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time for the oxygen pressure in the tube to become equal to atmospheric pressure. WEIGHING-After standing on a glass rack near the balance for 15 minutes a tube was allowed to stand on the balance for 5 minutes before the final reading. It was found by trial that a tube did not gain in weight if allowed to stand in the balance two hours longer. The results obtained by the analysis of recrystallized pure sucrose are given in Table I. Results of analysis of certain other compounds are to be found in Table 11. Results typical of those obtained by analyzing over one hundred lake water residues are recorded in Table 111.
Vol. 19, No. 1 T a b l e IV
CARBON SAXPLE WEIGHTOF S A M P ~ E MICRO METHOD M A C R O METHOD Mg. Per cent Per cent 1 2 3
( a ) 7.153
( b ) 5.752 ( a ) 5.944 (5) 7.045 (a) 5.426 ( b ) 5.925
19.11 18.92 18.56 18.70 20.06 20.16
18.9 18.5 19.7
.Three samples of lake residues were submitted for the independent determination of total carbon by the micro and macro methods. Results are in Table IV. The weight of the sample taken for microcombustion is given in each case.
An Outline of the Law of Chemical Patents’ By Edward Thomas 165 BROADWAY, NEW
The N a t u r e and Form of a Patent
U
NITED STATES patents for inventions are authorized by the Constitution, which says, Article I, Section VIII,
“The Congress shall have power to promote the progress of Science and Useful Arts, by securing for limited Times t o Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Congress has exercised its power by enacting various patent statutes, culminating in the present statute. Pursuant t o this Statute, a United States patent as issued by the Patent Office is a legal document consisting of three principal parts : 1-A contract form drafted, furnished, and filled out and signed by the Commissioner of Patents. 2-A specification drafted by the inventor or his attorney, disclosing his invention and “how the combination will operate,” t o quote Judge Hand. 3-One or more “claims,” also drawn by the inventor or his attorney, subject to the criticism of a n Examiner in the Patent Office, and defining the invention which has been described in the specification.
A United States patent runs for seventeen years from the date of its issue, the d a y the Commissioner signs it. A “copy of a patent” as sold by the Patent Office consists of a copy of the specification and claims bearing a notation of its filing and issue ‘ dates. The Court of Appeals for the Third Circuit explains the nature of the legal document, saying: An American patent is a written contract between a n inventor and the Government * * * The consideration given on the part of the inventor t o the Government is the disclosure of his invention in such plain and full terms t h a t any one skilled in the art t o which i t appertains may practice it. The consideration on the part of the Government given to the patentee for such disclosure is a monopoly for seventeen years of the invention t o the extent of the claims allowed in the patent. Fried. Krupp Actien-Gesellschaft v. Midvale Steel Co., 191 Fed. at 59A2
YORK,
N. Y.
The inventor gets the privilege t o exclude the public from its common-law rights for a definite term. The public gets the advantage of a disclosure of something new, which the inventor might otherwise have left secret. Waterbury Buckle Co. v. G. E. Prentice Mfg. Co., 294 Fed. at 938. Widely separated courts have agreed that: The object of the patent law is to protect the inventor, not in some paper ideal, but in his actual contribution to the useful arts. Los Angeles Lime Co. v. Nye, 270 Fed. a t 160, quoting Asbestos Shingle, Slate and S. Co. v. Rock Fiber Mfg. Co., 217 Fed. a t 66. Or, as put by Judge Learned Hand: An inventor must do more than give cues for future experiments * * * Unless he is dealing with elements whose action and reaction is known and certain, he is bound to disclose how the combination will operate. A patent is the reward of a tested contribution t o the art, not of a pregnant surmise or a promising hypothesis. H. Ward Leonard, Inc. v. Maxwell Motor Sales Corp., 252 Fed. at 590. The Supreme Court has said: The specification and claims of a patent, particularly if the invention be at all complicated, constitiite one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, i t is no matter of surprise t h a t the latter frequently fail to describe with requisite certainty the exact inventfon of the patentee, and err either in claiming t h a t which the patentee has not in fact invented. or in omitting some element which was a valuable or essential part of his actual invention. Topliff v. Topliff, 145 U. S. at 171.
Another court has summed up the mutual advantages resulting from well-prepared patents:
It is obvious, therefore, t h a t many obscure problems of law rise in dealing with inventions and in preparing and studying patents. The only certain way t o solve such a problem is t o ascertain what the Courts have already decided in similar cases because, as was said by Commissioner of Patents Doolittle, “The United States Courts are the authoritative expositors of the patent law.” Chambers and Mendham v. Duncan, Wilson and Lauder, 10 0. G. 787.
T h e series of three articles, ot which this 1s 1 Received June 28, 1926. t h e first, is based to some extent on t h e author’s forthcoming book “ T h e Law of Chemical Patents.” This book will be a case book, each chapter commencing with t h e discussion of a principle which will be illustrated by extracts from pertinent cases a n d decisions, concluding with a summary of t h e inlormation. T h e book will be issued within a month b y t h e D. Van Nostrand Co., New York. 8 T h e abbreviations are those customarily used by lawyers. Thus 191 Fed. a t 594, signifies t h a t t h e case is reported in volume 191 of the Federal Reporter and the exact location of the quotation is a t page 594. T h e Federal Reporter includes t h e decisions of the District Courts, old Circuit Courts, and Circuit Courts of Appeals The Supreme Court
reports for later years are similarly cited by the abbreviation U.S. Supreme Court cases prior t o 91 U. S. are usually cited b y the name of t h e official reporter who reported them. Thus 23 Wall. stands for the twenty-third volume of Wallace’s Reports. T h e Official Gazette of the Patent Office is cited a s 0. G. Usually no special page is referred to in the latter. The number of t h e page is given on which the cited case begins, a n d the preposition “at” is omitted. T h e cases in the District and Circuit Courts before 1880 are reported in various publications. Those cited in this essay are either 0. G., Blatschf. or Fish., the latter, respectively, standing for Blatschford’s United States Circuit Court Reports, and for Fisher’s Patent Cases. These cases are usually most easily found in the collection known a s Federal Cases, where they are alphabetically arranged.
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Problems Peculiar to Chemical P a t e n t s Going one step further in another case, Judge Lacombe again mentioned the difficultiesof dealing with evidence relating Chemical patents differ fundamentally from mechanical t o chemical processes and chemical patents : patents, A chemical invention is what the patent statute refers to as a patentable discovery as distinguished from inventions The court is wholly without the professional knowledge which would enable it to decide whether those processes were conducted which are mechanical in nature. Some differences between a discovery and mechanical in- in conformity to scientific methods. Upon the borders of the vast wonderland of chemistry it must perforce wait till some vention were dwelt upon by Judge Coxe in a case where a dye, one skilled in the intricacies of that science and art appears the product of a chemcial process, was the invention sued on. to lead the way through its labyrinth of terms and symbols * * * Beyond merely elementary propositions, the court cannot take H e said: its chemistry from counsel. The obscure actions and reactions There is a distinction between invention-and’discovery which of chemical processes require for their comprehension the study must not be lost sight of in dealing withfprocess patents. Of and investigation which qualify the expert, and the expert’s course, a discovery t o be patentable must have the attributes statement should be given as other evidence is, with full opporof a n invention, but the mental operation is somewhat different tunity for cross-examination. Badische Anilin and Soda in one who invents a machine and one who discovers a process. Fabrik v. A. Klipstein and Co., 125 Fed. 558. The basic truth upon which rests a process may come t o the discoverer suddenly and unexpectedly. H e may not underThe Disclosure in the Specification stand the law upon which the process operates, and he may be unable to explain the cause of certain phenomena, nevertheless if he Most inventors and many attorneys mistakenly assume that be the first to give the world as a resultiof his method a new and valuable article of manufacture he is entitled to protection. the specification of a patent is of minor importance. I n realitv Badische Anilin and Soda it is the foundation of the Fabrik v. Kalle, 94 Fed. at patent, for, as was said by 173,174. Judge Hough: Looking upon C o u r t decisions as reports of scientifiThe necessity of determinWhat any patentee has cally c o n d u c t e d experiments in patent law, the author, invented is theoretically what ing whether the discovery is s u m m a r i z i n g t h e principal chapters of his f o r t h c o m i n g he discloses, and the disclosure the discovery of a process or book, “The Law of Chemical Patents,” presents the is the specification. A claim of a product, or of both, arose l a w of chemical p a t e n t s in the f o r m of excerpts f r o m is a definition of that which many years ago in connection has been described in the specit h e C o u r t decisions p e r t i n e n t to such patents. fication. A disclosure tells with one of the early rubber Beginning w i t h w h a t the C o u r t s have said as to t h e how to do that of which the patents. I n that case Judge f o r m and nature of a p a t e n t , excerpts follow c o n t a i n i n g c 1a i m attempts definition. Grier said: Theoretically, the celebrated the views of the C o u r t s as t o the peculiar difficulties pre“man skilled in the art” s e n t e d by c h e m i c a l patents, w h a t disclosure is needed, knows how to do what the inThere is not only a distincnature of invention, the bearing of prior publications t h e tion, but wide difference beventor did when he has peand other prior art, t h e bearing of secret processes, the rused the disclosure. Whether tween one who merely invents one infringes a patent pria new method, by which a f o r m u l a t i o n of the patent claims, a n d the l a w of infringemarily depends, to be sure, well-known fabric, product, or m e n t s . T h e n follow excerpts w h i c h reveal t h e most upon consideration of t h e manufacture is produced, in a dangerous pitfalls i n t h e fields of prosecuting p a t e n t claims; but no man would better or cheaper way, and the applications, d o u b l e p a t e n t i n g , reissues, licenses, and discovery of a new comknow how to practice the inpound, substance, or manuvention by reading the claims, interferences. At the conclusion is a g r o u p of excerpts facture having qualities never a n y m o r e than a student w h i c h explain the nature of an i n f r i n g e m e n t s u i t a n d would learn the proper demonfound to exist together in any s o m e of the o u t s t a n d i n g principles to b e r e m e m b e r e d in stration of a theorem by readother material. In the first i n f r i n g e m e n t suits. case the inventor can patent ing the theorem itself. Westnothing but his process, and inghouse E. and Mfg. Co. v . not his composition of matter. Metropolitan E. Mfg. Co., In the latter, both are new 290 Fed. a t 664. and original, and both patentable. Goodyear i’. Central Rail. Two peculiar difficulties are encountered in drawing a patent Co. of New Jersey, 1 Fish. 626. specification. The first difficulty arises from the fact t h a t the Added t o the foregoing difficulties in dealing with chemical description of the invention is written a t an early stage of patents, and with other patents on discoveries are those pointed out by Judge Mayer, who quoted with approval_the words its commercial development, with the result tha: prevision has t o take the place of experience in dealing with obscure or unof an eminent expert: certain factors involved in the invention. The second difficulty Chemistry is essentially a n experimental science, and chemical arises from the fact that before the law there is often no inprevision is as impossible today, in spite of the accumulation of the great knowledge, as it was in former times. General Electric vention in what the inventor thinks is the vital novelty of his Co. v . Laco-Philips Co., 233 Fed. at 103. discovery. T h a t feature in fact may be old, so that legally the invention lies in some detail, seemingly trivial to his eyes. The difference between the patents on discoveries and those Many stumbling-blocks growing out of the difficulties can be on inventions extends even into the field of evidence when a patent case is brought to trial. Judge Lacombe has summed avoided by following the example of patentees whose patents have been sustained by the Courts, avoiding all statement of up the peculiar status of discoveries, saying: theory, and describing in great detail the actual procedures I n the case of a mechanical device, like a multiple drill or followed in tests or operations. This description may well be typewriting machine, the deliverances of the experts are mere If there be aids to the comprehension of the structure introduced or followed by a statement of the principles by dispute among them as to how various parts are correlated which other suitable substances or procedures may be selected and how they act, a judge can examine the device and decide for himself as to which is correct * * * But when we come into or other results secured. THEORIES UNDERLYING INVENTIONS-FOr example, in a suit the field of electric, magnetic, and chemical patents the situation is changed. There are things which the independent senses involving a lumber kiln-drying process the Court said of one cannot appreciate, which cannot be seen or felt or heard. The inventor: flow or flux of electric or magnetic currents, the reactions of bodies into some chemical union or disunion, are matters in He describes the process, the mode of operation and the result, which a colut must perforce depend upon the assertions of some and the means of obtaining it. The scientific principle is not one who has made a profound study of the matter. Sundh part of the process, is not patentable, and need not be set forth. Electric Co. v. General Electric Co., 204 Fed. a t 279. Emerson Co. v. Nimocks, 99 Fed. a t 740.
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PATENTS MAY BE BALDLYEMPIRIcAL-The Supreme Court, in sustaining a patent, said: A patentee may be baldly empirical, seeing nothing beyond his experiments and the result, yet if he has added a new and valuable article t o the world’s utilities, he is entitled to the rank and protection of a n inventor. Diamond Rubber Co. v . Consolidated Rubber Tire Co., 220 U. S. a t 435.
UTILITY OF THEORIES O F OPERATION-The proper use to make of the theory of the invention was set forth many years ago by Judge (now Chief Justice) Taft: Theories do not control the decisions in patent cases * * * But a correct and certain knowledge of the principle by which the result is reached will often enable the patentee or his solicitor, t o cover, with many general words, many different devices in which it may be applied. Brown v. Stilwell and Bierce Mfg. Co., 57 Fed. at 739.
In a recent case the law was summed up in litigation over a process of reclaiming rubber. The Court said of the patentee: He advanced no theory in his specifications; it was not necessary for him to do so. All t h a t the law required of him was a plain statement of his process set forth in sufficient detail to be understood by a person skilled in the art. If the result of his process is a product which he describes as “devulcanized rubber having substantially the characteristics of fresh rubber capable of being used in like manner and for like purposes,” and if it further appears that this is the first time that this particular process was disclosed t o the world, Marks was entitled t o his product Philadelphia Rubber Works Co. v. United States Rubber R. Wks., 229 Fed. a t 151. Again in litigation over a n oil-refining process, the Court said: It was not essential that they should either understand or set forth the principle on which their process operated * * * “It may be that the inventor did not know what the scientific principle was, or that, knowing it, he omitted from accident or design, t o set i t forth. That does not vitiate the patent. He sets forth the process or mode of operation which ends in the result, and means for working out the process or mode of operation. The principle is only the why and wherefore. That is not required t o be set forth.” Petroleum Rectifying Co. v . Reward Oil Co., 260 Fed. at 181, quoting Andrews v . Cross, 19 Blatschf. at 305, which was quoted and followed by the Supreme Court, Eames v. Andrews, 122 U. S. a t 55.
SUFFICIENCY OF DESCRIPTION-Patent specifications should be drawn with great care, so t h a t those unfamiliar with the environment of the patentee may understand what he is talking about. Failure adequately t o describe what has been actually used often leads t o expensive litigation-the alleged infringer asserting t h a t the description in patent is insufficient. I n one important case the plaintiff had to take the witness stand and explain : That at the time he made his invention, in the latter part of 1864, collar paper as furnished by the paper mills, was generally much better sized and more highly calendered than * * * now * * * The specification * * * speaks as of its date, the end of 1864, or January, 1865, and in reference to the collar paper as then in the market, in regard to sizing. Hoffman v. Aronson, 4 Fish. 456. It was fortunate that the paper referred t o was actually on the market, for the patentee would not have been allowed to explain that he was referring to what he used privately, or to explain what he intended. As was said by the Court of Appeals for the Seventh Circuit: I n the construction of a patent, it is not the personal intent or understanding of the patentee, but the actual facts regarding the invention t h a t are material. Thomson-Houston E. Co. v. Western Electric Co., 72 Fed. at 532. Or as Judge Coxe said : The courts are not permitted t o construe a patent by reconstructing it t o conform to what the court may think was in the mind of the patentee a t the time. Edison Electric L. Co. v . E. G. Bernard Co., 88 Fed. at 274.
In conformity with the above rulings of the courts i t has been held that the description of the invention in a patent must enable those skilled in the a r t t o reproduce with reasonable
Vol. 19, No. 1
certainty the form of the invention described in the patent. As was said by Judge Gray, relative t o a novel step in a process : It will not answer the requirements of the statute to leave the ascertainment of the precise manner in which this essential step of the process is to be practiced, t o experimentation. Wolff v. E. I. du Pont de Nemours and Co., 122 Fed. a t 957. DESCRIPTION SUFFICIENT IF I T GIVESADEQUATE EXAMPLEOn the other hand, where new materials will be treated according to the invention, the patentee satisfies the law by telling by way of example how one material was treated or a few materials were treated. On this subject the Supreme Court said, in reference t o a process for concentrating ores: Untenable is the claim that the patent is invalid for the reason t h a t the evidence shows that when different ores are treated preliminary tests must be made to determine the amount of oil and the extent of agitation necessary to obtain the best results. Such variation of treatment must be within the scope of the claims, and the certainty which the law requires in patents is not greater than is reasonable, having regard to their subjectmatter. The composition of ores varies infinitely, each one presenting its special problem and it is obviously impossible to specify in a patent the precise treatment which would be most successful and economical in each case. The process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the a r t to its successful application, as the evidence abundantly shows. This satisfies the law. Minerals Separation, Ltd. v. Hyde, 242 U. S . at 270. ERRORSO F DESCRIPTION-Errors in a patent specification will be overlooked if they are not vital, but vital errors are fatal. Both kinds of errors were found in a patent on a dye which came before the Court of Appeals for the Second Circuit, and were ruled upon as follows by Judge Lacombe, who spoke for the Court: The error consists in calling for the “addition of * * * nitrate of sodium,” instead of the same quantity of “nitrite of sodium” * * * no one skilled in the a r t would be misled * * * since it was well known at the date of the patent that it was necessary t o use nitrite of sodium to carry out the diazotization * * * and t h a t the use of nitrate for nitrite was common * .* * The omission from paragraph 4 of any express direction for a second diazotization * * * is immaterial, since any one skilled in the art would have understood * * * because it is so stated in the general description * * * But here there has been a n identifying test put into the patent by the solicitor: the patentee accepts such patent, and applies for no reissue, alleging no mistake, and the court asked to strike out the test altogether * * * Dismiss the bill. Matheson v. Campbell, 78 Fed. a t 913 and 920.
The N a t u r e of Invention B y reason of the many difficulties in preparing patent applications it is important to understand the nature of invention in the eyes of the law. One Court has admirably summed up many factors involved in invention which are commonly overlooked, saying: Imagination and invention are frequently discussed by shallow writers on psychology as involving the same mental processesas if dreams and reality were the same thing. No doubt many chemists and manufacturers dreamed of synthetic rubber; but it curiously became a fact through the experiments of widely separated persons in Germany and England. The next step is t o make the substance practical; t h a t is, to make it capable of serving human needs a t a n expenditure within the value of the thing produced. It is only when the thing has passed through these three stages that it becomes a useful invention. Invention, therefore, in the economic sense, is clearly a product of imagination, which will pass the social test of use within the bounds of expense of production, limited by the value of t h a t use. Murphy Wall Bed Co. v . Rip Van Winkle Wall Bed Co., 295 Fed. at 751,752. The Supreme Court has summarized the law more briefly from another point of view, saying: A conception of the mind is not a n invention until represented in some physical form, and unsuccessful experiments or projects, abandoned by the inventor, are equally destitute of that character. Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 489.
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Many years earlier the law had been applied by a District Judge to a specific situation in the following language: If a n inventor merely conceives a mechanical process in his mind, and then sets to work to construct a machine to work that process, and works it out in no other way, and the machine fails t o work successfully, then his claim as the inventor of a process is as groundless as his claim as the inventor of a machine. Union Mfg. Co. v. Lounsbury, 2 Fish. 389. Another Court expressed the same idea in another form: In contemplation of law a n invention does not exist until the inventor’s ideas have been reduced to practical form. American Graphophone Co. v . Leeds and Catlin Co., 1.70 Fed. a t 331. REDUCTIONTo PRACTICE-when an invent.ion has been successfully worked it is said to have been reduced to practice. One Court has said that to constitute a man an inventor: It is enough that he had both a mental conception and a tangible reduction to practice. Procter and Gamble CO. v . Berlin Mills Co., 256 Fed. a t 28. The Courts have many times been called upon to decide both what is a conception and what is a reduction to practice. Certain types of both are peculiar to the law of patents on discoveries. I n one case where the planned procedure resulted in a wholly unexpected result, the Supreme Court ruled: The claim that the patentees of the patent in suit are not the discoverers of the process patented because a n employee of theirs happened t o make the analyses and observations which resulted in the discovery, cannot be allowed * * * The patentees planned the experiments in progress when the discovery was made * * * they directed the investigations day by day, conducted them in large part personally and * * * they interpreted the results. Minerals Separation, Ltd. v. Hyde, 242 U. S. 270. This case is to be contrasted with one in which i t was held that merely asking for a useful result was i n s d c i e n t to make the asker a n inventor: Pembroke was told in very general terms that a carbon paper was desired possessing some, but not all, of the properties mentioned in the claims * * * We fully agree * * * that nothing more was disclosed to Pembroke by Sulzer’s agent, Haste, than a result to be accomplished, and that Pembroke is the real inventor of the subject-matter of the claims. Pembroke v . Sulzer, 265 Fed. a t 998. JOINT INVENTORS-A whole book could be written on the subject of what constitutes joint inventorship and what constitutes a sole invention. A single court decision must suffice, summing up the law : In order to constitute two persons joint inventors * * * the conception of the entire device may be due to one, but if the other makes suggestions of practical value, which assist in working out the main idea and making it operative, or contributes an independent part of the entire invention, which is united with the parts produced by the other and creates the whole, he is a joint inventor. De Laski and Thropp C. W. T. Co. v. W. R. Thropp and Sons Co., 218 Fed. a t 464.
EFFECTOF FILINGPATENT APPLrCATroN--Reduction to practice was touched on above, but the further statement must be made that: Where an invention is described in a specification, and a patent for such invention is applied for, the filing of such application is equivalent to a reduction to practice. In reason this should be so, for since the statute requires, not only that such applicant disclose his invention, but also “the best mode in which he has contemplated applying the principle” * * * it follows that, if the applicant receives a patent, its issue implies reduction to practice when the application was filed. Pittsburgh Water Heater Co. v. Beler Water Heater Co., 228 Fed. a t 678. The patent application is often described as a constructive reduction to practice.
Novelty i n View of Prior Art One Commissioner of Patents said: Whenever in an art, machine, manufacture, or composition of matter a change, however apparently minute, is made which
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is not obvious and which results in marked advantages, the rule is that a patentable invention has been produced, and when the history of the art is such that the inducement to make the change is very great, by reason of its value, and the change remains unmade for a considerable time, that is evidence approaching the conclusive that the change is not obvious. Ex parte Champney, 60 0. G. 1051. This doctrine has been applied by a District Judge to an invention relating to the manufacture of celluloid : The modifications which they made in the process of manufacture were trivial, yet the fact remains that their process was the first that was actually successful in the long attempt to make an article which should be both attractive and useful. Upon this state of facts the law as to the patentability can hardly be doubted, because * * * inventive skill of no ordinary character, and of different persons, had been most earnest and persevering in the effort to produce good celluloid. Celluloid Mfg. Co. v. American Zylonite Co., 28 Fed. a t 196. NEW PRODUCT NOT NECESSARY TO PATENTABILITY-Patentable novelty is not dependent upon the obtaining of a new product. I n one case, where the invention related to the manufacture of paper, the Supreme Court said: The use of caustic alkali in reducing vegetable substances t o paper pulp was no novelty. Neither was boiling under pressure, But a process combining these things with certain speciiied arrangement of the strength and quality of the alkali solution, and d e h e d regulation of the heat and pressure, may well have been patentable if it had no other novel result than the production of paper pulp more economically. American Wood Paper Co. u. Fiber Disintegrating Co. (Wood Paper Patent), 23 Wall. at 604. Beyond that, however, the Courts have been unwilling to go. In fact, they have been rather drastic in applying the doctrine that new uses are not patentable. In one widely cited California case the Court of Appeals said: Their discovery which is conceded to be valuable and of great benefit, was that the old process of fumigating trees by means of a n oiled tent and hydrocyanic acid gas, both of which were old and free to the public, could be made successful “provided the fumigation is done at night.” Such a discovery, however new and valuable it may be, is not within the pale of patentable inventions. Wall v. Leck, 66 Fed. at 555. ANALOGOUS ARTS-In a very different field Judge Gray denied the validity of a patent, saying: The contention of complainant is, that this process relates primarily, and was used chiefly, in charging soda water fountains, and therefore could not be considered as a n anticipation of the Mussel method patent, because of the alleged difference between the a r t of filling casks with beer and charging fountains with soda water. To this the answer of the court is, that “the difference between beer and soda water does not relate to and is not found in the different effects which back pressure will have upon them, in the filling of casks with beer or fountains with soda water; and further, that the United States Patent Office considers them not only as analogous, but classifies them practically as the same art.” Golden Gate Mfg. Co. D. Newark Faucet Co., 130 Fed. a t 117. I n still another field the same doctrine was applied by Judge Wallace: Water acts as a paint repellant in all these instances, by intervening a thin film of nonadhesive material between the rollers and the paint, or the resinous or glutinous coating, of the fabric. Consequently, it would not be invention to apply water by the same mechanical means t o prevent the paint of wire-cloth from adhering to the rollers which had been used to apply it * * * Unless the process of the patent involves something more than the use of simple water to moisten * * * it is destitute of patentable novelty, Wickwire v. Wire Fabric Co., 41 Fed. a t 37, 38.
In the field of metallurgy a Montana judge said: The only difference in the two processes adopted, the i3st by Bessemer and the other by Manhes, is that the impurities in the molten pig iron are so eliminated as to make steel, and the other is the elimination of the impurities contained in copper matte and the production of commercial or pig copper. If this is not applying an old and well-known process to a new use, I am unable to comprehend the matter. Farrell v. Boston and Montana Consol. Copper and S. Min. Co., 121 Fed. at 847.
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There is, however, a class of cases to which this doctrine does not apply. In one of these Judge Wooley said: The difference between the two patents may be shortly stated to be thus: The first process rests upon the use in very small quantity of an oily substance that does not dissolve * * * The second process does not employ oil, or an undissolvable substance; on the contrary, the “mineral-frothing agent” must be in solution * * * We do not find it necessary to discuss the question of validity; our conclusion is, that the [second] patent discloses invention and has not been anticipated. iMiami Copper Co. v. Minerals Separation, Ltd., 244 Fed. a t 773, 774.
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the Bell and Fell disclosure to have tried the substitution of arsenic acid for sulfuric acid. in making arsenate of lead, that fact remains that in the 40 years which elapsed since Bell and Fell it seems to have occurred to no one to try that experiment. In the light of this fact, and the further fact that mere anology is not, in chemistry, usually so certain an index as in mechanics * * * we are not satisfied to say that it was within the expected skill of the chemist to know that Bell and Fell’s process of making sulfate of lead * * * was equally available for producing arsenate of lead by the mere substitution of arsenic acid for sulfuric acid. Toledo Rex Spray Co. v. California Spray Chemical Co., 268 Fed. a t 204.
MERE IMPROVEMENT NOT ENOUGH FOR PATENTABILITYPATENTABLEPRODUCTS-A product or composition must Judge Blatschford, whose decisions in patent cases carry great have definitely new characteristics t o be patentable. The weight, denied the validity of a patent claim covering a process Supreme Court, many years ago, denied the patentability of drying foods, saying: of a synthetically produced material, when the same material The process * * * existed before Alden’s invention, in the was known in nature, apparatus used by the Shakers * * * The apparatus described The alizarine of madder * * * was an old article. While by Alden may carry out the process more perfectly, but the a new process for producing it was patentable, the product process, set forth in the claim, is the same. Alden Evaporating itself could not be patented, even though it was a product made Fruit Co. v . Bowen, 24 Fed. a t 788. artificially for the first time, in contradistinction to being eliminated from the madder root. Cochrane PI. Badische Anilin ACCIDENTAL, PRIOR USE-The patent ruled upon by Judge and Soda Fabrik, 111 U. S.a t 311. Blatchford was thus held to be anticipated by the prior comOn the other hand, a metal was held patentable in wrought mercial, continuous accidental use of the process. But trivial, form when it had hitherto baffled experimenters attempting to unrecognized, accidental prior use does not anticipate a valuable obtain it in that form. Judge Morris said: invention as appears in the following decision: The Faure patent did not anticipate the patent in suit * * * The Faure invention was not designed or intended to shell peas by impact. It was not constructed for such a purpose. It was intended to shell peas by abrasion, and did. If any of the peas were shelled by impact, such shelling in that mode was incidental and we might say accidental. The construction of the machine prevented the shelling by impact of any considerable quantity of the peas put in the machine * * * The construction of the two machines is different, the operation is different, the resultsthat is. the effects uDon the Dea uods-are different * * * Complainant’s patent in suit I s valid. Chisholm v. Canastota Canning Co., 135 Fed. 817, 818.
PRIOREXPERIMENTS-A very large number of prior experiments does not defeat a patent, where all the experiments were incomplete or imperfect. As t o this the Supreme Court said, in reference t o a process for manufacturing paper: The patent of a n originator of a complete and successful invention cannot be avoided by proof of any number of incomplete and imperfect experiments made by others a t an earlier date. This is true, though the experimenters may have had the idea of the invention, and may have made partially successful efforts to embody it in a practical form. And though this doctrine has been more frequently asserted when patents for machines have been under consideration, we see no reason why it should not be applied in cases arising upon patents for chemical products. American Wood Paper Co. v. Fiber Disintegrating Co. (Wood Paper Patent), 23 Wall. 594, 595. Scientific data, unapplied in industry though widely known, do not defeat a commercially workable patent. When a patent on a method of transmission of electrical power was before it, one Court sustained the patent: The invention consisted in merely applying t o practical use the facts that were known scientifically, but never before thus applied * * * The Tesla invention in issue * * * derives its * * * recognition from the fact that it was applied to the production of power. Westinghouse E. and Mfg. Co. v. Stanley Instrument Co., 138 Fed. a t 169 and 184. The Supreme Court has said: Knowledge after the event is always easy, and problems once solved present no difficulties, indeed, may be represented as never having had any. Diamond Rubber Co. v. Consolidated R. T. Co., 220 U. S. a t 435. The precaution there set forth was applied by the Court of Appeals for the Sixth Circuit t o a patent on the manufacture of arsenate of lead : While in the light of the invention of the patent it may seem t h a t i t would naturally have occurred to one acquainted with
Claims * * * a r e * * * The material, wrought tungsten, having a specific gravity of * * * and capable of being forged or worked” * * * They claim a thing unknown to the prior art * * * I t has uses of great importance * * * These claims should also be sustained. General Electric Co. n. Independent Lamp and W. Co., 267 Fed. at 838. I‘
The same doctrine was applied by Judge Coxe t o a very different field in sustaining a patent on a baking powder: Broadly stated, the invention consists of a baking preparation in which the phosphoric acid is, practically, in a granular condition free from pulverulent phosphatic material * * * This granular material possesses peculiar and distinctive properties and characteristics of great value * * * In determining the question of invention each case must depend upon its own facts, the inquiry always being whether what has been done required the exercise of the inventive faculties. Has a new or better result obtained? Is it cheaper and more durable? Has it new capabilities? Does it perform new functions? Rumford Chemical Wks. v, New York Baking Powder Co., 134 Fed. a t 385, 388.
SUBSTITUTION OF MATERIAL-A wide difference between discoveries and other inventions appears in Court decisions which find invention in the substitution of one material for another. I n such a case involving an electric storage battery, Judge Coxe said: We are dealing with a comparatively new and abstruse art, where the most important results are said to follow from changes, apparently, of the most unimportant * * * The substitution of one material for another in a door knob is the work of the mechanic, the substitution of one material for another in secondary battery electrodes may solve a problem which will revolutionize the motive power of the world. Electric Accumulator Co. v. h’ew York and H. R. Co., 50 Fed. a t 82. PROPORTIONS IN ALLOYS- Judge Wooley applied parallel reasoning t o the proportions of ingredients in alloys: Novelty of proportions in the sense of the patent law involves something more than figuring out proportions differing from any that were known before, It involves new results from new proportions, developing a new metal, or, it may be, an old metal with new characteristics of structure or performance, embracing entirely new, or a t least substantially enhanced, qualities of utility * * * Vanadium was an alloying metal of the prior art, known to be useful in producing certain properties and free t o be used by anyone desiring them. To constitute invention in the continued use of vanadium, it must appear that some new property had thereby been attained or some newly useful result had been achieved. Bethlehem Steel CO. v. Churchward I. Steel Co., 268 Fed. at 364, 365. ( T o be continued i n next issue)
