CASE ANALYSIS: TILGHMAN v.

PROCTOR
COURT- Supreme Court of the United States
CITATION- 102 U.S. 707
YEAR OF JUDGEMENT- October Term, 1880
COMPLAINANT- Richard A. Tilghman
DEFENDANTS- William Proctor, James Gamble, W. A. Proctor, James N. Gamble, and George
H. Proctor

FACTS OF THE CASE

Factual Background- Complainant discovered a process of decomposing fats by mixing them
with water, and heating the mixture to a high temperature under a pressure that prevented the
formation of steam, on which Patent was issued to him on October 1854. The specification
described apparatus which he believed was the best mode of carrying out the process. The
defendants carried on their process of decomposing fats by putting a little lime into the mixture
in an altered apparatus and temperature and hence claimed that their process was outside the
bounds of the complainants invention. Complainant filed a suit against the defendant for their
patent infringement. Defendant contended that the application of the process of the patentee was
confined to the method of using the process particularly pointed out in the specification and their
process did not conflict with that of Complainant. The defendants also sought to invalidate the
patent by submitting evidence of the method's existing prior to the patentee's discovery.
Procedural Background-Appeals from the Circuit Court decision finding no infringement by
Proctor.
ISSUES
1) Whether a patent is valid for the means to produce a certain result when the means is
not a machine or an apparatus but a process?
2) Whether accidental achievement of a product or process constitutes anticipation?

CONTENTIONS RAISED
Complainants Contentions
Anticipations of Tilghman's Process
1) The complainant accepted that two different processes for effecting a decomposition of
fats into their component elements had been in practical operation prior to his
invention. However, he argued that it does not constitute an anticipation as first of these
processes was not brought into successful operation in the manufacture of stearic candles.
The second process involved saponification of fat. Though in the year 1843, Gwynne and
Wilson, found that palm-oil can be distilled in its crude state, without the intervention of
saponification, resulting into fat acid, it was not shown that this process was ever carried
into successful operation prior to Tilghman's patent. So it is to be inferred that the steamdistillation process (without saponification) was still an unsuccessful experiment when
Complainant patent was issued.
Infrignment of Tilghmans Patent

2) Tilghman contended that the use of highly heated water under pressure to decompose

neutral fats into fat-acids and glycerin was an infringement of his patent, no matter what
particular form of apparatus might be used, or what particular temperature adopted, and
no matter what particular device might be adopted to maintain the intimate mechanical
mixture of the fat and water during the decomposing operation; these last being obvious
matters of detail, susceptible of infinite variety.
3) He argued that whilst in his patent he recommends the high degree of heat named, he

does not confine himself to that. It had been fully developed in his experiments, and was
well known to him, that a lower degree of heat could be employed by taking longer time
to perform the operation; and this would be necessary when boilers, or digesters, of
considerable size were used instead of the coil of pipe, on account of the decreasing
power of large vessels to resist the internal pressure. He contended that he could claim

broadly as his process the use of water highly heated and under pressure to decompose
fats, no matter what temperature or apparatus was used.
4) The Complainant had heavily relied on the case of Househill Company v. Neilson 1, in
which the Court observed stated that:
'You may obtain a patent for a mode of carrying a principle into effect; and if you suggest
and discover not only the principle, but suggest and invent how it may be applied to a
practical result by mechanical contrivance and apparatus, and show that you are aware
that no particular sort or modification of form of apparatus is essential in order to obtain
benefit from the principle, then you may take your patent for the mode of carrying it into
effect, and are not under the necessity of describing and confining yourself to one form of
apparatus.'
Defendants Contentions
Anticipations of Tilghman's Process
1) The defendants sought to invalidate the patent by submitting evidence of the method's
existence prior to the patentee's discovery. The prior process was a method for lubricating
a piston with fat in a steam engine. During operation of the steam engine, the process for
producing free fatty acids was accidentally performed because fat, containing
triglycerides, was subjected to high heat and pressure in the presence of water. The
defendants argued that free fatty acids would necessarily be produced and the patent in
question must be anticipated.
Infringement of Tilghmans Patent
2) The defendants argued that their process was not in conflict with that of Tilghman
because they did not use the apparatus described in the complainant's patent and they did
not mix the fat and water in the manner pointed out in the specification of the patent.
3) Another ground on which the defendants argued that they did not infringe the patent was,
that they did not, in their process, use water alone in admixture with fat, but also some
portion of lime: that they formerly used seven per cent of lime, and then four per cent.

1 Webster's Patent Cases 673 (1843)

4) Another ground assumed by the defendants to avoid the charge of infringement is, that
they do not heat the mixed mass in the manner pointed out in Tilghman's specification;
but, instead of heating the containing vessel by an outside application of heat, they heat
the contents by the introduction of super-heated steam.
5) Further, the defendants argued that they only used a low degree of heat and pressure
compared with that pointed out by the patent, namely, only about 310 Fah. instead of
612.
6) The defendants heavily relied on the case of O'Reilly v. Morse2 wherein eighth claim of
Morse's patent was held to be invalid, because it was regarded by the court as being not
for a process, but for a mere principle. It amounted to this, namely, a claim of the
exclusive right to the use of electro-magnetism as a motive power for making intelligible
marks at a distance; that is, a claim to the exclusive use of one of the powers of nature for
a particular purpose. It was not a claim of any particular machinery, nor a claim of any
particular process for utilizing the power; but a claim of the power itself,a claim put
forward on the ground that the patentee was the first to discover that it could be thus
employed. This claim the court held could not be sustained.

COURTS OBSERVATION
No Anticipations of Tilghman's Process
1) In explaining why the prior existence of the process would not constitute anticipation in
the present case, the Court observed that free fatty acids were accidentally produced and
the claimed process was accidentally performed in the prior art. Notwithstanding the
existence of the process, the Court reasoned that the process did not anticipate:
We do not regard the accidental formation of fat acid in Perkin's steam cylinder from
the tallow introduced to lubricate the piston (if the scum which rose on the water issuing
from the injection pipe was fat acid) as of any consequence in this inquiry. What the
process was by which it was generated or formed was never fully understood. Those
engaged in the art of making candles, or in any other art in which fat acids are desirable,

2 14 L ED 601

certainly never derived the least hint from this accidental phenomenon in regard to any
practicable process for manufacturing such acids
. . . If the acids were accidentally and unwittingly produced, whilst the operators were in
pursuit of other and different results, without exciting attention and without its even being
known what was done or how it had been done, it would be absurd to say that this was an
anticipation of Tilghman's discovery.
2) The Court further observed that the: The claimed process of Tilghman was unintended in
the prior art; The claimed process was unrecognized in the prior art; The prior art had a
different purpose; The claimed process was not useful in the prior art. Hence the prior
existence of process would not constitute anticipation in the present case
Infringement of Tilghmans Patent
3) The Court quotes from Tilghman's specification
Having now described the nature of my said invention, and the manner of performing
the same, I hereby declare that I claim, as of my invention, the manufacturing of fat acids
and glycerine from fatty bodies by the action of water at a high temperature and
pressure.
Then the Court observes that by any fair rule of construction the claim of Complainant
cannot be circumscribed in such a manner as that it shall only cover the process when
applied in the use of a coil of pipe heated to 612 Fahrenheit. The Court further observed
that Tilghman discovered that fat can be dissolved into its constituent elements by the use
of water alone under a high degree of heat and pressure; and he patented the process of
manufacturing fat acids and glycerine from fatty bodies by the action of water at a high
temperature and pressure. Had the process been known and used before, and not
been Tilghman's invention, he could not then have claimed anything more than
the particular apparatus described in his patent; but being the inventor of the process, as
we are satisfied was the fact, he was entitled to claim it in the manner he did.
4) The Court further observed that patent law is not confined to new machines and new
compositions of matter, but extends to any new and useful art or manufacture. A
manufacturing process is clearly an art, within the meaning of the law. Court illustrated
this principle with the example of Goodyears patent for vulcanizing rubber. The

apparatus for performing the process was not patented, and was not material. The patent
pointed out how the process could be effected, and that was deemed sufficient
5) In view of the above prima facie finding reached by this Court, the present case is
squarely covered by the ratio of the case Househill Company v. Neilson3, where Neilson's
patent had some features very similar to those of Tilghman's. In paragraph 17 of case:
The Court drew the true distinction between a mere principle, as the subject of a patent,
and a process by which a principle is applied to affect a useful result. The Court observed
that a hot-blast is better than a cold-blast for smelting iron in a furnace was the principle
or scientific fact discovered by Neilson; and yet, being nothing but a principle, he could
not have a patent for that. But having in vented and practically exemplified a process for
utilizing this principle, namely, that of heating the blast, in a receptacle, between the
blowing apparatus and the furnace, he was entitled to a patent for that process, although
he did not distinctly point out all the forms of apparatus by which the process might be
applied,having, nevertheless, pointed out a particular apparatus for that purpose, and
having thus shown that the process could be practically and usefully applied.
6) The Court further observed that the ratio of O'Reilly v. Morse4, cannot be applied in the
present case. The Court drew distinction between two cases. The distinction has been
explained in tabular form below:

Morse's Invalid Claim

Tilghman's Valid Claim

the use of the motive

I claim as of my invention the

power of the electric or

manufacturing of fat acids and

galvanic current, which I

glycerin from fatty bodies by

call electro-magnetism,

the action of water at a high

however developed for

temperature and pressure.

marking or printing
intelligible characters,
3 Webster's Patent Cases 673 (1843)
4 14 L ED 601

signs, or letters, at any

distances

It is clear that Tilghman's claim is structurally identical to Morse's claim: both broadly recite
a desired result achieved by a generically stated mode of operation. If Morse's claim was
struck down for being an abstract ideaas it is now commonly assertedthen Tilghman's
should have been as well but the Court distinguished Tilghman not by whether his claim was
less abstract than Morse's but by the quality of his patent disclosure.
JUDGEMENT PASSED BY THE US SUPREME COURT
The Supreme Court disregarded the accidental formation of the fatty acid in Perkins Steam
Cylinder an anticipation of Tilghmans discovery and upheld the validity of discovery. Further
Tilghmans patent was held valid as a patent for a process, and not merely for the particular
mode of applying and using the process described in the specification, and, therefore, the
defendants (Proctors) were held liable for infringement.
ANALYSIS
Following points emerges from the analysis of the judgment
Whoever discovers that a certain useful result will be produced in any art by the use of
certain means is entitled to a patent for it, provided that he specifies the means.
A patent can be granted for a process, since the patent law is not confined to new
machines and new compositions of matter, but extends to any new and useful art or
manufacture.
Letters patent for a process irrespective of the particular mode or form of apparatus for
carrying it into effect are admissible under the patent laws of the United States.
If the mode of carrying out a process, or the apparatus in or by which it may be done, is
sufficiently obvious to suggest itself to a person skilled in the particular art, it is enough

in the patent to point out the process to be performed, without giving supererogatory
directions as to the apparatus or method to be employed.
To sustain letters patent for a process where the means of carrying it out are not obvious
to ordinary mechanics skilled in the art, the specifications should describe some mode of
carrying it out which will produce a useful result.
The fact that a process is susceptible of being applied in many modes and by the use of
many forms of apparatus, does not require that the inventor should describe them all in
order to secure to himself the exclusive right to the process, if he is really its inventor or
discoverer, but he must describe some particular mode, or some apparatus, by which the
process can be applied with at least some beneficial result, in order to show that it is
capable of being exhibited and performed in actual experience.
The word means within meaning of rule that whoever discovers that a certain useful
result will be produced in any art by the use of certain means is entitled to a patent for
it, provided he specifies the means, need not be a machine, which is a visible thing or
an apparatus, but may be a process, which is an act or a mode of acting, and is a
conception of the mind.
A party, who subsequently discovers a new mode of carrying out a patented process and
obtains letters patent therefore, is not entitled to use the process without the consent of
the patentee thereof.
Where inventor discovered a new process of decomposing fats by mixing them with
water and heating the mixture to a high temperature under a pressure that prevented the
formation of steam, and others thereafter seeing the utility of the process put a little lime
into the mixture, and found that it helped the operation, and that they did not have to use
so high a degree of heat as would otherwise be necessary, there was an infringement of
the new process notwithstanding the improvement because of the use of the lime.

CONCLUSION
One of the more interesting aspects of the Tilghman decision is how scientifically detailed
and nuanced it is. The Court details at length the chemistry involved"two different

processes for effecting a decomposition of fats into their component elements had been in
practical operation prior to his invention. These processes were called respectively the
alkaline saponification process and the sulphuric acid distillation process..."and gives a
fine-grained summary of the historical developments of the science in this area, discussing
prior inventions and patents by scientists in France, England and the U.S. It's fair to say
that Tilghman's Court familiarity with the primary sciences was central to the correct
outcome. A solid understanding of the subject matter that comes before the Supreme Court
today remains fundamental to a scientifically valid development of the patent law.
Moreover, the case sets out the relevant test for process patents, and the requirement that the
inventor specify the best mode of applying the process. It also shows that the scope of the
invention will not be limited to the particular mode of application described in the
specifications. The judgment in the case can be highly appreciated.