(after stating the facts as above).

[1] The first objection urged by the complainant to the proceedings in the court below is that defendant did not in its answer plead the prior use of the process as therein alleged in accordance with the requirements of the statute.

Section 4920 of the Revised Statutes (U. S. Comp. St. 1901, p. 3394) provides, among other things:

This being a suit in equity, the notice required by the statute was given in defendant’s answer, and the amendment thereto; but it appears with respect to the use of the alleged invention by Edwin Hayden his residence was given as being in the city and county of San Francisco, and the time of his use of the process from about the year 1883 continuously for man}' years, but it is not alleged where the process was used. The defendant gave notice of the person who it was alleged had used the process, and liis residence, and the time when it was used. If this notice was not deemed sufficient, it was open to the complainant to except to the answer for insufficiency on the ground that the place of use had not been stated. Having failed to interpose such an exception to the answer, the defendant now contends that under the sixty-first equity rule (29 Sup. Ct. xxxii) the answer must be deemed and taken to be sufficient. That rule provides for exceptions to answers on the ground of insufficiency, and, where no exceptions are filed, “the answer shall he deemed and taken to be sufficient.” Defendant makes the further answer to this objection that it wras not urged in the Circuit Court, and it has not: been assigned as error on this appeal. It appears from the record that all the particulars, including the place of use, were stated in the evidence, and, although this evidence was objected to by the complainant, it does not appear that the complainant was in any way prejudiced by the omission of the allegation from the answer, or the introduction of the evidence. The complainant had abundant time in which to in *268 vestigate the facts alleged and make such showing in rebuttal as the facts warranted.

We think, under the circumstances, the objection must be deemed to have been waived. In any event, the evidence was admissible without notice to show the state of the art. Morton v. Llewellyn, 164 Fed. 693, 694 , 90 C. C. A. 514 , and that is sufficient for this case.

[2] The appellant contends that the decree of the lower court dismissing the bill was based solely on the ground of anticipation as evidenced by the prior use of appellant’s process by one Hayden, and the disclosure of the process in a book entitled, “The Raisin Industry,” by Gustav Eisen, and that the only question involved in this appeal is whether or not the lower court was correct in so holding. The court expressly stated that its decision wás based upon the lack of novelty in the process. It is true that the court in its opinion referred to the prior use by Hayden and the book on “The Raisin Industry,” but these references were clearly for the purpose of showing the state of the art at the time of the alleged invention by Forsyth. It was the duty of the court to read and construe the claims and specification of the patent in the light of a knowledge of the state of the art at the time the patent was issued. This the court did, and determined in the light of that knowledge that the process lacked novelty.,

But, whatever may be deemed to be the scope of that decision, this court will not be limited by its terms. As -said by the Circuit Court of Appeals for the First Circuit in Millard v. Chase, 108 Fed. 399, 401 , 47 C. C. A. 429 , 431:

The rule applies to this case, and requires us to examine the range of the claims and all the material questions involved in the patentability of the process in controversy.

We will first consider the range of the claims. The process as there set forth may be applied to either dried fruit or raisins. We are only concerned in this case with its application to raisins, as described in claims numbered 7, 8, 9, 10, 11, and 12.

The seventh claim is for “the process of treating raisins,” the essential elements of which consist “in heating the raisins and then cooling them.”

The eighth claim is for the same heating process of treating raisins, with the added element,' “and then subjecting them to a current of air,” whereby they are “quickly cooled.”

The ninth claim is for the treatment of raisins, the essential elements of which consist in subjecting them to “a current of warm air-,” whereby they are heated, and then subjecting them to “a current of cool air,” whereby they are “quickly cooled.”

The tenth claim returns to the essential element of the primary method of the seventh claim in treating the raisins, “which consists in heating the raisins and then cooling them,” with the added effect, “whereby the points of attachment of the stems are rendered brittle, *269 and then subjecting them to abrasive treatment whereby the stems are detached.”

The eleventh claim repeats the essential elements of the tenth claim with the added effect, “whereby the raisins and the points of attachment of the stems are rendered hard and brittle, and then subjecting the raisins to abrasive and separating treatment, whereby they are stemmed and cleaned.”

The twelfth claim is a combination of the ninth and eleventh claim, having the essential elements of the ninth claim, consisting of “a current of warm air” for heating the raisins, and “a current of cool air” whereby the raisins are “quickly cooled,” and the essential element of the eleventh claim, “subjecting the raisins to abrasive and separating treatment whereby they are stemmed and cleaned.”

The process as here described and claimed does not appear on its face to be either new or novel. The treating of raisins by “heating the raisins and then quickly cooling them,” as described in the seventh claim, is certainly not new or novel. There is not a cook in the country who has had occasion to prepare dried fruit or raisins for domestic purposes who has not practiced the art of “heating and cooling them.” If we go a step further, and apply “a current of hot air” to heat or dry the raisins, we do not add anything new or novel to the method of treatment: nor do we do so if we then add “a current of cool air” whereby the raisins are “quickly cooled.” Currents of air for heating and cooling purposes are old methods and well known in the treatment of dried fruits and raisins.

[3] We come next to the effect of “heating and cooling” the raisins. It is claimed that, if they are “quickly cooled,” the points of attachment of the stems are rendered brittle, and, if then subjected to abrasive treatment, the stems are detached and cleaned; but the public is not informed by these claims as to the particular method of procedure by which such results are to he accomplished. It is true that each claim refers to the specification accompanying the application in the usual phrase, “substantially as set forth.” These words have the effect of importing into the claims the particulars of the specification relating to the process to illustrate its operation, but not the function or operation of the mechanism there described. The specification does not add to or detract from the claim. The patent cannot be extended beyond the claim. That bounds the patentee’s rights. Wood Paper Patent, 90 U. S. 566, 606 , 23 L. Ed. 31 ; Keystone Bridge Co. v. Phoenix Co. 95 U. S. 274, 278 , 24 L. Ed. 344 ; Railroad Company v. Mellon, 104 U. S. 112, 118 , 26 L. Ed. 639 ; Western Electric Co. v. Ansonia Co., 114 U. S. 447, 452 , 5 Sup. Ct. 941, 29 L. Ed. 210 ; McClain v. Ortmayer, 141 U. S. 419, 423 , 12 Sup. Ct. 76, 35 L. Ed. 800 ; Cimiotti Unhairing Co. v. Am. Fur. Ref. Co., 198 U. S. 399, 410 , 25 Sup. Ct. 697, 49 L. Ed. 1100 .

[4] The apparatus pointed out by Forsyth as suitable for carrying out the process of treatment embodied in his invention includes a heater and cooler, and stemming and cleaning mechanism. . The heater and cooler had been made the subject of an application for a. patent filed September 30, 1897. The application for a patent for *270 the process in controversy was filed Juné 23, 1898. Whether a .patent has been issued for the heating and cooling mechanism does not appear in the record; but the fact that the applicant claimed the apparatus as an invention prior to making the claim for a process is sufficient of itself to eliminate the function or operation of that apparatus from the claim of invention for the process. The same is true of the stemming and cleaning apparatus for which a patent was issued to George Pettit in 1896. This is also the general rule applicable to all processes. “It is well settled that a man cannot have a patent for the function or abstract effect of a machine, but only for the machine which produces it.” Corning v. Burden, 56 U. S. (15 How.) 252, 268 ( 14 L. Ed. 683 ). “It is equally clear, however, that a valid patent cannot be obtained for a process which involves nothing more than the' operation of a piece of machinery, or, in other words, for the function of a machine.” Risdon Iron & Locomotive Works v. Medart, 158 U. S. 68, 77 , 15 Sup. Ct. 745, 748 ( 39 L. Ed. 899 ). “Where the process is simply the function or operative effect of a machine, the above cases (referring to Corning v. Burden and Risdon Iron Works v. Medart and others) are conclusive against its patentability.” Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 557 , 18 Sup. Ct. 707, 716 .( 42 L. Ed. 1136 ). In Burr v. Duryee, 1 Wall. 531, 570 ( 17 L. Ed. 650 ), the Supreme Court of the United States in discussing the elements of a mechanism and its mode of operation said:,

[5] The question, then, to be determined in this case is this: Of what new and useful elements does complainant’s process consist, considered apart and independently of the apparatus or instrumentalities used in carrying it into effect?

Referring now to the process as described in the claims and sub-' stantially set forth in and illustrated by the specification, we find1 that the process of applying currents of warm air for heating purposes and currents of cool air for cooling purposes are specifically described as the functions of the heater and cooler for which application for a patent was made by Forsyth on September 30, 1897. But the specification goes further, and declares that “known forms of driers may be used for heating the fruit and known forms of cooling apparatus may be used for cooling the fruit.” In view of this declaration in the specification, we do not deem it necessary to dwell now on this feature of the process. But we do. find that, there are two paragraphs in the *271 specification illustrating a feature of the art or process of heating and-cooling raisins, which should be considered. These features are described as follows:

There was evidence introduced tending to show that a chemical change takes place in the raisins when subjected to this temperature, but this is clearly the operative effect of the treatment with which we have nothing to do, except to be informed of its usefulness; whether it is new or novel will be considered later.

The second feature is:

Then follows a reference to a process of stemming and cleaning which is clearly the function of the stemming and cleaning apparatus, and no part of the process, and is not so claimed.

We come now to the question: What was the state of the art with respect to these features of the process at the time Forsyth applied for his patent for the process under consideration?

In the court below Edwin Hayden was called as a witness for the defendant. He testified as to his experience in drying raisins. His testimony reduced to a narrative form, is substantially as follows:

Thomas J. Little was also called as a witness on behalf of the defendant. His testimony, reduced to a narrative form, is substantially as follows:

The testimony of these two witnesses is vigorously assailed and criticised by the appellant for several reasons, among others, that their testimony is dependent on the frailty of human memory; that the process usedi by them was not made public; and that the process was abandoned. Perhaps standing alone this testimony ought not to be held sufficient to overcome the prima facie evidence of novelty and invention furnished by the letters patent to Forsyth; but there is evidence in the record that is not open to these objections. Evidence of this character is the book of Gustav Eisen, entitled:

This book was issued from the press eight years before Forsyth made application for his patent for the process in controversy. The author makes many suggestions for the handling and treating of raisins, and) describes the mechanism of drying, stemming, and grading machines used for that purpose. In describing the process of treating raisins, the author says:

We have here the heating and cooling process to the same effect, and in very much the same language, as that employed in the Forsyth specification. Furthermore, reference is, made to the chemical change in the contents of the grape, which is made an important feature in the evidence and argument supporting the Forsyth patent. The fact *274 is also stated that the treatment produces brittle stems, which is also claimed to be an important feature in the Forsyth process.

Evidence of prior inventions in the same department of industry is also important in showing the state of-the art. It appears that on September 8, 1885, a patent was granted to Ambrose Blatchly and Andrew J. Hatch for a desiccating or drying apparatus which subjected fruit in trays to a current of warm air from a furnace for the purpose of drying the fruit, and that on November 29, 1887, Ambrose Blatchly was granted a patent for an improvement in fruit dryers, consisting of a heater and blowing or draft mechanism, by which the air was caused to flow through and over trays of fruit. These two patents are for mechanical devices, and not processes, but they show that the process of treating fruit with currents “of hot air” was in the stage of a mechanical 'function when Forsyth applied for his patent.

The case of Mowry v. Whitney, 81 U. S. (14 Wall.) 620 , 20 L. Ed. 860 , is cited by the appellant as being a parallel case supporting the novelty of the process in controversy. The process there involved the application of heat in the manufacture of cast-iron car wheels. The car wheel is there represented as consisting of an outer rim, a central hub, and a circular plate. It is there stated that it was essential that the rim should be hard because it had to endure friction in moving over the rails of the track, while the hub and plate must be soft and tough because they had to resist strain. The problem was to produce a car wheel having a hard rim and a soft hub and plate; but, as all the parts of the wheel were cast in one piece, the problem was difficult of accomplishment. The unequal cooling of the different parts produced a strain on the different parts which greatly impaired the strength of the wheel. Various devices had been made to guard against and to remedy the mischief resulting from the inherent and inevitable strain, caused by the unequal contraction in cooling. But it does not appear that in any of them the idea existed of making a car wheel with chilled tread, straight plates, and solid hub, • annealed and cooled so as to leave it uninjured by the strain attendant upon the unequal cooling of the thick and thin parts. Annealing of some kinds of castings was known and practiced, but it does not appear to have ever been applied to cast-iron car wheels prior to the discovery made by Wlhitney of a process by which annealing could be applied •successfully to,, car wheels. It was a new and novel process as applied to car wheels. As stated by the Supreme Court in its opinion:

We do not see how the novelty of the process in that case, which was not before known, can be said to sustain the novelty of the process in this case. The application of heat and the process of cooling had been applied to dried fruit and raisins long before Forsyth made the application for a patent for his process and the process was substantially the same. What Forsyth really did was to devise and secure .from others- efficient apparatus and appliances for the treating and *275 curing of raisins, and the complainant as the present owner of such apparatus and appliances is entitled to all the advantages pertaining to their use and ownership as mechanical inventions, but that does not give the complainant the exclusive right to their operative effect as a process. The state of the art as appears from the testimony of Hayden and Little, and described in the Eisen book, and as appears from the fruit dryer patents in evidence was certainly very close to the art cm process described and claimed in the Forsyth patent—so dose, indeed, that it does not appear that there was any field for discovery or invention in passing from one to the other.

We concur in the opinion of the court below that the patent in suit is void for lack of novelty.

The decree of the court is therefore affirmed.

WOLVERTON, District Judge. I concur.