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Age was being carried by her previous momentum and the ebb tide slowly to the westward, and nearer to the southerly shore of the stream. The Protector did not observe the Golden Age until she was emerging from the draw. She proceeded towards her about 100 feet without changing her course or reducing her speed, and then attempted to avoid her by putting on full steam, and making a short turn to port, in order to pass between her and the southerly shore. She herseli passed the Golden Age safely, but the schooner was brought into contact with the Golden Age a few feet aft of the forechains. The shock of the blow threw the schooner's bow towards the southerly side of the creek, and her bowsprit ran into a structure which pulled it out and caused other damage. The collision occurred about 300 ieet to the westward of the bridge.

The testimony of the master of the Protector was to the effect that he had heard no alarm signals from the Golden Age; that he first saw the Golden Age just as the Protector got through the draw; and that he then blew two whistles, and got an alarm whistle in return, but did not discover that the Golden Age was disabled until he proceeded 100 or 125 feet further; and that he then noticed she had some sternway, but concluded to put on full speed and go to port, so as to pass between her and the southerly shore. According to his testimony, there was room for that maneuver, and no other was practicable.

After a careful study of the evidence in the record, we cannot resist the conclusion that the Golden Age should have been observed by the Protector before the latter entered the draw. Even though the Protector was not in fault because her attention was not attracted by the alarm whistles of the Golden Age, there were no obstacles to prevent the latter from being plainly seen from the time the Protector got within 100 feet of the draw. She was practically opposite the draw, and a short distance away, and had been observed moving backwards by the men upon the schooner before their vessel emerged from the draw. These men were presumably less likely to see her than those in charge of the navigation of the Protector, upon whom rested the duty of a more diligent observation. If the Protector had observed her before entering the draw, or even when entering it, she would have had sufficient opportunity, by the time she emerged from the draw, to discover her disabled cordition and realize the danger of the situation. If on emerging from the draw the Protector had reversed and taken prompt measures to hold back her tow, we are satisfied the collision could have been avoided. There would probably have been a narrow margin of safety, but it is to be remembered that the tide would have been carrying the Golden Age further away from the Protector while the latter was engaged in holding back her tow. Doubtless at the time the Protector became actually aware that the Golden Age was incapacitated it was too late to take any effective measures to save collision. But the Protector must assume the consequences of failing to discover what she ought to have discovered. She cannot escape responsibility because when it was too late to avoid a collision she did all that skillful navigation required.

The case is one where a vessel in tow, without any fault on her part, has been brought by her tug into collision with another tug, and both tugs have been relieved from responsibility, one upon a theory, which the facts seem to warrant, that she became disabled and was without fault, and the other upon the theory of an error in extremis. An error in extremis cannot be urged in exculpation of a vessel whose prior negligence has brought about the situation in which a mistake of judgment is excusable. The Dexter, 23 Wall. 69, 23 L. Ed. 84; The Elizabeth Jones, 112 U. S. 514, 5 Sup. Ct. 468, 28 L. Ed. 812.

The circumstances impose the burden upon the Protector of exonerating herself from fault by satisfactory proof that the collision was inevitable notwithstanding the exercise of proper skill and care on her part. The proofs do not satisfy that obligation.

The decree dismissing the libel as against the Golden Age is affirmed, with costs, and as to the Protector is reversed, with costs, and with instructions to the court below to decree for the libelant.

113 Fed. 870.)


(Circuit Court of Appeals, Third Circuit. February 5, 1902.)

No. 21, September Term, 1901. 1. PatentS-CONSTRUCTION OF CLAIMS-CHEMICAL PRODUCT.

A claim of a patent for a new chemical product, which is described with such clear marks of identification that it can readily be recognized aside from the process by which it is made, is not limited to the product of a particular process because such a process is described in the

specification and is the only known process by which it can be produced. 2. SAME-ValidITY AND INFRINGEMENT-PHENACETINE.

The Hinsberg patent, No. 400,086, for the chemical product known commercially as “Phenacetine," largely used in medicine since its production by the patentee, construed, and held not anticipated, valid, and

infringed. Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

Hector T. Fenton, for appellant.
Livingston Gifford, for appellees.
Before ACHESON, DALLAS, and GRAY, Circuit Judges.

ACHESON, Circuit Judge. This is an appeal by the defendant below from a decree (108 Fed. 233) against him upon a bill for the infringement of letters patent No. 400,086, granted March 26, 1889, to the Farbenfabriken Vormals Fr. Baver & Co., of Elberfeld, Germany, assignee of Oskar Hinsberg. The invention covered by this patent relates to a new pharmaceutical product, a new antipyretic and antineuralgic, known commercially as “Phenacetine," and chemically as "mono-acetyl-para-mido-phenetol.” The specification contains a description of the new pharmaceutical product, and of the inventor's (Hinsberg's) process of production. The patent has a single claim, which is in the terms following:

"The product herein described, which has the following characteristics: It crystallizes in white leaves, melting at 135° centigrade; not coloring on addition of acids or alkalies; is little soluble in cold water, more so in hot water; easy soluble in alcohol, ether, chloroform, or benzole; is without taste; and has the general composition C19H1302N."

In our consideration of the case we naturally first take up the 10th, 11th, 12th, 13th, 14th, and 15th assignments of error, all of which relate to the opening paragraph of the specification, which is as follows:

"My invention relates to the production of a new pharmaceutical product, a new antipyretic and antineuralgic, obtained by reducing nitro-phenetol, and melting the phenetidin-chlorhydrate thus formed with dried sodium acetate and acetic acid."

The appellant insists that this introductory paragraph must be read as comprehending the three known varieties of nitro-phenetol, namely, the meta, ortho, and para varieties, and hence that the paragraph is false and misleading, because, admittedly, only by the employment of the para variety, viz., para-nitro-phenetol, can the end product of the patent specified in the claim be obtained. But this opening paragraph does not affirm that the new pharmaceutical product can be obtained by reducing all nitro-phenetols, including the meta and ortho varieties. Nor is it open to any such interpretation when read, as it must be in connection with the context. Immediately after the introductory paragraph above quoted, we find in the specification this statement :

"In carrying out my process practically I proceed as follows: Fifty kilos of the potassium salt of para-nitro-phenol are mixed with three hundred kilos of alcohol, adding forty kilos of bromæthyl. The mixture is heated in an autoclave at a pressure of three to four atmospheres during about eight hours. At this time the reaction is finished, whereby para-nitro-phenetol is obtained according to the following equation."

And then follows a description in full, clear, concise, and exact terms of the successive steps of the inventor's process, whereby the “new mono-acetyl-para-mido-phenetol" is produced. The suggestion that the description commencing with the words, "in carrying out my process practically I proceed as follows," is only one specific example of the invention, is not to be accepted. There is nothing in the patent to support the suggestion. Undoubtedly the specification, as a whole, evinces that the invention is limited to the para product.

The expert testimony convincingly shows that it would be plain to every chemist reading this patent that the para variety of nitrophenol is the starting material for the production of the new antipyretic and antineuralgic, mono-acetyl-para-mido-phenetol, or phenacetine, covered by the clain.

We cannot see that Matheson v. Campbell, 24 C. C. A. 384, 78 Fed. 910, decides anything favorable to the contention of this appellant. The facts there differed radicaily from the facts of this case. The Hinsberg patent, unlike the patent involved in Matheson v. Campbell, is distinctly limited to one individual product, fully described and unmistakably identified.

The eighth and ninth assignments of error may be considered together. They relate to the Hallock publication, and the proofs generally of the prior art, as showing (as is claimed) want of novelty in the product of the Hinsberg patent, and that it was the result of mere laboratory selection, and not of invention or discovery.

Prof. Sadtler, who was the principal expert witness for the defendant, and testified at length as to anterior publications and the prior art, mentioned particularly the Hallock article and a publication by Wagner. However, comparing the body referred to by Wagner (the acetyl derivative of meta-phenetidin) with the product of the Hinsberg patent, he testified thus: “The two compounds are distinct bodies, although they are isomeric, and therefore both possess the formula C19H1302N.” And when asked (XQ. 95), “Excepting these Hallock and Wagner references, you do not know of any other description of the product claimed in United States patent No. 400,086 [the patent in suit] in the literature prior to February, 1887, do you?" Prof. Sadtler answered, “I do not.” Furthermore he testified as follows:

"XQ. 93. Please examine the same references again, and point out where such a body of the formula C19H13021, and having the characteristics of crystallizing in white leaves and melting at 133° C., is described, and quote the same into this record. A. I have already stated in answer to XQ. 91 that the body referred to by Wagner was a different chemical substance from phenacetine, differing not only in melting point, but, probably, in some other characteristics. The body referred to by Hallock, which I consider the same substance as that now known as phenacetine, did not have either melt. ing point or formula directly ascribed to it by Hallock. XQ. 94. It is therefore a fact, is it not, that none of the publications prior to February, 1887, cited by you, contain any description whatever of the product itself, which is claimed in the Hinsberg United States patent No. 400,086 (patent in suit)? A. As I have stated, the Wagner reference contains the exact formula that is cited in the description of the product in the Hinsberg patent, but, with the exception of this agreement on formula, I do not know of any other correspondence in properties with those mentioned in the patent. The Hallock article, referring to the acetyl compound of para-mido-phenetol, only agrees with the description in the Hinsberg patent in mentioning the product as a crystalline solid, leaving the other physical properties entirely unnoticed."

The quoted testimony of the defendant's chemical expert, which is corroborated by other evidence, really puts out of the case the Wagner publication as a pertinent reference, and also enables us to shorten our discussion of the proofs bearing on the prior art. The Hallock article, under the title, “Note on Para-Nitro and Para-Amido Phenetol," was published at Baltimore in the American Chemical Journal of 1879-1880. The object of Hallock's note seems to have been the correction of a supposed mistake of Cahours, a French chemist, who had treated phenetol with fuming nitric acid, obtaining both a solid and a liquid product. Hallock states that he repeated Cahours' “experiments with somewhat different results.” Of the product of his first reaction Hallock says, “The product consisted of a solid and a liquid in varying proportions, according to the conditions of the nitration;" but he nowhere shows the condition of nitration employed in his experiments. There is, indeed, much reason for believing that the Hallock article shows unskillful experimentation and also downright mistakes. For example, the oily liquid which Hallock assumed was para-monomido-phenetol he states boiled at 253° centigrade ; but Dr. Schweitzer testifies that "para-monomido-phenetol boils at

244° centigrade, and a liquid boiling at 9° higher must be considered an absolutely different chemical individual"; and Dr. Chandler testifies to the same effect.

The only mention which Hallock makes of the crystalline solid which it is now said was phenacetine is found in the following paragraph, near the conclusion of his article: "These crystals, when treated with potassic hydrate, yield an oily liquid resembling aniline. It boils at 253° C. (uncorrected), and is doubtless para-monomidophenetol. A portion of the salt appears to suffer decomposition, so that the amount of oil obtained was very small. This oil combines, like aniline, directly with acetyl chloride to a crystalline solid. In combination with carbon disulphide, it also yields a solid body." Prof. Sadtler therefore was quite right in stating that the body referred to by Hallock "did not have either melting point or formula directly ascribed to it by Hallock," and that "the Hallock article referring to the acetyl compound of para-mido-phenetol only agrees with the description in the Hinsberg patent in mentioning the product as a crystalline solid, leaving the other physical properties entirely unnoted."

These statements of Prof. Sadtler are very significant. Hallock did not investigate the crystalline solid. He made no test to identify it or to determine its composition. No one could discover from his article the nature of the crystalline solid referred to. Such vague data as he furnished were wholly inconclusive. Evidently Hallock did not consider the crystalline solid as possessing any value whatever. He did not regard it as worthy of investigation. His mention of it imparted no useful knowledge to the public. Certainly Hallock's article did not give phenacetine to the world. If there was any Phenacetine in the crystalline solid it was not discernible. The crystalline solid as a whole was a poisonous substance. This much can confidently be affirmed. But even with the increased knowledge of the last 20 years no one can now determine with certainty what were the constituents of the crystalline solid mentioned by Hallock. The evidence shows that it may have contained one or more of nine differ-. ent substances

We have no hesitation in holding that the Hallock publication, supplemented by the whole body of evidence of prior knowledge, did not disclose the product of the Hinsberg patent, whether that product be regarded in its relation to the art of pharmacy or as a mere chemical substance.

We are not able to accede to the proposition that the product of the patent in suit was the result of mere laboratory selection, and not of invention or discovery. From a careful study of this record, are convinced that what Hinsberg did involved invention and discovery of a highly meritorious character. The Hinsberg patent describes and claims an entirely new pharmaceutical product, which has found a very extensive and most valuable use as a medicine. The proofs quite justify us in accepting as correct the following views expressed by the complainants' chemical expert, Dr. Schweitzer:

"Hinsberg's invention is the invention of a new product. This product had never been produced or described or known or found any application in

51 C.C.A.-32


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