Grasselli Chemical Co. v. National Aniline & Chemical Co., 267.

• Decision Date: 21 May 1928
• Docket Number: No. 267.,267.
• Citation: 26 F.2d 305
• Parties: GRASSELLI CHEMICAL CO. v. NATIONAL ANILINE & CHEMICAL CO., Inc.
• Court: U.S. Court of Appeals — Second Circuit

26 F.2d 305 (1928)

GRASSELLI CHEMICAL CO. v. NATIONAL ANILINE & CHEMICAL CO., Inc.

No. 267.

Circuit Court of Appeals, Second Circuit.

May 21, 1928.

COPYRIGHT MATERIAL OMITTED

Mayer, Warfield & Watson, of New York City (F. P. Warfield and Lawrence Bristol, of New York City, and W. T. Cashman, of Cleveland, Ohio, and C. P. Townsend, of New York City, of counsel), for appellant.

Dean S. Edmonds, Frank E. Barrows and Raymond F. Adams, all of New York City, for appellee.

Before MANTON, L. HAND, and SWAN, Circuit Judges.

L. HAND, Circuit Judge (after stating the facts as above).

We agree with the plaintiff that the patent in suit describes or rather attempts to describe the same invention as the German patent to Bayer & Company of December 31, 1913, and it cannot be properly understood without recourse to that document. This declares first that bases, other than those described in the earlier patents, are accelerators, regardless of their constitution, provided they have the necessary constant. (The first draft of this patent had indeed stated that while all bases were accelerators, only those above the limit had any "noticeable technical effect.") It then added that ammonia compounds, organic or inorganic, though not properly bases, had the same action if they were alkaline at vulcanization temperatures. All the other foreign patents were in the same form as the German.

It is not quite clear just what this language means. It may have meant that ammonia compounds which were not true bases, but, so to say, "quasi-bases," would be equally good accelerators as true "bases" if they had the requisite constant, or that all ammonia compounds if "quasi-bases" would be good regardless of their constants. Two of the examples given, aldehyde-ammonia and sodium amid, have either no definitely known constant or one which was too low; the naphthylenediamins and quaternary ammonium bases are in greater part below the limit. Unless the inventors mistook the constants of these substances, it would seem that the ammonia compounds intended need not have the specified constant. We incline to that view; that is, to read the original invention as being twofold; any bases of the required constant, any ammonia compounds which are bases or quasi-bases. In view of our doubts we shall, however, treat the invention on both assumptions.

On the assumption which we prefer, the patent in suit was an inadequate disclosure. It asserted, first that the accelerators in question were to be "bases," and also to have an alkaline reaction at vulcanization temperatures, i. e., "quasi-bases." Unless some true bases lose their alkalinity at those temperatures, the addition was surplusage. If they do, the disclosure was not complete because the original made no such limitation upon "bases." Added to these requisites was the possession of the prescribed constant. If so far the patent correctly described the first part of the invention, it failed to describe the second. It is true that it declared that among those bases which it covered were ammonia compounds, and it enumerated a number of these. But it nowhere even intimated that all such compounds were within the invention regardless of their constants, if only they were bases or quasi-bases. While most of those which it enumerated had either no constant or a constant below the limit, this did not disclose the invention, if it included all ammonia bases or quasi-bases. No one could gather this generalization from the instances. Hence we conclude that if the original invention was as we incline to understand it, there was not that "full, clear, concise and exact" disclosure which the law demands, Béné v. Jeantet, 129 U. S. 683, 9 S. Ct. 428, 32 L. Ed. 803.

If on the other hand the German invention is to be understood as merely adding to any bases of the required constants those ammonia compounds which have that constant and are quasi-bases, the patent is equally imperfect. The German patent begins by prescribing "bases" as we have already said; the addition was not of bases but of quasi-bases, and these do not appear in the patent in suit. It is quite true that among the enumerated substances are sodium amid and borate of ammonia and that the third example is of sodium amid. It is also true that after the enumeration the specifications declare that the enumerated compounds are either basic or have the alkaline reaction at vulcanization temperatures. This, however, leaves it uncertain whether we are to ignore the first element, i. e., that the substances must be bases. While we can understand how the confusion arose by a reference to the original, the patent, standing alone, is contradictory and speaks with an uncertain voice.

However, this is not the chief difficulty. When an inventor gives examples or instances of a generalization, he necessarily means that they contain all the determinants of which the generalization is composed. If he is wrong, either it is because the generalization itself is wrong, or because he has not properly understood the examples. In either event the disclosure contradicts itself and furnishes no guidance to the art. The examples are certainly part of the evidence on which the generalization is founded. Not only do they not support, but they confute it. If it is right, it can only be by a chance; it cannot be founded upon genuine discovery and therefore will not support a patent, Matheson v. Campbell, 78 F. 910 (C. C. A. 2).

Therefore, we think that whichever construction of the original invention is taken, the specifications are valueless. It may be that, construed as we prefer, the original invention might stand, though we must confess that it has even then rather the appearance of a shot in the dark than a discovery based upon scientific inference. Certainly it is true that most commercial accelerators have been of less than the necessary constant, or have had an indeterminate constant. It can scarcely be an answer to say that all above have been proved to be accelerators, for the first draft of the original invention declares that all bases of every kind are accelerators. Possibly, this disparity in results can be accommodated if we include among commercial accelerators below the limit, ammonia compounds which are bases or quasi-bases. If so, it might be too much to say that no invention had ever been made. No more can we say that if the claims are not expanded, the specifications cannot be amended so as to state the invention whatever it was. But we may and do hold that, as it stands, the patent is invalid, and that until it is reissued, it does not support the claims.

This would indeed be enough to dispose of the case, were there no other difficulties in the path, but there are. We need not hold because some of the members of a class are in the prior art, that the class itself cannot be patented. The discovery of the class means that its determinants have been found, and the results attendant upon all its members so defined. It may not necessarily be a fatal objection to the novelty of that discovery that among them some have been already known, so long as they were not known as members of the class, that is, as possessing the class determinants. Ansonia Brass Co. v. Electric Supply Co., 144 U. S. 11, 12 S. Ct. 601, 36 L. Ed. 327, is not to the contrary; it merely holds that when an article has been in public use, no patent can be had upon it because of the discovery of one of its unknown qualities. It is of course always true that no members of the class already known may be monopolized, merely because they were later discovered to be within the class. The claim must exclude them, else it trenches on the public demesne; but if it does, there would seem to be left a genuine discovery which could be protected. At least we may assume arguendo that this is true.

In the case at bar we think that the claims should be read as excluding the patents and applications mentioned in the specifications. This includes the "methylene base" patents, among which the plaintiff insists that Spence's para-amino-dimethylaniline must be included. The argument is based upon the definition of "methylene bases" contained in the applications referred to in the patent in suit which later resulted in patents, 1,126,469 and 1,130,903. In the later of these patents that term is defined as including substances with open or closed carbon chain bases which are "saturated," and not "unsaturated such as anilin and pyridin." Strictly some, if not all, of the substances described in those patents are not methylene bases at all, for they contain only methyl radicals; but that point we pass, assuming with the plaintiff that the inventors might define their terms as they chose. However, if the words "saturated bases" refer to the...