In the Matter of Alsop's Patent.

used an extremely dilute gas. The Andrews gas was not found to have a stronger smell than the Alsop, as had been suggested; it was simply a question of dilution. Photographs of the absorption spectra of the Alsop gas, the Andrews gas, and of nitrogen peroxide obtained by mixing nitric oxide with 5 air, showed that the spectra were identical. There was no difference between the Andrews and Alsop gases in respect of the presence of nitrogen trioxide. Flour over-treated by the Andrews process did not give a coloration with hydrogen peroxide, as stated by the Respondents; the colour was probably due to the splashing over of the iron liquor. A chemist in 1903 would not be in 10 doubt as to the possibility of hydrocyanic acid or acetylene being found in the external products of the arc; they would be destroyed in the arc. When the gas obtained by each of the processes was passed through water, so that the nitrogen peroxide was dissolved out, it had no bleaching effect. If the two processes were fairly worked there was no difference between their effects. A 15 gas with less nitric acid in it was less likely to give prejudicial results on overtreatment than a gas with more acid. There was no warning in Andrews' Specification against nitric acid, but it was common knowledge among chemists and bakers that any acid would spoil the loaf. The presence of a greater quantity of water vapour in the gas would not cause a greater production of 20 nitric acid in the flour, because the inter-action of nitric oxide and oxygen was not affected by water in the form of vapour, and when the gases reached the flour there was an ample quantity of water there, whichever of the two processes was used, to convert the nitrogen peroxide into nitric and nitrous acids. The water in the pores of the flour would act as a liquid. With the 25 Andrews process it was necessary to take precautions against the acid attacking the gluten; with the Alsop process it was not. If ozone had any absorption spectrum, it was very faint, and would be overpowered by the spectrum of nitrogen peroxide. The gases of the two processes, tested for nitrogen trioxide by absorption with sulphuric acid, were found to be the same. Nitric oxide and 30 oxygen, in passing through the tube, the length of which in different mills varied from 3 to 30 feet, would give some trioxide, and, further on, that would be converted into peroxide; the composition would, therefore, depend on the point at which the gas was drawn. The flour treated in Court with Andrews' gas, and then with hydrogen peroxide, had a brown colour; that did not conflict with 35 the witness's previous statement that the coloration was due to the iron liquor -not to the iron, but to the nitric acid, which had been used in excessive quantity. The exaggerated experiments with the two processes showed that the result simply depended on the concentration; with the same concentration, the two processes gave the same result. The Griess test for acidity showed that 40 there was nitric acid in the Alsop gas. Sir W. Ramsay found more nitrogen trioxide in the Andrews gas when it was liquefied, but he said that was probably produced in the act of condensation.

Adolf Liebmann said that he had found that, on carrying out the Alsop and Andrews processes, and allowing for necessary experimental error, there was no 45 change in the contents of the flour. He also found that, so far as oxides of nitrogen were concerned, the Alsop and Andrews gases were identical. After having had the information given by Andrews, he would have had no doubt that another process, by which oxides of nitrogen were produced, would have the same effect; he would have relied on the literature on the subject to show 50 that no deleterious substances would be produced.

Dugald Clerk said that the Alsop apparatus, used in the Petitioners' experiments, had been made by him in accordance with the directions in the Specification, but with iron electrodes (as carbon electrodes would be too fragile), and with a liquid resistance in the circuit to regulate the current. He found 55 that, whatever variations in the current were made, a bleaching gas was always obtained, though the quantity of it varied with the current. The gas consisted of the nitrogen oxides. There was no novelty in Alsop's apparatus; it would

In the Matter of Alsop's Patent.

give a poorer yield than Johnson's, because in it the period of short-circuiting was very long. A constant arc used in Hogarth's apparatus, with the glass partition removed, would give a bleaching gas. Alsop's apparatus would be of no use for any purpose other than that for which he intended it. Johnson was endeavouring to get the greatest possible yield of nitric acid and employed a 5 thin arc; his process would give the same gases as Alsop's and more economically.

W. F. Flack, whose firm were chartered accountants, and acted as secretaries to the Petitioners, said that the Andrews process was very largely used, and that the production of flour by the licensees had increased considerably from 10 the dates of their licenses. There were only two mills in England where the process was used, seven in Ireland and three in Scotland. The "Exothermic " process belonging to the Petitioners was for the production, for bleaching flour, of nitrogen peroxide by passing air and ammonia through a heated platinum tube. There were about 40 plants of that kind in the United Kingdom. Some 15 of the mills referred to as using the Andrews process were using the " Exo"thermic" process; one mill used the Andrews process alone. The Petitioners were advertising an electric plant.

J. Westgate, assistant manager of the North Shore Milling Company, said that none of the directors of the Petitioners' Company were directors of the 20 North Shore Company. The Andrews process was used by the latter Company without difficulty in working it. The results of the Andrews and Alsop processes were identical. Flour that accumulated in parts of the apparatus would turn yellow apart from, and prior to, the bleaching. There had been no trouble through over-bleaching. The North Shore Company had three mills and were 25 working the Andrews process in two of them; they were experimenting with the "Exothermic process, but not with an electric process. They used an aluminium cylinder for Andrews' process and had no trouble from discoloration of the flour by its adhering to the cylinder and being over-treated.

T. A. Rigby, of the firm of Thomas Rigby & Son of Frodsham and Liver- 30 pool, said his firm had used the Andrews process for several years and found it satisfactory. The flour sometimes stuck in the tube through which the gas passed to the flour, but not in the aluminium cylinder, which they used for the agitation, and the discoloured flour did not get into the bleached flour.

Walter K.C. summed up the Petitioners' case. The real object of the 35 Respondents is to be able to work the Petitioners' process. The statement as to the increase of proteids is an actual indication of the process, and the Patent is therefore invalid. The Respondents say that their electric treatment is effected by a current of 5-10 amperes and of not more than 500 volts. Really there are no limitations; and a person who succeeded in increasing the proteids 40 by a current of any kind would be charged with infringement. Under Claim 3 there is no limitation to any particular kind of arc or machine. There is only the one process; the test of success in using it is whether or not one obtains an increase of proteids and a bleaching effect. The object of the Patent is important on the question of prior grant. If the present Patent is for treating 45 flour so as to get certain chemical results, namely, increase of the proteids, there is false suggestion. Assume that the Patent is for the production of certain oxides of nitrogen and that the rest of it is disclaimed-no oxidising oxides are produced by the arc, but only nitric oxide. That, escaping, meets with air and goes through the gradations that nitric oxide always does. The 50 Patent is void because no sufficient directions are given. If any special forms of oxides of nitrogen are claimed the exact mode of producing them must be shown. The Respondents do not agree among themselves as to what is the essence of the Patent, whether it is a special machine, a special chemical process, or a current of low voltage. The reaction employed is a pure heat 55 reaction; the electric arc is merely a convenient furnace. Oxides of nitrogen, however produced, act on the oxygen of air in the same way under the same

In the Matter of Alsop's Patent.

circumstances. The case has been obscured by the introduction of conjectural matter, such as the effect of ionisation and the presence in the gases of ammonia, ozone, hydrogen peroxide, hydrocyanic acid and acetylene; the only point that remains is as to the different proportions of nitrogen trioxide. In both 5 Andrews and Alsop the same thing happens, there is a long pipe and the proportion of trioxide varies all along it. Alsop's process worked at various speeds gives various proportions of trioxide; Andrews' process does the same. The differences found by the Petitioners are within the margin allowed by Andrews in his Specification. [Counsel referred to Hattersley v. Hodgson 10 (21 R.P.C. 517, 524, and 532).] Special apparatus is described in the Specification. The Respondents' experiments with excessive concentration do not throw any light on the results during normal bleaching. The gases were known, also the purpose and the method, so there is no subject-matter for a Patent. There cannot be any prevision as to the effect of an oxidising body on 15 an unknown substance, but a known body when obtained from one source must give the same result as when it is obtained from another source.

Cripps K.C. replied.-Even if all that the Petitioners say is true there is ample subject-matter for a process Patent. [Counsel referred to Lane Fox v. Kensington, &c. Company (9 R.P.C. 413 at page 416; L.R. (1892) 3 Ch. 424 at 20 page 428 per Lindley L.J.).] The method was not obvious to people who dealt with that kind of work. This is a process Patent and nothing else. [Curtis v. Platt (L.R. 3 C.D. 135n per Lord Hatherley L.C.) and Frost on Patents, 3rd ed., Vol. I. page 62, were referred to.] The dissimilarity of the effects of the two gases, Alsop's and Andrews', on flour is important. Sir W. Ramsay has said. 25 that nitric acid will not bleach. If an action for infringement were brought against the Respondents that would be important, as bearing upon the validity of Andrews' Patent. It is not a question of how one can use Andrews' process so as to get rid of the nitric acid as a deletericus element; Andrews does not wish to get rid of it. On the other hand, he says it is better not to use ozone. 30 Supposing Alsop's Patent good, would Andrews be prevented from using his process? Andrews thought nitric acid either useful or not deleterious. Sir W. Ramsay said that the risk of harm by nitric acid was much greater in Andrews' process than in Alsop's. No one could say that the two processes are the same. Andrews speaks of the danger of sparking, and wishes to avoid 35 electrical methods. One could not know, without experiment, that by an electrical method one could get a satisfactory bleaching medium. [Nobel v. Anderson (11 R.P.C. 115 and 519) was referred to.] It used to be said that if one had a master Patent and showed one effective way of exercising the invention one had a Patent for all the ways (Jupe v. Pratt, 1 Webst. P.C. 145). 40 That is not law. Alsop's process might be only an improvement on Andrews and the Respondents could not use it without a licence. A chemical process is not a disclosure of the Respondents' electrical process. It was impossible to foretell that nitrogen peroxide, produced electrically, would not contain some gas deleterious to flour. The apparatus itself might be good subject matter for a 45 Patent. Part of the Respondents' process is to have an electrical apparatus ; they did not know any other purpose for which one would use an apparatus constructed like theirs; it is a very special form of apparatus. The question of prior grant does not arise; the description of the apparatus in the prior Patent was not published in this country till after the Respondents' Specification. 50 What does Alsop's Claim 1 mean? [PARKER J.-Suppose someone supplied you with nitric oxide through pipes, you would be within Claim 2, but not within Claim 1.] The words on page 1, lines 17-23,* and the disclaiming clause are very important. The Respondents are not claiming the use of oxides for bleaching; the method of producing the gaseous medium is a patentable

་

In the Matter of Alsop's Patent.

invention. Andrews' process is specifically mentioned in the disclaiming clause. Any ordinary reader taking Andrews' Specification would think that the more nitric acid he used the better, but acidity is deleterious. Mr. Clerk tried to get a gas from Alsop's process of the same concentration as in Andrews' process. That is not the right method-one ought to take Andrews and work it as it 5 would be worked commercially. Sir W. Ramsay worked the processes under the same conditions, and found that Alsop's gas had not the deleterious ingredient that was present in Andrews'. It may be that nitrogen peroxide in contact with the flour gives some nitric acid, but it is too small a quantity to be material. If commercial methods are taken and worked fairly, the Alsop gas is found to be 10 more dilute; the dilution alters the equilibrium and so the effect of the gas. The nitric oxide reaches the flour in Alsop's process as peroxide, in Andrews as a mixture of oxide and peroxide, which act as the trioxide-though it may be that they so act only when a long metal tube is used. No one could have predicted that Alsop's process would have such satisfactory results. A process 15 Patent is only for the actual process and anything substantially the same. It is not suggested that there is any insufficiency in the Specification in respect of the directions given. One is limited in revocation proceedings; however much one may think Andrews is false one cannot refer to that. There is no such thing as res judicata in Patent actions, because the proceedings are between different parties; 20 if the Respondents succeeded in showing that their Patent was valid, that would not help them in a subsequent infringement action. As to the increase of proteids, if the Claim makes inaccurate statements as to the essence of the invention the Patent is bad, but the Respondents have had the advantage of disclaiming and the grant is limited to the Claim: Mere boastfulness does not 25 invalidate the Patent. There is no question of mala fides. [PARKER J.With regard to process Patents you must have a process ending in a result-you must say it produces something, and if it does not, the Patent is bad. But if you say the result is useful, it does not matter. If I could construe this as a claim for bleaching only the mistake would not matter, but in some cases the 30 misrepresentation is so serious that the Crown is deceived.] If the Court is against the Respondents they ask that the Order for revocation be made subject to amendment under Section 18. [PARKER J.-But ought I to do so after what has happened? Would not the effect of amendment be to enlarge the area of the Patent?] It would reduce the area; the Specification as it stood would 35 have prevented anyone doing either of the things; after amendment I could take action on the bleaching only. The question is dealt with in Moser v. Marsden (13 R.P.C. 24).

PARKER J.-The Letters Patent granted to J. N. Alsop in 1903 which are attacked in these proceedings are for a process only. That processes are good 40 subject-matter of Letters Patent was finally decided in 1842 in the case of Crane v. Price (1 Webst. P.C. 393). It was there held that if the result of a new process is a new article, or a better article, or a cheaper article than that produced by old methods the process was patentable, provided of course that it required an exercise of the inventive faculty to arrive at it. It has since 45 been held that a new and alternative method of arriving at the same result, irrespective of whether that result is better or cheaper, may be patentable. But a process to be patentable must be a process which leads to some result and the result arrived at must be useful, though it need not be an article at all; for example, a new process for chemically cleaning dirty linen would be good 50 subject-matter, but a process of treating material, of which no result at all could be predicated, would not be patentable.

In considering the validity of a Patent for a process, it is therefore material to ascertain precisely what the patentee claims to be the result of the process for which the Patent has been granted; the real consideration which he gives 55 for the grant is the disclosure of a process which produces a result, and not the disclosure of a process which may or may not produce any result at all. If the

In the Matter of Alsop's Patent.

patentee claims protection for a process for producing a result, and that result cannot be produced by the process, in my opinion the consideration fails. Similarly if the patentee claims for a process pro lucing two results combined and only one of these results is in fact produced by the process, there is a 5 partial failure of consideration, just as there is in the case of a Patent containing one valid and one invalid Claim; and such partial failure of consideration is sufficient to avoid the Patent, "If" said Mr. Justice Buller in Turner v. Winter (1 Webst. P.C. 82) "the Patentee says that by one process he can produce three things and he fails in any one, the consideration of his merit, and for 10" which the Patent was granted, fails, and the Crown has been deceived in "the grant."

An analogous principle applies to Patents for improvements. Of course the patentee must in such a case state the nature of the improvement, or in other words, the result which he claims to have secured by his invention. If no such 15 result is in fact secured by following the directions given in the Specification there is a failure of consideration and the Patent is void.

Objections to Patents on the grounds above referred to are sometimes treated as objections for want of utility, and when so treated the well-known rule is that the utility of an invention depends upon whether, by following the 20 directions of the patentee, the result which the patentee professed to produce can in fact be produced (see Lindley L.J. in Lane-Fox v. Kensington &c. Company, 9 R.P.C. at page 417*). Want of utility in this sense must however, in my opinion, be distinguished from want of utility in the sense of the invention being useless for any purpose whatever. In the case of an invention not 25 serving any useful purpose at all, the Patent would no doubt be void, but not entirely for the same reason. It would be probably void at common law on the ground that the King's prerogative could not be properly exercised unless there were some consideration moving to the public, and the public could not be benefited by the disclosure of something absolutely useless. It would certainly 30 be avoided as mischievous to the State and generally inconvenient within the meaning of the Statute of Monopolies. But it may well be that an invention, which is void because it does not produce the result, or one of the results, claimed, may nevertheless be useful as producing other results. Further, there may be cases in which the result which the patentee claims to have produced 35 can in fact be produced, but the patentee has gone on to detail the useful purposes to which such result can be applied, and that in fact the result produced cannot be applied to one or more of such purposes. In such a case I do not think the Patent is necessarily void, provided there are purposes for which the result is useful. If it be avoided it can only be because it contains a 40 misrepresentation so material that it can be said the Crown has been deceived. The importance of drawing a distinction between what the patentee claims to have effected by the invention for which he claims protection, and a statement of the additional purposes to which the invention can be applied, is well illustrated by the case of Lyon v. Goddard (10 R.P.C. 121 and 334, and 11 R.P.C. 45 354).

Such being, in my opinion, the law, I must, before I can properly apply it, construe Alsop's Specification, and determine what, according to its true construction, are the results claimed by the patentee to be produced by the patented process. Before doing this, I ought, however, to make one preliminary observa50 tion. In the course of these proceedings, the Specification has been amended by striking out several of the original claiming clauses, leaving the title and body of the Specification unaltered. In my opinion, this does not enable me to ignore any statement in the body of the Specification as relating only to something which has been struck out. I must, I think, construe the Specifica55 tion as it now stands after amendment, even if this results in any part of it-for

* And L.R. (1892) 3 Ch. 424 at pages 430-1.