fendant's color failed to respond fairly to this test. The sixth test above quoted from the patent brings up a question of construction. It reads "reducing agents destroy the color-forming alphanaphthylamine besides other products." Even without any evi dence, it is apparent that the sentence is awkwardly expressed. It seems to imply that the black paste or solid consists of alphanaphthylamine, which forms the color, and of other products, and that reducing agents destroy them all. The proof shows conclusively (all the experts agreeing) that there is no alpha-naphthylamine in the black paste or solid. The alpha-naphthylamine perished long before the ultimate black paste of the patent appeared. Complainant's expert suggests that the sentence means that, "by reducing agents, alpha-naphthylamine, which was used to form the color of the patent in suit, and therefore in the patent is named the color-forming alpha-naphthylamine, is destroyed." But this is not materially helpful, for he says that reducing agents would not change alpha-naphthylamine at all, and he most certainly concedes that, in the ultimate product of the patent, alpha-naphthylamine does not exist as such. The sum of his testimony is that the reducing agents are to be applied to the color. In the light of the testimony, the sentence, as it stands, is, if not meaningless, at least ambiguous. It is apparent that the awkwardness of the sentence arises from the use of the hyphen between "color" and "forming." If that were eliminated, all concede that the plain meaning of the sentence would be that reducing agents would destroy the color, and alpha-naphthylamine would be formed. And the same result would follow if the hyphen were made a little longer, so as to become a printer's dash. It is not necessary, however, to theorize upon this point, or to guess at the meaning of the sentence. It is demonstrable by evidence well recognized as competent in patent causes that the presence of the hyphen is due to a printer's error.

The file wrapper shows that as to tests the original specification read as follows:

"These new dye stuffs produce on wool and silk, in an acidulated bath, violet to dark-blue shades. They are very soluble in water, insoluble in spirits, and dissolve in strong sulphuric acid with green color. They are destroyed by reducing agents, forming alpha-naphtylendiamine besides other products."

Subsequently this part of the specification was amended so as to read as follows:

"Naphthol-black produces on the fiber, in an acidulated bath, dark-blue shades, It is very soluble in water, insoluble in spirit, and dissolves in strong sulphuric acid with green color. Reducing agents destroy the color, forming alpha-naphthylamine, besides other products."

And in this form it was allowed by the patent office. That the hyphen was inserted in the printed copies issued by the office. through a printer's blunder is manifest. It is apparent, then, that the inventors prescribed, as one of the tests which would disclose the identity of any body with their product, the action of redu cing agents thereon. This action must be such as to destroy the color, and form certain products. The characteristic product of

those thus formed, the one which they selected as determinative under this test, they originally declared to be "alpha-naphtylendiamine." Subsequently, and before patent issued, they changed that declaration to "alpha-naphthylamine." There is no evidence that one skilled in the art would know, when he saw "alpha-naphthylamine" named as the identifying product, that it was a misnomer for "alpha-naphtylendiamine." We know no reason why they should not be held to the selection they thus declared to the public as one of the characteristic tests of their product. If this were a blunder of an ignorant solicitor, they had ample opportunity to correct it by reissue; but, having allowed it to stand in their patent, they must be held to their declaration that reducing agents will produce this result. It has been suggested that since the evidence shows that alpha-napthylamine would not be formed out of the product of the patent by reducing agents, and that persons skilled in the art would know that fact, the entire test may be rejected as nonsensical surplusage. But there must be some limit to a court's functions in rewriting patents. Assuming that all the imperfections in this patent were due to an ignorant solicitor, remote from his clients, and it may be noted that there is no evidence of this,-it does not follow that all should be disregarded. We held, as to the error and omission of paragraph 4, that the omission was really supplied elsewhere in the patent; that the error was harmless, since the skilled workman would himself substitute "nitrite" for "nitrate"; and that, although the error must stand in the patent where the patentee's careless solicitor had placed it, we would not infer from its presence that it was due to a fraudulent design to mislead, formed and carried out by the patentees. But here there has been an identifying test put into the patent by the solicitor; the patentee accepts such patent, and applies for no reissue, alleging no mistake; and the court is asked to strike out the test altogether, as ridiculous surplusage. In the absence of any authority for such action, we are unwilling to establish the precedent. By what their solicitors do, patentees should abide. If they are dissatisfied with the letters patent their solicitors obtain, they may, in proper cases, apply for a reissue; but, when they accept their original patents without objection, they must be assumed to have assented to such changes as were made by their solicitors in specification or claim while their application was on its way through the patent office.

When the defendant's coloring matter is treated with reducing agents, it is destroyed, but no alpha-naphthylamine is formed. We have, then, a case where the inventor has prescribed six tests in his patent, and an alleged infringing body responds to five of them, but fails to respond to the sixth. Manifestly, it is not absolutely identical with the product of the patent, as the inventor has defined that product by distinguishing characteristics. It may be that the variance results from some immaterial change in the process, from the use of starting material, which is within the fair range of equivalents; but, having failed to prove identity by the prescribed tests, the burden is on the holder of the patent to show

that the variances in process are immaterial, or the starting materials equivalents of those of the patents. There being no such proof here, the complainant must stand or fall by the results of the tests of the patent; and, since the defendant's color does not respond to these, it cannot be held to be an infringement. The conclusion thus reached renders it unnecessary to discuss the other points raised in the case. The decree of the circuit court is reversed, with costs, and cause remanded, with instructions to dismiss the bill.

On Rehearing.

PER CURIAM. In the patent, as it was finally amended in the patent office, and in the form in which that office notified the patentees that it was prepared to issue it upon payment of the fees, the sixth test was phrased as follows: "Reducing agents destroy the color, forming alpha-naphthylamine besides other products." In the printed copies as they were subsequently issued, the same test is phrased as follows: "Reducing agents destroy the color-forming alpha-naphthylamine besides other products." The record does not disclose which of these forms appeared in the original letters patent, "issued in the name of the United States of America under the seal of the patent office, and signed by the secretary of the interior, and countersigned by the commissioner of patents," as provided in section 4884 of the United States Revised Statutes. We assumed, perhaps erroneously, that the original letters patent conformed to the text of the amendments as allowed; but, if such original letters patent were phrased in the alternative, the situation is not materially changed. In the brief filed with this petition, it is asserted that the statement. "Reducing agents destroy the color-forming alpha-naphthylamine besides other products," is not untrue as to either complainant's or defendant's color. We do not find this assertion to be supported by the proof. The complainant's expert did, under cross-examination.

make the following statements:

"My view is that by reducing agents alpha-naphthylamine, which was used to form the color of the patent in suit, and therefore in the patent is named the color-forming alpha-naphthylamine, is destroyed."

'Your interpretation that reducing agents are applied to the color is the right one. The meaning of this sentence is very clear. Reducing agents are applied to the color. The reaction which takes place destroys the alpha-naphthylamine besides other products."

"Alpha-naphthylamine is the most characteristic constituent of the so-called 'naphthol-black color compound.' Therefore that sentence, perhaps only to emphasize that alpha-naphthylamine is so important in the process, states that alpha-naphthylamine is destroyed by the reduction process."

None of these accurately states the fact. It is not true that any "alpha-naphthylamine is destroyed by reducing agents," nor that "the reaction which takes place [when reducing agents are applied to the product] destroys the alpha-naphthylamine," nor that "alphanaphthylamine, the most characteristic constituent of # compound, is destroyed by the reduction process," for the very good reason, as pointed out in the original opinion, that the alpha-naphthylamine had ceased to exist before the product was obtained, having perished in the process of chemical

the *

*

combination which gave birth to the product. Certainly, in defendant's color there is no alpha-naphthylamine for reducing agents to destroy. If the same is true of a color produced according to the "example" set forth in the patent, as the evidence shows, then the sixth test is a false one, and must have been known to the patentees to be a false one when they received their patent. Their proper course would have been to correct this false statement by reissue. Inasmuch as complainant now contends that a highly meritorious discovery and a patent otherwise valid has been wrecked by holding the inventors to a rigid construction of tests which they were under no obligation to insert in their specification, it may be appropriate to decide the question, which was not passed upon in the original opinion. It was contended that although the patent could not be sustained for the broad discovery set forth in the specification, that "any sulpho acid of any radical," when treated according to the process described, would give the result indicated, because no such broad discovery had been made, it might yet be valid for the definite product of a special process set forth in the specification as an "example." Reference may be had to our former opinion for a brief statement of the argument in support of this contention. A majority of this court, whose opinion is hereinafter set forth, are unable to assent to the conclusion sought to be sustained. To do so would be practically to rewrite the patent. Such a restriction of it to the product of the special process conforms neither to what the patentees have asserted to be their invention, nor to what they undertook to claim. Even upon this appeal it was still insisted by their counsel that their patent covers such sulpho acids of the general formula as might, when subjected to their process, produce naphthol-black. Their expert advanced this theory of a narrow construction only as a last resource, when the inherent defects of the patent were made apparent. We are unable to find in the patent or elsewhere any evidence that paragraph 3 was inserted merely as a "help to a better comprehension of the special process." On the contrary, it is the special process which is given "as an example" or helpful elucidation of the general process. Moreover, the statement is hardly accurate that paragraph 3 "only describes the class of bodies to which naphthol belongs," nor are we able to see that it "covers only the first step in the reaction." Manifestly, it does more than describe a class of bodies; it gives a recipe:

"First. Take one of a group of compounds which have been obtained by the reaction of certain acids upon a named substance. Second. Convert this into the diazo-azo compound, with a nitrous acid. Third. Take the compound thus formed, and allow it to react upon naphthol or naphthol-sulphonic acids. Fourth. Keeping it during this reaction in an alkaline solution."

And the following out of this recipe will take the experimenter from the first to the last step of the process. We do not understand from the testimony that any one skilled in the art would have any difficulty in applying the process of paragraph 3 seriatim to every sulpho acid in the group corresponding to its general formula. Certainly, he would not when further assisted as to details

by the "example" given of how to treat one of this general group. That paragraph 3 states what the patentees declare to be their invention seems to us beyond doubt, and the only fair interpretation of the patent is that originally given by complainant's expert, that their invention is, broadly, the formation by their process of the product sought to be patented from any sulpho acid of any radical; any one radical being susceptible of use interchangeably with any other, being the equivalent of that other and the products of all technically the same. The evidence shows conclusively that the statement that they had discovered that "any sulpho acid of any radical," treated according to their process, would give the product they said it would, was untrue. Briefly stated, the "discovery" which the inventors profess to disclose is that all mono-sulpho acids and all di-sulpho acids, treated in a prescribed way, will give a specific result; while the fact is that, so far as appears, no monosulpho acid thus treated will give such result; and, when they professed thus to disclose their "discovery," they either knew that the mono-sulpho acids will not give such result, or else knew nothing about the reaction of mono-sulpho acids under such process. either case the "discovery" which they disclosed is not the "discovery" they made, and it is for the discovery or invention which the patentee makes and discloses that patent issues. Petition for rehearing is denied.

In

MEMORANDUM DECISIONS.

BEACH v. INMAN et al.

(Circuit Court of Appeals, Second Circuit. February 1, 1897.) PATENTS-INFRINGEMENT-PAPER-BOX MACHINE.

Appeal from the Circuit Court of the United States for the Northern District of New York.

Edmund Wetmore, for appellants.

John Dane, Jr., for appellee.

Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges.

PER CURIAM. We agree with the judge who heard the motion in the circuit court that the grooved roller of defendant's machine is substantially the upper clamping die of the patent, for the mechanical reasons set forth in the opinion below. That being so, defendant's machine is an infringement, and the order of the circuit court (75 Fed. 840) is affirmed, with costs.