earlier processes and a departure from the prior art. The invention, however, was not patentable because of its public use 'more than two years prior to' the application for the patent.
The defenses here urged against the validity of the patent rest on Section 4886 of the Revised Statutes, 35 U.S.C.A. § 31, which, at the time the patent issued, provided: 'Any person who has invented or discovered any new and useful art, * * * or any new and useful improvements thereof, * * * not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, on more than two years prior to his application, and not in public use or on sale in this country for more than two years prior to his application, * * * may, * * * obtain a patent therefor.' We have herein emphasized only the apposite provisions.
It clearly appears from the undisputed testimony and the documentary evidence offered in support thereof that the process of the patent was in public use in the factory of the defendant from November 1931 until November 1932, approximately one year, but more than two years prior to the Lorenz application of November 8, 1934. This use was preceded by several months of experimentation, but commercial production of soap and glycerine by the process of the patent was accomplished in November of 1931 and continued thereafter until 1932, when the use of the process was either discontinued or abandoned.
This public use, although it did not enrich the art, was sufficient under the statute to preclude the issuance of a valid patent. Electric Battery Co. v. Shimadzu, 307 U.S. 5, 59 S. Ct. 675, 83 L. Ed. 1071; Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 8 S. Ct. 122, 31 L. Ed. 141; Egebert v. Lippmann, 104 U.S. 333, 26 L. Ed. 755; Paraffine Cos. v. McEverlast, Inc., 9 Cir., 84 F.2d 335; Grasselli Chemical Co. v. National Aniline & Chemical Co., 2 Cir., 26 F.2d 305. The patent is therefore void for this reason, if for no other.
The plaintiffs contend that the use of the invention by the defendant was experimental. This contention, however, is not supported by the evidence. The public use of the invention having been established by competent and persuasive proof, the burden was on the plaintiffs to prove that it was experimental and not 'public' within the meaning of the statute. Smith & Griggs Mfg. Co. v. Sprague, supra; Aerovox Corporation v. Polymet Mfg. Corporation, 2 Cir., 67 F.2d 860; Wendell v. American Laundry Machinery Co., 3 Cir., 248 F. 698, 699; Guy v. Stein, 7 Cir., 239 F. 729, 733; American Ballast Co. v. Davy Burnt Clay Ballast Co., 7 Cir., 220 F. 887, 889. The plaintiffs failed to sustain this burden.
It must be noted that the public use of the invention was subsequent to the application of January 24, 1920, but prior to the application of November 8, 1934. This fact, however, is not a bar to the statutory defense here raised. The former application having been abandoned, the latter application may not be regarded as a continuation. U.S. Rifle & Cartridge Co. v. Whitney Arms Co., 118 U.S. 22, 6 S. Ct. 950, 30 L. Ed. 53; Rosenberg v. Carr Fastner Co., 2 Cir., 51 F.2d 1014, certiorari denied 284 U.S. 652, 52 S. Ct. 32, 76 L. Ed. 553; Detroit Iron & Steel Co. v. Carey, 6 Cir., 236 F. 924; Lay v. Indianapolis Brush & Broom Mfg. Co., 7 Cir., 120 F. 831. The public use sufficient to invalidate the patent must be computed from the date of the application upon which the patent issued. Ibid.
The defendant rests the defense of anticipation on several foreign patents
and one domestic patent.
It is our opinion, after careful consideration of each of the cited references, that their respective disclosures are insufficient to sustain the defense. It is well established that a patent relied upon as an anticipation must be clear and unequivocal; it must disclose adequate directions for the practice of the invention and without resort to the patent in suit. Dewey & Almy Chemical Co. v. Mimex Co., 2 Cir., 124 F.2d 986; Williams Iron Works Co. v. Hughes Tool Co., 10 Cir., 109 F.2d 500; Southern Phosphate Corporation v. Phosphate Recovery Corporation, 3 Cir., 102 F.2d 801; American Safety Table Co. v. Singer Sewing Machine Co., 3 Cir., 95 F.2d 543; certiorari denied 305 U.S. 622, 59 S. Ct. 82, 83 L. Ed. 397; Worthington Mower Co. v. Gustin, 3 Cir., 80 F.2d 594, certiorari denied 297 U.S. 725, 56 S. Ct. 500, 80 L. Ed. 1008; Skelly Oil Co. v. Universal Oil Products Co., 3 Cir., 31 F.2d 427; Carson v. American Smelting & Refining Co., 9 Cir., 4 F.2d 463. None of the cited references meets this test
Prior Invention by Others
It is urged by the defendant that the invention of the patent in suit was disclosed in earlier patents, to wit, the Beck Patent No. 1,965,566; the Clayton Patent, No. 2,037,006; and the Schellmann Patent, No. 2,056,984. These patents do not disclose the invention of the patent in suit, although their respective inventions embody similar elements.
'A patent regularly issued, * * * , is presumed to be valid until the presumption has been overcome by convincing evidence of error. * * * Sometimes it is said that in a suit for infringement, when the defense is a prior invention, 'the burden of proof to make good this defense' is 'upon the party setting it up,' and 'every reasonable doubt should be resolved against him.' * * * Again it is said that 'the presumption of the validity of the patent is such that the defense of invention by another must be established by the clearest proof -- perhaps beyond reasonable doubt.' Austin Machinery Co. v. Buckeye Traction Ditcher Co., 6 Cir., 13 F.2d 697, 700.' Radio Corporation v. Radio Engineering Laboratories, 293 U.S. 1, 7, 55 S. Ct. 928, 931, 79 L. Ed. 163. The defendant has failed to sustain the burden of proof.
Abandonment of Invention
It clearly appears from the evidence that the plaintiff Lorenz, although he abandoned his original application, did not abandon his invention.
Claims 16 and 17 cover a 'process of separating glycerine from a mixture of soap and glycerine.' The process is described in claim 17 as follows: 'The process of separating glycerine from a mixture of soap and glycerine which consists in heating said mixture uniformly without local overheating to a temperature producing an appreciable vapor pressure of glycerine, thoroughly agitating said mixture, excluding air, intimately contacting said mixture with a stream of water vapor, and removing the resulting mixed vapor of water and glycerine and condensing the same while carrying on the whole at diminished pressure.' These claims are void because of anticipation by and lack of invention over the prior art.
The patent in suit, No. 2,084,446, is void for the reasons herein stated.
'1. The process of making soap and glycerine which consists in heating a mixture of fat and a base to a temperature in excess of the melting point of the resulting anhydrous soap and thoroughly agitating the mixture in an atmosphere free of air while intimately contacting the mixture with a stream of water vapor.'
'6. The process of completely saponifying fat and of separating the resulting glycerine in vapor form from the soap which comprises uniformly heating a mixture of fat and an alkaline medium to a temperature in excess of the melting point of the resulting anhydrous soap while contacting the said mixture with a stream of water vapor at low pressure, excluding air, and condensing the glycerine.'
'7. The process of completely saponifying fat and of separating the resulting glycerine in vapor form from the soap which comprises uniformly heating a mixture of fat and an alkaline medium to a temperature above 150 degrees C. while contacting the said mixture with a stream of water vapor at low pressure, excluding air, and condensing the glycerine.'
'11. The process for the manufacture of soap and glycerine consisting in the treatment of fats or fatty oils with an alkaline medium sufficient to effect saponification, the subjection of the composition thus formed to heat, without local overheating, to a temperature in excess of 200 degrees C., with the aid of agitation, with the exclusion of air, with a current of steam, in a closed vessel with the aid of diminished pressure for the volatilization and recovery of the glycerine produced, and for the volatilization and removal of volatile impurities.'
'14. The process of saponifying esters of fatty acids to produce soap and alcohol and of separating the resulting alcohol in vapor form from the soap, which comprises uniformly heating the mixture of esters of fatty acids and an alkaline medium to a temperature in excess of the melting point of the resulting anhydrous soap while contacting said mixture with a stream of water vapor at low pressure, excluding air, thoroughly agitating the whole, and condensing the alcohol so formed.'