MANTON, Circuit Judge.
These three suits for infringement of patents Nos. 1,507,891 and 1,507,892, granted to Parks, were tried together, and will be considered in one opinion.
The patent No. 1,507,891 is for a composition of matter employed in carrying on the process patent No. 1,507,892. The latter is the process and product patent. Both were granted on September 9, 1924, on applications filed June 30, 1923. They propose the conjoint use as a carrot of an oxidizing agent, as hydrogen peroxide, and a caustic alkali, as sodium hydroxide. Carroting is an art used in the manufacture of felt hats. Felt hats are made of the fur of small animals, principally rabbits. The hat-making process involves the formation of a cone of loosely deposited fibers, known as a hat body,
Appellee's inventions permit the stain or dye to penetrate entirely through the fur; mercury carrot does not do this. It has been found that fur, carroted by the inventions in suit, produces many attractive and popular characteristics as are referred to in the so-called "flannel felt." Moreover, it has been found that economies in producing cheaper grades of hats have been possible. It gives a closer felt because it is more evenly knit together. These enumerated advantages have been found to result from the application of the appellee's process of brushing a strong carrot of the described character on the pelt. Patent No. 1,507,892 deals with a convenient method of getting an aqueous solution of hydrogen peroxide and sodium hydroxide by simply introducing a specified amount of sodium peroxide into water. Sodium peroxide in water inevitably and immediately works down into the two abovenamed chemical compounds.
The claims deal with the process, but some of the claims, as claim 8, deal with the treatment of the fur, preparatory to felting, with a solution of an oxidizing agent and a cleansing agent of such nature as to give the fur felting properties. Claim 11 is more specific as to the solution used, setting forth sodium hydroxide and hydrogen peroxide as ingredients of the solution. Some of the claims in suit, instead of specifying the result of adding sodium peroxide to water, define the solution as a solution of sodium peroxide in water, which is another way of saying the same thing. A solution of sodium peroxide in water is a solution of sodium hydroxide and hydrogen peroxide. Claims 12 and 16 specify the range of strength of the solution with different degrees of narrowness.
Patent No. 1,507,891 deals with the composition of matter which forms the material for carrying on the process and for producing the product dealt with in the patent just considered. This material and its action are referred to in the specifications of the patent with particularity substantially equal to that contained in patent No. 1,507,892.
There are three claims in suit. The first sets forth the carroting liquid comprising the solution of sodium peroxide dissolved in water; claim 2 specifying and defining a carroting solution comprising an aqueous solution of sodium hydroxide and hydrogen peroxide of a strength of not less than 1° Baume nor more than 10° Baume; claim 3 is similar to claim 2, but narrower, in that it specifies the limits of the range as 2½° Baume and 7° Baume. These claims are explicit and clearly stated.
It is not clear as to what action takes place in the chemical and physical structure of the fur when it is carroted. Experts differ as to the result, but, whatever may be the cause of the change, some marked change is wrought. After the fur has been carroted, it seems to felt with ease. The changed character of the fur is important, and what may be the microscopic actions which bring this about are not so important, nor is the difference of opinion as to it. It is not necessary that the inventor understand or be able to state the scientific principles underlying his invention. Diamond Rubber Co. v. Consolidated Tire Co., 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527.
Patent No. 501,797, issued to Lussigny, was for the use of caustic soda in carroting, and the Tweedy patent, No. 339,350, for the use of hydrogen peroxide. They are urged upon us as prior art. Both were considered in the patent office on these applications and found not to anticipate Parks. Other patents showing these two elements, caustic soda and hydrogen peroxide, are cited but are not prior art. But it is claimed because of these prior patents that the patents in suit are an aggregation and not a patentable combination. The argument is that the two agents,
An argument is advanced that the component constituents do not coact. Apparently each does something because of the action of the other. No matter how strong a solution of caustic soda is used or how long it is applied, it does not get the result. The same is true of hydrogen peroxide, but, when both are used together, even successively, they do something which the other cannot do alone. They bring about the result which the art desired. As stated in the report of the Mellon Institute, which made research on hatting, "carroting reaction is bound up in interdependent reactions of hydrolysis and oxidation" and "neither is sufficient in itself, but together they can cause a reaction which duplicates that of mercury carrot." The caustic soda has a hydrolyzing effect, and the hydrogen peroxide has an oxidizing effect. No one claims that an oxidizing action is found in the caustic soda alone, nor a hydrolyzing action in the hydrogen peroxide alone. As compared with these constituents, the patented carrot has a new action which is different from either alone, oxidization in one case or hydrolization in the other. Thus interaction is clearly established as is chemical reaction. The result has been of great value to the manufacturers of hats. It is thus apparent that the inventor Parks took the two unqualified failures as carrots and by putting them together has made a success, bringing about the new and desired results as above stated.
The appellant argues that the patent No. 1,507,891 is invalid because the composition of matter is an unpatentable discovery. The discovery of a novel use of an old substance in a new composition, whereby there is attained a new and unobvious result, has long been held to be patentable. In General Electric Co. v. Hoskins, 224 F. 464 (C. C. A. 7), it was argued that the nichrom wire, of which are made the resistance wires for electric toasters, flatirons and the like, was not patentable because the alloy of the wire was old at the time of the invention there in question, and it was old for the purpose of electrical resistance. But the court held that was insufficient to invalidate the patent. Copper sulphate used in the gas mask to absorb ammonia was broadly patentable, although the same substance had been used for the same purpose before. Yablick v. Protecto Corp., 21 F.2d 885 (C. C. A. 3). See: Corona v. Dovan, 275 U.S. 358, 48 S.Ct. 380, 72 L.Ed. 610; Ansonia Co. v. Electrical Supply Co., 144 U.S. 11, 12 S.Ct. 601, 36 L. Ed. 327; Internatl. Cork Co. v. New Process Co., 6 F.2d 420 (C. C. A. 2). The claims here specify the strength of the solution or proportions of chemicals used, and the patent explains the proper use thereof. It is not a matter which is obvious to those skilled in the art, and this knowledge was acquired only after a long period of
The claim that patent No. 1,507,892 is void for double patenting because of the grant of the combination patent, is equally without merit. The exercise of inventive thought may produce both a process and its product, as a composition of matter in the art, by the act in which it is applied, and its intended use, if the inventions are truly separable. The inventor is entitled to a monopoly for each, although neither could have been discovered and been available without the other. Sandy Macgregor Co. v. Vaco Co., 2 F.2d 655 (C. C. A. 6); Leonard v. Maxwell (D.C.) 288 F. 62; Crown Cork Co. v. Standard Co., 136 F. 841 (C. C. A. 2); Writing Machine Co. v. Elliott (C. C.) 106 F. 507; Willcox v. Merrow, 93 F. 206 (C. C. A. 2). The issuance of two copending patents to the same inventor may not be used one against the other where it appears that the claims for a separate invention from the original claims were allowed on the first application. Each patent is novel and useful and is entitled to protection. Traitel v. Hungerford, 22 F.2d 259 (C. C. A. 2); Benjamin Elec. Co. v. Dale, 158 F. 617 (C. C. A. 2).
Infringement is amply established. Indeed, it is practically admitted, except as to the Eastern Fur Products Company. Claims 5, 7, 12, 14, 15, 16, and 17 of the process patent No. 1,507,892, and claim 1 of the matter patent No. 1,507,891 are infringed. Appellants admit that they follow the recommended procedure of the patent. The constituent agents of caustic soda and hydrogen peroxide are applied in mixed form and they are applied by brushing the fur instead of immersing the fur in the solution. They admit the exactness of the infringement by the solution used, making and using a solution comprised of 2½ per cent. of caustic soda and 1 per cent. sodium carbonide and 3.75 per cent. hydrogen peroxide, all by weight. As to claim 1 of composition of matter patent, that likewise is established. As to the infringement by the Eastern Fur Products Company, the testimony and the answers of Zwyner fully establish its infringement. He was president of the company and carried on its business. His act was the act of the corporation of which he was an officer. His use in directing the business activities of this appellant constituted acts of the corporation.
The patents are held valid and infringed.
Decrees affirmed, with costs.