The United Nickel Company v. Harris. nickel and ammonia, and the double chloride of nickel and ammonium." This is the same thing as a claim to each solution prepared by the method described for preparing each. The specification sets forth, that the solutions prepared by the methods described in it will be free from the presence of potash, soda, alumina, lime and nitric acid, and from everything which will cause an acid or an alkaline reaction. The means of securing this result, by removing from commercial nickel, when employed in making the solutions by the patentee's methods, the re-agents named in the specification, are set forth. If these re-agents are removed, and the directions given as to the removal of the other foreign substances mentioned are followed, the solutions made by the patentee's methods will be free from the presence of the injurious substances mentioned in the first claim. But, the properties and conditions mentioned in the specification as those which solutions prepared according to the patentee's methods will possess, are stated in the specification to be properties and conditions which must be possessed, not only by solutions prepared according to the patentee's methods, but by all solutions of the double sulphate of nickel and ammonia, and all solutions of the double chloride of nickel and ammonium, so far as regards freedom from the presence of the substances mentioned in the first claim; and, in respect to the use of solutions of such double sulphate and of solutions of such double chloride, it is stated, not only that the solutions prepared by the patentee's methods must be so used as to be free, in and during the operation of plating, from the presence of the substances mentioned in the first claim, but that all solutions of such double sulphate, and all solutions of such double chloride, by whatever method prepared, must be so used as to be free, in and during the operation of plating, from the presence of such substances. Thus, the specification states that the patentee has discovered that the difficulties which he mentions as attending the use of a solution of the double sulphate of nickel and ammonia, and the use of a solution of the double chloride of nickel and ammonium, are due to the presence of The United Nickel Company v. Harris. certain substances employed in making the solutions, or in reducing the nickel used in making them. It also states, substantially, that such employment of those substances results in producing solutions in which, in and through their use, the substances mentioned in the first claim will be present, while the electro-deposition of the nickel is going on. It states, also, that, in order to prepare the solutions in such manner as to give the results which the patentee has reached, the substances referred to as employed in making the solutions, or in reducing the nickel used in making them, must either not be so employed, or must be effectually removed if they are employed. These substances are enumerated as sulphate of lime, sulphide of calcium, sulphide of sodium, sulphide of potassium, chloride of sodium and alumina. But, it is also further stated, that no quantity, however minute, of potash, soda or nitric acid, or of any acid or alkali, must be allowed to be present in the solution; and then the claim states, that the solution used must be free from the presence of potash, soda, alumina, lime and nitric acid, and from every thing which will produce an acid or an alkaline reaction, while the electro-deposition of nickel is going on. Lime, soda and potash are likely to be produced in the solution, while the electro-deposition is going on, if the sulphate of lime and the sulphide of sodium and the chloride of sodium and the, sulphide of potassium are employed in making the solutions, or in reducing the nickel used in making them, and are not removed. So, they may be produced in using a solution, if the sulphate of lime and the sulphide of sodium and the chloride of sodium and the sulphide of potassium are introduced into the solution after it is prepared. But, if those substances are introduced into a solution, and then the solution is used under such conditions that those substances remain inert, so far as the production in the solution of free lime or free soda or free potash is concerned, and no free lime or free soda or free potash is produced, then none is present, and the solution is used in such manner as to be free from the presence of those articles. Viewed in the light of these considerations, The United Nickel Company v. Harris. it is manifest that the first claim is a claim to the electro-deposition of nickel by means of any solution of the double sulphate of nickel and ammonia, or of any solution of the double chloride of nickel and ammonium, however such solution may be prepared, provided such solution is so used as to be free, while the electro-deposition of the nickel is going on, from the presence of potash, soda, alumina, lime or nitric acid, or from any acid or alkaline reaction. This is a valid claim, and the invention covered by it is a patentable invention, if the patentee was the first discoverer of the fact, that the difficulties in the way of securing proper results in the electro-deposition of nickel with the two solutions in question, were due to the existence or development in them, while being used, of the substances named in the claim, and if he describes methods of making such solutions which will secure the absence of such substances. A person learning, from the specification of the patent, what such difficulties are, may proceed to make the solutions by other methods than those described by the patentee and covered by the third claim; but, if he avails himself of the knowledge imparted by the specification, that he must take care to secure the absence of the substances named in the first claim, and prepares solutions which, in use, are free from those substances, and then practises, the electro-deposition of nickel by means of such solutions, he infringes the first claim of the patent. So, too, a person infringes such claim, who, taking such solutions made by another person, by such other methods, practises the electro-deposition of nickel by means of them, provided he so uses such solutions, that, in use, they are free from the substances named in the first claim, and thus avails himself of such knowledge imparted by the specification. The patent being based on the discovery by the patentee, that the difficulties he sets forth are due to the presence, in the use of the solutions in question, in the electro-deposition of nickel, of the substances named in the first claim, the evidence shows satisfactorily, that such difficulties existed and were due to the causes assigned; and that the patentee dis The United Nickel Company v. Harris. covered, and was the first to discover, what such causes were. It also shows, that he invented and described practical methods of getting rid of such causes. As a consequence, he was the first person who obtained, as practical results in the electro-deposition of nickel, the results set forth in the specification as those due to the use of the invention covered by the first claim. On the question of infringement, the defendants claim, that, if they introduce into a solution of the double sulphate of nickel and ammonia, or into a solution of the double chloride of nickel and ammonium, a sulphate or chloride of potash or soda, they do not infringe the first claim. The evidence shows, that these sulphates and chlorides may be introduced into the solutions, and that then the solutions may be so used, in the electro-deposition of nickel, that the sulphate or the chloride will not be decomposed, and there will not result, from such introductions the presence of potash or soda, in the sense in which the word "presence" is used in the first claim. The injurious substance is inert, by being in the chemical state of a sulphate or a chloride, as inert as if it were enclosed in an impervious bottle. The defendants used solutions which were free from the substances named in the first claim, otherwise than as such solutions had in them the sulphate or the chloride of potash or soda, and, in the use of the solutions, the presence of such sulphates or chlorides had no more effect to cause free potash or soda to be present, than if such sulphates or chlorides had not been introduced. If the introduction of such sulphates or chlorides is otherwise of any benefit, their use is but an improvement, and the invention of the patentee is availed of, notwithstanding their introduction. On the question of the novelty of the invention covered by the first claim of the patent, I am of the same opinion announced by Judge Shepley, in his decision in the case of The United Nickel Co. v. Anthes, (1 Holmes, 155,) in May, 1872, that, prior to the discoveries of the patentee, the electro-deposition of nickel, by means of such solutions as are described The United Nickel Company v. Harris. in his patent, "prepared and used in the described manner, so as to be free from foreign substances and acid or alkaline reactions, which would interfere with the uniform, continuous and coherent deposition of the metal, was unknown in any practical application of it to the useful art of electroplating metals with nickel." I concur, also, on all the evidence in this case, in what was said by Judge Shepley, in his decision in the case of The United Nickel Co. v. Keith, (1 Holmes, 328,) in February, 1874, that, prior to the discoveries of the patentee, "electroplaters and electro-metallurgists well understood how desirable a result it would be to be able to plate the surface of baser metal with a coating of nickel, resembling silver in lustre and color, without its liability to tarnish on exposure to the air," but that, after great research and investigation, it has not been shown that the electroplating of metals with nickel had any practical existence as a useful art, accessible or beneficial to the public, before the date of the inventions of the patentee; while, on the contrary, he was the first person who effected "the uniform, continuous and coherent deposit" of nickel upon the surface of other metals, "so as to produce a coating of the desired thickness, purity, uniformity, coherence and permanency of adhesion." In saying this, I have not overlooked the additional evidence in this case, as to what was done by Remington, nor the MusprattStohmann publication. I do not find in the evidence, on the point of novelty, any thing which shows that the invention covered by the first claim of the patent, as I have construed that invention, was not new with the patentee, or existed before he made such invention. Great stress is laid, by the defendants, on the view, that the patentee describes his own methods of preparing the solutions referred to, as the only methods by which the injurious substances named in the first claim can be excluded from the solutions; that he does not state that there are other methods than those which he describes, by which the solutions may be so prepared as, when prepared, to be free from such injurious substances; and that he does not show how, when the solu |