(dissenting). Among the defenses set up by the answer 'of the defendant to the suit were lack of novelty and invention, anticipation, no infringement, and a want of sufficient description of the alleged invention. By the decree appealed from it was adjudged that claim 2 of the patent was valid, and that it had been infringed by the defendant.

The invention claimed was for an improvement in the art of bleaching nuts, and was in no sense one of a pioneer character. _

I agree that in considering the sufficiency of the description contained in the specification, as well as the claims, a liberal commonsense construction should be given so as to sustain the patent, if this can be done consistently with the language employed therein. Davis v. Palmer, 7 Fed. Cas. 155 ; Davoll v. Brown, 7 Fed. Cas. 199 ; Turrill v. Railroad Co., 1 Wall. 491 , 17 L. Ed 668; Rubber Co. v. Goodyear, 9 Wall. 788 , 19 L. Ed. 566 ; Klein v. Russell, 19 Wall. 443 , 22 L. Ed. 116 ; Cornplanter Patent, 23 Wall. 181 , 23 L. Ed. 161 ; Merrill v. Yeomans, 94 U. S. 568 , 24 L. Ed. 235 .

At the same time the same common-sense view must be taken of the statute by virtue of which patents are issued, which involves, of course, a consideration of the purpose of the required specification. The pertinent statutory provisions are as follows:

Revised Statutes:

The conceded purpose of the statutory requirement in process cases' is that the specification must be in such full, clear, and exact terms as to enable any one skilled in the art to which it pertains to compound and use the process without any experiments of his own. The first question for consideration, therefore, is, does the specification of the patent in question answer that requirement?

The evidence in the case undoubtedly shows that the patentee’s process bleaches nuts better, more expeditiously, and with less damage than any theretofore known; yet it is just as true that, if there was anything new in his mixture of chlorid of lime and sal-soda, it must necessarily have been in the proportions; for years before the patent in question was applied for, solutions of chlorid of lime and of sal-soda, as well as a mixture of such solutions, were well-known bleaching agents. This was not only clearly shown in the evidence introduced in the present case, but was also clearly made to appear in the proceedings in the Patent Office for the patent in question. Neither the specification nor the claims make any mention of the proportions of chlorid of lime or sal-soda to be used, but the witness Anderson, who, it appears, secured the assignment of the claimed invention from Farrell to the Anderson Prune Dipper Company, testified that he explained to those desiring to use the process the proper proportions- — his testimony being, in part, as follows :

And the inventor Farrell, being questioned in his deposition concerning his experiments before making application for a patent answered :

It is manifest that, if the proportions of chlorid of lime and sal-soda to be used in the process in question was an essential element of the invention, the patent could not be sustained, for the reason that, in such event, the patent does not impart the requisite statutory information to those entitled to avoid or use it. In re Incandescent Lamp Patent, 159 U. S. 465, 474 , 16 Sup. Ct. 75, 40 L. Ed. 281 ; Howard v. Detroit Stove Works, 150 U. S. 164 , 14 Sup. Ct. 68, 37 L. Ed. 1039 ; Wood v. Underhill, 5 How. 1 , 12 L. Ed. 23 ; Tyler v. Boston, 7 Wall. 327 , 19 L. Ed. 93 ; Mitchell v. Tilghman, 19 Wall. 287 , 22 L. Ed. 125 ; Chemical Rubber Co. v. Raymond Rubber Co. (C. C.) 68 Fed. 570 ; Badische Anilin & Soda Fabrik v. Kalle (C. C.) 94 Fed. 163 ; Matheson v. Campbell, 78 Fed. 914 , 24 C. C. A. 384 ; Panzl v. Battle Island Paper Co., 138 Fed. 48 , 70 C. C. A. 474 .

The proceedings in the Patent Office as disclosed by the file wrapper, which appears in evidence, show that Farrell never claimed any specific proportions of chlorid of lime or of sal-soda, or the use of hot water in the process, and that, while he first claimed, in answer to the first rejection of his application by the examiner, his invention to be “the solution prepared in. the first instance” by mixing^ “a solution of chlorid of lime and a solution of sahsoda after they have been separately dissolved, and then keeping this solution as a stock which is drawn upon whenever a lot of nuts are to be bleached,” he subsequently based his claim to invention in the matter to the addition to this mixture of a weak acid, and a simultaneous immersion of the nuts while the chlorin gas thus liberated was in a nascent condition. This plainly appears from the voluminous proceedings embodied in the file wrapper.

The examiner, as well as the board of chief examiners of the Patent Office, held that there was nothing new in Farrell’s process, and, accordingly, denied the application for a patent, but an appeal to the Commissioner resulted in this decision by the Assistant Commissioner:

It is perfectly plain from the various contentions made on behalf of Farrell in the Patent Office that what he there finally contended was new in his process was the addition of a weak acid to a mixture of the solution of the chlorid of lime and of sal-soda, and the coincident plunging of the nuts therein, thereby obtaining the benefit of the liberated ehlorin gas in its nascent condition, and the immediate removal of the nuts from the bath; and also claimed as new the application of the process to nuts. And it was only the plunging of the nuts into the theretofore well-known mixture of bleaching powder and washing soda, “at the very moment when he adds weak acid thereto, so that the nuts will be subjected to the action of the nascent ehlorin liberated,” that the Commissioner — reversing the adverse ruling of the examiner and chief examiners — held that Farrell had “discovered a new process of utilizing well-known laws in the production of a new and useful result,” and was therefore entitled to the patent, which was thereupon issued. The application of an old process to analogous matter, producing a result substantially similar in its nature, is entirely lacking in invention. De Lamar v. De Lamar Min. Co., 117 Fed. 246, 247 , 54 C. C. A. 272 , and authorities there cited. The new feature in the ap-pellee’s process, namely, the plunging of the nuts into the mixture of the solution of chlorid of lime and of sal-soda coincidently with the addition of a weak acid, thereby securing the action of the ehlorin gas in its nascent condition, is embraced by claim 1 of the patent, which reads as follows:

But this new and, as held by the Commissioner, patentable feature,.. is not embraced by claim 2 of the patent, which reads as follows:

This is, in effect, admitted by the learned counsel for the appellee, where he says, on page 383 of his brief:

But claim 2 is the only claim of the patent in suit adjudged by the court below to have been infringed, and as it obviously does not cover the only novel feature in the patented process, namely, the plunging of the nuts into the mixture of the solution of chlorid of lime and sal-soda coincidently with the addition of a weak acid, and which coincident immersion the evidence shows that the appellant has not practiced, I see no escape from the conclusion that the adjudged infringement cannot be sustained.

Another consideration necessarily leads, in my opinion, to the same conclusion. The acid covered by the patent in suit is “a weak acid.” The evidence shows without conflict that at no time during the alleged infringement did the appellant use in its operations any other acid than a diluted sulphuric acid. In one of his opinions the examiner said that “a weak acid is any dilute acid.” “This,” say’s the appellant’s counsel in his brief, “ought to be conclusive, for it shows what the government intended to grant, and actually did grant, when using the term ‘a weak acid.’ ” But the examiner also said, and so held in each of his opinions, that there was nothing new or patentable in the Farrell process. His statement is as conclusive in the one instance as in the other, but, in reality, is conclusive in neither. Upon the question as to what is “a weak acid,” the respective parties introduced the testimony of expert chemists. Professors Hilgard and Dunn, of. the Agricultural Department of the University of California, testified on behalf of the appellant, and Professor Price on behalf of the appellee.

Prof. Hilgard testified, among other things, as follows:

Prof. Dunn, testified, among other things, as follows:

Prof. Price testified, among other things, as follows:

The proper conclusion to be drawn from all of this, and from the balance of the testimony of these witnesses is, I think, that the expression “a weak, acid” is an ambiguous term. And this conclusion is confirmed by Newell’s Chemistry, shown to be a standard work, where that author, at page 41, says:

The same seems to be indicated in Watt’s Dictionary of Chemistry, vol. 1. p. 51, where is given a table showing the relative avidity of the acids with respect to the base soda, and in that table hydro-chloric and nitric acid are classified as having a greater avidity for soda, and there follow in succession hydro-bromic, hydriodic, sulphuric, selenic, formic, phosphoric, acetic, hydro-fluoric, boric, and hydro-cyanic. Reference should therefore be made to the specifications of the patent, and the proceedings in the Patent Office on the application for it, to discover just what the patentee meant by the “weak acid” of the claims. See Hailes v. Albany Stove Co., 123 U. S. 582 , 8 Sup. Ct. 262, 31 L. Ed. 284 ; Royer v. Coupe, 146 U. S. 524 , 13 Sup. Ct. 166, 36 L. Ed. 1073 ; Hubble v. U. S. 179 U. S. 77 , 21 Sup. Ct. 24, 45 L. Ed. 95 ; Stillwell, etc., Co. v. Cotton, 117 Fed. 410 , 54 C. C. A. 584 ; Jewel Filter Co. v. Jackson, 140 Fed. 340 -344, 72 C. C. A. 304 . In his specifications. Farrell, in explaining the advantages of his own process and the addition of acid to the mixture of the solutions of chlorid of lime and of sal-soda in order to liberate the chlorin gas, expressly condemned the action of sulphur fumes and sulphuric acid in the old processes therein described, and said:

And he proceeded to claim only “a weak acid.” And, throughout the proceedings in the Patent Office, Farrell, by his attorney, was persistent in his disclaimer of sulphuric acid in order to distinguish his process from the previous processes and references, and particularly from the Ironmonger patent. Furthermore, fi'arrell himself testified on the trial, among other things, as follows:

And on cross-examination this witness testified, among other things, as follows:

The rule is that a patent should never be construed to include a feature which it is plain the patentee intended to avoid. Magic Light *463 Co. v. Economy Gas Lamp Co., 97 Fed. 87 , 38 C. C. A. 56 ; Enterprise Mfg. Co. v. Snow (C. C.) 72 Fed. 262; Cotter v. New Haven Copper Co. (C. C.) 13 Fed. 234 ; Williams v. Goodyear Metallic Rubber Co. (C. C.) 49 Fed. 215 ; Id., 54 Fed. 498 , 4 C. C. A. 485 .

It seems to trie quite clear from what has been said that the “weak acid” claimed by the patentee did not include sulphuric acid in any form. And, if it did, the claims were not sufficiently specific, for, as said by Judge Dallas in the somewhat analogous case of Chemical Rubber Co. v. Raymond (C. C.) 68 Fed. 570 , 572:

And, in affirming the judgment of Judge Dallas in that case, the Circuit Court of Appeals for the Third Circuit said, in 71 bed. 182, 18 C. C. A. 31 , that if the invention—

I think the case of Chemical Rubber Co. v. Raymond very much in point, and that it supports the conclusion to which I have come.

In my opinion the judgment should be reversed, with directions to the court below to dismiss the complainant’s bill.