Aftеr our opinion in this case was handed down the plaintiff-appellant petitioned for rehearing on the principal ground that we had erred in holding claim 3 of thе Dreymann patent invalid for lack of invention on the authority of Sinclair & Carroll Co., Inc., v. Interchemical Corp.,
The patentee in the Sinclair case, Gessler, did not discover what characteristics a solvent for a printing ink ought to have to make the ink slow drying at ordinary temperatures but fast drying at elevated temperatures. That discovery was made before Gessler by one Hanson who published an article on the subj ect. But Hanson was unable to find any solvent having the peculiar quality of being relatively non-volatile at ordinary room temperature but highly vоlatile at a temperature of 150° C., a temperature to which paper can safely be heated without burning, which he said was essential if the problem he рosed was to be solved. Gessler’s only contribution was that he found the solvent which met Hanson’s specifications. But he found it in a known compound listed both by name and by its vapor pressures, that is, its rates of evaporation at various temperatures, in the catalogue of á dealer in chemicals, and this, the Supreme Court sаid, did not constitute invention.
Dreymann, on the other hand, did not merely play Gessler to some prior worker’s Hanson.
In spite of this, however, the defendantappellee contends that the patent in suit is invalid on the authority of Hotchkiss v. Greenwood,
Dr. Cummings, the patentee in the Goodyear case, obtained a patent for the use of hard rubber or vulcanite, at that time a recently discovered compound .but one of known characteristics, as a plate or base for artificial sets of teeth. Various metals had been used for this purpose before and false teeth were оld, but nevertheless the Supreme Court held Cummings’ patent valid for the reason that he had done more than simply to use “hard rubber to perform the functions that had been рerformed by other materials, such as gold, silver, tin, platinum or gutta-percha.” It said that the result of Cummings’ teachings was a new product “differing from all that had precedеd it, not merely in degree of usefulness and excellence, but differing in kind, having new uses and properties.”
We think the same may be said of Dreymann. To be sure he used a known
This raises the question of infringement.
As already appears Dreymann, in order to obtain the adhesive he desired, added a resinous colloidal substance foreign to petroleum to a rеlatively pure amorphous petroleum wax, whereas the defendant found a similar adhesive in amorphous petroleum wax carrying a colloidal impurity nаtive to petroleum. Thus the question of infringement hinges ,upon the interpretation of Dreymann’s patent. If he taught only the addition of some foreign colloid to relatively pure amorphous petroleum wax, as the defendant contends, the defendant does not infringe for the reason that it adds nothing foreign to petroleum to the amorphous wax it uses.
The claim in suit reads broadly. It claims a cоntainer wall of the type described “in-eluding a sheet or film composed substantially of an amorphous petroleum wax * * * carrying a suspended colloid.” This language obviously does not limit the patentee to amorphous petroleum wax to which a foreign colloid has been added. This the defendant concedes. But it argues that the claim must be interpreted in the light of the specification, that so interpreted the claim is limited to the addition of foreign colloidal matter, and hence that the defendant cannot be said to infringe by using a wax carrying native colloidal matter.
We concede that the specification teaches the addition of a colloid foreign to petroleum. But a patentee is not necessarily limited to illustrative specifications. Fie is required by the statute tо disclose the best method he knows of practicing his invention, but it is well established that if his claim be broad enough, he is not confined to that method but may claim infringement if anоther uses the principle and appropriates the substance of his invention. B. B. Chemical Co. v. Ellis, 1 Cir.,
That is what the defendant wittingly or unwittingly did, and it makes no difference that the рresence of the resinous colloidal material in its wax was fortuitous. General Bakelite Co. v. Nikolas, D.C.,
The judgment of this court dated November 7, 1945, is vacated, the judgment of the District Court is reversed, and the case is remanded to that court for further prоceedings not inconsistent with this opinion, with costs in both courts to the appellant.
Notes
The defendant-appellee argues that prior patents in the art did for Dreymann what Hanson did for Gessler. However, considering those patents, we cannot see that any of the patentees therein directed their attention to Drеymann’s problem or suggested his solution of it.
It appears that the defendant’s wax is a blend of two commercially available waxes but this is unimportant because it appears that no substance foreign to petroleum was added at any stage in the refining or the blending of its wax.