Anilin v. Cochrane.

sition of matter to a patent for it on application, accompanied by a drawing, with references, "where the nature of the case admits of drawings, or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter." (Act of July 4th, 1836, sec. 6, 5 U. S. Stat. at Large, 119.) The application for this patent was not accompanied by any specimen of ingredients or of the compound. It is urged, in argument, that this product is not a patentable composition of matter, and that the absence of specimens shows it is not, and that it is not a manufacture, nor anything mentioned in the patent law as patentable. These terms in the statute are not understood to be placed there as stools, betwixt which inventors may fall to the ground, but to cover the whole range of useful invention, to every piece of which some one of them, and to many, more than one of them, will apply. This product may fall under the head of either a manufacture, or a composition of matter. If it is a composition of matter only, the statute, from the context as quoted, may be construed to mean that specimens are to accompany the application, when the nature of the case admits of specimens. If the statute is so construed, whether the nature of a case so admits, must be left to the determination of the Patent Office, subject to its requirement. And in this case it must have been determined that the nature of the case did not so admit, and so none have been required. And, however this may be, the statute has not placed the lack of specimens among the defences to a patent, and, as it was granted, it cannot fail for that reason.

The English Statute, (21 Jac., 1, c. 3,) only saved grants and privileges of the sole working or making of any manner of new manufacture within the realm, to the first and true inventors of such manufactures, from the prohibition of monopolies; but, under the liberal construction which the word manufacture in the statute, from the nature of the subject, required, and, at the hands of the Courts, received, to carry out the intention, it was extended so as to cover all sub

Anilin v. Cochrane.

jects of invention of material things that were useful. (Boulton v. Bull, 2 H. Black., 463; Hornblower v. Boulton, 8 T. R., 95.)

This production of Graebe and Liebermann, however like natural alizarine, was not that. It was entirely new in its source and its coming. No one had ever seen or known of such a thing before. Its addition to the productions known before was, in the language of Buller, J., in Rex v. Arkwright, (Web. Pat. Cas., 71,) a vast "improvement of the trade." According to Heath, J., in Boulton v. Bull, the product only, and not the process alone, would have been patentable, under the English statute. He said, referring to the statute: "What then falls within the scope of the proviso? Such manufactures as are reducible to two classes. The first includes machinery, the second substances, (such as medicines,) formed by chemical and other processes, where the vendible substance is the thing produced, and that which operates preserves no permanent form." "I asked, in the argument, for an instance of a patent for a method, and none such could be produced. I was then pressed with patents for chemical processes, many of which are for a method, but that is from an inaccuracy of expression, because the patent in truth is for a vendible substance." This, of course, does not show that, under a statute which includes the term art, a process merely would not be patentable; but, a product patentable under one would be under the other. In Steiner v. Heald, (6 Eng. L. & Eq. R., 536,) the patent was for the invention of a new manufacture of garancine. Garancine was an extract from madder, having its pure red coloring matter, and was well known. The plaintiff produced it from spent madder, by the same process by which it had before been produced from fresh madder. It was ruled at the trial, that, because it was the same substance, it was not a new manufacture. This ruling was reversed in the Exchequer Chamber, on the ground that spent madder "might be a very different thing from fresh madder, in its properties, chemical and otherwise," and that whether it was or not would be material to the validity

Anilin v. Cochrane.

of the patent. If it was, the novelty of the manufacture would consist wholly in the material from which it was produced. There would be a combination of new materials, which would be a new combination; and so there would be here. In the case of The Wood Paper Patent, (23 Wall., 566,) the paper pulp sought to be covered by the patent was not made at all by the new process, but was merely extracted by it. It was cellulose before the treatment and after; an extract and not a compound; and its patentability appears to have been denied on that ground. There was no new combination about it.

The plaintiff does not, however, rest the claim of novelty upon the production from a new source, but claims, upon the evidence, that the thing itself, independent of its source, when compared with the alizarine of madder, is different from it. The defendants deny this, and the evidence, although all credible, in view of the honesty and sincerity of the witnesses, is somewhat conflicting. The question is one of fact, and quite intricate, involving a high degree of skill in the subject, and requiring the aid of persons possessed of it, which has been furnished by both sides.

Considerable of the testimony, and especially of that from abroad, taken probably without the presence of counsel who manage the cause, goes to show only what Graebe and Liebermann sought after, and thought they had found, when they had succeeded with their experiments, rather than to show what they actually did discover and invent. But, what they sought for, intended, or thought, does not seem to be of so much importance here. An invention is not like a will, depending on intention. It is a fact, and, if the fact exists, it does not appear to be material whether it came by design, or accidentally without being bidden. The question here is, whether this substance which they produced is, in its structure and properties, old or new; and not whether they looked for something old or new, or thought they had found either one or the other. Separated from the rest, the testimony as to whether this product is actually different from the other,

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8

in some respects material to dye-stuffs, is full, and not very conflicting. Each has the formula C1 Hg O, but that is not conclusive. Alone it is hardly a circumstance. Chemists on each side of the case agree about this. Prof. Chandler, at page 204, so expresses himself, and instances diamonds and plumbago as having the same formula without any resemblance. The testimony of President Morton at page 466, and that of Prof. Hedrick at page 52, is to the same effect. As an example akin to this question, shown by the evidence, there is the purpurine of madder, whose formula is C11 Hg O5. Perkin discovered a purpurine from anthracene, which he called anthrapurpurine; Auerbach, a purpurine from the same source, which he called isopurpurine. Some say these two are the same and others that they are different, but all agree that both are different from the purpurine of madder, yet each has the same formula C14 Hg O5.

The presence of these newly discovered purpurines in the artificial alizarine, where they are said to have and appear to have an important influence, is relied upon largely as showing that it is different from the natural alizarine. The testimony of several eminent and reliable chemists is to the effect that it is so present. The testimony of Prof. Chandler, who is also eminent and reliable, is largely depended upon to show to the contrary; yet after spending a great deal of time in investigating the subject, and after having testified in regard to it several times before, and as late as November, 1878, he testified further, speaking of the process of the patent: "I am to-day unable to say whether anthrapurpurine or isopurpurine is a necessary by-product of the bromine process of Graebe and Liebermann." He appears to depend largely upon what they intended and thought, in settling in his own mind what they did. The little importance of their intentions and suppositions becomes more apparent, when it is considered, in this connection, that isopurpurine and anthrapurpurine, whether the same or different, were not discovered at all until 1870, long after the invention and patent. On this question it seems sufficient to say, without specifically refer

VOL. XVI.-11

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ring to the evidence further, that it is satisfactorily found, as a matter of fact, that this artificial alizarine of the patent is essentially different, in capabilities and properties, from chemically pure alizarine, madder alizarine, or any coloring matter before known and used.

It has been argued with much plausibility, for the defendants, that the patent itself is, in intention and effect, a patent for chemically pure alizarine; that the various steps of the process described in it might as well be represented by chemical notation, in equations and formulæ which would end in the formula C14 Hg O4; and that, if the finding should be as just stated, the invention would be of one thing, and the patent for another, and that patented old and well known. Here, in view of the evidence relied upon in support of these propositions, the distinction between what the inventors actually did, and what they intended to do and supposed they had done, as well as the difference between this patent and others and other documents, must be attended to. In the specification of an English patent, and elsewhere in writings, they characterized this product as chemically pure alizarine. There is considerable controversy among experts about the meaning of that expression where used. But neither that expression, nor the formula for it, is used in this patent, and this patent must speak for itself, and be understood as expressing what is to be gathered from what is there. Considering anthracene, or anthrachinone, as the starting point, the patent describes a series of chemical reactions ending with the "yellow flocks of alizarine." These reactions might be stated in equations, but it is to be remembered that, as shown before, the successive formulæ, when stated, would not show all the characteristics or properties of the corresponding substances. So, the fact that they could be expressed in equations, and that chemists would understand the same things when so expressed that they do as now expressed, is not at all decisive. Neither could the actual effect of such reactions be accurately calculated beforehand. They must be first tried and their effect found from the actual result.