UNITED STATES CIRCUIT COURT SOUTHERN DISTRICT OF NEW YOEK. IN EQUITY. DECISION BY JUDGE BLATCHFOKD. 'The Bumford Chemical Works vs. John E. Lauer. Opinion of the Court. July 13,1869. In this case the original patent was granted to Prof. Eben N\ Horsford, April 23,1856, and was reissued to the plaintiffs, who are assignees, May 7, ! 1867, and reissued to them a second time, June 9, 1868. The infringement al- I leged in the bill is the making and selling by the defendant, of pulverulent acid, in infringement of said reissued patent of 1868. ***** The specification of the plantiffs' patent states the invention to be "a new pulverulent acid for use in the preparation of soda powders, farinaceous rood, and for other purposes." It then describes the acid and the mode of its preparation. It says: " Carefully washed and properly burned bones, after oein ground, are put into freshly diluted oil of vitriol, with continual stirring- and in the following- proportions: Five hundred pounds of the above described bones, (sometimes called bone ash), four hundred pounds of oil of vitriol, and one thousand pounds water. These ingredients are stirred, from time to time, for about three days, when, ordinarily, the action will be completed, and the resultant products will be phosphoric acid, superphosphates and sulphate of lime, or gypsum, with a small proportion of salts of magnesia and soda in a paste-like mass." Various methods are then described foi- making this mass pulverulent; (1st.) Mixing it, while moist, with any farinaceous substance, drying it slowly inthesun or with artificial heat not above 150 F. and pulverizing it; (2d.) Mixing it with freshly burned gypsum drying it in the sun, or by artificial heat, and pulverizing it; (3d.) Mixing it ?with stearine or other fatty bodies, drying it and pulverizing it; (4th.) Leaching the mass, mixing the concentrated extracts with burned gypsum or stearine, drying it and pulverizing it; (5th.) Drying and pulverizing it without admixtures. All or thesemodes arestated to lave given desirable results, but a preferable mode is then described, which consists in leaching the mass, concentrating the mass to 25 Baume, thereby obtaining a solution consisting of phosphoric acid and acid phosphate of lime, with slight traces of other salts, substantially freed from gypsum or sulphate of lime,heating: ten gallons of this mi xture to boiling, adding four pounds of perfectly white bone ash, continuing the boiling until the concentrated liquid mass, containing in solution the added bone ash, becomes pasty, cooling the mass, adding seventy-six pounds of wheaten flour, mixed to a uniform paste, adding sixteen pounds of potato starch, carefully mixed, sifting it through a sieve with quarter inch me3hes,dryingit thoroughly at a temperature of not over 150F. and pulverizing it.* * The specification says: "* * Thebodywhichlhave inventedund above described is a form of acia phosphate of lime, or of mixed acid phosphate oi lime and phosphoric acid, in which the phosphoric acid is the active and valuable constituent, free from the objectionable qualities of the above-mentioned bodies. It is a dry, fine, white, or nearly white, homogeneous powder, unobjectionable on account of odor, taste or composition, is an essential and important element in healthful nutrition, and is suited to be employed as the acid ingredient in the preparation of self-raising farinaceous food. * * *" The claims of the patent are as follows : " 1st. I claim, as a new manufacture, the above described pulverulent phosphoric acid; ad. I claim the manufacture of the above described pulverulent phosphoric acid, so that it may be applied in the manner and for the purposes described; 3d. I claim the mixing, in the preparation of farinaceous food, with flour, of a powder or powders, snch as described, consisting of ingredients of which phosphoric acid or acid phosphates and alkaline carbonates sire the active agents, lor the purpose of liberating carbonic acid, as described, when subjected to moisture heat or both; 4th. The use of phosphoric acid or acid phosphates, when employed with alkalive carbonates, as a substitute for ferment or leaven, in the preparation of farinaceous food." * * * The defenses set up are, that Horsford was'not the original and first inventor of anything which has been made and sold by the defendant, and that the defendant has not infringed the patent, * * * The article relied onbv the defendant as antedating Horsford's acid, is what iB known as the three-fourths phosphate of Berzelius, described in the Hand Book of Chemistry by Leopold Gmelin. volume 3, page 195, published in 1846. It is claimed by the defendant, that this three-fourths phosphate is an acid phosphate of lime possessing all the properties and qualities specified in plaintiffs' patent asbeing possessed by Horsford's pulverulent phosphoric acid, and as being necessary, in admixture with bicarbonate of soda, lor the preparation of self-raising farinaceous bread; that it is a dry, non-hygroscopic, fine, white, homogeneous powder, unobjectionable on account of odor, taste or composition ? that the phosphoric acid of such powder is the active agent, when the powder is mixed with bicarbonate of soda and moistened, in liberating carbonic acid gas, to give porosity to dough : and that such acid, in uniting with the soda of the carbonate, to evolve carbonic acid gas, forms phosphate of soda which is deposited in the dough. The three-fourths phosphate is so called because it has a chemical composition of four atoms of oxide of lime and three atoms of phosphoric acid. The entire passage in Gmelin describing this phosphate is as follows: "4 Ca 0, 3 PO5. c. Three-fourths Phosphate. Aqueous solution of phosphoric acid is saturated with the salt (a,) the solu-tionmixed with alcohol, and the white precipitate formed washed with alco-liol and dried. White powder, having an acid taste and reddening litmus. With water it separates into the insoluble salt &and an acid salt, which remains in solution (with one atom of acid?) (Berzelius Ann. Chem. Phys.,2, 167.) If the salt a, recently precipitated, is immersed in a solution of hydra-ted phosphoric acid ignited just before it was dissolved in water, it gradually changes to a tenacious acid mass, which maybe drawn out into threads and sticks to the teeth; after drying, it becomes yellow, transparent, and very friable. This substance has the same composition as c and is decomposed in the same manner by water, but contains metaphosphoric acid as well as ordinary phosphoric acid. (Berzelius, Lehrb.,4, 277.) Graham regards this compound metaphosphate of lime." * * * EVIDENCE FOK THE DEFENDANT. The defendant claims to have shown that one Place, who is not a chemist, prepared, from directions given to nim, an acid posphate, in the form of a Sowder which was successfully used fn making bread, in connection with the icarbonate of soda, and tliat the mode of preparation corresponded with the description in G-melln. Professor Austin Flint, Jr., testifies, that, from the passage in Gmelin, he entertains no reasonable doubt that a pulverulent acid phosphate was prepared by Berzelius, and that he cannot see that an acid phosphate prepared accord-ins; to the directions given by Berzelius would not be useful in raising bread, if usedinthe same manner as the Horsford acid phosphate. ProfessorGeorge F. Barker, Professor of Physiological Chemistry and Toxicology in the Medical Institution of Tale College, testities, that the description in Gmelin issufflciently accurate to enable a chemist to produce the salt described in the first paragraph, that is, the white acid powder, without invention ordiscovery; that he produced at the first trial, a substance having all the properties described in Uie first clause of the paragraph of Gmelin; and that, from the results of his own experiments, lie could see no difficulty, alter producing that acid once successfully, in repeatingits production any number of times successfully. * * * Professor Seeley testifies, that the description contained in the first clause of the paragraph of Gmelin is sufficiently clear to enable a chemist, without invention or discovery, to produce such a three-fourthsphospliatesus the sample which he produced as an exhibit, and having the acid properties stated in said garagravh; that he has made experiments, with a view to ascertain whether, ?om the description by Berzelius and the paragraph in Gmelin he could pro-duceapowder which would not be acid or which would be sticky, and was unable to produce such a substance; that the process described in the first part of the paragraph of Gmelin is very explicit; that it is impossible, when it is intelligently followed, to produce any other substance than the three-fourths phosphate, such as the specimen so produced by him as an exhibit; that he has made several specimens of such three-fourths phosphate: and that, when the process was intelligently followed, it invariably produced the same Professor Silliman, Professor of general and applied Chemistry in Tale College, testifies, that the description in Gmelin is sufficiently clear to enable a chemist, without invention or discovery, to produce such a three-fourths phosphate asthe specimen produced by him as an exhibit; thatsuchiphosphate is an acid phosphate, which, in. its reaction with the bicarbonate of soda, envolves carbonic acid and produces phosphate of soda; and that the specimen which he produced as an exhibit was prepared by dissolving in water elacial phosphoric acid, boiling the solution until all the metaphosphoric acid was converted into triliydric phosphate, diluting to about 1100 orll50 of concentration, saturating with common commercial bone phosphate ina state of solution, adding alcohol, which threw down a volumnious precipitate of the three-fourths phosphate, throwing it upon a filter, washing it with alcohol, and drying in the air. It is shown, by the evidence, that a chemist would properly understand, by the expression " the salt (a)," in Gmelin, what is known as bone earth or bone Shospliate or ordinary phosphate of lime. The paragraph in Gmelin plainly escribes two substances, and a separate process for making each of the two substances. The first substance is a white powder, to be producedby saturating with phosphate of lime an aqueous solution of phosphoric acid, mixing alcohol with the solution, and thus forming a white precipitate, which is to be washed with alcohol and dried. The second substance is acid, but tenacious and sticky, and is to be produced by immersing the salt a recently precipitated, in a solution of hydrated phosphoric acid, ignitedjust before it Is dissolved in water. The chemical testimony shows that there is a sufficient difference in the two processes, caused by using in the latter one, hydrated phosphoric acid,and i gniting it before dissolving it in water, to produce the difference in result. * * * THE PLAINTIFFS' EVIDENCE. In reply to the testimony introduced on the part of defendant as to the identity of the powder described by Gmelin, with the powder claimed in the first claim of the plaintiffs' patent, as above defined, Professor Horsford, himself, and Professor K. Ogden Doremus, testify, tliat they were unable to make, with certainty, from the description in Gmelin, a powder capable practically of being relied on to envolve carbonic acid gas from bicarbonate oi soda. Professor Doremus states, that the paragraph in Gmelin does not contain such a description as will enable him, as a practical chemist, to produce pulverulent acid phosphate suitable for use in making bread : that he saturated an aqueous solution of phosphoric acid with phosphate of lime, mixed the solution with alcohol, producing a white precipitate, washed that with alcohol and dried it, and thus produced a white powder, which had an acid taste and reddened litmus, but, after a short time, became inert and would not, when mixed with bicarbonate of soda and water, envolve carbonic acid gas, although, when first prepared, it would, when combined with the bicarbonate of soda, set free carbonic acid; and that he made but one experiment to produce a powder by following the description in Gmelin. Professor Horsford testifies, that he began his attempt to make a practical pulverulent phosphoric acid, suitable for use in the preparation of bread, with the study of what Berzelius describes; that he devoted a great deal of time to the subject, and found that, when produced in the m anner described by Berzelius, the article was sometimes sticky, and uniformly lost strength from day to day, however prepared, until it was fin ally withou t any capacity to decompose bicarbonate of soda, and was sometimes, "when first prepared, inert; and that he experimented for many months, between the year 1852 and the year 1856, to produce the three-fourths phosphate described by Berzelius, sometimes producing three-fourths phosphates which, for a comparatively brief period after they were made, would decompose bicarbonate ot soda, but would uniformly lose their strength and become, in time, substantially inert. He produced some specimens which he stated were made, during the taking of testimony in this case, in accordance with the method given by Berzelius, one of which was inert, and the other three nearly so, one of the latter being sticky. JUDGE BLATCIIFOKDS CONCLUSIONS. In this condition of the chemical testimony, that on the part of the defendant far outweighs that on the part of the plaintiffs. The former is positive and affirmative, while the latter is merely negative. As the acids produced I by Professors Seeley, Barker and Silliman were not prepared according to the process described in the plaintiffs' patent, or according to the process described in the defendant's patent, they must have been prepared according to the description in Gmelin, which is the method of Berzelius, or the chemists who prepared them must have devised or learned some other method. No sugestions to this last effect is made. Those chemists produced, by following the description in Gmelin, a dry, fine, homogeneous powder, containing, as an active agent, phosphoric acid in an available condition to be used as a substitute for other acid, in decomposing an alkaline carbonate, in making bread without the use of ferment, and which was usedforthatpur-pose successfully, and the powder did not, by being kept, lose its acid strength or become inert, or absorb moisture from the air, or part with any of the qualities defined in the plaintiffs'patent as necessary in such a powder. Why it is that the chemists who testified on the part of the defendant uniformly succeeded in making.from the description in Gmelin, an article having those qualities, while Professors Horsford and Doremus failed, does not clearly appear, although it is quite probable, from the evidence, that the inertness of the powders testified to by Professors Horsford and Doremus was owing to the use by them of too diluted a solution of phosphoric acid. That the pulverulent phosphoric acid, as a chemical substance, claimed in the first claim of the plaintiffs' patent, existed prior to the invention of it Dy Horsford. is established by the evidence in this case. The first claim is, therefore, void, for want of novelty. As to the second claim, if it be regarded as a claim to the process described in the patent for making the acid, the defendant has not infringed it, for his process is as different from that ofthep laintiffs'as the pi aintiffs'isdifferentfrom tnat described by Berzelius or Gmelin. The defendant dissolves hone black in a mixture of muriatic acid and water, filters the product, adds sulphuric acid and dries the resulting mass by heat till itcrumbles into a powder which is white and acid, and can be used, in connection with bicarbonate of soda, to liberate carbonic acid, to make bread. Bone black is burned bones. The muriatic acid dissolves the phosphate of lime in the bones from the carbon, the filtering gets rid of the carbon, tli action of the sulphuric acid creates sulphate of lime, acid phosphate ofli ie, and free phospnoric acid, and the heat drives off the muriatic acid. Horsford removes the carbon from the bones by fire before he applies the sulphuric acid, while the defendant removes the carbon from the bones by muriatic acid, and then gets rid of that acid by heat. Horsford burns away the carbon from the phosphate of lime in the bones, while the defendant dissolves away the phosphate of lime from the carbon. The products produced by the two processes are substantially identical with each other and with the product produced by the process of Berzelius and Gmelin, as powders containing phosphori c acid as an available agent to decompose alkaline carbonates, for the purpose of liberating" carbonic acid, to give porosity to dough, but the three processes differ each from the other, in substance. It appears, from the evidence, that the use of sulphuric acid, to act on what is indifferently known as bone earth, or bone ash, or bone phosphate,being common bones containing phosphate of lime, and thus form sulphate of lime and liberate sulphuric acidor an acidphosp hate of lime, was well known be fore the dateofthe alleged invention of Horstord. The defendant does not, by the use of the process described in his patent, infringe the second claim of the plaintiff's patent, considered as a claim. to the process described in that patent for making the pulverulent acid therein described. If the second claim be considered as a claim to the acid, as a product, the conclusions arrived at in regard to the first claim ap ply to it. As already remarked, the third and fourth claims of the plaintiffs'are not involve din tliecase. The questions, so largely discussed by the counsel for the plaintiffs, on the argument, as to whether Horsford was not the first person who used, as a substitute for yeast, a powder containing phosphoric acid as its active agent, and as to whether he is not entitled to a patent for applying phosphoric acid, in connection with an alkaline carbonate, to the raising of dough, and as to whether the third and fourth claims of the plaintiffs' patent are not valid, as containing inventions which involved the necessity of experiments, to determine whether phosphoric acid, when artificially introduced into bread, would be healthful, and whether and how the acid could be mixed with flour and with an alkaline carbonate, and remain inactive until moistened or heated, are questionswhichwillarise on the patent when a suit is brought on it for the infringement of its third and fourth claims, but they are not presented in this case. It may be that there are claims which Horsford could make and hold in reference to certain constituents and qualities of the pulverulent phosphoric acid that is made by this process, but the broad claim made to the acid described, is not tenable. The bill must be dismissed with costs. W. WHITING and C. A. SEWAKD, for the plaintiffs. E. W. STOUGHTON and C. M. KELLER, for the defendant.
This article was originally published with the title "Important Patent Decision" in Scientific American 21, 7, 108 (August 1869)