The opinion of the court was delivered by: SMITH
This is a civil action under Section 4918 of the Revised Statutes, 35 U.S.C.A. § 66, and is before this Court for retrial, having been remanded by the Circuit Court of Appeals for further proceedings in conformity with its opinion, 3 Cir., 122 F.2d 875. The history of this litigation is adequately summarized in the said opinion, and we shall therefore recount only those events necessary to a proper understanding of the only remaining issue.
Lorenz, one of the plaintiffs, having conceived a process for the manufacture of soap and the recovery of glycerine, filed his application for a patent thereon on January 24, 1920. The application was finally rejected by the Patent Office on November 22, 1927. Lorenz failed to respond to this action within the period prescribed by the statute, R.S. Sec. 4894, 35 U.S.C.A. § 37, and on May 28, 1928, the said application was held to have been abandoned for want of prosecution.
Ittner, an employee of the defendant, having allegedly conceived a process for the manufacture of soap and the recovery of glycerine, filed his application for a patent thereon on February 19, 1931. The patent, No. 1,918,603, issued to the defendant, the assignee of Ittner, on July 18, 1933. Nineteen of the twenty-two claims of this patent embodied the disclosures of the Lorenz application.
Lorenz, upon learning of the Ittner patent, filed with the Commissioner of Patents a petition to revive his original application. This petition was denied. On November 8, 1934, more than a year after the issuance of the Ittner patent, Lorenz filed a new patent application in which he adopted as his claims the claims of the Ittner patent.
The only issue presented for adjudication at this time, under the mandate of the Circuit Court of Appeals, is the issue of patent validity. It is asserted by the defendant, but controverted by the plaintiffs, that the Lorenz patent is invalid because of (1) prior public use, (2) anticipation by prior patents, (3) prior invention by others, and (4) abandonment of the invention.
The process of the patent is therein defined in claim 3, which is typical, as follows: 'The process of making soap * * * and glycerine which consists in heating a mixture of low grade 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 under diminished pressure with a stream of water vapor.' (Emphasis by the Court.) Claims 1, 6, 7, 11 and 14, quoted in the annexed appendix, are representative of the other claims, which embody nothing more than obvious modifications of the process as thus defined.
The invention, as defined in the quoted claim and described in the specification,
embodies several elements, new and old, in a novel combination. The essence of the invention, however, resides not only in the particular combination of elements but also in the novel concept of effecting the saponification of the fat under reduced pressure and at high temperature (a temperature in excess of the melting point of the resulting anhydrous soap -- a temperature above 150 degrees centigrade but preferably within the range of 250 degrees and 270 degrees centigrade), in an atmosphere free of air. The other elements of the invention, steam agitation of the mixture and vacuum distillation of the glycerine, were concededly old and well known in the art, but their embodiment in a unitary process for the manufacture of soap and the recovery of glycerine appears to be new.
It should be observed that in the practice of the earlier processes in common use, the saponification of the fat was effected under atmospheric pressure and at moderate temperature (a temperature below the melting point of anhydrous soap), in the presence of air. These processes were carried out in open kettles, and, it was generally recognized that in the presence of air high temperatures caused paralysis, or decomposition of the soap and glycerine. There were inherent in the earlier processes other disadvantages which affected the economy of manufacture, but it seems unnecessary to discuss them.
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 ...