(dissenting). We are agreed that the apparatus of Belir’s second patent contains no invention, or has not been infringed, and it seems to me equally clear that the process of his first patent is lacking in the essential quality of novelty. In the principal opinion it is said:
“If the operation, namely, the automatic separation of the increasing mass of corn into germs, hulls, and starch by means of starch milk, itself continuously and automatically formed in the course of the operation, be new, then the claim would seem to be valid and patentable.”
While this proposition, which seems to be advanced as the basis of the discussion, and as the test of patentability, makes a “continuous” and “automatic” formation of starch milk out of an “increasing mass” of corn essential characteristics of the process, the claim of the patent does not require their presence. The apparatus described is capable of a constant operation, but whether the starch milk will be continuously formed, like the continuity of other parts of the process, depends, as the specification itself says, “upon the continued introduction into the separating tank of crushed corn and water in the proper relative proportions,” and, it should have been added, in proper quantities; but that such continuity of movement in any step of the process is not an indispensable characteristic, the wording of the claim leaves no doubt. If it were, it would be possible to use the very apparatus described for the purpose of accomplishing the intended results of the process, without infringing the claim, simpljr by passing ihe softened corn through the crasher and into the mixing tank intermittently, or in irregular quantities, determined arbitrarily in the course of operation, or by a predetermined arrangement of the device for the purpose of causing a regularly intermittent action. The essential part of the process, it is evident, is the use of the starch milk, produced in the course of the operation, as the means of separating the germs from the hulls; and, if the claim is to be so construed as to include the effects of the operation of the apparatus described, it is easy of evasion, because neither the entire apparatus, nor any part of it, is indispensable to the performance of the process. The complete separation of the germs, hulls, and starch-making parts of corn, by means of starch milk produced in the operation, may be effected, in the simplest way, by mixing the softened and crushed corn and water in any kind of vessel, by hand or otherwise, decanting enough of the liquid to carry off into another receptacle the floating germs, or removing the germs from the mixture by means of a perforated scoop or ladle. The use of screens to separate either germs or hulls from the starch milk had been well known from the beginning of the art, and the appliances for that purpose described as a part of Behr’s apparatus are mere aggregations; and the screening, as a *991step in the process claimed, is likewise an aggregation. What is meant by calling the process “automatic,’’ if anything more than that it is effected bjr force of natural laws and by the mechanical agencies brought into action, I do not know. Once the crushed com and water are in the mixing tank, the process is of that character; hut how the softened corn is supplied to the crusher, from which it falls into the mixing tank, and how tin; quantity supplied is regulated, does not appear, but evidently it is impossible that the delivery in the manner and quantity required shall be wholly automatic. I find nothing either in the specification or claim to justify calling the corn, in process of separation, an “increasing mass.” At the very commencement of !fie operation, and until the separating tank has been idled to the point of overflow, there will, of course, be an increase of the quantify of corn in the tank; but, once the oven-flow has commenced, there will apparently he no further increase while the process goes on. On ihe contrary, the quantity will be unvarying, if the influx from the mixing tank is constant and steady, as it is intended to be. If the substance of the claim is, as I. think it was intended to be, in the use of the starch milk produced in the course of operation as the means of separating the germs and the hulls from each oilier, and if the apparatus described is referred to simply as an available, but not indispensable, agency of effecting the process, then the words “automatic.” ■•continuous,” and “increasing mass,” instead of indicating essential characteristics, are merely incidental, and in respect to the question of novelty or invention are of no significance. If is said, “This is nor an intermittent process”; but, as already suggested, it may be intermittent without change of its essential character, and may be intermittently performed upon the apparatus by which it is intended !o be made continuous. If the feed is entirely stopped, the surface overflow, it is true, will stop, but the mechanism meanwhile may go on, keeping np the agitation in the separating lank until the feed is renewed and the overflow recommences.
However the claim is to be interpreted, there is no step of it: which is not anticipated in the prior art. The chief feature, the production and use of the starch milk, is distinctly and unmistakably suggested in the second British patent: of Anderson. In his first, patent he had described a proems whereby the maize was first softened, then crushed, and then “placed in a fluid, the specific gravity of which must be such as to allow the perispenu or albuminous portion of the grain to sink to the bottom of the containing vessel whilst the embryo floats upon the surface of the fluid”; and it is added that a liquid of the requisite density and strength may be obtained conveniently and economically by the use of salt and water. The idea of separating the constituent parts of corn of different degrees of specific gravity by means of a liquid of intermediate gravity is here fully developed, hut the possibility of effecting tin» separation by means of the mixed water and starch, or starch milk produced in the course of the operation, Anderson had not then perceived. In his second patent he supplied that, suggestion, not by a hint, but by an unmistakable statement that (he saline solution may be dispensed with, and a liquid of sufficient density obtained by mixing into the water some “starchy matter from *992a previous operation, or in process of separation, and, by preference, in its undried state.” The meaning of that statement is not obscure. “Other suggestion” was not necessary to help it out. It means clearly, as in the opinion of the court it Is conceded “to seem to indicate, that, in place of salt, starchy particles may be taken up and held in suspension by the water during the operation, and that the liquid may be thereby made of sufficient density to float the germs, which can then be removed, leaving the starchy portion behind.” No other possible meaning has been suggested. The objection made that no apparatus, stirrer, or mechanical appliance for carrying out the hint to a practical result was proposed, is not only not tenable, but is destructive of the argument it is intended to support. The method and means suggested for carrying out the process are the same, whether salt or starch is used to strengthen the liquid; and, if the Anderson patent does not anticipate the use by Behr of starch milk so produced for that purpose, then his use of the saline solution would not be an anticipation, if Behr, in connection with his apparatus, had claimed the use of that or any other mixture for the same purpose. A further objection is, that, before applying his process, Anderson got rid of the hulls by decortication. The character of the process, evidently, is the same, whether the corn has or has not been decorticated. Besides, de-cortication was no part of Anderson’s first process, which in other respects is identical with his second; and, once the availability of starch milk had been disclosed in the second patent, the practicability of using it in the process of the first patent, to separate the germs from other parts of the softened and crushed corn, which had not been de-corticated, became evident,- and thereafter, of course, could not be the subject of discovery or invention. That this was so, by reason of the Anderson process, or of some other process theretofore known in the art, is recognized in the specification of the patent in suit, where it is said:
“T am aware that com which has been subjected to wet crushing has been stirred in a tank preparatory to being sifted; but in such cases the mixture of com and water has been separated into only two parts, to wit, the starch milk and the refuse, consisting of hulls and germs together. By my invention the hulls and germs are separated from each other, and collected in different receptacles.”
This attempt to make a distinction between a process for separating com into two parts, and one for separating it into three parts, is a specious pretense. The separation by Behr’s process is in fact into four parts, — the germs, hulls, and two distinct bodies of starch milk of different densities; and a seeming virtue might just as well have been made of so describing and claiming the process. The art of separating the starchy parts of corn from the germs and hulls, or from either germs or hulls, is recognized in the earliest patents as old and easy of accomplishment, involving nothing but softening, crushing, and mixing with water, and screening. The problem was to devise a successful method of separating from other parts of the grain the germs, in order to convert them into oil, once their value for that purpose had been discovered. The method of doing it, by softening and crushing, and then mixing the corn with a *993liquid of sucb density that tbe germs would rise to the surface while other parts sank, and the fact that a liquid of proper density could be obtained by mixing water and salt, and that the starch milk resulting from the operation of the process itself could be used with the same effect, were discovered by Anderson, and, as the patent in suit concedes, were practiced in the art. All that has been done since has been designed, not to improve the process, but to devise better mechanical means for carrying it into effect. And even in that particular, while the apparatus of Behr is perhaps better than any which preceded it, it contains nothing which can be dignified by the name of invention. It is strikingly like the apparatus of Cavaye, though studious care seems to have been employed to create apparent differences, both in mechanical construction and in the methods of operation, but neither in method nor mechanism are the differences such as could have been produced only by invention. Cavaye’s device by design works intermittently, but if could easily have been so made or modified as to work continuously. And so, without change, the apparatus of Behr can be operated intermittently, and, with modifications suggested in the Cavaye machine, could be so operated automatically. In Cavaye’s device the crushed grain is fed in a dry condition into the mixing and separating tank, while in the device of Behr the grain has been first softened and crushed; but either mode of treatment was well known, and open to common use. To the assertion or inference that Cavaye had no conception or knowledge of the production and use of starch milk as the medium for softening the germs, it is sufficient answer that from the date of Anderson’s second patent that knowledge belonged to the art, and Cavaye must be presumed to have had it. It is also said that starch milk would .not form from dry meal dropped into the water in the manner of Cavaye’s device, but that is asserted without other proof than the opinion of an expert, who, after stating his belief to that effect, went to the other extreme of saying that, if it did form, it would become so dense that the hulls could not sink, showing a perception that the starch milk must inevitably form in the Cavaye tank, while the fact was ignored or overlooked that there is, in the operation of that tank and its adjuncts, a regular introduction of fresh water, which would tend to prevent undue density, and that, if necessary, the quantity of water introduced could be varied, as it must be in Behr’s process, to meet the requirements of the operation as it goes on. It is said further that “if in this Cavaye patent any liquid at all analogous to starch milk can be found, such liquid is ejected through the bottom of the vat, and not through the door at the top of the tank”; but, manifestly, before being thrown out it would drive the germs towards the surface, and in some degree would itself pervade the whole body of water in the tank, and tend to give it the density necessary to carry the germs to the top, thence to be expelled through the opening provided for that purpose. It seems to me equally illogical and unwarranted to say that “it is not the theory or sense of the Cavaye patent that the density of the liquid towards the upper surface is to be affected by starch milk,” since in a body of thoroughly agitated water, as that *994in the Cavaye tank is intended to be, there can not be a condition in the lower parts which will not with some effect extend to the top, and it is not to be presumed that Cavaye did not understand and intend the operation of natural laws so well and generally understood that mention of them was not necessary. The expert, while denying density of water in the tank sufficient to float the germs, attributes to . Cavaye the ridiculous idea that, being pushed outward to the low place in the wall, “the thus piled-up germs would tumble over the top of the said low place in the wall, and thus be discharged from the tank.” If a single germ could not float, it is evident that a pushing arm, the front face of which is a perpendicular plane, could not cause a mass of them resting on the water to pile up high enough to tumble out over the top of an opening, to the bottom of which, only, the water came. The bottom of the opening, doubtless, was meant, instead of the top; but, so amended, the proposition remains impossible. The fact that the germs of corn do not float in clear water was well known in the art, and presumably to Cavaye; and when he employed in his specification the expression, “whereby the lighter germs will be caused to float on top,” it is not a fair or necessary inference that he understood, or supposed others would understand, that the germs would float instantly upon being dropped into the clear water, nor is it necessary to infer that his meaning was that they would be caused to float by reason alone of the agitation of the water caused by the devices connected with the rotating shaft. The agitation was doubtless intended, like the paddles of the separating tank in the patent in suit, to be instrumental in “promoting the rising of the germs to the surface.” To sum the matter up, the prior art told Cavaye that the germs of corn could he made to float, and the hulls to sink, in a mixture of water and starchy parts of the corn produced in the process of separation; and, if it were conceded that the apparatus of Cavaye was not intended, to embody that process, it needed no material alteration or reconstruction, and could involve no invention to' make it do so, either by continuous or by intermittent action.
There is a possible construction of the claim that would make it include a process which might be declared patentable. If the terms of the claim permit or require that the particular effect of the operation of any part of the mechanism described be regarded as a constituent or essential part of the process as claimed, it is the expression concerning “the influx of crushed com and water into the separating tank.” This seems to be regarded by the court as making the operation described as carried on in the mixing tank a part of the process, but, if it has that effect, it should also be regarded as including the r,eturn current of starch milk, which is shown to come back through a pipe into the separating tank after separation from the hulls by the action of the vibratory screen near the top of the elevating device; but, with that feature included, the appellees have not infringed. That return current, while the apparatus is kept in motion, and supplied with crushed corn, as intended, is a constantly efficient force in causing the germs to be carried off in a surface current through the chute of the separating tank. Indeed, according *995to the description given in the patent for the apparatus, the return ' starch milk is conducted to the mixing tank, as well as to the separating tank, by means of two distinct pipes.