NEUREUTHER v. MINERAL POINT ZINC CO., 179 F. 850

SEAMAN, Circuit Judge (after stating the facts as above). The patent in suit, No. 666,390, was issued to the appellant January 22, 1901, for an “improvement in regenerative retort-heating furnaces,” having special reference to zinc-smelting furnaces.

In the light of the prior art, including the conceded facts of regenerative zinc-smelting furnaces in prior use for many years, the test of patentable novelty in the appellant’s device rests on a single feature — disclosing a “three-port” form of such furnace, as distinguished from the “one-port” and “two-port” forms in prior use — with no serious complications of fact involved in the inquiry.

For recovery of metallic zinc, after treatment of the ore in a calcining kiln to drive off the sulphur, reduction or “distillation” in a furnace is the zinc-smelting provision of the patent device; and the improvement is in the way of saving loss of zinc which occurs in distillation, said to arise in escaping either volatilization or condensation. The furnaces employed for this zinc-smelting process have been of two different types: (

a) The earlier, known as the Belgian direct-fired furnace; and (

b) Siemens’ gas regenerative retort-heating furnace, invented by Dr. Siemens and patented in British patent No. 1,575, May 21, 1869, as “improvements in calcining and smelting -ores,” etc.; and the type adopted for improvement in Neureuther’s patent (No. 666,390 in suit) is Dr. Siemens’ invention, which shows a single horizontal row of ports opening into each of the compartments of the furnace — corresponding to the lower ports (Nos. 20 and 21) of Neureuther’s patent — known as the “one-port” furnace.

The patentee, Neureuther, is superintendent of the furnace department of the Illinois Zinc Company, at Peru, and has been such superintendent since 1869. In his plant Belgian furnaces were originally installed, but in 1877 he introduced a Siemens furnace, later installing two others of like one-port type — operated conjointly with their .Belgians — each having three horizontal rows of retorts in each com-' partment (instead of four rows as shown in Siemens’ patent drawing), which are heated by the combustion of air and gas admitted through the single rows of ports.

These one-port furnaces are referred to in the record as furnaces Nos. 1, 2 and 3. In 1892, they installed an additional Siemens’ type of furnace, provided with two horizontal rows of ports opening into each compartment (the upper ports half the size of the lower) and four rows of retorts instead of three — referred to as two-port furnace No. 4 — and in 1893 a duplicate thereof was installed, called No. 5.

Two of the one-port furnaces (2 and 3) were changed to two-port furnaces in .1894 and No. 1 was so changed in 1897 — in each instance making four rows of retorts and two rows of ports on each side, increasing the number of retorts from 144 to 192.

Thus five two-port furnaces were in operation (with the first one in use about seven years), when a sixth furnace was added in 1899, provided with a third row of ports and a fifth row of retorts (No. 6) which was the structure described in the present patent, for which Neureuther’s application was filed August 1, 1900; and in reference to such structure, it may well be remarked that no deviation appears from the prior .two-port form, except the additional rows of retorts and ports, of like size and form with the upper rows of the two-port furnace, together with raising the arch sufficiently for their accommodation.

During 1900 and 19.01 the five two-port furnaces were changed over by raising the arch and adding the fifth row of retorts and third row of ports, conforming to No. 6; and) in 1903 a seventh three-port furnace was built, called No. 7. Through the above-recited evolution of furnace building and trial, in the plant of the Illinois Zinc Company, Neureuther achieved superior results in the three-port form of furnace, as an improvement both 'on the original Siemens device and on his own two-port furnaces, after the latter had continued in practical operation for about seven years.

The outcome of his efforts was an improved zinc-smelting furnace of the Siemens type, and its superiority over other forms of furnace, at least in economy of fuel and space, appears from the testimony.

Were the new andl useful qualities'of the three-port furnace, therefore, the test of patentability, no difficulty would appear in upholding the patent; but invention is the test which must be applied, and for solution of that inquiry under the facts stated, we believe one rule to be well settled and applicable, namely: That “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, 22 L. Ed. 566; 8 Notes U. S. Rep. 389; Wilce v. Bush Temple of Music Co., 134 Fed. 389, 391, 67 C. C. A. 371.

The disclosure of invention in this patent, beyond that of the Siemens patent, is stated in the appellant’s brief to reside in the following statement of the specifications: “Flues extending upwardly within such division-wall and opening at different heights into the combustion-chamber, one set into one compartment and the other set into the other compartment thereof, so that the gases and flame will enter the combustion-chamber at the base of one compartment and at different points above the base within the mass of retorts.” And the contention is, in substance, that the heat was thus evenly distributed and utilized, greatly improving distillation in the retorts, and saving the overheating and breaking down of retorts under the prior methods.

While it satisfactorily appears, as we believe, that the one-port arrangement of the Siemens patent was insufficient for this desirable even distribution of the heat, and that additional ports, with additional height for the retort-heating chambers, tend to better distribution, we are of opinion that the problem thus presented was solved, except it may be in degree, by the two-port furnaces, which were installed and constantly used in the plant for a period of seven years prior to the patent device.

If these changes of structure to that end amount to invention — in the light of numerous patents introduced showing like provision in other types of furnace — it became vested in the public through such use, and the above-stated rule governs alike whether the prior conception rests in the Siemens patent or in such public use. Smith v. Nichols, ante.

The only departure from the Siemens patent in either of these new forms of furnace introduced by the appellant, as before stated, is in the combustion-chamber, making additional ports and retorts, with corresponding increase in the height of the chamber; and both departed alike, except in degree. The testimony in reference to the practical operation of the two-port and three-port furnaces respectively is convincing that both were substantial improvements over the primary device, and that the three-port is the superior form.

It is not convincing, however, that the two-port furnaces were impracticable for the improvement sought, in better distribution of heat, nor that they failed to dlisclose the means to that end. The facts in evidence, showing both their length of actual service and efficiency, and their retention in service long after the three-port furnace had demonstrated its value, are more persuasive upon that issue than the oral criticisms which are now offered as to their defects, unsupported by other evidence.

They clearly anticipate the above-stated claim of invention in the three-port device, and the multiple-port conception therein (1892) having become public property, was not patentable subject-matter in 1900, when the application was filed for a patent.

The alleged improvement then made was the expedient of the mechanic, carrying out the original conception as exemplified by the testimony of appellant’s construction engineer, that the change was made “simply to run the furnace more economically; that is, to get more retorts on the same ground, the same space.” It provided 720 retorts in No. 6 and 800 in No. 7, whereas, each of the first three two-port furnaces had only 384 retorts. We are of opinion, therefore, that the grant of a patent was unauthorized, and the decree accordingly is affirmed.