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I i D U S T R I d L AND E-VGINEERING CHE-VISTRY
These values are now considered by the writer to be from 2 to 4 per cent high. I n the later tests, a modification of the Sligh test was used which consisted in conduching the test under reduced pressure. The collecting graduate and capillary funnel mere placed within a wide-mouthed bottle, which was closed with a flat brass plate with ground joint. The exit of the condenser projected through the brass plate and the condensate was delivered to the capillary funnel in the usual manner. The bottle was connected to a laboratory (water-operated) air pump and an absolute pressure of 45 to 55 mm. mercury was maintained throughout the apparatus during distillation. The capillary tube furnishes a ready means of reading the diluent end point, and distillation a t low pressures makes for accuracy because the fractions are closely defined.’3 The oil and diluent are not cracked during the test and can be used subsequently in other tests. Figure 2 gives graphically the results obtained a t
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atmospheric pressure and a t reduced pressure with samples of the same oil. Bibliography 1-MacCoull, Lubricafion, 10, No. 6, 66 (1924). 2-Wilson and Wilkin, J . Soc. Auromoliue Eng., 18, 163 (1926). 3-Bjerregaard, Ind. Eng. Chem., 17, 142 (1925). 4-Wood, Sheely, and Trusty, Ibid., 17, 798 (1925). 5--lewkowitsch, “Chemical Technology and Analysis of Oils, Fats, and Waxes,” Vol. 111. 6--Salathe, Ind. Eng Chem.. 17, 414 (1925). 7-Engler and Boch, Chem.-Ztg., 16, 592 (1892). 8-Mabery and Smith, A m . Chem. J . , 13, 232 (1891); hlaberp. J . SOL. Chem. Ind., 19, 505 (1900). 9-Waters, Bur. Standards, Tech. P a p e r 4 ; J . Ind. Eng. Clrem.. 3, 812 (1911). l@-James, Chem. Ez M e t . Eng., 26, 209 (1922). 11-Van Brunt and Miller, I n d . Eng. Chern., 17, 416 (1925). 12-Bur. Standards, L e f f e v Circ. 200 (June 15, 1926). la-Ibid., Circ., “hleasurement of Crankcase Dilution, 1-acuum Distillation Transition Method,” (January 26, 1925).
An Outline of the Law of Chemical Patents’ By E d w a r d Thomas 165 BROADWAY, NEW Yon=, N. Y.
(Confinucd from January issue)
Prior P u b l i c a t i o n s as Anticipations Prior publications have a n especial importance in connection with chemical patents. The vast journal literature of chemistry is well indexed and describes hundreds of thousands of chemical experiments and factory operations, where the literature of mechanics is poorly indexed and, moreover, describes relatively few machines and factory equipments. I t is necessary therefore t o indicate how the Courts interpret prior publications. INTERPRETING PRIORPcBLIcATIoN-In a suit on a patent covering the bleaching of flour one Court said: When it is sought to ascertain the state of the a r t by means of prior patents, nothing can be used except what is disclosed on the face of those patents. Such patents cannot be reconstructed in the light of the invention in suit, and then used as a part of the prior art. * * * Prior patents are a part of the prior art only by what they disclose upon their face. If they are carried into effect in the industrial world, what is learned from that experience also becomes a part of the prior art. An expert, however, cannot take a process patent, which has never been applied industrially, and work the process in his laboratory, and discover therefrom something which is not disclosed on the face of the patent, and then transfer t h a t experience back t o the time of the patent, and make it a part of the prior a r t for the purpose of defeating a meritorious invention. Naylor v. Alsop Process Co., 168 Fed. at 920. This doctrine was applied by Judge Colt in one of t h e suits on the Schultz process of chrome tanning: With the Schultz process before him, i t may be possible for a skilled expert to tan a skin by following what he believes t o be a liberal construction of the Francillon specification * * * The question is, assuming the Schultz process did not exist, does Francillon disclose a tanning process and by following literally his instructions, have you solved the problem of a practical and commercial method of chrome tanning? Tannage Patent Co. o. Donallan, 93 Fed. a t 820, 821.
Moore’s experiment * * * was published in a well-known technical magazine * * * It was a t most only a laboratory experiment without practical and commercial fruit * * * Such disclosures do not enrich the a r t in the sense required for a n anticipation * * * Abel’s salt * * * does not appear t o have ever been used in practice * * * i t was not merely a tentative experiment * * * It was fully described and published in well-known medical journals, and the disclosure would have answered the claims of a patent * * * It was published as a direction for all who wanted to use it, unlike Moore’s vague disclosures, which were meant rather for investigators * * * In view of such publications, Takamine cannot claim to have been the first. Parke-Davis and Co. v . H. K. Mulford Co., 189 Fed. at 108, 110.
ERRONEOUS PRIOR PUBLICATIONS-Judge Coxe sustained a patent on a dye in the face of many publications alleged t o anticipate it. As to one he said: A description which is insufficient t o support a patent can hardly be relied on as a n anticipation. In each instance the same precision is required * * * We have then a prior publication which purports to give a formula for producing a n insoluble compound and which omits one of the most important steps, leaving a blank where proportions should be stated with accuracy. Can it be, t h a t such a publication anticipates a patent for a soluble compound which gives with minute details all the steps necessary to accomplish t h a t result? * * * The question is, what does the prior publication say? Not what it might have said or what i t should have said. Badische Anilin and Soda Fabrik v. Kalle, 94 Fed. at 167, 168. SUGGESTIONS I N PRIOR PUBLICATIONS-Judge Mayer has pointed out under what conditions t h e suggestions of prior writers are t o be regarded as anticipations. I n a suit on a wireless telegraph patent applied for in 1901 he said:
It is extremely important to think, if possible, as of 1901. In this case, t h a t is a troublesome task, because of the extraordinary progress in this a r t since then, and the consequent difficulty of discarding from consideration many items of afteracquired knowledge. It is also necessary in this case not t o accord undue importance t o isolated suggestions in scientific papers and discussions. Such suggestions are not infrequently PRIOR LABORATORY EXPERIMEXTS DESCRIBEDIN PUBLICA- controlling in a well-developed and well-understood a r t where TIOh-S-In the exceedingly interesting decision on the adrenalin skilled men can readily appreciate the disclosure. In the infancy of a new, and, at the time, little understood art, however, the patents, Judge Learned Hand found the journal account of alleged prior a r t necessary to negative invention must be clear prior experiments by one Moore were insufficient to constitute and doubts * * * resolved in favor of the inventor. Kintner v. a n anticipation, but the account of other experiments by a chem- Atlantic Communication Co., 249 Fed. a t 77, 7 8 . ist, Abel, were sufficient to anticipate certain phases of the Suggestions in a prior patent are no more persuasive than invention, he said : if found in other literature. In a suit on a patent covering a celluloid fabric, Judge Coxe said: Received June 28. 1926.
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I n some of these patents, the inventors state generally that the compound produced by them may be used upon collars and cuffs and other textile materials * * * but they did not know how * * * The law requires something beyond mere suggestion to defeat a patent. Prophesy will not do it. Facts, not theories, are needed. Celluloid Mfg. Co. v. Chrolithion Collar and C. Co., 23 Fed. at 398, 399. Prior patents and prior publications were cast aside as so indefinite as t o be defective by Judge Hough when a defendant set them up in a suit on tungsten lamp filament patents. They only show that for some time men had cast the eye of hope on tungsten; but neither hope nor prediction is invention. If i t be admitted * * * that they show Just reaching the goal of success “by a neck,” t h a t detracts nothing from his legal right to the victor’s palm * * * Little was known about that not uncommon metal until Coolidge, so t o speak, tamed it. General Electric Co. v. P. R. Mallory and Co., 298 Fed. a t 583, 584.
FOREIGN USE WITHOUT PUBLICATION OR PATENTING NO BARI n certain respects the patent statute is liberal in preserving the rights of bona fide inventors. Judge Lacombe has summed up the law: Reduction t o practice in a foreign country can never operate to destroy a patent applied for here, however widely known such reduction to practice may be, either among foreigners or among persons living here, unless the invention be patented or described in a printed publication. Westinghouse Mach. Co. v. General Electric Co., 207 Fed. at 78.
WHAT 1s A PUBLICATION?-Moreover, a trade circular is not necessarily a publication within the meaning of the statute: Hendrie’s soap is not * * * nor is his circular a printed publication or a public work within the meaning of the patent law. Parsons v. Colgate, 15 Fed. a t 602. Secret Uses as Anticipations a n d Generally Trade secrets such as secret processes and formulas are generally scrupulously protected by the Courts. But when both a trade secret and a patent right are before a Court, and t o decide the case the right of one must be held paramount to the other, the Courts have usually held t h a t the patent right takes precedence. Possession of a patent was, however, held t o give no right t o pry into the defendant’s secret practices alleged by him t o be over fifty years old, where, as said by t h e Judge: They produce files and rasps before the court, which, as shown by affidavits uncontradicted, were made many years before the letters patent in question were issued, and which, t o the eye, a t least, seem t o be entirely similar t o those now made by the complainants. Under these circumstances, t o compel the defendants t o open their manufactory * * * and to disclose the character of the machines and process by which for so many vears thev have made a successful article of merchandize. would be unjusf and inequitable. Stokes Rros. Mfg. Co. u. .Heller. 56 Fed. at 298. This doctrine was broadly applied by another Judge, who said of a certain interrogatory propounded before trial: Defendant should not be required to answer this interrogatory, provided said answer would disclose trade secrets. Federal Mfg. and Print. Co. v. International Bank Note Co., 119 Fed. a t 385. Upon another state of facts, however, Judge Learned Hand overruled this: It is not a valid objection to argue t h a t the interrogatories do not cover all the elements of the patented processes * * * The defendant * * * urges that i t should not be required t o disclose its secret processes * * * The right of the plaintiff t o bring out the truth must prevail, in so far as the inquiry is honestly limited t o the actual issues of infringement * * * It is true that the result may be to compel the defendant to disclose how far it goes in the process, though it does not use the process as a whole, and that t h a t may damage the defendant. That is, however, a n inevitable incident to any inquiry in such a case: unless the defendant may be made to answer, the plaintiff is deprived of its right to learn whether the defendant has done i t wrong. Grasselli Chemical Co. v. National Aniline and Chem. Co., 282 Fed. at 381.
Vol. 19, No. 2
Much earlier, another Court had ordered a witness wholly unconnected with parties t o the suit t o produce drawings and testify as to secret processes of his corporation even though the disclosures of the witnesses called for, and which the witnesses were required to answer and produce, related to a method of manufacturing a rail, which method has been developed by Cambria Iron Company with great labor and expense, and * * * is said company’s private property. Johnson Steel StreetRail Co. v . North Branch Steel Co., 48 Fed. a t 192. One Court said of one patentee who refused to divulge his secret methods when cross-examined in a suit against a n infringer: If he has a secret which is likely to be disclosed by the inquiry, it is one involved in his patented discovery; and which he has no right, therefore, to withhold from the public. In applying for the patent it was his duty to disclose the most available method known to him of carrying the discovery into effect. Dorman v. Keefer, 49 Fed. 462.
It has been held that secret use for a number of years may constitute abandonment of patent rights, even though a patent was eventually successfully prosecuted through the patent office. I n one case the Court of Appeals for the Third Circuit held the patent void, saying: The question is whether one who has discovered and perfected an invention can employ it secretly more than nine years for purposes only of profit, and then, upon encountering difficulty in preserving his secret, rightfully secure a patent, and thus in effect extend his previous monopoly for the further period fixed by the patent Laws * * * There are some difficulties in the way of concluding that the secret use of the process resulting in public use and sale of the product constitutes the statutory public use of the invention * * * We * * * conclude * * * the invention had been abandoned. Macbeth-Evans Glass Co. v. General Electric Co., 246 Fed. a t 697, 698, 707. Abandoned use by another, where secret, was held by Judge Blatschford t o be no anticipation: The patentee * * * filtered coal oil through bone black * * * in the winter of 1861 or the early part of 1862 * * * By May 1865 * * * he applied for his patent * * * I n regard to the use of bone black by Cornelius V. Deforest to filter oil, there is no satisfactory evidence t h a t he used it before the very end of May * * * 1862 * * * He prepared in this way from seventy-five to one hundred barrels * * * H e stopped altogether manufacturing petroleum in July or August 1862 * * * The oil carried with it no evidence as to how it was refined * * * Cornelius V. Deforest obtained no patent for his invention, and made no attempt to obtain one * * * The patentee * * *never abandoned his invention * * * The patent is, therefore, valid. National Filtering Oil Co. v. Arctic Oil Co., 4 Fish. 514. Some attorneys advise manufacturers operating secret processes t h a t they are safe against patents obtained by others only if they publish in some bona fide, out-of-the-way and obscure journal a full account of the process. Other attorneys advise such manufactu?ers t h a t it is safer t o file patent applications disclosing their processes, allowing the applications t o become abandoned before issue, and if the process is improved, even in the slightest detail, t o file another application which may likewise be abandoned if it seems best. Abandoned applications may be used in evidence as proof of whatever they contain a t their dates bf filing, and are presumably more secret than technical descriptions published even in obscure journals. Claims
3’0 patent is complete without a claim or claims: All patentable inventions are defined by claims, but described, explained and disclosed by specifications. Curtiss Aeroplane and M. Corp. v. Janin, 278 Fed. a t 456. A claim is both a definition and an assertion. The definition must be justified by the disclosure; the assertion stands alone. General Electric Co. v . Nitro Tungsten L. Co., 266 Fed. a t 1000. The Supreme Court says to the patentee that, The claim is a statutory requirement, prescribed for the very
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INDUSTRIAL A-VD ENGINEERING CHEMISTRY
purpose of making the patentee define precisely what his invention IS. White D. Dunbar, 119 U. S. a t 52. And again, The summary of the patentee’s claim a t the close of the specification * * * implies t h a t all the rest is old, or, if not old, t h a t the applicant does not claim it so far as t h a t patent is concerned. Brown D. Guilcl, 23 Wall. a t 224. The Supreme Court also says, The claim is the measure of his right t o relief. Ortmayer, 141 U. S. a t 424.
McLain v .
SEVERAL CLAIMS ADVISABLE-It is usually Well t o draw broad claims, t o bring within the patent those who may find i t possible t o use equivalents instead of the specific form of the invention disclosed. Judge Learned Hand thus puts i t : There is nothing improper * * * in first putting your claims a s broadly as in good faith you can, and then * * * following them successively with narrower claims designed to protect you against possible anticipations of which you are not yet aware. Parke-Davis and Co. v . H. E(. Mulford Co., 189 Fed. a t 102. WHAT TO CLAm-The necessity of clearly comprehending the true nature of a n invention and then properly claiming i t was summarized by Cornmissioner Leggett : There is no middle ground, such as the use of a thing, upon which a claim can rest. Every claim must be so drawn as t o plainly indicate what kind of invention is sought t o be covered, whether a n improvement in a n “art” or in a “manufacture,” whether a process or a product * * * The manufacture or product complete in itself, and new in its individual qualities and characteristic?, and not merely in its plan of production, is what the claim should clearly and only specify. It is a fallacy to suppose, a s this claim seems t o imply, t h a t a n article is ever patentable merely because produced by a certain proceeding. It is only patentable bccause i t is itself a new thing. Ex parte Mayall, 4 0. G. 210. CLAIMSNOT SUPPORTED BY DIscLosuRE-Judge Hough has summed up the relationship between the specification and the claims of a patent: A claim not supported by the specification is a bad claim * * * A disclosure which tells how to do a thing not claimed is a misfortune for the patentee. Westinghouse E. and Llfg. Co v . Xletropolitan E. Mfg. Co., 290 Fed. at 664.
Attorneys, called into consultation after a patent application has been filed, often find it impossible t o draft a valid broad claim in a patent application intended t o cover a discovery, because no basis was laid in the original specification for such a claim. I n one bitterly fought case the Court of Appeals, D . C., denied the patentability of a claim, saying:
It is upon its face a claim purporting t o cover a method but lacking one of the steps, which, in accordance with the statement of invention * * * and the description and drawings upon which the claim is based, is essential t o the carrying out of the alleged method. The claim is, accordingly, defective in t h a t i t fails to set forth the steps necessary t o produce the intended results. I n re Creveling, 117 0. G. 1167. MANYFORMS OF CLAIMSPOSSIBLE-The possible and useful forms into which patent claims may be cast are too numerous t o discuss in less than a large book. The particular.form selected for any patent should be such as will forestall the endeavors of those who seek t o obtain the advantages of the invention while avoiding the definition of the claim. It is generally advisable t o supplement claims directed t o a process by claims directed to the product if possible, since it is usually much more feasible t o prove infringement of a claim t o product or article than t o prove infringement of a claim t o a process. One such claim sued upon and held valid was: The material, wrought tungsten, having a specific gravity of approximately 19, or greater, and capable of being forged and worked. General Electric Co. v. Independent Lamp and W. Co., 267 Fed. a t 838.
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PROCESS CLAIMSDEFINED-I‘A process claim is a description of the step by step means by which a particular result is achieved.” Asbestos Shingle, Slate and S. Co. v. Rock Fibre Mfg. Co., 217 Fed. a t 72. The following process claim has been repeatedly held valid: The process of concentrating powdered ores which consists in separating the minerals from gangue by coating the mineral with oil in water containing a fraction of one per cent of oil on the ore, agitating the mixture t o cause the oil-coated mineral t o form a froth, and separating the froth from the remainder of the mixture. Minerals Separation, Ltd., v. Miami Copper Co.. 237 Fed. a t 612. WORDING A PRODUCT CLAIM-In one of the tungsten filament incandescent lamp cases, the Court sustained a claim of a very different type-one defining the lamp by its capabilities of performance. Speaking for the Court of Appeals, Judge Hough said of the claim: It was unnecessary to do more than state the limits of invention in terms of result, because the results desired are not functional, and do indicate limits in terms of lamp life and candle power which are likewise presumably quite familiar to any competent electrician. When a claim defines achievement in words no broader than the disclosure, and in phrases which, as interpreted by competent workers in the art, tell one how to do what the patentee did, it can rarely be called indefinite. General Electric Co. v . Nitro Tungsten Lamp Co., 266 Fed. a t 1000. Infringement Infringement is the unauthorized making, using, or selling for practical use, or for profit, of an invention covered by a valid claim of a patent during the life of the patent * * * It is therefore am infringement for a n unauthorized person to make a patented machine for use or for sale, though in fact it is neither used nor sold. Johnston v. Davenport Brick and Tile Co., 237 Fed. a t 671. BROADAND NARROW PATENTS-chief Justice Taft, speaking for the Supreme Court, has summarized the law for interpreting patents when infringement may be doubtful: I n administering the patent law the court first looks into the a r t to find what the real merit of the alleged discovery or invention is, and whether it has advanced the a r t substantially. If it has done so, then the court is liberal in its construction of the patent, t o secure t o the inventor the reward he deserves. If what he has done works only a slight step forward, and t h a t which he says is a discovery is on the borderline between mere mechanical change and real invention, then his patent, if sustained, will be given a narrow scope, and infringement will be found only in approximate copies of the new device. Eibel Process Co. v . Minnesota and 0. Paper Co., 261 U. S. a t 63.
A patent may be valid and infringed though the invention is never used until t h e patent is infringed. Of such a patent the Sixth Circuit Court of Appeals said: It is what is called a “paper patent,” in that i t has never been used by the appellant, and t h a t though it is in the business of selling electrical controllers * * * I t s use would require a motor adapted thereto, and up to this time it has not deemed it best t o put such a motor on the market. The validity of the patent, however, is not affected by its nonuse * * * But * * * the patent should not be given a broad or liberal construction. Westinghouse E. and Mfg. Co. u. Toledo, P. C. and I,. Ry. Co., 172 Fed. a t 372. WHEN A PROCESS CLAIM I S INFRINGED-one all-important fact t o be remembered, both in drawing claims and in determining questions of infringement, is t h a t : No process patent is infringed, where any one of the series of acts which constitute the process is omitted by the supposed infringer, unless some equivalent act is substituted for the one omitted. W. Rickford Co. v . Merrill, 268 Fed. a t 541. The other all-important fact is t h a t stated by Judge Hough: Claims are t o be construed in the light of the contribution to knowledge actually made by the inventor * * * mere ability to fit to a thing the words of a claim does not prove infringement. Electro-Dynamic Co. v . United States Light and H. Corp., 278 Fed. a t 84. (To be continued t n next issue)
