Research Products Co. v. Tretolite Co.

• Decision Date: 07 September 1939
• Docket Number: No. 9058.,9058.
• Citation: 106 F.2d 530
• Parties: RESEARCH PRODUCTS CO., Limited, et al. v. TRETOLITE CO. et al.
• Court: U.S. Court of Appeals — Ninth Circuit

106 F.2d 530 (1939)

RESEARCH PRODUCTS CO., Limited, et al. v. TRETOLITE CO. et al.

No. 9058.

Circuit Court of Appeals, Ninth Circuit.

September 7, 1939.

Arthur C. Brown, of Kansas City, Mo., and Frank L. A. Graham, of Los Angeles, Cal., for appellants.

Leonard S. Lyon and Irwin L. Fuller, both of Los Angeles, Cal., Frank E. Barrows, of New York City, and Paul Bakewell, of St. Louis, Mo., for appellees.

Before WILBUR, HANEY, and STEPHENS, Circuit Judges.

WILBUR, Circuit Judge.

This is an appeal from an interlocutory decree holding valid patent No. 1,467,831 issued September 11, 1923, to Wm. S. Barnickel, and holding that the patent had been infringed by the appellants. The patent covers a process for treating petroleum emulsions for the purpose of recovering the oil contained in the emulsion. The appellees also alleged infringement of two other patents (Nos. 1,223,659, issued April 24, 1917, to Wm. S. Barnickel, and 1,596,589 issued August 17, 1926, to Dr. Groote), but the charge was withdrawn as to those two patents, and the sole issues on appeal are as to the validity and infringement of the first named patent (1,467,831). The problem claimed to have been solved by the process patented is that of freeing the oil imprisoned, within or outside, the small globules of oil and water making up the emulsion which comes from the oil well in that form. The emulsion is of no practical use as a fuel, and was a waste product until some means was developed for breaking the emulsion and thus setting free the oil imprisoned therein. Two other means had been employed for that purpose; the use of electric current, and of centrifugal force. The patentee conceived the idea of using chemicals to produce the desired result. The patentee believed that it was the surface tension of the water in the globules of the emulsion that overcame the action of gravity, which would otherwise cause the lighter oil to rise and the heavier water to settle to the bottom of the tank or other container. The patentee believed that this surface tension was in large measure due to the impurities in the water, and that if these were chemically changed, the tension would so far lessen that with the application of heat, if necessary, or without it, the oil would be released from the emulsion.

The first patent issued to Barnickel (No. 1,223,659) was for the use of water softeners in the process, particularly soap, and this patent process resulted in saving a great deal of oil that would otherwise have been lost. The patent in suit, called the modified fatty acid patent, is based upon the use of similar or analogous chemicals, broadly covered by the commercial name of Turkey red oil. The use of this type of chemical was highly successful and it is estimated that this acid process had resulted in the recovery of over a billion barrels of crude oil, at a relatively small cost.

So great and immediate a success speaks strongly of invention, adding emphasis to the strong presumption of invention, raised by the issuance of the patent. The appellants claim that the patent is void because of indefiniteness, lack of invention, double patenting, abandonment by publication; prior public use and suppression of the invention before application for the patent.

Indefiniteness.

The claim of indefiniteness is not free from difficulty, and will be considered first. The difficulty is inherent in the problem of expressing the discovery of the patentee in a form sufficiently definite to teach his process to those familiar with the art, and sufficiently broad to cover the invention. There are a number of variations in the problem due to the different chemical and physical characteristics of the impurities in the water, and of the oil contained in the emulsion, requiring different treatment for different emulsions. The problem is thus stated in the patent: "Owing to the fact that emulsions of the character to which my process is applicable differ greatly in their composition as to the character of the oil and water contained in the emulsions, the kinds and amount of the salts dissolved therein and the nature and amount of the colloidal matter present in the emulsion, I have found that in some instances one derivative of a fatty acid is more efficient than others in breaking a particular emulsion and in other instances an entirely different derivative or homologue will be found to be more efficient and economical." Thus far it is clear that the patent is indefinite leaving it as it does to experimentation to determine the particular chemical of a class to be used in each particular instance. It is claimed by appellants that the patent comes under the condemnation stated by this court, in Metals Recovery Co. v. Anaconda Copper Mining Co., 9 Cir., 31 F. 2d 100, 103, based upon the discussion of the Supreme Court in the Incandescent Lamp case, Consolidated Electric Light Co. v. McKeesport Light Co., 159 U.S. 465, 16 S.Ct. 75, 40 L.Ed. 221, and Corona Cord Tire Co. v. Dovan Chemical Corporation, 276 U.S. 358, 48 S.Ct. 380, 72 L.Ed. 610.

The patent claim in that case (Metals Recovery Co. v. Anaconda Copper Mining Co., supra) described the added agent as a "substantially non-oleaginous organic mineral collecting agent" that is "substantially non-frothing" and again as a "reduced and easily oxidizable organic mineral" 31 F.2d 101, which is substantially non-frothing. The patent there involved claimed to be an improvement upon a well known and generally used flotation process for collecting and recovering small metal particles from ore by the addition to the usual frothy mixture of a chemical agent which, it was claimed, added to the collecting capacity of the froth. The indefiniteness condemned in that case was in the description of this added agent. In the case at bar we have a very different situation. The field of operations involved was virtually unoccupied save by the earlier patent issued to Barnickel, (No. 1,223,659, supra), and the patentee has described the agent to be applied, not by vague description of its general physical characteristics, but by elaborate description of its chemical characteristics, which we quote from the patent as follows: "Any substance derived from fatty acids and which retains the fundamental characteristics of the fatty acids has the property of breaking such emulsions more or less effectively. I have also discovered that when a fatty acid is modified by the action upon it of certain substituting chemicals or reagents capable of forming addition or substitution products and the resultant product or its ester or salt, which, for convenience, I will refer to as a `modified fatty acid,' is used to treat an emulsion of the character above referred to, the power of the treating agent to break the emulsion is greatly intensified."

Further, the patent states:

"One group of substances that I have found to be very efficient for treating such emulsions consists of practically all substitution and addition products of the fatty acids and mixtures of the same. Hence, for the sake of brevity, I have herein used the term `modified fatty acid' to mean a substance, which, in addition to being obtained by the action of a reagent on a fatty acid, also retains the fundamental characteristics of the fatty acids and bears a simple genetic relationship to the fatty acids, the intention being to include by this term all substitution and addition products of the fatty acids and mixtures of same, which possess most of the qualities or distinguishing characteristics of fatty acids, but not to include soaps of the kind mentioned in my U.S.Patent, 1,223,659. * * *

"While any substance derived from fatty acids and which retains the fundamental characteristics of the fatty acids, has the property of breaking such emulsions more or less effectively, the following derivatives of fatty acids are particularly well adapted for breaking these emulsions, namely, the esters, and sulfonates of fatty acids, the sulfo-aromatic compounds of fatty acids, sulfurized fatty acids, the salts and esters of such substances, and mixtures of two or more of the substances above mentioned. The most practical and satisfactory treating agents that I have thus far found, however, are the esters and aromatic compounds of sulfo-fatty acids, the sulfo-fatty acids and the salts of such substances."

The claims herein involved describe the chemical agent of the patent as follows: In claims, 1, 2, 4, 7, 8 "modified fatty acid as herein defined"; in claims 9 and 10, "a sulfo-fatty acid."

The question is as to whether or not these descriptions of the chemical agent to be used in the process are sufficiently clear and definite to be understood and applied by those engaged in the art of organic chemistry as applied to petroleum recovery. Bickell v. Smith-Hamburg-Scott Welding Co., 2 Cir., 53 F.2d 356; Helfrich v. Solo, 7 Cir., 59 F.2d 525; United States Industrial Chemical Co. v. Theroz Co., 4 Cir., 25 F.2d 387; Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 37 S.Ct. 82, 61 L.Ed. 286; Schumacher v. Buttonlath Mfg. Co., 9 Cir., 292 F. 522. This question is one of fact to be ascertained by the evidence of experts, Toledo Rex Spray Co. v. California Spray Co., 6 Cir., 268 F. 201, 204, and a finding of fact on the matter by the special master, concurred in by the trial judge on exceptions thereto, is entitled to great weight and is only to be disturbed if clearly wrong. Waxham v. Smith, 9 Cir., 70 F.2d 457, Anraku v. General Electric Co., 9 Cir., 80 F.2d 958, Stoody Co. v. Mills Alloys, 9 Cir., 67 F.2d 807, Antonsen v. Hedrick, 9 Cir., 89 F.2d 149. Both the special master and the trial judge held that the claims of the patent clearly covered sulfo-fatty acids; that such acids were well known in the art, and usually known commercially as Turkey red oil; that the patent was clearly valid as to such acids and that some of the appellants were using such Turkey red oil in the patented process and others...