# Appendix — Minerals Separation, Ltd. v. Hyde

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1916
- **Citation:** 242 U.S. 261

## Text

Table of Contents.

Petition

39

ppendix, House of Lords Judgment... = 41

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.

4

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

2

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

3

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.

4

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-

5

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

6

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-

7

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

8

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

9

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

10

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
en

11

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).

12

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

13

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

14

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

15

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, :

16

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.

17

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).

18

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-

19

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

20

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’

21

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.

22

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).

.

23

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

25

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

26

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.

27

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

28

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,

29

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

30

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

31

“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,

32

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:

33

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

34

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

35

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-

36

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

or

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.

37

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-

38

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.

39
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.

41

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,

42

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

43

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.”

44

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)

45

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.

46

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.

47

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

48

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

49

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.

50

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

51

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 |

52
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

53
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

54

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

55

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

me

56

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-

57

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-

58

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-

59

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

60

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

61

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

62

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.
© Respondent must establish fundamental fiction that, with a
. 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-

la

wrone wok

2

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.

3

| __ _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

4

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

5

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? Page 21, line 39: Insert a between “of” and “balloon”

| Page 21, last line: Insert a between “of” and “proportion”

- Page 23, line 32: Change “is” to are, so that the line will read:

H niy, in the majority of cases, are good, and the best results ob-
® ”

4 Page 42, line 34: Change “and” to to between “102” and “105”
_ Page 103, line 41 (9 from bottom): Change last word “held” to
| Page 196, line 4: Change “to” to of before “114 Ibs. of oil per
ton of ore”

Page 197, line 13: Insert as between “used” and “a minimum
saial??

| Page 222, line 26: Change “any” to an before “oily mass with
? .

- Page 288, line 14, following heading “Example 2” change “from”
i between “concentration” and “cakes’’.

| Page 294, line 3 following heading “Process Revealed by In-
tre og change “of” to for between “per minute” and “about ten
» Page 294, line 6 from bottom: Change “to” to in between “result-
ig” and “oiled”

» Page 314, line 13: Insert the decimal point before “5% of sul-
buric acid”

' Page 326, line 28: Change “777,247” to 777,274

"Page 373, line 6 from bottom: Change “off” to of between “oil
focess” and “ore concentration”

' Page 436, line 3: Change “ersidues”’ to residues

‘Page 569, following the star page note 1083, the black line or rule
fer passing above the words “Cancelled June 15/06” should pass
Wwnward and then below the words

2

“fraction of 1% of oil on the ore, agitating the mixture to cause the

oil coated mineral to form a froth, and separating the froth from
the remainer of the mixture.”

The meaningless numeral 18 on the line below that commencing
with star page 1083, should be erased.

To make perfectly clear what matter enclosed between rules was
erased by amendment, a diagonal line should be drawn across the
print from the top rule on the page to the second rule on the page
and from the third rule on the page in its amended position down
to the fourth rule on the page. A page corrected as above is hereto

annexed.

osm s«,

3
Canceled June 29/06.

12. The process of concen
consists in separating the mingfals from gangue by coating
the minerals with oil in wajér containing a fraction of 1%
of oil on the ore, and recoyéring the oil coated minerals.

| [Matter enclosed between rules erased in copy.]

12 [12].* The process of concentrating powdered ore which
consists in separating the minerals from gangue by coating
1083 the minerals with oil in water containing a

fraction of 1% of oil on the ore, agitating the mixture

Canceled| to cause the oil coated mineral to form a froth, and

June 15/064 separating the froth from the remainder of the
mixture.

14. The herein described proce of concentrating ores

ores with water, adding a

on the ore) agitating the m&ture until part of the oil-coated
‘mineral matter forms in
jecting the remaining
in a closed chamber/an
whereby gaseous b
the oil-coated mi

to the action of a compressed gas
thereafter relieving the pressure
les are liberated in the pulp and raise
al particles to the surface.

[Matter enclosed between rules erased in copy.]
Insert B, Apr. 24/06.>

Respectfully submitted,
KNIGHT BROS., Attorneys.

Wash., D. C., April 14, 1906.

Kinapom or Great BRITAIN AND IRELAND,
City of London, England, ss:

Henry Livingstone Sulman, Hugh Fitzalis Kirkpatrick-Picard, &
John Ballot, being sworn, depose and say that they are subjects of
the King of England, and residents of London, England, that they -§
verily believe themselves to be the original, first and joint inventors a
of the improvement in Ore Concentration described and claimed in

[* Words and figures enclosed in brackets erased in copy.]

+

4

Page 582, line 3: Change “through” to thorough
Page 582, line 36: Change first “of” on this line to or, so that
the line will read:

“and oils by one or the other of which practical results may be ob-”

Page 688, line 11: Change “salution” to solution
Page 707, line 7 from bottom: Change “oiling” to oil, so that the
line will read:

“of a modification of what is known as the oil process of ore”

Page 746, line 15: Change “demonstration” to demonstrations

It is further stipulated that the following correction shall be made
in Petitioners’ brief:

Page 41, line 7 of first quotation : Change “is quoted” to are before

HENRY D. WILLIAMS,
Counsel for Petitionera-Complainants.
WALTER A. SCOTT,
Counsel for Respondent-Defendant.

Supreme Court of the United States, October Term, 1916.
No. 46.

MINERALS SEPARATION, Lrp., and MINERALS SEPARATION AMERICAN
SynpicaTe, Lrp., Petitioners-Complainants,

vs.
JaMEs M. Hype, Respondent-Defendant.

It is hereby stipulated that the following corrections be made in
the transcript of record:

Page 448, under heading “Details of Experiments” :—

Experiment 8: Change “0.8” to 0.08%, so that the figures on this
line will read:

“0.4 ec, 0.08% 6% 30.5°”

Experiment 11: Change “0.4%” to 0.04%, so that the figures on
this line will read:

“0.2 ec. 0.04% 8 32°”

Experiment 12: Change “0.002%” to 0.02%, so that the figures
on this line will read:

“O.1 ce. 0.02% 12 32°”
. HENRY D. WILLIAMS,
Counsel for Petitioners-Complainants.

WALTER A. SCOTT,
Counsel for Respondent-Defendant. |

IN THD

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-DEFENDANT.

ILLUSTRATIONS
PETITIONERS - COMPLAINANTS

TO
THE

SUPREME COURT

OF THE

UNITED STATES.

FOREWORD.

The petitioner will illustrate the only processes which have
at any time gone into practical operation (Elmore, Catter-
mole, and the patent in suit), and in addition, the processes
described in the Everson, the Froment and the Kirby pat-
ents. In each case that which is described and prescribed
in the patent will be faithfully followed, both as to apparatus
and as to procedure.

The descriptions will include quotations from the appro-
priate parts of the patents.

ILLUSTRATION 1.

Everson Patent, No. 348157 (printed R., p. 578), 2nd
method.
Description in Record.

This second method is described in the patent as follows:

“When petroleum or a constituent thereof is used
the oil should desirably be first mixed with the ore,
, then water added containing a suitable amount of
free acid * * * the quantity of water being
ample for the washing-out operation, which is to
follow, and the pegeed of acid sufficient to cut the
sand away from the otherwise cohering mass. In the
case of ese or its constituent, paraffine-oil, one
or two fluid drams of acid to one gallon of water is
sufficient for this Purpose. The petroleum which |
have used was 30° Baumé, and I have found three
fluid drams of oil abundant for properly moistening
two ounces of heavy ore, or in the ratio of about a
barrel of oil to the ton of ore, the amount being, of
course, variable with the relative bulkiness of the ore.
In the use of petroleum, or of a liquid constituent
thereof, like paraffine-oil, the condition of the con-
centrated mass is more liquid than when a vegetable
or an animal oil or a fatty constituent thereof is used,
and a somewhat different means or method should
be employed for removing the sand. In practice, the
concentrate, after through agitation of the mass and
detachment of the sand, will in this case be preferably
removed by means of a constant overflow of water
from a washing-out vessel, by which overflow the
concentrate will be floated off. Devices and methods
now well known in wet separation of ores will be
suited to this part of the operation, Bearing in mind
that the sand and mineral are merely transposed or
their relative positions are reversed, because the sand
is heavier than the mixture of mineral, oil, and acid.
A proper selection of devices for this purpose will be
apparent to those skilled in the wet separation of
ores” (R., pp. 581, 582).

Apparatus.

Materials
Used.

Operation.

Result.

3

Illustration for Court.

Miner’s gold washing pan for water concen-
tration. .

The mixture thoroughly agitated in water
acidulated with 0.1% by volume of sulphuric

of water).

Concentrates then separated by vanning in
the pan.

Concentrates mixed with oil, the mixture
being heavier than water but lighter than
sand, are overflowed in current of water.

ILLUSTRATION 2.
A. S. Elmore Patent, No. 689070 (printed R., p. 612).
Description in Record.

Repeating experiments of George A. Chapman (R., p.
197), and Dr. Charles F. Chandler (R., p. 368).

Mr. Chapman, testifying as to the standard methods used
by him in testing the Elmore process in the laboratory in
the days when that process was used in the mill, says:

“T took a glass cylinder that would hold 1200 cc.
of water and in this placed 100 grammes of crushed
ore. To the ore would be added 600 to 800 ce. of
water. Upon this would be placed 100 grammes of
thick residuum oil. The stopper would be placed in
the cylinder and the cylinder was then gently tipped
or revolved in a vertical direction. I would exercise
great care not to break up the oil which would bring
about.a frog’s spawn effect. After about thirty tips,
that is to say fifteen vertical revolutions of the cylin-
der, I would let the water pulp settle.”

The quantity of acid used is not here described, but it is —
described in the Elmore patent at R., p. 613, line 4 et seq., as
follows:

“The quantity of acid added in either case is small,
as it often need not exceed one five-hundredth part
of the volume of oil or water employed in the opera-

tion.” |
Illustration for Court.
Apparatus. Glass cylinder; capacity about 1200 cc. of
water.
Materials 100 grms. of copper ore.
Used. 600 ce. of water.
0.66 ce. of sulphuric acid (1/500 part of
the water).
100 grms. of thick black oil (1” layer).
Operation. The cylinder tipped 30 times, 7. e., 15 ver-
tical revolutions.
Result. A floating layer of oil containing metal en-

trapped in it.

ILLUSTRATION 3.

Cattermole Patent, No. 777273 (printed R., p. 647).

Description in Record.

The following are excerpts from the Cattermole patent:

A gitation.

Separation.

Amount of
oul.

“In a suitable apparatus, an example of
which will be hereinafter described, the ground
or pulped ore is caused to be violently agitated,
as by a revolving stirrer, in a mixture of water
and oil, the liquor being acid. As the agita-
tion proceeds the particles of metalliferous
matter agglomerate together and may be ob-
served in the form of granules, the size of
which will depend, among other things a
the percentage of oil used” (R.,

[Text truncated at 120,000 characters. The full text is on the page linked above.]

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386003_0236%3A2. Public record. Not legal advice.