Cotto-Waxo Chemical Co. v. Perolin Co. of America

HOOK, Circuit Judge. This was a suit by the Perolin Company of America against the Cotto-Waxo Chemical Company for infringement of patent to Berthold Singer, No. 833,423, dated October 16, 1906, for processes for making dust collecting or absorbing substances and the products of such processes. There was a decree for complainant for an injunction and an accounting, and the defendant appealed. The claims of the patent alleged to have been infringed are Nos. 1 to 4, 8 to 11, and 13 to 17. They are as follows: “1. The process of producing dust collecting or absorbing substances which consists in thoroughly drying absorbent material, adding thereto a relatively nonvolatile oily substance having a boiling point above 140° Fahrenheit and commingling the materials.” Claim 2 is the same as 1, with the addition of the words: “And subsequently permitting the mixture to stand until the said oily substance is practically wholly absorbed.” Claim 3 is similar to 1, with the addition that the oily substance specified is “in such proportion as to fill the pores of the absorbent material without leaving an appreciable quantity of the oily substance on the surface thereof.” “4. The process of producing dust collecting or absorbent substances which consists in thoroughly drying sawdust and adding thereto a relatively nonvolatile oily substance having a boiling point above 140° Fahrenheit in such proportions as to fill the pores thereof without leaving a sufficient quantity of the said oily substance upon the surface of the sawdust particles to stain or spot white paper upon which it is placed for a period of three minutes." [269] “8. The process of producing dust collecting or absorbing substances which consists in drying sawdust and adding thereto a relatively nonvolatile oily substance adapted to form an almost imperceptible permanent film thereon whereby said sawdust is given a permanent affinity for dust and like particles.” Claim 9 is the same as claim 8 as far as the words “adapted to” with the following words added: “Give the said sawdust particles a permanent affinity for dust and like particles, the proportions of the materials being such that an almost inappreciable film of the said oily substance remains upon the surface of this sawdust. the remainder of said oily substance being wholly absorbed.” “10. The process of producing dust collecting or absorbing substances which consists in drying sawdust and adding kerosene thereto in such proportions that the latter is almost wholly absorbed. “11. The process of producing dust collecting or absorbing substances which consists in drying sawdust and adding kerosene thereto in such proportions as to fill the pores thereof without leaving a sufficient quantity of the kerosene upon the surface of the sawdust particles to stain or spot white paper upon which it is placed for a period of three minutes.” The other five claims are for the product of the processes described. In order to appreciate correctly the character and scope of the patent, it is proper to consult the history of its progress through the Patent Office. The rules of law which attend its construction are well settled. A claim in a patent as allowed must be read and interpreted with reference to claims that have been rejected and to the prior state of the art, and cannot be so construed as to cover either what was rejected by the Patent Office or disclosed by prior devices. Hubbell v. United States, 179 U. S. 77, 21 Sup. Ct. 24, 45 L. Ed. 95 ; Computing Scale Co. v. Automatic Scale Co., 204 U. S. 609, 27 Sup. Ct. 307, 51 L. Ed. 645. The liberal construction allowed to pioneer inventions cannot be invoked in behalf of a patentee whose claim was limited to save it from anticipation by previous patents so as to broaden the claim and practically make it cover what was rejected by the Patent Office. Royer v. Coupe, 146 U. S. 524, 532, 13 Sup. Ct. 166, 36 L. Ed. 1073; Phoenix Castor Co. v. Spiegel, 133 U. S. 360, 368, 10 Sup. Ct. 409, 33 L. Ed. 663. Where a patentee on the rejection of his application inserts limitations and restrictions for the purpose of obtaining his patent, he cannot after he has obtained it claim that it shall be construed as it would have been construed if such' limitations and restrictions were not contained in it. Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 40, 14 Sup. Ct. 28, 37 L. Ed. 989; Rocmer v. Peddie, 132 U. S. 313, 10 Sup. Ct. 98, 33 L. Ed. 382. He cannot insist upon a construction of his patent which will include what he was expressly required to abandon and disavow as a condition of the grant. Electric Gas Co. v. Boston Electric Co., 139 U. S. 481, 500, 11 Sup. Ct. 586, 35 L. Ed. 250; Sutter v. Robinson, 119 U. S. 530, 7 Sup. Ct. 376, 30 L. Ed. 192. With this brief review of the law, let us see what was done in the Patent Office, and what the patentee abandoned in order to get his patent. The first application made by Singer broadly covered the process of adding an oily substance to a stock of dry, macerated, or comminuted and highly absorbent material, their thorough physical mixture, [270] and the removal of the surface oil from the particles, either by treatment or by absorption into the particles themselves. This was embodied in claims 1 and 2. The third claim specified sawdust as the base material and the addition of sand or its equivalent. There were also two claim's for the product. The examiner rejected the claims on reference to patents to Kennedy, No. 685,211, October 22, 1901; to Cheesbrough, No. 755,357, March 22, 1904, and to Sproessig, No. 800,506, September 26, 1905. We do not find these patents in the record. ' The process claims were canceled by the applicant and four new ones substituted in their places. The noteworthy changes from the canceled claims were in first d^ing or expelling the moisture from the absorbent material, sawdust for example, before the addition of the oily substance, and in the introduction of a granular material to remove the unabsorbed surface oil from the particles. The applicant claimed he was the first to treat sawdust by drying it before adding the oily substance. The examiner ruled that the claims covered nothing patentable and referred to the patents above cited and to that to Kistenmacher, No. 440,314, November 11, 1890. All the claims were rejected. The patent to Kistenmacher is for improvements in a process of manufacturing granulated material for use in cleaning carpets. They consist in first washing the sawdust; second, partly dryT ing it; and, third, causing it to take up a sufficient amount of volatile solvent such as benzine' or gasoline. The use of water and partial drying is said to effect an economy in the use of the solvent and to keep it at the surface of the sawdust particles where it performs its functions. Kistenmacher also said in his specifications: “I lmve discovered by long-continued experiment that, where the benzine is applied directly to dry sawdust, a much larger quantity of benzine will be required for a given volume of sawdust than would be required if the sawdust were first washed or boiled in water.” It appears, therefore, that the relative values of dry and partly dry absorbent material had been considered in the art before Singer entered the field. Singer made a slight change in one of his claims and reasserted them, saying his process and Kistenmacher’s were exact opposites. The examiner again rejected them, and called attention to the above quotation from Kistenmacher’s specifications. It was not invention by Singer to adopt what Kistenmacher rejected on grounds of economy. Singer canceled his claims then amounting to seven and proposed nine new ones, the first seven being for the process. Claim 1 was: “The process of producing dust collecting or absorbing substances which consists in thoroughly eliminating moisture from absorbent material, adding an oily substance thereto and thoroughly commingling the materials.” The other process claims were variations of the above similar to those in the prior applications excepting that in three of them the approximate proportions of the materials were stated as being 75 per cent, of sawdust and 25 per cent, of oily substance. The new claims were supported by affidavits concerning the prior art and experiments with products under other patents. The examiner replied that the Patent Office had twice called the attention of the [271] applicant to the Kistenmaclier patent, and that his mention of the drying of the sawdust should be regarded as a publication. Singer then claimed his process was distinguishable, in that lie specified an oily substance -while Kistenmaclier used benzine which was not of that character. Singer also added three more claims. The examiner ruled that benzine was generally regarded as an oil, and rejected all the claims. Singer accepted the ruling and amended his application by inserting twelve new process claims and two for the product described, which after some adverse rulings were changed and increased to five. The patent was then allowed. It is important to notice how Singer narrowed liis latest claims to comply with the rulings of the Patent Office. He had been denied a broad claim for a dust-collecting material; also for the use broadly of oils or oily substances because the volatile oils of Kistenmaclier were included therein. It had been ruled that it was not novel to use sawdust nor to dry the sawdust or other absorbent, nor to use a volatile oil such as benzine or gasoline. So in seven of his last process claims Singer specified “a relatively nonvolatile oily substance having a boiling point above 110° F.,” in two he specified “a relatively nonvolatile oily substance" and in the remaining three “kerosene.” In the end he got his patent, but only by adopting as an element an oil or oily substance of a relatively nonvolatile character, and he so escaped the Kistenmaclier patent. There are several British patents on dust-collecting processes and substances which do not appear to have been before the Patent Office, and which clearly show not only that Singer’s supposed distinguishing feature was old, but also that there was nothing new in the claims which had been rejected. The patent to Rosenfeld, No. 21,471, October 1, 1901, is for an improved dust-absorbent material for use in brushing floors and the like. It specifically mentions vulcati oil, and ¡generally the admixture of oils or fats of any kind or oily or fatty-substances with various kinds of absorbent materials, sawdust among them, in varying proportions. The patent to Fischer, No. 6,72», April 21, 190 4, also specifies the use of sawdust and “oil or fat.” Fischer speaks of the retention of the particles of dust by the oil coating. In the patent to Bauer, No. 16,679, June 22, 1905, .mineral oil, stearine, beeswax, and sawdust are combined with other materials for a dust-laying composition for use when floors, carpets, etc., are swept. Obviously the thing desired by every one who had to do with the art was to secure a dust absorbent for floors, carpeted or otherwise, which did not stain or soil the surface upon which the material was placed for sweeping. It was not invention to determine the relative quantity of oil which the particular base material would absorb. That would naturally differ with different absorbent materials, and it would not even be the same with different kinds of sawdust. Relatively nonvolatile oils or fatty substances were clearly and definitely mentioned in the prior patents above referred to. Sawdust is frequently mentioned in them as a base substance and oil or fat as the element to be combined therewith. We think that, if the patents mentioned had been called to the attention of the Patent Office, the patent in suit [272] would not have been issued even in the narrow form to which it was finally reduced.. The decree of the Circuit Court is reversed and the case is remanded, with direction to dismiss complainant’s bill.