of relying

upon the lesser specific gravity of oil in bulk they

rely upon the production of a froth by means of an

agitation which not only assists the process of the

minute quantities of oil reaching the minute par-

ticle: of metal, but forms a multitude of air cells,

the suoyancy of which air cells, forming around

singie particles of the metal, floats them to the

surface of the liquid. What is relied upon, for in-

stance, is that “after vigorous agitation there is a

tendency for a part of the oil-coated metalliferous

matter to rise to the surface of the pulp in the

form of a froth or scum.”

Over and over again reference is made to such

things as “the formation of froth,” “the proportion

of m:neral which floats in the form of froth,” “the

war.iing of the mixture and the brisk agitation,”

and then it is stated “when agitation is stopped a

larg» proportion of the mineral present rises to the

surface in the form of a froth or scum which has

derived its power of flotation mainly from the in-

clusicn of air bubbles introduced into the mass by

the agitation”; and then a very considerable por-

tion of the apparatus is apparatus expressly de-

signed to catch the mineral particles so buoyed up.

One part of the apparatus is called the “frothing

apparatus” another part is called the “froth sep-

arating apparatus,” and so on. To this description

it is sufficient to add that of the four claims ap-

pended to this specification of 1905 three are ex-

pressly concerned with the agitation into the froth

as already mentioned. My Lords, I cannot see my

way to hold that the addition of acid to such a mix-

ture in such a process and for the purpose of bring-

ing about a separation by such means imports any

infringement of the Elmore patent by the addition

of acid in the method therein described. It has al-

ready been determined that the use of thin oil in-

stead of thick imports no infringement of the 1898

pater:t, nor do I see my way to hold that there has

beer any contravention of the 1901 patent by the

appi'tcation of the acid to a mixture in which the

oil has been reduced from bulk to the merest

fraction, and especially when froth instead of oil

has been secured, along with the law of capillarity

or surface tension, as the main floating and sepa-

rating agent.

It may no doubt be true that while great rapid-

ity of agitation is required in the Appellants’

process to produce the froth bubbles vet some

froth bubbles are almost necessarily produced

even in the Elmore mixture with its large con-

stituent of oil in bulk. With much respect, how-

ever for the opinion of Lord Justice Fletcher

Moulton, I think that far too great importance

has been attached to the latter fact. I am quite

certain that if it had been suggested to Elmore

that the production of air bubbles was of any

value or assistance in the process of separation,

which he was meaning to promote, he would have

repudiated the idea. And it is significant to ob-

serve that after the first flotation under the Elmore

process, and when a second use of the oil is being

made, the inventor himself in his complete speci-

fication says: “The oil may be pumped up to an

elevated cistern to supply the drums c and 4g, but

in order to clear the oil from air bubbles I prefer

to draw the oil up to the cistern by creating a

partial vacuum in the cistern.” So far was the

patentee from invoking the aid of any part of

his apparatus as a bubble producing machinery,

that at a certain stage of the operation he did his

best to eliminate the air bubbles, which were

treated as a disturbing and not a helpful factor.

I think that this goes far to demonstrate the

limitations of the Elmore method of separation,

and the striking difference between it and the

Appellants’ elaborate process of froth-producing

apparatus. In these circumstances I cannot see

my way to hold that infringement by the Appel-

lants has occurred.

My Lords, I have already stated my view on the

construction of the patent of 1901 grounded upon

which my opinion as to non-infringement of the

patent has been formed. But in deference to the

argument submitted, I may say that had the Pat-

ent of 1901 admitted of a construction, not limited,

as 1 have construed it, but taken in the more ample

sense of a claim for the acidulation of any mixture

of ore, oil and water, accompanied by the intro-

duction of other natural agencies, and so pro-

ductive of varieties of results, I should have in-

clined to hold that a claim in such width had.

been anticipated by the Everson patent.

I wish further, my Lords, to say that, while it

is also not necessary to make any pronouncement

on certain other parts of the most interesting

opinion delivered by Lord Justice Fletcher Moul-

ton, I should desire further consideration before

assenting to those portions of that opinion which

deal with the duty of the Court to ascertain the

state of knowledge of the profession or trade to

whom the specification is addressed, and with the

distinction figured by the learned Judge bet

the knowledge of the general public arising

published specifications and claims, and the k

edge or understanding of those who are assum

that opinion to be the true addressees, vi

“those who are skilled in the art’’—such p

may raise difficulties and demand solutions we

of much excogitation, and I desire to reserve

assent on my part therefrom.

Questions put:

That the Order appealed from be reversed.

The Contents have it.

That the Respondents do pay to the Appel

the costs both here and below.

The Contents have it.

SUBJECT INDEX.

¥ Page.

. quantities of oil greater than the minute quantity character-

izing the invention in issue, agitation will evoke the same

principle of action and produce the same metallurgical re-

RE isco kb voce cenene seer bbs secercvesisee Gees ie ctevenees 1

1. Decision of Privy Council and evidence of endeiens :

POMC. CSU tiada PhSUSY ORES NERS Pr U eNOS ED ae pes vedas 1

2. Evidence of Mr. Nutter, Chief Engineer of Minerals

Beparated, . TAmIwee oo nck ve ee cece Ke See Seb eee os 6

8. Evidence of Mr. Higgins, Metallurgical Engineer of Min-

erals Separated, Limited..............ee.e0ee KRG 6

4. Dr. Liebmann’s Testimony.............. Sid gwib-e oh ences 7

5. Laboratory Experiments of James M. Hyde and Dr.

Eugene A. Byrnes.......... Setevceee Ocseree ne 0-46 68 8

PMMTGSION OF OOUINON. ss’: bob's 0 GaN's 004 habs bedbacecuees 10

* The Cattermole Process............. ob ede ac ieweev eee seems 13

& Patent in Suit.............. nt re Ie van ake eva sib Wkh's 15

& Haynes’ British Patent............se.ee08 ay bus dc biked 16

| Everson Patent .......... cae ehdh GA keUbaeceadwaws jan beth ‘ 7

Fryer Hill and Criley-Everson Publications................ ge

> Froment Patents ......... Crdevedeees weveeaegrcecsioes eeeees 18

' Froment Description ...... rt ee tee ere bike tnd waems seam 20

» Glogner Patent ............. Cone bedsabdendes evevvease ba eee 21

E Schwarz Patent, 807,508.........6..eceee eens asadetbaseevene 21

4 Kirby Patents ............0.0.. aeeeddsuue Few ewirive eee ee 22

a a vn ouans beeeedsans nb kgs nears A ORR, 22

* Other Flotation Processes............. eee nes COVERS heen e ee 28

Originality of Invention......... nea’'eie 6 0.0 660 Chics ape ee ae ee 24

Brame Question of Invention. 16. ..ccccecccccvcsccccscccevseces 26

Cases CITED.

Cohn vs. U. 8. Corset Co., 93 U. S., 366, 370...... 0... eee e cues 18

Minerals Separation, Limited, vs. British Ore Concentration

Syndicate, Limited, 27 R. P. C., 33. (Printed in Appendix to

Petition for Writ of Certiorari, pp. 41-62)......... ten venwe 27

» Ore Concentration Co., Ltd., vs, Sulphide Corporation, Ltd., 31

BEET Shy, MOO) vc bad views es be eeeReues inken PORES oses 8, 27,81, 82

IN THB

SUPREME COURT OF THE UNITED STATES.

OCTOBER TERM, 1916.

No. 46.

MINERALS SEPARATION, LTD., ann MINERALS

SEPARATION AMERICAN SYNDICATE, LTD., Pert-

TIONERS-COMPLAINANTS,

v8.

JAMES M. HYDE, Responpent-DeErenDANT.

PETITIONERS’-COMPLAINANTS’ REPLY TO BRIEF

FOR RESPONDENT.

Brief for respondent presents a fictitious case and not the

case presented by the record.

A fundamental fiction, and one which it 1s imperative for,

him to establish, is that with quantities of oil greater than

the minute quantity characterizing the invention in issue,

agitation will evoke the same principles of action and produce

the same metallurgical results.

I. In support of this proposition respondents’ brief asserts

that the Privy Council judgment so held in accepting the evi-

wrone wok

dence of Prof. Pollock in that case, quoting on pages 84 and

85, Lord Parmoor’s summary of Prof. Pollock’s testimony,

and asserting as based on that quotation:

(Page 90, near bottom :)

“Professor Pollock in the British litigation repu-

diated the idea that there was any virtue in using less

then one per cent of oil. After stating that the only

function of oil in the mineral separation process is

rmanency in the froth and minute emulsion, Prof.

Pollock ‘allows that there may be oil in excess, and

that some of the particles may get oiled, but states

that this is entirely and absolutely unessential’ (tran-

script, bottom of page 755, and top of page 756,

supra, page 85).”

(Page 95, line 12:)

“Both Mr. Hyde and Dr. Byrnes testified regarding

iments in which they formed concentrate froths

with amounts of oil varying from less than 1 per cent

to 25 per cent by weight relative to the ore treated.

This is in accord with Prof. Pollock’s testimony, above

quoted (supra, p. 85), that an excess of oil is unes-

sential.”

(Page 95, near bottom:)

“This record shows beyond the possibility of doubt

that the froth results from the use of much more than

1 per cent of oil as well as from less than 1 per cent,

and Prof. Pollock testified to the same effect in the

British litigation saying that an excess is unessential.”

We respectfully submit that Lord Parmoor’s language ad-

mits of no such inference and that the respondent absolutely

misinterprets the same. In fact, the exact contrary of the in-

ference of the respondent is the correct interpretation of what

Lord Parmoor said, dealing as he and Prof. Pollock were,

solely with the minute quantity of oil characteristic$ of com-

plainants’ process, and in speaking of “excess,” meaning “ex-

cess” within that minimum not in addition thereto.

| __ _If what the respondent says is a misstatement and misrepre-

_ sentation of Prof. Pollock’s testimony it is vital that it should

_ be corrected, because the Privy Council state, through Lord

Parmoor, as quoted on page 84 of the brief for respondent:

“There is no doubt a difference in the views of the

respective experts whose standing and experience

entitle them to great weight and authority; but in

deciding between these views their Lordships accept

the evidence of Prof. Pollock to be found in question

5780 and the following questions. This evidence

may be summarized as follows:”

and then follows the summary in question.

And it is vital too that the correction should be made

and Prof. Pollock’s and the Privy Council’s real view be

correctly understood because respondent’s brief concedes

(p. 94, near bottom) that

“the theory advanced by Prof. Pollock in the British

litigation conforms to all of the known facts and ap-

pears to be the correct explanation.”

If the language of Lord Parmoor were susceptible of any

such inferences as the respondent draws therefrom, the

impossibility of such inferences being warranted is made

entirely manifest by adverting to “question 5780 and the

following questions,” to which he refers. They are as fol-

lows:

(Page 473, Printed Record in the Privy Council, No. 7

of 1912. On appeal from the Supreme Court of New South

Wales in its equitable jurisdiction between The Ore Con-

centration Company (1905), Limited, and Australasian Ore

Concentration Syndicate, Limited (Plaintiffs), Appellants,

and Sulphide Corporation, Limited (Defendants), Respond-

| ents.)

“5780 Q. Mr. Irvine: Now I am going to ask

you one or two questions with regard to the applica-

tion of what you have been saying to the particular

issues in this case. You have given us this selective

Ogee: Ed rol ee aE LE IER. RR UN

action, if I may use such an expression, of bubbles,

as bubbles. You have told us of the increase of the

selective action of these bubbles by the addition of

a little acid, and you have pointed out the two func-

tions which you say, in the defendants’ process, or

a process similar, are performed by the minute

uantity of oil introduced; the two functions being

the permanency of the froth, for the well recognized

scientific reasons you have explained, and the other

the extremely minute emulsion which is introduced

in that case, but not where there is no oil. Now, I

want to ask you, is there necessarily any other func-

tion performed in the defendants’ process by that

small quantity of oil introduced? A. I do not

think so.

“5781 Q. It has been suggested—in fact it has

been stated very distinctly by some of the witnesses—

that even with that extremely minute quantity of oil

there must necessarily be a greasing or oiling of all

the metal particles. What do you say with regard

to that? A. The oil may be in excess and some of

the particles may get oiled, but in my opinion, it is

_ unessential—entirely and absolutely unessen-

trial.

“5782 Q. First of all, with that minute quantity

of 114 lbs. of oil, say to the ton; is it possible to affirm

that there is more oil introduced than is necessary

for the concentration you have been speaking about?

A. I do not think so.

“5783 Q. Mr. Irvine—or filming purposes? I do

not think so, because it would be impossible to caleu-

late the entire surface of the enormous number of

bubbles.

“5784 Q. You could not affirm in fact, whether

there is or is not a surplus of oil. A. I do not think

“5785 Q. Unless you can somehow approximately

measure the surface of all the multitudinous bubbles

in that emulsion? A. Yes.

“5786 Q. Well, it has been further stated that the

selective action—that is the picking out by the air

bubbles, or gas bubbles, of the metallic particles

from the gangue will not take place unless those

metallic particles are greased. What do you say to

that? A, I do not agree, with that at all.

“5787 Q. You do not agree with that. A. No.

“5788 Q. And that is why you say the g is

quite unessential to this process. A. Yes, if it

occurs.

“5789 Q. Whether it does or does not occur, as I

understand you, must be a matter of conjecture?

A te”

From this it undoubtedly appears that the “oil in excess”

paraphrased by Lord Parmoor from Prof. Pollock’s answer

to 5781 Q. referred to that modicum or part of the 1144 pounds

per ton (employed there by defendant) which under Prof.

Pollock’s theory might possibly go to and grease “some of

the particles” after the air bubbles had all been filmed with

oil, and that the difference in the views of the respective

experts had to do with the way in which the 1% pounds of

oil per ton of ore functioned in the agitated pulp to bring

about the ore concentration obtained, and whether it went

primarily to the air bubble or to the metallic particle.

It is not true, therefore (as respondent’s brief asserts),

that “Prof. Pollock * * * repudiated the idea that there

was any virtue in using less than one per cent of oil.” On

the contrary, he was dealing only with the case of 14% pounds

of oil to the ton of ore (4. ¢., less than one-tenth of one per

cent), and his whole endeavor was to explain how and why

so minute a quantity of oil effected concentration in air-

agitated pulp.

It is luminously clear that Prof. Pollock did not testify

that ore concentration or concentrate froths could be formed

_ by the use of more than one per cent of oil; it is clear that

testimony that such concentration could be effected by “from

_ less than 1 per cent to 25 per cent by weight relative to the

ore treated” is not in accord with Prof. Pollock’s testimony

as respondent asserts.

The privy council judgment is considered in brief for

_ petitioners-complainants, pages 35-37.

eects? <iyanesirey~ saben identi Waianae

II. In support of the proposition that “ores that can be

floated with less than 1 per, cent of oil can be floated with

more than 1 per cent.’’ Respondent’s brief cites the testi-

mony of Mr. Nutter, Chief Engineer of Minerals Separated,

Limited, pages 63 to 66, where he sets out the customary

procedure in the treatment of a new ore, and, among other

things, speaks of altering the quantity of oil in adjusting

to new conditions.

But the alterations in quantity of oil referred to by Mr,

Nutter were minute alterations, all well within the limits

of the quantity specified in the patent in suit. It is the

‘ astonishing fact that, so far as the record here shows, with

every ore the world over to which the process has been

applied and with all the varying conditions of use, the largest

quantity ever used has been 4 pounds to the long ton (i. e.,

less than 2/10ths of 1 per cent), and that the smallest

quantity has been 9/10ths of a pound per long ton of ore

(i. e., less than % of 1/10th of 1 per cent). See Brief for

Petitioners-Complainants, pp. 41 and 42.) The defendant

uses 3.2 pounds of oil per ton of oil (7. e., .16 per cent of

the oil—less than 2/10th of 1 per cent.) (See Brief for

Petitioners-Complainants, p. 88.)

It is such alterations in quantity of oil as these that Mr.

Nutter referred to. Respondent’s deduction from his testi-

mony is wholly unjustified. y : etd

Respondent indulges in the same unwarrante

here as in the case of Prof. Pollock.

III. Respondent’s brief, in support of the proposition that

the process of the patent in suit proceeds when the quantity

of oil is more than 1 per cent, cites the evidence of Mr.

Higgins, the Metallurgical Engineer for Minerals Separated,

Limited, saying, page 47:

“A. Howard Higgins, Metallurgical Engineer for

Minerals Separated, Limited, stated that he produced

the characteristic floating froth of concentrates by

lod

(

meana of oil in an amount equal to 3.6 per cent by

weight relative to the ore (Transcript, a 387).”

And the same thing is repeated at page 165, as follows:

“Ou—amount of. The patent in suit recommends

a fraction of 1 per cent of oil, but complainant’s

witness, Higgins, admitted that the same result was

obtained upon the Elm Orlu ore with 3.6 per cent

Ore eM,

And on pages 154 and 155, under the heading “Higgins

Produced Froth with 3.6 per cent Oil”, is a more lengthy

statement of the matter.

But reference to the record, page 387, shows that Mr.

Higgins’ testimony has been misrepresented. The froth

produced, he says, did not differ in appearance from the

usual agitation froth at a distance of a few feet, “though

oily in appearance when closely examined.” ‘These floats

were exceedingly dense and occasionally fell down in large

masses. The tailings contained some granules, and did

not indicate a satisfactory recovery.” It also appeared that

the recovery was only 50 per cent of the zinc, which means

that 50, per cent of the zine was being thrown away in the

tailings—a useless and hopeless result. He further testified:

“This plant is not intended for commercial use in treating

zine ores, being only a testing plant.”

Mr. Higgins’ testimony on this subject has been grossly

misrepresented in respondent’s brief.

IV. On page 5 of respondent’s brief the subhead is as fol-

lows :

“Dr, Liebmann Admits Production of Froth by

Use of Large Amounts of Oil.”

By this it is sought to convey the impression that Dr.

Liebmann admits that the minuteness of the amount of oil

prescribed by the patent in suit is negligible and that the

same result can be obtained by the use of large amounts of

oil.

To sustain this certain portions of the record are referred

to and extracts from Dr. Liebmann’s testimony are quoted.

It will appear from the record that Dr. Liebmann was

being examined with respect to laboratory experiments testi-

fied to by the respondent’s expert, Dr. Byrnes. Dr. Lieb-

mann testified that he had not seen these experiments and

had not repeated them, and his theorizing was based upon

the assumptions and statements of Dr. Byrnes, So far from

admitting these assumptions and statements of Dr. Byrnes

to be true he distinctly qualifies his testimony with an “if.”

He clearly expresses incredulity that Dr. Byrnes had pro-

duced that which he testifies that he had produced, by these

experiments, and in the extracts used by the respondent,

Dr. Liebmann is theorizing and conjecturing with respect

to Dr: Byrnes’ assumptions and statements. Since it is per-

fcetly clear that he was not dealing with any thing of which

he admitted the actual existence, it is entirely improper to

state that he “admitted” any fact.

The whole of his testimony on these points shows that he

was utterly indifferent to Dr. Byrnes’ evidence regarding

these experiments, because they did not reproduce or repre-

sent anything that was in the prior art or anything that

ever had been used, or ever could be used, practically in

ore concentration ; they were merely laboratory manipula-

tions invented by respondent’s expert and of no evidential

value.

So far from admitting that a metallurgical result similar

to that produced by the process of the patent in suit could

be obtained by the use of larger amounts of oil than therein

prescribed, he distinctly stated the contrary.

V. Respondent’s brief, on pages 46 and 47, refers to cer-

tain floating froths or oil magmas produced in the laboratory

by the defendant James M. Hyde and by his expert, Dr.

Eugene A. Byrnes, with quantities of oil ranging up to 25

per cent of the weight of the ore, as evidencing that the same

result obtained by the process of the patent in suit may also

be obtained by the use of such larger quantities of oil.

But these tests do not support the conclusion drawn from

them. They never went beyond the laboratory. There is

no evidence that they would be of the slightest utility in the

mill, or that they could ever be carried out practically in the

mill, or that they were in any proper sense metallurgical

processes for the concentration of ores. '

There is ho evidence to indicate that any such processes

were ever used with any practical success in the mill. There

is affirmative evidence to the contrary. (See pages 196 to

200 of Brief for Petitioners-Complainants.) In a labora-

tory test an ore pulp, with any quantity of oil, large or small,

can be whipped by an egg-beater up into a floating and dirty

oil magma, honeycombed with air bubbles, like whipped

cream, and carrying a considerable proportion of metal con-

stituents of the ore, but such process would be absolutely

useless in the mill for the purpose of concentrating ores.

It is in the highest degree significant that the respondent,

instead of demonstrating the practicability in the mill of a

process of ore concentration involving the use of notable

quantities of oil, as it could perfectly well have done, if any

practicable process of that kind existed or were possible, con-

tented itself with the legerdemain of the laboratory, wholly

inconsequential even at best in its implications, and stands

here and now upon misrepresentation of the testimony of

petitioners-complainants’ witnesses and of the Privy Council

decision.

In determining the fundamental facts on which alone a

holding of invention or want of invention in the process of

the patent in suit can properly be predicated, the acid test

is that of actual use in the mill or capacity for actual use in

the mill.

Judged by that test there lives been only four processes

of ore concentration that are worthy of consideration,

namely (to name them in the order of their development),

water concentration, where the values, following the natural

law of gravity, go to the bottom; the Elmore process, where

the values, contrary to gravity and by the buoyancy of oil,

go to the top; the Cattermole process, where the values, owing

to the agglutinating action of oil, go again to the bottom by

gravity, and the process of the patent in suit, where the

values, by the buoyancy.of air bubbles and contrary to their

own gravity, go again to the top. These are the processes

that have concentrated ore in the mill to the benefit of man-

kind.or have had the full potential capacity so to do, and

these are the processes that alone call for consideration.

The crude suggestions of Haynes, the impractical proc-

esses of Everson, the test-tube theories of the Froment pat-

ents achieved nothing for the practical art of ore concentra-

tion, while the failure of the Froment description and of

Kirby and Schwarz in their paper patents to make any im-

pression whatever upon the practical art or to produce any-

thing that could be used in the mill demonstrates that a

problem existed, the solution of which was not obvious.

Classification of Processes.

In order to impart any plausibility whatever to his con-

tention of identity between the process in issue and certain

of the prior processes, the respondent finds it necessary to

make a misleading classification of the processes involved

in discussion in this suit.

On page 8 of his brief he states that

“All flotation processes fall into one of three dis-

tinct classes: (1) The Elmore bulk oil or oil buoy-

ancy flotation process; (2) the surface tension or

film or skin flotation process, and (3) the gas-oil

flotation process.”

And on page 23 he said:

“No other form of flotation than the three types

above described is referred to in this record, and no

other form of flotation is known to exist.”

Having falsely assumed this premise or basis, it became a

matter of great ease to demonstrate, as the respondent then

does, that if our process was not an Elmore oil process or a

surface tension process, it must be a gas-oil process, similarly

with Haynes, Everson, Froment, &c., and, therefore, that our

process is Haynes, is Everson, is Froment, &c.

As a matter of fact, with respect to what the respondent

includes as flotation processes, there are in addition to those

enumerated by the respondent, (4) a lump-kneading pro-

cedure, wherein the concentrate is recovered in a lump or

lumps, (5) a flowing in suspension of material heayier than

water, and (6) a flotation by aération. The later is the

classification under which the invention of the patent in

suit falls, and it is absolutely the only one which does fall

under that classification, and hence its uniqueness, novelty,

and patentability.

Strictly speaking, the first type or class relies wholly upon

the bulk of the oil used in the operation and depends upon

the lesser specific gravity of the oil and upon its buoyancy

or lifting quality when utilized in a mixture of water and

ore, constituting an ore pulp. Under this, strictly construed,

the Elmore patents would fall.

. Under the second group or type there are several patents

or disclosures which both the respondent and ourselves agree

do not affect any issue involved in this suit, and it is not

necessary, therefore, to deal with them.

Under the third head, the gas-oil flotation process, come

the Froment patents which antedate the invention of the pat-

ent in suit and the Kirby and Schwarz patents, which do

not antedate the invention in svit, but the applications for

which were filed in the Patent Office before the invention

in suit, and the Froment private description (the latter being

a hybrid approaching film or skin flotation).

In the procedures disclosed in these documents the flota-

_ tion was sought to be brought about by the combined buoy-

ancy of oil and of gas or air. Unintentionally the respond-

ent demonstrates the accuracy of this description of these

processes in his brief on page 22, where, under the heading

of Gas-Oil Flotation, he says:

“Such: floats are permeated with air bubbles,”

This is strictly characteristic of gas-oil flotation and is

not. an accurate or proper description of the process of the

patent in suit in which the so-called float is air bubbles and

cannot, therefore, with propriety be said to be something

else “permeated with air bubbles.”

Under the fourth class comes the Haynes British patent

and the Everson patent, first method, both of which recover

the concentrates in unfloatable pasty lumps.

Under the fifth class comes the Everson patent, second

method. In the description of this second method it is

plainly stated that the process depends upon making the

metalliferous matter lighter than the earthy matter or

gangue, and this was to be accomplished by the amount of

oil used. She prescribed 17 per cent of oil, which she said

would impart buoyancy to hold the valuable matter in sus-

pension in the water above the gangue so that it could be

washed or floated away from the gangue by an upcast of

water injected against it. There can be no honest inference,

from anything said by. Everson, that she produced any true

flotation—i. e. any flotation upon the top of the water, but

only a flowing in suspension in the body of the water of

material heavier than water.

The sixth class contains only the patent in suit. In it the

very minute quantity of oil used (about one-tenth of one

per cent) does away with all possibility of any reliance upon

oil buoyancy. The use of the oil is for an entirely different

purpose, Its office is to effect the production of very fine air

bubbles and to cause the air bubbles to persist and remain

constant and firm as they rise through the liquid, and after

they have risen through the liquid and to and above the

surface of the liquid, carrying with them the metal which

has been attracted to them and is-attached to them. The

novelty consists in the characteristics of the bubble and its

firm and persistent attachment to the metal, which results

in its persistence ofter it has risen adove the surface of the

water and is resting thereon in a thick layer composed

wholly ‘of air bubbles and metal.

Tn gas-oil flotation processes, as respondent himself con-

tends, there is a magma or pulpy mass composed of gas, oil,

and metal partially sustained by the buoyancy of oil and

partially sustained by the buoyancy of the gas bubbles which

have permeated the float. Since there is too much oil pres-

ent in all of these processes (except in the petitioners-com-

plainants’) the adhesion between the gas bubble and the

metal is extremely slight and of no practical value, as con-

tradistinguished from the firm attachment in the process of

the patent in suit, which is of great practical value, and

hence the gas bubble loses contact with the metal and the

latter no longer receives any buoying aid therefrom.

The Cattermole Process.

The Cattermole process is a metal-sinking process which

utilizes the adhesive or agglutinating action of oil coatings

on metal particles, and is dependent upon that agglutinating

factor. It is fully explained in petitioners’ brief (pages 122-

131). It is also explained in Judge Bradford’s opinion

(pages 28-31). The two false theories presented in respond-

ent’s brief (pages 27-31) are quite completely answered

in Judge Bradford’s opinion, and that answer is summarized

in petitioners’ brief (pages 263-266).

It is characteristic of all processes and proposed pro-

cedures prior to the invention in suit that the amount of oil

used is proportionate to the richness of the ore. With the

oil as a buoyant agent or the oil as an agglutinating agent,

the amount of oil used was necessarily in proportion to the

amount of metal to be buoyed up or the amount of metal to

he covered with an adhesive coating of oil. Cattermole,

therefore, like Froment in his description, gives his oil pro-

portions relatively to the richness of the ore, but Cattermole

knew that he could not treat lean ores except by enrichment

or by the addition of material having an affinity for oil.

The process of the patent in suit is unique in that there

is no relation between oil proportions and richness of ore

(Petitioners’ Brief, p. 42). The variations within the range

of minute proportion as employed in the concentration of

vast quantities of ore has happened in practice to require

the smaller quantities for the richer ores. This is because

of the new mode of operation characterizing the process in

suit, wholly different as it is from anything disclosed in

prior documents.

-Respondent’s brief on pages 30 and 31 quotes testimony

of Messrs. Sulman and Chapman describing the procedure

in the Cattermole process as evolved in complainant’s

laboratories in the effort to improve this process and

as carried out in the large Cattermole plant installed at

Broken Hill, -Australia. Here a two-stage agitation was

worked out, the first stage of agitation being violent and

the second stage of agitation being comparatively gentle,

but the quoted testimony of Mr. Chapman includes the

statement that, after the first or violent agitation, “the

agitated pulp was then passed to a small glass upcast

separator where the fine gangue slimes were washed from

the pulp, allowing only the oiled metalliferous particles and

the coarse gangue to pass to the second stage of the process”

(Respondent’s Brief, p. 30). Obviously if that first violent

agitation had produced the attachment of air bubbles to

metallic particles, those air bubbles carrying metallic par-

ticles would have gone upward in the upcast separator with

the fine gangue slimes and the oiled metalliferous particles

would not have sunk against the up-current nor have passed

with the coarse gangue to the second stage of the process.

Respondent’s false theory that in this procedure the violent

agitation caused the attachment of air bubbles to metallic

particles is disproved by the very evidence cited to support

it. The metal particles in the Cattermole process were so

heavily oiled (as compared with the attenuated films of

oil on the metal particles produced in the process in suit)

that although the agitation in the cone-mixer or Gabbett

caused great quantities of air to be drawn into the pulp and

beaten up into bubbles, the metal particles rejected these

bubbles and they escaped from the pulp and so far as we

know performed no function whatsoever. Later it was dis-

covered that the same kind of agitation in the same cone-

mixer or Gabbett, with the same fine pulverization of the

ore and the same presence of great quantities of slime in

the ore (for Cattermole like the process in suit utilized and

concentrated slimes), and the same heating of the pulp such

as had been evolved as an improvement upon the disclosures

of the Cattermole patents, and the same presence of acid

in the pulp, produced, when the oil proportion was reduced

to one-tenth of one per cent, the process of the patent in

suit. The statement, therefore, in the patent in suit that

the ore pulp “is briskly agitated in a cone-mixer or the

like, as in the processes previously cited” (i. e., the Catter-

mole process as disclosed in the Cattermole patents) is ex-

actly true, and respondent’s ascription of error to this state-

ment (respondent’s Brief, p. 31) is unfounded. Brisk or

violent agitation in a cone-mixer or Gabbett is the only

kind of agitation in a cone-mixer or Gabbett which is de-

‘ seribed in the Cattermole patents, and that kind of agita-

tion, with a reduction of oil to about one-tenth of one per

cent on the ore, effeetgthe new mode of operation char-

acterizing the process in suit.

Patent in Suit.

Although the process in suit can be carried on with the

same kind of agitation as characterized the Cattermole pro-

cess disclosed in the Cattermole patents, it is not true at all

that this kind of agitation characterizes anything else in

‘

prior disclosures. Further, the introduction of air in an

ore pulp does not produce the new mode of operation of the

process in suit unless the oil is present in the minuto propor-

tions characterizing that process. Except Elmore, wherein

as respondent’s brief admits, aération was avoided (pages

11-20), there was no prior process of ore concentration prac-

ticed in the mill wherein oil was used. As to the disclosures

of prior documents, which never got beyond the paper on

which they were written, or at most the laboratories in which

they were born and died, a careful study of each document

shows that where aération or gasification was proposed, it

was not in the pulp conditioned by the presence of the

minute amount of oil characterizing the process in suit, but

by a grossly larger amount of oil, and was not produced by

agitation, but by chemical generation or by introduction

through pipes into the pulp. With this explanation it may

be seen that the statements in this regard, on page 33 of

respondent’s brief, are based on false premises.

As to the baffles which are an essential part of the cone-

mixer or gabbett, when it is in cylindrical form, the facts

as proved are explained in petitioners’ brief, pages 43, 44,

and pages 109-111.

Respondent’s brief, at page 35, says that there is only one

brief reference to air as cause of flotation ‘in the patent in

suit. Obviously the one statement quoted describing the

operation would be sufficient, but froth is referred to from:

the beginning to the end of the patent.

Haynes British Patent.

Respondent’s brief misrepresents this patent at pages 37,

38, and 102-105. Its disclosures are accurately explained in

petitioners’ brief, pages 93-96, in harmony with Judge Brad-

ford’s conclusions (Judge Bradford’s opinion, page 23,

24) and those of the Privy Council quoted by Judge Brad-

ford (R., p. 749).

Everson Patent.

This patent discloses two methods, The first method

starts with a stiff mass produced by mixing the ore with a

material made by compounding sulphuric acid and cotton-

seed oil, the oil being in the proportion of five per cent of

the ore. This mass is kneaded in water, and thereby the

gangue is washed out, and the specification says that

“The concentrated mineral will accum: late in a

pasty mass or lump or lumps and will c¢oiutain the

metallic portion of the ore’ (R., p. 581).

Respondent’s brief, in describing this first method (p.

107), omits the statement that the concentrate is recovered ~

in a “lump or lumps,” and then says that the concentrate

obviously could not be recovered by its sinking or settlement.

In fact, in the wash-basin operation described by Everson, it

is recovered adhering to the fingers of the operator, and on a

larger scale the lump or lumps obviously would not be ex-

pected to float.

Everson’s second method uses more oil, about seventeen or

eighteen per cent of the ore, and this produces a more

liquid mass of concentrate and oil, which is flowed off in

accordance with the principles of wet concentration of ores,

the mixture of metal and oil being lighter than the sand or :

gangue and heavier than the water, and being carried away

by a current which will not carry away the sand or gangue.

This is all of the Everson disclosure. It is fully explained

in petitioners’ brief (pages 98-105). The interpretation of

Everson’s patent by the House of Lords is explained in

petitioners’ brief (pages 26-31). It is fully considered in

Judge Bradford’s opinion (pages 26 and 27), and that con-

sideration summarized in petitioners’ brief (pages 261, 262).

Fryer Hill and Criley-Everson Publications.

These publications come within the rule of Cohn vs.

U. S. Corset Co. (93 U. S., 366, 370) as stated in the quota-

tion at page. 210 of petitioners’ brief. They are wholly

insufficient for the carrying on of any procedure. Defend-

ant’s expert undoubtedly rejected the later of them as in-

sufficient, since he admitted that he knew of it (R., p. 125,

x q. 88), and yet failed to refer to it in his testimony attack-

ing the novelty of the patent in suit. The interpretations

placed upon these publications in respondent’s brief are

wholly those of counsel. The only testimony in the record

in regard to these publications is te the effect that the dis-

closures are insufficient, as appears in petitioners’ brief (pp.

105-108). The characterization of the Criley-Everson pub-

lication by the Privy Council is there quoted (R., pp. 106,

107), and is more fully considered earlier in petitioners’

brief (p. 28). Both publications were quite summarily dis

missed from consideration by Judge Bradford in his opin-

ion (p. 27).

Froment Patents.

In dealing with Froment’s “thin layer of ordinary oil”

respondent’s brief ignored the fact that Froment’s inven-

tion is stated in his British patent to be “a modification of

what is known as the oil process of ore concentration,” and

the evidence that the only process that could be thus re

ferred to was the Elmore oil-buoyancy flotation process and

that Froment was familiar with that process, which had been

installed at the mines where he wa. engineer. It ignores

the fact that defendant’s expert interprets this descrip-

tion as meaning olive oil, cotton-seed oil, or oleic acid,

and that the evidence shows that it requires twelve and a

half per cent of such oils to form the thinnest possible layer

that could have been described by Froment. In respondent's

brief, on page 41, line 5, it is stated that “olive oil” in such

thin layer is within a range of proportions the maximum

~ of which is 2.27 per cent, but an examination of the testimony

- teferred to shows that the item referred to was e mixture of

_ the very thin oil, turpentine, and olive oil. Again, it is said

on the same page, second peragraph, that Mr. Ballantyne’s

- determination of the thin layer is five per cent on the weight

of the ore, but an examination of the testimony referred to

shows that Mr. Ballantyne merely said “TI find that the thin

layer of oil amounts to not less than about 5 per cent on

the weight of the ore (that is 112 pounds of oil per ton of

ore) (R., p. 236). So also respondent’s brief appears to

forget the Froment Italian patent with its direction that

the mixture in the test tube is to be “agitated for a second”

(R., p. 473). These matters are fully treated in petitioners’

brief (pages 146-162), and in Judge Bradford’s opinion

(pages 31-33),

The elaborate effort in respondent’s brief to show that

this Froment procedure with its minimum of 11% per

cent of oil is the same as that of the process in suit with its

minute oil proportion of one-tenth of one per cent. in the

exceptional instance where the presence of a considerable

amount of calcite in an ore compelled the wasteful con-

sumption of sulphurie acid (which was decomposed by the

calcite immediately on contact therewith and had to be

added in such quantity that some portion of it would sur-

vive and act physically in the process) is perhaps best an-

swered in Judge Bourquin’s opinion wherein he contrasts the

Froment patents and the )*roment description with the

process in suit (R., pp. 21-4), most of which is quoted in

‘petitioners’ brief (pp. 167-169). An interesting series of

experiments, however, showing how the process-in=sxi is

driven out of a pulp in the practical operations under th

process in suit is described by Mr. Chapman and was not

referred to in petitioners’ brief. Here the ore contained cal-

tite in moderate amount and sulphuric acid had to be used

for its physical action and was, therefore, to some extent

wastefully consumed in the useless and inevitable chemical

action, resulting from its contact with calcite. The froth

Mm a succession of spitzkastens was analyzed as to its gas

contents and the first spitzkasten had 3 per cent carbon

dioxide mixed with the air, the second 1.6 per cent, the

third 1 per cent, the fourth 0.7 per cent. Unfortunately this

used up the sampling glasses and the disappearing factor of

carbon dioxide in the fifth and sixth spitzkastens was not

determined (R., p. 392). The evidence is quite clear that

the gas carbon dioxide is a harmless diluent of the air to

the extent that it has ever appeared in the process in suit

and that the successive agitations characterizing all practical

work under the patent in suit drive it out of the pulp when-

ever its formation in the pulp occurs because it cannot be

avoided.

Froment Description.

The disclosure of this private document is hopelessly

blended with the disclosure of Froment’s patents in respond-

ent’s brief. This is.particularly true in the deadly parallel

columns. The principal fault of the discussion of the

Froment description is that it ignores Froment’s very clear

and distinct statement that he removes all slimes from his ore

before he attempts to treat it. The best summary statement

of the essential facts as to this Froment description is found

in Judge Bradford’s opinion (pp. 33, 34). Judge Bradford

had before him the same evidence as is before this court

relative to the history of the efforts of Sulman, Picard, and

Ballot to make something of value out of all that Froment

disclosed both in his patents and in his description, and

. says:

“The fact that they did not utilize it affords the

strongest evidence that the Froment description did

not suggest a process in which the minute quantity

of oil requires by the first patent in suit could be

successfully used in ore concentration.”

“his subject is explained in petitioners’ brief (pp. 162-

171).

Glogner Patent.

This is the only document prior to the invention of the

process in suit wherein the word “froth” appears. That the

procedure here disclosed is one of oil-buoyancy flotation is

undoubted, and the matter is considered in petitioners’ brief

(pp. 119-121), but attention was not there called to the fact

that Glogner sprinkles his float with water “by means of a

rose” (the familiar watering-pot sprinkling nozzle), which

is the best possible means of destroying any little bubbles

of froth which might possibly have survived to the point

where the float is sprinkled with water. As Dr. Liebmann

says:

“Tf the inventor had contemplated a froth process,

he surely wouldn’t have destroyed the object of such

an invention by sprinkling water on the surface of

the oil” (R., p. 261).

Schwarz Patent 807,503.

This, of course, was not a patent, but only an application

in the Patent Office, at the time when the process in suit was

discovered and invented. It is considered in petitioners’

Lrief (pp. 171-177). Judge Bradford comments upon the

fact that this and another Schwarz patent, No. 807,502, were

offered in evidence by the defendant, but not explained in

defendant’s testimony, nor made the basis of any argument

in behalf of defendant (Judge Bradford’s Opinion, p. 25).

Nevertheless Judge Bradford takes the precaution of care-

fully considering these patents and says:

“There is, I think, no evidence or legitimate %m-

ference to warrant the conclusion that either of these

patents can affect the validity of the first patent in

suit.”

Judge Bradford’s consideration of these patents is sum-

marized in petitioners’ brief, pages 268-269.

Kirby Patents.

The best summary statement of the disclosures of these

patents appears in Judge Bradford’s opinion (pp. 24, 25).

They are very fully considered in petitioners’ brief (pp.

177-191). The principal vice of respondent’s brief in its

treatment of the Kirby-process patent is the multilation of a

sentence in quotation (p. 178) so as to make the first part

of the sentence appear to describe the main process, and the

concluding part of the sentence appear to describe a supple-

mentary process, whereas, in fact, the description is of

one continuous procedure, and not of a main operation and

“a supplementary or aditional operation,” as stated in re-

spondent’s brief. ‘

Potter Patent.

Respondent’s Brief quotes from the Privy Council judg-

ment the statement that the respondents there alleged that

their process could work with practical utility without any

admixture of oil (p. 84), and later asserts that in contradic-

tion thereof the petitioners here urge that oil must be used in

their process (p. 91), and later again quotes this statement

from the Privy Council judgment and says that apparently

the position was well taken since the Potter patent fulfills this

condition, and then proceeds to explain respondent’s theory

as to the disclosure of the Potter patent (pp. 96-98). These

statements involve suppression of the well known fact that a

few years after the discovery of the process in suit, the further

astonishing discovery was made that certain soluble sub-

stances were capable of acting as the minute amount of

insoluble oils act in the process here in suit in modifying

bubble and froth formation and action so that ores may be

concentrated by air bubble flotation. The patent for this

later discovery is not in evidence herein, but fortunately is

referred to and fully described in Judge Bradford’s Opinion

(pages 48-50). It is the soluble frothing agents patent No.

962678 of June 28, 1910, to Sulman, Greenway and Higgins,

and it was held by Judge Bradford to be valid and infringed

in the case before him.

The Potter Patent totally lacks a frothing agent of any

character, which accounts for the fact, testified to by re- %

spondent’s expert, that when he carried out this process ina —

test tube the metal “floated for a brief period only and then

again subsided to the bottom of the tube” (R. p, 104 expt.

4).

This quotation appears in full in Petitioners’ Brief (p.

118) and the Potter patent is fully discussed at pages 116-119.

Other Flotation Processes.

Respondent’s brief, on pages 54 and 55, refers to the

alleged use of other “processes” than chat of Minerals Separa-

tion, Limited, referring to the testimony of Chapman and

H, C. Hoover.

Mr. Chapman refers to a “modified” Potter process as in

operation during his visit to Australia. What the process

was or how it compared with the Potter patent in evidence,

or how it had been modified, we are left to conjecture. As

to the De Bavay and Delprat processes, Mr. Chapman merely

testifies that he tried to see them but failed and there is

no testimony as to what they were. ~All of these processes

may have been the Minerals Separation process secretly

practiced and disguised by another name. And so far as

the evidence goes the reference may be to a date subsequent

to the making of the invention in issue.

Mr. Hoover, a witness intensely hostile to Minerals

Separation, Limited, testified that he had been for many

years managing director of the Zinc Corporation, that the

Potter method proved a failure there; that in 1907 the

Minerals Separation process was installed and also proved

a failure; that a certain Elmore vacuum process was then

adopted, but ultimately some time in 1910 was discarded

and the process of Minerals Separation, Limited, was re

adopted.

The Zine Corporation at the time Hoover gave his testi-

mony in August, 1912, was paying Minerals Separation,

Limited, 2 shillings and §)pence per ton, on an annual pro-

duction roughly of 90,000 tons of concentrate (Record, p.

172). This figures out about $56,000 a year.

This witness admitted (Record, page 173 at bottom, and

174 at top) that the vacuum method had been applied to

selected material “of the simplest metallurgical character

amongst the company’s holdings and that the remaining

material was of such a character that it could not have

been treated profitably” by that Elmore vacuum process,

This witness also states (p. 173, Ex. Q. 33), that large

accumulations of tailings at Broken Hill, Australia, had

resulted from the fact that over a period of many years the

Broken Hill Mines were unable to profitably extract the zine

and there had accumulated some 10,000,000 or 12,000,000

tons of mill residues containing the major portion of the

original zine content.

Originality of Invention.

Under this heading respondent’s brief, on pages 193 to

199, argues that if a new invention has been made it is the

invention of Mr. Higgins, and not the invention of Messrs.

Sulman, Picard & Ballot.

But Mr. Higgins was merely the laboratory operator acting

under the instructions of Messrs. Sulman, Picard & Ballot,

and reporting to them. He was merely their hands to do

and their eyes to see. There is absolutely no evidence that

he suggested anything. (See Petitioners-Complainants’

Brief, pp. 227-229.)

Respondent’s brief calls attention to the fact that the in-

structions issued to Mr. Higgins called for observations and

determinations of several varying factors upon granulation.

~The instructions, however, were to press the observations

and determinations to the limit, no matter what happened,

and they were, in fact, broader than merely the investigating

of granulation. Thus Mr. Sulman testified (Record, p. 130,

side paging 259) :

““At some date a week or two prior to the discovery

of the air agitation froth, Mr. Ballot, Mr. Picard,

and myself had been in close consultation as to a

number of factors which we considered required final

investigating and quantifying. They concerned

mainly the operation of the Cattermole process, but

we also had in view the clearing up of a number of

loose-end observations noticed in previous develop-

ments of oil concentration work. * * * The

carrying out of these final investigations was done

under the immediate supervision of one or other of

us throughout the whole of them.”

See also Ballantyne as quoted.in our brief, page 68 at

bottom and page 69 at bottom.

Respondent’s brief says, on page 196, that the “observa-

tion” which “surprised and elated” his employers “was the

act of Higgins performed independently of the alleged in-

structions.” But this is simply contrary to the evidence.

Mr. Higgins was on the witness stand as respondent’s wit-

ness and testified that everything he did was done in pur-

suat.ce of the instructions of Sulman, Picard & Ballot, and

respundent did not dare ask him whether he was himself

the inventor or one of the inventors.

Respondent’s brief also says on page 196 that Mr. Ballot

testified in another suit:

“That his name appeared upon certain British pat-

ents because he was chairman of Minerals Separated,

Limited, and was specially directed by the directors

of that company to have his name added as a matter

of extra precaution for the company.”

The implication .clearly intended is that Mr. Ballot so

appended his name to the patent here in suit and only go.

But this is a distinctly false implication, as appears in

the record, at page 166, Q.’s 110 and 111, where Mr. Ballot

expressly states:

“That was not the reason why my name appeared

in the patent in suit or the corresponding British pat-

ent.

And in answer to Q. 110 he said:

“As a matter of fact I do not believe that my name

has appeared in any cases in the invention of which

I did not participate.”

Mr. Ballantyne, who, as patent agent, prepared the ap-

plication for the patent in suit, very fully explains these

matters and states his clear recollection of “taking steps to

insure that the application should be in the names of the

actual inventors” (R., pp. 228, 229, Q. 27).

All of the authorities cited on pages 197 to 199 of re

spondent’s brief are distinguished from the case at bar by

the circumstance that in them the outsider made the sugges-

tions substantially constituting the invention. In the case

at bar Mr. Higgins made no suggestions whatever.

The Question of Invention.

Respondent’s brief on page 16 cites authorities of this and

other courts under the caption, “Authorities That Change of

Degree Without New Result is Not Invention,” and the

authorities cited go only to that extent. They are one and

all distinguished from the case at bar, in that in the case at

bar the diminution in the quantity of oil employed intro-

duces a new principle of action and produces a new metal-

lurgical result. The new principle of action utilizes a char

acteristic of oil never before utilized in any metallurgical

process and not theretofore known to exist. And the new

metallurgical result is of such character and importance that

it has revolutionized the art, superseding prior processes, and

has rendered accessible the values in dumps and residues

weighing millions of tons that were theretofore unrecover-

able by any known process. Values to the extent of miilions

of dollars have been in effect created by being made recover-

able.

Under these circumstances the existence of invention is

simply not debatable.

That a new metallurgical result of momentous and revolu-

tionary eharacter has been achieved is manifest by the fact

testimony in this case which was referred to by Judge Bour-

quin (R., p. 21), and in Judge Bradford’s decision in the

Miami case on testimony given at a later date, and after a

prodigous intervening development in this country (see page

1 of his opinion); and it is significantly indicated also by

the circumstance that the right to use the process has been

worth fighting for twice in Great Britain, one case going to

the House of Lords, in 1909, and the other case coming up

from the Supreme Court of New South Wales and going to

the Privy Council, in 1914; and it is indicated also by the

ajoption and use of the process by defendant here, and by

others, such as the Miami Copper Company, and by the

character of this and other litigation in defense of continued

use of the process. Mere economy of a few thousand dollars

a year in oil does not explain these facts. They are ex-

plained by the $9,000,000 in metallic values that this process

recovered from the dumps of Australia, and by the $17.-

000,000 a year in metallic values added to the resources of

mankind by the application of the process to the principal!

porphyry copper mines of this country, as proved before

Judge Bradford in 1915 (see his opinion, page 18).

The Cireuit Court of Appeals in the case at bar agreed with

Judge Bourquin’s finding of utility on the testimony here,

and does not assume to find that that utility consisted merely

in a saving of oil.

That the process in suit introduces a new principle of

te an te a

action utilizing a characteristic of oil never before utilized

in any metallurgical process, and not known to exist prior

to the discovery and invention in issue, is proved to the point

of demonstration by the history of the invention, treated at

pages 59 to 83 of our brief, and particularly the history of

the making of the discovery itself, which is treated at pages

67 to 78 of our brief. Contemporaneous documents and the

sworn testimony of six witnesses, Sulman, Picard, Ballot,

Higgins, Chapman and Ballantyne, establish the facts—facts

sub-tantially ignored in respondent’s brief and in the opinion

of the Circuit Court of Appeals in this case. Five of these

men were distinguished metallurgists skilled in this art.

Their efforts and energies for a period of two and one-half

years preceding the making of the invention in issue had

heen directed to the problem of concentrating the ore resi-

dues found in the dumps at Broken Hill, Australia, to the

extent of 10,000,000 to 12,000,000 tons, one-third of which

dumps was metallic zine, lead and silver, but to which, owing

to the almost identical specific gravity of the metal and the

particular gangue with which it was associated in that ore,

water concentration processes were inapplicable and useless.

These metallurgists, with all the information that Froment

could give them, publicly and privatelv, had failed to make

his process work and had abandoned it about a year before

the making of the invention in issue, and had scrapped the

Froment apparatus. They had also early rejected the

Elmore bulk oil process, with its reliance upon oil buoyancy

to float metal, and had centered their efforts on the Catter-

mole process, wherein the agglutinating action of oil is util-

ized and reliance is placed upon the greater tendency of

large granules (as of metal) to sink than that of small un-

agglutinated particles (as of gangue) ; the values in this case

being sent to the bottom. In this quest the inventors stum-

bled upon the conditionscharacterizing the process in suit, in-

cluding the minuteness in the quantity of oil emploved, and

were astonished both at the values recovered and at the man-

ner of recovery, for the values went to the top instead of going

to the bottom; and they recognized at once that a new

quality in oil had been discovered, that a new principle of

action had been invoked, and that a new metallurgical result

had been achieved. This instant and astonished recogni-

tion, the anxious and careful repetition of the procedure time

after time in order to make sure that it was not a freak

operation, and the immediate abandonment of all interest

and effort in the Cattermole process, and exclusive adoption

of the new flotation process, both in the laboratory in London

and in the commercial plant in Australia, that Chapman was

at that very moment perfecting and putting into operation

for the Cattermole process—all this appears in the contem-

poraneous documentary evidence, as well as the inventors’

intelligent appreciation of the fact that it was neither the

buoyancy of the oil, as in Elmore, that caused the flotation,

nor any agglutinating action of the oil, as in Cattermole, nor

any action of carbon-dioxide gas chemically formed in situ,

as in Froment, but solely the buoyancy of air bubbles, and

that the oil present in the astonishingly minute quantity

at which the new operation had developed merely so con-

ditioned the operation—so contaminated the pulp—that the

agitation produced just the character of minute and per-

sistent air bubbles necessary to achieve the flotation and con-

centration.

It is impossible to read this history without reaching the

settled conviction that what these men did was not obvious

or a result predictable beforehand, and that thev achieved

not a mere reduction of the quantity of oil in an old process,

but a fundamentally and conspicuously new process. Their

surprise at their own achievement is not found merely in

their depositions taken in this case, but is found in the con-

temporaneous documents, of a date long anterior to this

controversy.

Thus Mr. Ballot wrote to Australia on March 10th, 1905

(to Mr. Courtney, Consulting Engineer for Minerals Separa-

tion there at that time; R., p. 159, below the middle) :

“T am pleased to tell you that during the week we

have made some very important discoveries which

will, I think, almost revolutionize our processes by

way of simplifying and cheapening the same.

* %* * IT may mention for your private informa-

tion that we do not use more than .1 per cent of

Oleic acid per ton of ore, and although we have not

assays out that the recoveries will be very satisfac-

tory.”

Mr. Higgins on March 16th, 1905, making a formal

report in writing of what had been orally reported from day

to day (R., p. 448), says:

“The effect of diminishing the percentage of Oleic

acid is to alter the type of oiling; the higher percen-

tages producing granules, and the lower ones froth.

* * * 0.62 per cent Oleic acid on the mineral is

insufficient to form any granules and nearly the

whole of the mineral comes to the surface, on stopping

the cone, as froth.”’

And the “Details of Experiments,” given immediately

below on the same page, show that at 0.32 per cent of Oleic

acid on the ore the float was “vastly increased,” and at 0.10

per cent the float was again “vastly increased” even over

that.

Mr. Ballot on March 17th, 1905 (R., p. 159, at bottom),

wrote again to Mr. Courtney, enclosing Higgins’ report, and

saying (p. 160, line 4):

“T think this discovery very important, indeed.

* * * As TI wrote you in my last, we are having

our patents thoroughly overhauled in view of these

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