solvents of xyloidine, in that these menstrua which are employed are not, necessarily, in themselves, solvents of xyloidine, but become so by the addition of the bodies, compounds, or substances herein referred to.' It also states that the invention consists in the employment of eight different solvents. Only the second solvent is alleged to have been used by the defendant. It is thus described in the specification: Camphor, or camphor oil, or mixture of the same, in conjunction with alcohol or spirits of wine, the same to be employed in about equal proportions.' The claim is in these words: The preparation and use of solvents of xyloidine, such as have been before described, so as to render xyloidine more easy of conversion into compounds containing xyloidine, which are suitable for applications in the arts, and for industrial purposes.' The defendant has infringed this claim by using camphor in connection with alcohol as a solvent of xyloidine. The defendant mixes ground and dried xyloidine with pulverized dry camphor, and then immerses the mixture in alcohol until the xyloidine is dissolved. It is dissolved by the joint action of the camphor and the alcohol. Neither alone is a solvent of xyloidine. It is immaterial, so far as the invention and the claim of the patent are concerned, whether the camphor and the alcohol are mixed so as to dissolve the camphor in the alcohol, and then the xyloidine is put into the solution, or whether either the alcohol or the camphor is first mixed with the xyloidine, and then the third substance is added. The bringing of the three together, causing the xyloidine to be dissolved or softened, so as to be more easy of conversion or working into compounds or articles containing xyloidine, is the invention. Making use of the solvent power of camphor and alcohol when in the presence of each other, and of the xyloidine, is the essence of the invention. The use of the camphor and the alcohol in about equal proportions is not the essence of the invention. They are stated by the patentee to be useful in those proportions. But the evidence shows that the real invention was the discovery of the fact that camphor and alcohol, when united, would be a solvent of xyloidine.

"The novelty of the invention of this solvent is attacked, but without success. The evidence is voluminous, and has been carefully considered, with the result that the defendant has failed to show want of novelty. The prior patents adduced and examined are the English patent to Cutting, No. 1,638, of 1854; and the English patents to Parkes, No. 2,359, of 1855; No. 2,675, of 1864; No. 1,313, of 1865; No. 1,695, of 1867; and No. 1,614, of 1868. Parkes' pamphlet, of 1867, and Gmellin's Hand-book of Chemistry, of 1860, have also been considered, as well as the English patent to the plaintiff, No. 2,665, of 1867. No other anticipation than the above seems to be considered by the defendant's expert, and he does not allude to the pamphlet. Another defense relied on is that one Parkes communicated to the plaintiff, in England, the knowledge that alcohol and camphor united were a solvent of xyloidine, and that the plaintiff never made the invention himself. On the whole evidence the defendant has failed to establish this defense." 2 FED. REP. 707, 708.

The Parkes patent, No. 2,359, of October 22, 1855, says:

"It is well known that a solution of gun-cotton has been used principally as a photographic agent and in surgical operations, but my object is to employ collodion or its compounds for manufacturing purposes generally. The method of dissolving gun-cotton being well known, I do not think it necessary to give proportions, but simply to say that when I use a thin solution I add more of either of the solvents to the gun-cotton; and, if I requie a stiff preparation, less of the solvent is to be used. I dissolve gun-cotton, or other similar compounds, in vegetable naphtha, alcohol, methylated or other ethers, or other solvents of gun-cotton."

By "gun-cotton" it is understood was meant what is called "xyloidine," in No. 97,454.

The Parkes patent, No. 2,675, of October 28, 1864, says, in the provisional specification:

"In manufacturing compounds of gun-cotton, and of other vegetable substances similarly prepared, I first distil wood naphtha, or alcoholic spirit, over chloride of calcium, chloride of zinc, or chloride of manganese, using by preference the solid or fused salts. I employ the spirit obtained by this process, alone or combined, with the light spirits from coal naphtha, or other mineral naphtha, as solvents of gun-cotton or analogous compounds."

The full specification says:

"In manufacturing compounds of gun-cotton, I employ a solvent which I prepare by distilling wood naphtha with chloride of calcium."

It then describes the mode of distilling and of obtaining the solvent, and says:

* *

"The solvent thus prepared I add to the gun-cotton, usually in such a proportion as to produce with it a pasty mass. * In place of preparing the solvent with wood naphtha, it may be similarly prepared with alcohol. * * * In place of gun-cotton, properly so called, other vegetable substances, similarly prepared, may be einployed, and so in each case where, in this specification, the use of gun-cotton is directed."

The Parkes patent, No. 1,313, of May 11, 1865, is for "improvements in the manufacture of parkesine, or compounds of pyroxyline, and also solutions of pyroxyline, known as collodion." It is understood that "pyroxyline" is the same thing as "xyloidine." It says:

"The materials now well known as parkesine consist of pyroxyline dissolved in or softened by solvents, and usually mixed with coloring matters, oils, and substances which control the inflammability of the pyroxyline. In manufacturing parkesine on a large scale, in accordance with the specifications of former patents granted to ine, and when manipulating large masses of material, I have found considerable difficulty in the employment of the volatile solvents hitherto used. By the present invention I am enabled to produce large masses or quantities in a much better condition, in a shorter time, and with less solvent in proportion to the pyroxyline, than is possible with the solvents hitherto used. According to my present invention I employ as solvents of the pyroxyline, in this manufacture, nitro-benzole, aniline, and glacial acetic acid. When these solvents are employed, the parkesine can be worked freely in the air; or, these solvents may be used in combination with other solvents. I also, according to my invention, render the ordinary volatile solvents more suitable for use by the addition of camphor. By this means I obtain to some extent the same advantage as by the use of a less volatile solvent. Nitro-benzole and aniline are not rapidly volatile except at a high temperature, and this property enables me to employ them alone, or with other solvents, with very great advantage, as the dissolved pyroxyline and its combinations can be worked in rolls, and, by calendering or spreading machines, with great facility, not drying too rapidly, which enables me with facility to coat telegraph wire, or to make masses or sheets, or to spread the combinations on textile or other fabrics, to produce water-proof cloth for garments, or other articles of any size or color; and the same advantage I obtain when I employ aniline, camphor, or acetic acid; and the combinations, especially those made with nitro-benzole or aniline, can be worked freely in the open air. The following is the manner in which I prefer to

*

*

*

proceed in producing parkesine according to this invention. I take 100 parts of pyroxyline and moisten it with the ordinary solvent, by preference naphtha distilled off chloride of calcium, as is described in the specification of a former patent granted to me, and as is now well understood; and I press out the excess of solvent by an hydraulic press. I then add the other solvent in the proportion of from 10 to 50 parts of prepared nitro-benzole or aniline; or I add 10 to 50 parts of camphor, then 150 to 200 parts of vegetable oil. I use cotton-seed or castor-oil by preference. This mixture I grind in rolls, which are by preference warmed by steam admitted into them. The grinding is continued until all is well combined as a dough or paste, which will be more or less stiff according to the quantity of solvent employed."

The "former patent" thus referred to is the patent No. 2,675, which describes, as a solvent, wood naphtha distilled off chloride of calcium, and the wood naphtha so distilled is what is referred to in No. 1,313 as the "ordinary solvent," and as one of "the ordinary volatile solvents," which may be rendered "more suitable for use by the addition of camphor." And as, according to the language of No. 2,675, a solvent may be "similarly prepared" by distilling alcohol with chloride of calcium, alcohol so distilled must be regarded as an "ordinary solvent," and as one of "the ordinary volatile solvents," which is, according to the language of No. 1,313, to be rendered "more suitable for use by the addition of camphor." No. 1,313, therefore, describes the method of proceeding to be: to moisten 100 parts of pyroxyline. with alcohol distilled off chloride of calcium; to press out the excess of solvent; to add 10 to 50 parts of camphor, this being stated to be optional, instead of adding 10 to 50 parts of the prepared nitro-benzole or aniline; to add 150 to 200 parts of vegetable oil; and to grind the mixture in rolls till it is a dough or paste.

The Parkes patent, No. 1,695, of June 8, 1867, sets forth the mode of preparing what it calls a "parkesine compound." It says:

"The parkesine compound I prepare by thoroughly mixing in a vessel, with a mechanical stirrer, one part, by weight, of pyroxyline with six or eight parts of dehydrated or strong alcohol. The alcohol obtained by distilling the commercial alcohol off fused chloride of calcium and other similar substances is suitable. I also add in the mixing vessel cotton-seed oil or castor-oil in the proportion of from 5 to 10 per cent., by weight, of the cotton. The plastic mass of pyroxyline and solvent and oil, which is obtained from the mixer, is passed repeatedly through grinding rolls until perfect uniformity throughout the mass is obtained, and, at the same time, from 2 to 5 per cent. of resin, by preference gum copal of good quality, may be worked in. The grinding rolls should be inclosed in a casing and heated by steam. There are shelves in the casing to enable the workmen to handle the material. The solvent which evaporates is recovered by passing the vapor through a condenser. * * * In place of using alcohol alone for the solvent of the pyroxyline, as above described, I sometimes use a mixture of equal parts of light mineral naphtha, sp. gr. 850, and strong alcohol, sp. gr. 825, or methylated alcohol, sp. gr. 855. I use the mixed solvents in the preparation of the plastic mass in the proportion of 5 or 6 parts to one part of pyroxyline; or I sometimes make a compound solvent of equal parts of light mineral naphtha, purified vegetable naphtha, sp. gr. 849, and alcohol; and, in preparing the plastic mass, I use it in the proportion of 5 or 6 parts to one part of the pyroxyline."

No. 2,359 distinctly states that gun-cotton is dissolved in alcohol. Nothing is said about distilling or preparing the alcohol, or dehydrating it. In No. 2,675 alcoholic spirit is described as distilled over chloride of calcium, and then employed, either alone or combined with the light spirits from coal naphtha or other mineral naphtha, as a solvent of gun-cotton. No. 1,313 describes the use, as a solvent of pyroxyline, of alcohol distilled off chloride of calcium, combined with camphor, the alcohol so distilled being called an ordinary volatile solvent. In No. 1,675 dehydrated or strong alcohol, obtained by distilling commercial alcohol off fused chloride of calcium, is described as a solvent of pyroxyline, either alone, or mixed with light mineral naphtha. In No. 1,313 the pyroxyline is moistened with the ordinary solvent, and then the camphor and oil are added, and the mixture is ground. In the defendant's manufacture the xyloidine and the dry camphor are mixed and then ground together, and the ground mixture is steeped in alcohol. No. 97,454 claims broadly the use of camphor, in conjunction with alcohol, without reference to any order of manipulation. It covers equally the liquid resulting from the combination of alcohol and camphor, to which the xyloidine is added, and the mixing of the xyloidine first with either the alcohol or the camphor, and the addition of the other ingredient.

In No. 1,313 the ordinary volatile solvent, alcohol distilled off chloride of calcium, is used to moisten the pyroxyline, and the camphor is added, which, the patent says, has the effect to render such ordinary volatile solvent more suitable for use. The camphor is stated to be used in place of prepared nitro-benzole or aniline, which is a solvent. The camphor, therefore, co-operates with the alcohol, and the combination acts as a solvent. In No. 97,454 it is said that the solvents of that patent "differ from the ordinary known solvents of xyloidine in that these menstrua which are employed are not necessarily, in themselves, solvents of xyloidine, but became so by the aldition of the bodies, compounds, or substances herein referred to. In the former decision it was said that the invention of Spill was "the discovery of the fact that camphor and alcohol, when united, would be a solvent of xyloidine." It was also said that the defendant dissolved its xyloidine "by the joint action of the camphor and the alcohol," and that "neither alone is a solvent of xyloidine." Whether either alone is or is not a solvent of xyloidine is of no importance. The defendant employs as a solvent the combination of alcohol and camphor. That is what No. 97,454 claims-employing as a solvent camphor in conjunction with alcohol. What No. 97,454 says is, that the menstrua employed are not "necessarily, in themselves," solvents of xyloidine. Yet, if what is employed is essentially a combination of spirits of wine and camphor, it is an infringement of No. 37,454; and, if what was essentially a combination of spirits of wine and camphor was before described as a solvent, No. 97,454 is not valid.

The only point remaining is, as to the use, in No. 1,313, in connection with camphor, of alcohol distilled off chloride of calcium. No. 1,695 shows that commercial alcohol so distilled is nothing but dehydrated alcohol, alcohol deprived of its water, alcohol made strong, and that, alone, it is a solvent of pyroxyline. Commercial alcohol has more or less water. The water acts no part as a solvent. The object is to get rid of the water and avail of the spirit. It is the spirit which is effective. To dehydrate the commercial alcohol, or deprive it of its water, or make it strong alcohol, or absolute alcohol, which is done by distilling it off chloride of calcium, is only to concentrate it, and thus entitle it the better to be called alcohol or spirits of wine. When distilled, it is yet alcohol. When not distilled, it is called alcohol. When strong, made absolute, freed from water, concentrated, it was and is of itself a solvent of xyloidine; and in that state it was, before Spill's invention, described as used with camphor as a solvent of xyloidine. The only question was as to the strength necessary for the alcohol,-as to how much water it might contain and yet be a solvent with the camphor. There could be no invention in using alcohol of less and less strength, until a point was reached, as to weakness, beyond which it would not answer to go. Spill gives the date of his invention as the early part of 1869. Before that the world was informed that dehydrated or strong alcohol was of itself a solvent of pyroxyline, and was instructed to mix it with camphor as such solvent. It must be strong enough in spirits to do its work. Using it of less strength and yet of sufficient strength was no invention. To use dehydrated alcohol with camphor would infringe No. 97,454, and yet it would be to use only what was before. described. Under the Constitution a patent can be granted only to an inventor; and, under the statute, the thing for which a patent may be granted must not only be new and useful, but it must amount to an invention or discovery. "A mere carrying forward, or new or more extended application, of the original thought; a change only in form, proportions, or degree; the substitution of equivalents, doing substantially the same thing in the same way by substantially the same means, with better results,-is not such invention as will sustain a patent." Smith v. Nichols, 21 Wall. 112, 119.

Being satisfied that due weight was not given to these considerations, in connection with the state of the art, as shown at the hearing which resulted in the interlocutory decree, and that that decree ought not to have been made, no other result can be reached than that effect must be given to this conclusion, and No. 97,454 be held invalid, so far as it claims the preparation and use of camphor in conjunction with alcohol or spirits of wine, as a solvent of xyloidine. As to No. 101,175, the former decision said:

"There are five claims in the patent. The second alone is alleged to have been infringed. The specification says: The second part of my invention relates to the bleaching of xyloidine, and is as follows: When it is desired to