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Kane v. Guest & Co.

"according to the nature of the sugar employed, and the character of the candy required. As this process is directed chiefly to the manufacture of stick "candy, the inventor commonly proceeds by dissolving cane sugar and glucose "in water. In dissolving the cane sugar particular care is to be observed that "all evidences of crystallization disappear, it being well known to those familiar "with the art of sugar-making, that the presence of sugar crystals in small "quantity is frequently followed by crystallization of the whole mass. This "crystallization, the end in view in sugar manufacture, is to be carefully "avoided in the manufacture of candy. The compound of cane sugar and 10 "glucose is placed in the vacuum pan or kettle, and the same boiled or cooked, commonly at a temperature of about 212 degrees Fahrenheit until the mass assumes that particular condition known in the art as a hard crack' or stick "candy consistency, whereupon it is removed from the pan, and treated in the ordinary manner. In practice it is found that the addition of glucose to the 15" cane sugar is a matter of great advantage as it permits the compound to be brought into the vacuum pan to a condition not otherwise attainable, and also "for the reason that the resulting product possesses greater strength, durability "and brilliancy than it would otherwise have. In practice it is found that "candy manufactured in accordance with this invention possesses a peculiar 20"appearance by which it may be readily distinguished, on inspection, from candy manufactured in the ordinary manner.

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"The inventor is aware that vacuum pans are in use for the evaporation of "saccharine juices in the production of sugar, the object being to bring the "material to a granular condition. He is also aware that it has been proposed, "to boil a solution of cane sugar and other materials in a vacuum pan to prepare "the same for the production of what is commonly known as rock candy' a "crystalline product which is not, strictly speaking, a candy. He is also aware "that compounds of glucose and grape sugar have been cooked in open pans "for the production of candy, but believes himself to be the first to cook a 30"compound of grape sugar and glucose in vacuo for the purpose of bringing "the same to the proper consistency for the production of stick candy or "analogous candy. The essence of this invention in this regard resides not "merely in the substitution of one means of evaporation in place of another, "but in the fact that the particular compound treated, that is to say, a compound 35 "of glucose and cane sugar, will, when cooked in vacuo, form a product, differing in its nature from any candy heretofore known in the art, and "unobtainable by the use of the open pan.

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"It is to be noted that the cooking of this compound to a candy consistency, "is clearly distinguishable from the cooking of cane juices alone, for the 40" production of sugar, the operation of candy-making commencing after the "formation of sugar is completed, and the results aimed at in the two cases "being widely dissimilar.

"In the accompanying drawing is illustrated in outline an apparatus suitable "for carrying this invention into effect.

45 "A represents an ordinary vacuum pan provided with an overflow chamber B, "and with a tube C for returning the overflowing material to the pan. "D represents an exhaust pipe leading from the pan to a condenser, pump, or "other apparatus, by which the vapors are withdrawn, and the necessary vacuum maintained within the pan.

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"While the inventor has described herein the use of cane sugar with glucose, "it is to be understood that beet sugar, the equivalent of cane sugar, may be "used as a substitute therefor in connection with glucose, and that such "combination of beet sugar, and glucose, is embraced within the scope of this "invention."

55 The claims were :

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"1. The improved method of manufacturing candy, consisting in cooking a compound of cane sugar or beet sugar, and glucose in vacuo, until it acquires

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Kane v. Guest & Co.

a consistency appropriate for the production of the candy demanded. 2. The "improved method of manufacturing candy, consisting in cooking cane sugar "and glucose in vacuo until it arrives at a hard crack' or stick candy "consistency. 3. The new product, the candy produced by boiling cane sugar "and glucose together in vacuo."

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The Plaintiff commenced this action on the 9th of March 1897, and on the 9th of April 1897 delivered his Statement of Claim, by which he alleged (1) that he was the registered owner of "valid Letters Patent (No. 785 of 1887) granted to William Phillips Thompson for Improvements in and appertaining to the manu"facture of candy '; (2) that the Defendants had infringed as set forth in the 10 Particulars of Breaches; and the Plaintiff claimed (1) an injunction restraining the Defendants, their servants and agents, from further infringing the Patent ; (2) damages for infringement, or, at the option of the Plaintiff, an account of the profits made by the Defendants by such infringements; (3) delivery up to the Plaintiff or destruction of all material in the Defendants' possession 15 which was made or used in infringement of the said Letters Patent; (4) such further or other relief as to the Court might seem just; (5) costs. The Particulars of Breaches complained of were that the Defendants, at their works at Ancoats near Manchester, in County of Lancaster, had continuously during the months of January, February, and March, 1897, manufactured and 20 sold candy made in the method described and claimed in the Specification of the Patent.

By their Defence, delivered the 1st of July 1897, the Defendants alleged (1) that they had not infringed as alleged or at all; (2) that the Patent was invalid for the reasons in the Particulars of Objections appearing. The 25 following were the Particulars of Objections relied on by the Defendants :(1) The alleged invention was not new, (A) As to Claims 1 and 2 of the Plaintiff's Specification:-The alleged invention had been published in this realm prior to the date of the Plaintiff's Patent (i) in the Specification of Edward Charles Howard (No. 3754 of 1813)—parts relied on p. 6, 1. 29, to p. 8, 1. 23; (ia) in the 30 Specification of W. T. Kirchhoff and James W. Kirchhoff, U.S.A., Patent No. 309,720 of the year 1884, published in the Patent Office, London, on the 11th of August 1885; (ii) in Ure's Dictionary of Arts, Manufactures and Mines, Vols. I., II. and III., and a supplement thereto published in 1878-parts relied on article or remarks on Sugar, commencing at p. 925 of Vol. III., and 35 p. 847 of the supplement; (iii) by the public use of the method of manufacturing candy described in the Plaintiff's Specification by (a) Messrs. Batger & Co. at their works, Broad Street, Ratcliffe Road, London, in the year 1866; (b) Mr. G. P. Damiral at his works 24 and 26, Church Street, Greenwich, continuously from the year 1883 to the date of the Plaintiff's Patent. (B) As 40 to Claim 3 of the Plaintiff's Specification :-The alleged invention had been published in this realm prior to the date of the Plaintiff's Patent (i) by the manufacture and sale of candy identical with the alleged new product of the Plaintiff by Messrs. Batger & Co.; and (ii) by Mr. G. P. Damiral-particulars of such manufacture are set out in paragraph A, iii, a and b ; (iii) by the public 45 general manufacture and sale by the trade of candy prepared by evaporating in an open vessel by superheated steam or by open fire heat mixed solutions of cane sugar and glucose, the product being identical in all respects with the alleged new product of the Plaintiff. (2) The alleged invention was not the proper subject-matter of Letters Patent. The Defendants proposed to allege 50 that the alleged invention was a mere use of an old and well-known appliance and process in an old and well-known way for substances analogous to those for which the said appliances had been commonly used long prior to the date of the Plaintiff's Patent, and, in addition to the instances of prior publication and prior user hereinbefore referred to, the Defendants propose to refer to the 55 public and general use of vacuum pans for various evaporative processes. (3) The Plaintiff's Specification did not sufficiently describe the nature of the

Kane v. Guest & Co.

invention and the manner in which the same was to be performed. Parts of the Plaintiff's Specification to which this objection applied :-(a) p. 1, 1. 24, to p. 2, 1. 3; (b) p. 2, 11. 9 to 14. (4) The Plaintiff's Specification was ambiguous and misleading. Parts of Specification to which this objection applies-p. 2, 5 11. 42-45.

By Reply, delivered on the 12th of July 1897, the Plaintiff joined issue with the Defendants upon the allegations contained in the Defence and Particulars of Objections.

The action was tried on the 28th of February, and 1st, 2nd, and 3rd of March, 10 1899.

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Moulton, Q.C., and Shaw (instructed by Learoyd, James, and Mellor) appeared for the Plaintiff; Bousfield, Q.C., and Walter (instructed by Shaw', Tremellan, and Kirkman, agents for William Thomson, Manchester) appeared for the Defendants.

Moulton, Q.C., opened the Plaintiff's case. The main question here is the novelty of the invention, which relates to the manufacture of sugar candy. The old method was to boil cane sugar in an open pan with 6 to 8 per cent. of glucose; instead of glucose an acid might be used, such as sour barley water, vinegar, or cream of tartar. By the Plaintiff's invention the sugar is dissolved in water 20 and then mixed with glucose and boiled in a vacuum pan. The advantages of this method are :-Boiling at lower temperature; the use of a much larger percentage of glucose, thus greatly cheapening the production; the possibility of making a much larger quantity at a time. The invention is based on the discovery that it is possible and advantageous to use a vacuum pan in the 25 production of "hard crack" candy provided the following precautions are taken :-(1) Complete solution of the sugar before boiling; (2) the use of a larger percentage of glucose-the use of the old quantity would ruin the whole boiling; (3) the boiling at a lower temperature.

Witnesses were then called for the Plaintiff, including Dr. Attfield and 30 George Duncan Moffat, who was the Patentee in America of a similar invention. Trade witnesses were also called to speak to the utility and novelty of the invention.

Bousfield, Q.C., opened the Defendants' case, and called witnesses, including Dr. Schack Soomer, trade witnesses, and George Peter Damiral, Charles Webb 35 and Robert Deare, the last three of whom spoke to the alleged prior user.

George Barrat, Edward Barrat, and George Duncan Moffat were then recalled, and gave evidence on behalf of the Plaintiff rebutting the evidence of George Peter Damiral.

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Walter summed up the Defendants' case.-In Claim 1 the Patentee claims 40 protection in the widest form for the process of manufacturing candy by heating in vacuo. The claim is not restricted to one form of candy, but is unqualified, and is too wide to be supported. Claim 2 has been put in in order that they may strike out Claim 1, and so restrict the invention to "hard crack candy. Claim 3 claims the new product produced by boiling sugar and glucose 45 together and in vacuo. No proportions are claimed, and there is no new product. The only difference between the new and old methods is that by the new method discoloration is avoided. This is due to the fact that the water is driven off at a lower temperature. There is no chemical difference between the two products. The improved process consists in a common vacuum pan 50 used in an old way and with old materials. As regards anticipation, Kirchhoff's Specification includes all that there is in the Plaintiff's Specification. Kirchhoff's Patent was for "candies, jellies, preserves, and confectioneries generally," and includes a third pan. Dr. Attfield's experiments show that he did produce "hard crack" candy by this means, which he subsequently spoilt by putting 55 the product through the third pan, which is only intended to be used when making jellies, preserves, and such like. Any candy maker would know that it would spoil "hard crack" candy to put it through this pan, and that this pan

Kane v. Guest & Co.

was not intended to be used in the manufacture of "hard crack" candy. The Plaintiff's Specification is anticipated as soon as the candy is boiled. After Kirchhoff there was nothing left for the Plaintiff to teach the world. The Plaintiff contends that Kirchhoff's Specification is insufficient; but it is quite as full as his own, which places him on the horns of a dilemma. There is also 5 the prior user, which I submit has been sufficiently proved. The product made during the prior user was sent out and sold in the ordinary way along with the other stuff.

Moulton, Q.C., replied on the whole case.-Putting aside the alleged prior user, no one in this country had heard of stick candy made in a vacuum pan 10 before the Plaintiff's Specification. The trade looked upon it as a good invention, and paid large sums for the right to use it. Any method which enables people to make something better or cheaper is patentable. The Patentee here discovered a way of making a better product at a lower temperature than previously, and at less cost. What would cause failure in the old 15 open pan must be present to ensure success in the vacuum pan, viz., more glucose, lower temperature, and complete solution of crystals before boiling. As regards Kirchhoff's Specification, no practical man would imagine that it referred to stick candy. The Specification does not teach anybody how to make stick candy. It was never intended to be used for stick candy. The 20 case of prior user brought forward by the Defendants is a clear case of an experiment abandoned because of failure.

Judgment was reserved and delivered on the 7th of June.

STIRLING, J.-This is an action for infringement of a Patent (No. 785 of 1887) granted to William Phillips Thompson, being a communication from 25 Thomas Kane, of Chicago, in the United States of America. The Defendants allege that the Patent is invalid-first, for want of subject-matter; and, secondly, for want of novelty in two respects-first, by reason of prior publication; and, secondly, by reason of prior user. If the Patent be valid it is not disputed the Defendants have infringed.

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The case as to want of subject-matter and prior publication may conveniently be kept separate from that which relates to prior user. The title of the Patent is for "Improvements in and appertaining to the manufacture of candy." The Specification states the object of the invention to be-"To produce candy, more particularly stick candy, of a quality superior to that resulting from the 35 "ordinary process as regards its clearness or brilliancy, its strength, and its "resistance to atmospheric influences, and at the same time to lessen the cost "of manufacture." Stick candy, which is there more particularly referred to, and one form of which is commonly known in this country as barley sugar, was prior to the date of the Patent obtained, and still is obtained, by kneading 40 together a mixture of cane sugar, grape sugar or glucose, and a little water. According to the evidence it was originally prepared by heating together cane sugar, water, and a little acid of some kind. The acid first employed was barley water, from which the name "barley sugar" is derived; afterwards vinegar and subsequently cream of tartar was made use of, and, lastly, glucose was 45 occasionally employed, as I have already stated. The object of the acid is to convert a little of the cane sugar into glucose, which is now mixed with the cane sugar at once instead of being developed indirectly in the course of the process.

The method of manufacturing was this. About 40 lbs. of the mixture was 50 boiled in an open copper pan over a furnace, and heated slowly to a temperature of over 300 degrees-somewhere about 310 degrees-and the application of heat was continued till a small sample taken out and tested between the fingers became a hard, brittle thread, when the process was completed; the contents of the pan were emptied on to a cold slab and moulded into the required form. 55 The product is not crystalline like sugar, but vitreous or in the nature of glass. This condition is unstable, and the stick candy has a tendency to assume the

Kane v. Guest & Co.

crystalline form. The result is that small crystals are formed by degrees at the surface of the candy causing it to lose its clear, glassy appearance, and, as it is termed, to granulate. The high temperature to which the sugar is exposed during the manufacture causes carbonisation and the formation of caramel, the 5 consequence being that the candy becomes more or less discoloured. A like difficulty occurs in the manufacture of crystalline sugar, and is overcome by the use of the vacuum pan, in which the material can be boiled at low temperatures.

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The invention which is the subject of the Patent appears to be due to Mr. 10 George Duncan Moffat, who was called as a witness for the Plaintiff. stated that in 1880 he was engaged in the manufacture of candy in New Orleans, and had from visiting the sugar plantations in the neighbourhood become familiar with the use of the vacuum pan, and it occurred to him that this instrument might be employed so as to avoid the discoloration common in 15 the ordinary process of making candy, and he commenced a series of experiments on the premises of Messrs. Kirchhoff and Kirchhoff, who are sugar refiners in New Orleans. At first he started with the same proportion of cane sugar and glucose which was used in the open pan process, but he ultimately discovered that it was necessary for success to use a larger proportion of glucose, 20 and he stated that he found he could not get a successful result without using 25 per cent. of glucose. The necessity for using a large percentage of glucose in connection with the vacuum pan is shown by the evidence of the Defendants' witness, Alexander Hall. He produced samples of stick candy made in a vacuum pan in which 20 per cent. only of glucose was mixed with the cane 25 sugar; but in cross-examination he admitted that he had in the course of making these specimens to add acid because he did not use enough glucose. The effect of the acid of course would be, as 1 have already pointed out, to convert a portion of cane sugar into glucose, and thus in effect increase the percentage which is used. Mr. Moffat stated that it took him about a year to 30 make this discovery, and put him to an expense of about 4,0007., and the Plaintiff's Patent is intended to embody the result of that discovery. The evidence shows that a considerable number of makers in this country have taken licenses under the Plaintiff's Patent, and have paid considerable sums for those licenses. It also appears to me to be made out that the stick candy 35 produced is a better colour and takes longer to assume a granular state than that made by the open pan process.

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I now turn to the Specification of the Patent. On page 1, from line 10 to line 20, the Patentee states the defects of the ordinary process. He states that [the learned Judge then read the part, ante, page 434, line 21 to line 32]. Then 40 he goes on from line 21, page 1, to line 8, page 2, to state the discoveries which he has made. [The learned Judge then read the passages, ante, page 434, line 33 to line 49.] Then at page 2, line 9 to line 14, he describes the essence of his invention in this form :-"The essence of this invention consists in subjecting a compound of cane sugar and glucose or grape sugar to a cooking or boiling 45 "action in vacuo. And it is to be distinctly understood that the apparatus for "carrying out this process may be modified in form and construction at will; "that the temperature may be regulated, and the period of the cooking operation lengthened or shortened according to the nature of the sugar employed and "the character of the candy required." So that it may be applied to candies of 50 different characters. Then he proceeds :-" As this process is directed chiefly "to the manufacture of stick candy, the inventor commonly proceeds by dissolving cane sugar and glucose in water." Then he points out that care is to be observed that all evidences of crystallization disappear. Then he says:"The compound of cane sugar and glucose is placed in the vacuum pan or 55"kettle, and the same boiled or cooked, commonly at a temperature of about "212 degrees Fahrenheit, until the mass assumes that particular condition "known in the art as hard crack' or stick candy consistency, whereupon it is

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