1. Discovery that a change of ingredients in a process speeds
the result entitles the inventor to any other advantages flowing
from the substitution. P.
276 U. S.
369.
2. The fact that a party was the first to discover and obtain a
valid patent for a process of producing a substance
held
irrelevant to the question whether he was the first discoverer of
its utility as an ingredient in another process. P.
276 U. S.
370.
3. Under Rev.Stats. § 4886, a person is not to be denied a
patent because of a publication printed after his discovery and not
more than two years before his application. P.
276 U. S.
372.
4. Invention of a process for vulcanizing rubber, and its
reduction to practice, may be established by proof of actual tests
in which test
Page 276 U. S. 359
slabs of rubber, properly vulcanized, were made. Production of
rubber goods for use or sale was not indispensable. Pp.
276 U. S. 373,
276 U. S.
383.
5. Reckless overstatements of the extent of earlier reduction to
practice by the applicant, made in affidavits filed in a patent
proceeding to meet a reference of prior publication,
held
not destructive of the presumption of validity accompanying the
patent where the sufficiency of the affidavits in other respects
rendered such statements superfluous. P.
276 U. S.
374.
6. Where a patentee met a reference in the patent proceeding
merely by evidence of his own priority of discovery, his failure
then to attack its sufficiency in other respects did not subject
him to the burden of proving it insufficient in a suit to enjoin
infringement of the patent. P.
276 U. S.
374.
7. The findings of a trial court which heard the witnesses are
not conclusive here when contrary to the findings of the circuit
court of appeals made in the same case, and of the trial court in
another case, upon the same evidence. P.
276 U. S.
375.
8. Priority of discovery may be proved by one witness, not
financially interested, in connection with other circumstances. P.
276 U. S.
382.
9. One who first discovered and proved the utility of an
improvement in a process cannot be said to have abandoned his
invention, as against a subsequent discoverer or patentee, because
he did not use the discovery commercially or apply for a patent. P.
276 U. S.
384.
10. A claim to the exclusive use of a large group of related
chemical compounds, unsupported by proof that all have a common
quality rendering each useful in the process patented, is too
broad. P.
276 U. S.
385.
11. Patent No. 1,411,231, issued March 28, 1922, to Weiss for a
process of vulcanizing rubber by combining with the rubber
compound, diphenylguanidine, or "a disubstituted guanidine," and
for the vulcanized product,
held invalid. P.
276 U. S.
385.
16 F.2d 419 reversed.
Certiorari, 273 U.S. 692, to a decree of the circuit court of
appeals which reversed a decree of the district court, 10 F.2d 298,
dismissing a bill to enjoin infringement of a patent.
See also
Dovan Chemical Corp'n v. Nat'l Aniline Co., 292 F. 555.
Page 276 U. S. 364
MR. CHIEF JUSTICE TAFT delivered the opinion of the Court.
This is a bill by the Dovan Chemical Corporation against the
Corona Cord Tire Company to enjoin infringement of a patent issued
to Morris L. Weiss, assignor of the Dovan Chemical Corporation. The
district court
Page 276 U. S. 365
for the Western District of Pennsylvania dismissed the bill for
lack of validity of the patent. 10 F.2d 598. The dismissal was
reversed, and the patent and the infringement charged were both
sustained by the Circuit Court of Appeals for the Third Circuit. 16
F.2d 419. A writ of certiorari was granted, 273 U.S. 692, because
in the prior case of
Dovan Chemical Corp. v. National Aniline
& Chemical Company, 292 F. 555, the Second Circuit Court
of Appeals had reversed the decree of the District Court for the
Southern District of New York (not reported) in favor of the Dovan
Corporation, and had held that the patent was invalid on the ground
that Weiss was not the first discoverer.
The patent in suit relates to the vulcanization of rubber.
Vulcanizing consists in mixing a small amount of sulphur with
rubber and subjecting the mixture to heat for a period of time,
during which a chemical combination of the rubber and sulphur takes
place and commercial rubber is made. The patentee recites that the
object of his invention is to
"improve rubber compounds so that the finished product shall be
of superior quality and so that the time required for vulcanization
shall be greatly reduced over that ordinarily required for such a
purpose. It is known that, when certain organic substances are
added to the rubber mix during the compounding, a catalytic or
similar action is produced which causes the rubber or similar gum
to unite or react more rapidly and thoroughly with sulphur or other
vulcanizing agents."
The patentee continues: "I have discovered that disubstituted
guanidines, particularly diphenylguanidine, is particularly
effective for this purpose." (This substance is indicated by the
formula given in the patent.)
He says further:
"I am aware that triphenylguanidine has been suggested, and
probably used to some extent, as an accelerator
Page 276 U. S. 366
in the vulcanization of rubber, but the use of diphenylguanidine
for that purpose appears to have been unknown prior to my
researches on this substance."
"I have found that diphenylguanidine is much more powerful and
efficacious as an accelerator in vulcanization than
triphenylguanidine. For example, in the vulcanization of hard
rubber articles, the use of diphenylguanidine not only hastens the
vulcanizing action, but results in a final product much superior in
texture, strength, durability, and aging qualities over that when
the triphenylguanidine is used."
The patentee makes a short reference to a formula by which he
produces the rubber mix, in which he says:
"The rubber may be compounded in the following proportions: 50
parts by weight of new rubber, 45.5 parts by weight of zinc oxide,
3.5 parts by weight of sulphur, 1 part by weight of
diphenylguanidine. These are mixed together in any suitable way,
such as by milling, and then vulcanized or cured in the usual molds
or otherwise under heat corresponding to a steam pressure of about
40 lbs. per square inch. This vulcanizing temperature should be
continued until the compound is suitably vulcanized, which requires
from 10 to 20 minutes, depending upon the shape and size of the
articles being vulcanized."
The patent contains twelve claims. Those mainly relied on are:
the fourth, for "the process of treating rubber or similar
materials which comprises combining with the rubber compound
diphenylguanidine;" the eighth, for "the process of treating rubber
or similar materials, which comprises combining with the rubber
compound a vulcanizing agent and diphenylguanidine;" and the
twelfth, for "a vulcanized compound of rubber or similar material
combined with a vulcanizing agent and diphenylguanidine."
Vulcanizing is old and well known. Its present high state of
development represents an evolution of about 80
Page 276 U. S. 367
years. Practically all rubber must be vulcanized for commercial
use. The amount of sulphur in the mixture is comparatively small,
as, for instance, 4 to 10 parts of sulphur to 100 parts of rubber.
The remainder of the mixture may be all rubber or it may be partly
rubber and partly other ingredients such as fillers and pigments,
the other ingredient used most widely being zinc oxide. In the
manufacture of automobile tires, a considerable proportion of zinc
oxide is generally used. A very old and well known proportion has
been 50 parts of rubber, 45 parts of zinc oxide and 5 parts of
sulphur, and is the one shown in the specification of the patent.
The mixture is "cured" by subjecting it to heat to make the
vulcanized rubber of commerce. Platen molds have to be provided for
giving the desired form to the rubber vulcanized. Steam has to be
supplied for heating the molds and the rubber mix during the
"cure." A "cure" is the successful completion of the chemical union
or vulcanization of the rubber with the sulphur. The fact of a
successful "cure" for practical purposes is established by a simple
and short method called the thumb and tooth test. By this test,
rubber chemists settle the fact and determine by the resulting
product the satisfactory quality of the stock or the mix for
vulcanization, and they become expert at it. If by this test the
product is not well united chemically, it is said to be
"undercured" or "overcured," and then the operator changes the
ingredients or the time of the process. When it is important to
determine with greater exactness the tensile strength and degree of
elasticity or other qualities of the product, a special machine
measure or test is used, but the thumb and tooth test is the
frequent way of knowing a cure, and it is a satisfactory one for
everyday use in business.
It has been known that a "cure" can be hastened by mixing with
the ingredients a small quantity of what
Page 276 U. S. 368
is called an accelerator or vitalizer. Inorganic substances like
lime or litharge were originally employed as such, but it was
subsequently found that certain organic substances were more
powerful, or more "active," as the term is, and they came into more
general use. The heat to which the rubber mixed with sulphur is
subjected has a deleterious effect upon the substance of the raw
rubber, and the longer the heating, the greater the injury. An
accelerator, as it lessens the time of the cure, not only increases
the output of the equipment used but reduces the danger of
deterioration of the product. An accelerator thus improves the
elasticity, tensile strength, and other desirable commercial
qualities of the finished product. It is not fully understood what
the vitalizing or catalytic action of the accelerator is, but its
existence and its results have long been known.
The patentee, in his specifications, speaks of
triphenylguanidine, and compares its operation as an accelerator
with that guanidine, the utility of which as an accelerator he
claims to have discovered, called diphenylguanidine. Guanidines are
a group of organic substances which have become prominent and
important in this quest for useful accelerators. The
monophenylguanidine and the diphenylguanidine and the
triphenylguanidine are closely related chemically. Their long
names, used to indicate the variation in the component elements,
have been shortened so that it is usual to refer to
diphenylguanidine by letters as "D.P.G." and the triphenylguanidine
as "T.P.G."
So closely do the chemical compositions of these two resemble
each other that the petitioner contends that the patent is invalid
because the utility of D.P.G. as an accelerator was plainly
indicated by general chemical knowledge, and did not involve
patentable discovery after T.P.G. had proven to be a good one for
this purpose. But we cannot agree with this view. The catalytic
action
Page 276 U. S. 369
of an accelerator cannot be forecast by its chemical
composition, for such action is not understood, and is not known
except by actual test.
The respondent attempts to show that the resulting improvement
in the rubber product by the use of diphenylguanidine was something
different from that in the use of other accelerators. The good
results of the use of diphenylguanidine are chiefly or wholly due
to its greater activity and the lessened time of the cure. The
expert evidence seems to show that T.P.G. as an accelerator
develops the same desirable qualities, set forth on behalf of
respondent, in the vulcanized rubber as does D.P.G., except that
the cure of the latter is more rapid with its to be expected
advantages. Moreover, claims of peculiar usefulness of D.P.G. in
other than its "activity" and speed as an accelerator, even if
proven, could not in any degree affect the issue in this case. If
employment of D.P.G. as a useful accelerator was a discovery by
Weiss, prior to any one else, Weiss, or his assignee, is entitled
to all the advantages that flow from that increased activity or
from any other quality in its use as such.
Roberts v.
Ryer, 91 U. S. 150,
91 U. S. 157;
Stow v. Chicago, 104 U. S. 547,
104 U. S. 550;
Lovell Mfg. Co. v. Cary, 147 U. S. 623,
147 U. S.
634.
It does not, on the other hand, give Weiss any more right to
appropriate D.P.G. as an accelerator because he may have elaborated
in his specifications other advantages from its use than if he had
not mentioned them. Nor, on the other hand, does it minimize or
affect the priority of completed discovery by some one else before
Weiss that the prior discoverer may not have perceived and stated
all the advantages of an earlier use of D.P.G. as an
accelerator.
Judge Hough, of the Second Circuit, truly said, therefore, that
this patent meant, condensed in one sentence: "I claim the use of
D.P.G. as an accelerator, because I
Page 276 U. S. 370
was the first person who observed its efficacy for that
purpose."
Similarly, the examiner in the Patent Office who allowed the
patent said that Weiss' application was "no more than a broad
disclosure of the use of [D.P.G.] without disclosing any details
other than those usually employed with accelerators of this
class."
The patent in suit was applied for November 12, 1921, and was
granted March 28, 1922. Weiss had referred in the specifications of
this patent to another patent of his which was applied for July 2,
1921, and granted July 11, 1922. This latter patent was for a
process for making D.P.G. in large or commercial quantities. In the
application for that patent, the patentee pointed out that, before
his process was discovered, D.P.G. could not be made except in
small quantities for chemical research because the cost was
prohibitive. The validity of the Weiss patent for a process in
making diphenylguanidine is not attacked. The new patented process,
by reason of the lessened cost ,has resulted in the very great use
of D.P.G. for commercial purposes, and has been very profitable.
But the purpose of securing the patent in suit and maintaining its
validity is more ambitious. It is not to protect and preserve the
new process already being safely enjoyed, but it is to prevent the
use of D.P.G. as an accelerator, however made by any process that
may be subsequently discovered. It is to enlarge a monopoly of
D.P.G. as an accelerator, and is thus in effect to discourage
effort to find other and cheaper means of making it. What we have
to decide here is not the priority of discovery of the cheap
process of making the accelerator D.P.G., which it is conceded
Weiss invented, but whether he was the first person to discover the
efficacy of D.P.G. as an accelerator. whether made by any process,
cheap or costly.
Page 276 U. S. 371
We feel it necessary to call attention to a lack of relevancy of
Weiss' successful process patent in the case before us because the
majority opinion in the circuit court of appeals seems to us
erroneously to have confused the credit due to Weiss for the
process patent, already conceded, with his right to his present
claim of entire monopoly of the use of D.P.G. as an
accelerator.
The issues and the evidence in this case cannot be considered
and discussed without reference to a paper read by Dr. George
Kratz, a rubber chemist at the Philadelphia meeting of the American
Chemical Society between the 2d and the 6th of September, 1919. It
was entitled "The Action of Certain organic Accelerators in the
Vulcanization of Rubber," and was a review of the comparative
excellence of a number of well known and used accelerators, as well
as that of D.P.G. with T.P.G., in which he found D.P.G. to be very
much more active than T.P.G. Then, under an experimental part, he
described the kinds of rubber used, the proportions of rubber and
sulphur in the mixture, and the manner in which the accelerator was
incorporated and the method of vulcanization. He said:
"The rubber used was good quality, first latex, pale crepe, and
the same lot was employed in all mixtures. All mixtures were made
under standard conditions; the average time of each batch on the
mill was 17.5 min. The same proportion of rubber and sulphur --
92.5 parts rubber, and 7:5 parts sulphur -- was employed in each
instance, but the amount of accelerator was varied according to the
conditions of the experiment."
"All the accelerators soluble in alcohol were dissolved in the
smallest quantity of this liquid and introduced into the rubber in
solution. Those not soluble -- and this applied to the
anhydroformaldehyde bodies only -- were
Page 276 U. S. 372
ground to 100 mesh and added to the rubber with the sulphur.
After mixing, the mixtures were allowed a recovery period of 24
hrs. before they were vulcanized. Vulcanization was carried on in a
platen press of the usual type."
TABLE 1 -- RELATIVE ACTIVITIES -- THIOUREA SERIES
Parts Required to Equal One Part Aniline
Aniline . . . . . . . . . . . . . . 1.000
Urea. . . . . . . . . . . . . . . . O.250
Thiourea. . . . . . . . . . . . . . O.300
Monophenylthiourea. . . . . . . . . O.450
Diphenylthiourea. . . . . . . . . . O.850
Monophenylguanidine (a) . . . . . . O.075
Diphenylguanidine (Sym.). . . . . . O.075
Triphenylguanidine. . . . . . . . . O.500
The activities of the various substances were compared in the
mixture previously mentioned -- 92.5 parts of rubber and 7.5 parts
of sulphur -- taking as a standard the effect obtained with one
part of aniline, vulcanized for 90 min. at 148� C. The amounts of
various substances in the urea series required to effect the same
degree of vulcanization as obtained with one part of aniline are
shown in Table 1.
The paper thus shows that the activity and superiority of D.P.G.
as an accelerator over T.P.G. is approximately as 7 is to 1.
In the answer to the bill in this case, the Kratz paper was set
up as a defense, but, although read before September 6, 1919, it
was not published until April, 1920.
Under § 4886, Revised Statutes, a person who claims to have
invented any patentable improvement is not to be denied a patent
because of any printed publication subsequent to his discovery,
unless there was publication or public use or sale more than two
years prior to his application. Kratz's article was not printed
until less
Page 276 U. S. 373
than two years before Weiss' application for a patent in
November, 1921, and therefore the paper could not be used as a
basis for defense against his patent if his discovery was earlier
than the publication. It nevertheless plays a very important part
in understanding the facts in this case.
The main and only issue here is divided, by reason of the
evidence and the lines of argument pursued, into two parts. The
first is the effect of that part of it devoted to Weiss' discovery
and his reduction to practice. The second is that part devoted to
Kratz's discovery and his reduction to practice.
First. It is contended by the petitioner that the file
wrapper and evidence show that the patent was secured by false
evidence, and is not entitled to the presumption of validity which
ordinarily accompanies the grant. The examiner in the Patent Office
three times rejected the Weiss application, the third time by a
reference to the Kratz paper. The hearing on that reference was
ex parte. The third rejection was followed by acquiescence
by the examiner because of two affidavits, one by Weiss and one by
his fellow chemist, Daniels, who claimed to have been with him at
the time in the laboratory of the Republic Rubber Company of
Youngstown. In these final affidavits, Weiss had said that D.P.G.
was produced and actually used "in the vulcanization of rubber
goods" during the early part of the year 1919, and Daniels
said:
"These tests were also carried out in the compounding laboratory
for the various departments of the Republic Rubber Company at
Youngstown, Ohio, and the accelerator proved to be highly efficient
in the actual vulcanization of rubber goods, such as hose, tires,
belts, valves and other mechanical goods."
It now appears without contradiction that the only rubber Weiss
made during the early part of the year 1919 from D.P.G. was test
slabs of rubber in which D.P.G. was the accelerator, and
Page 276 U. S. 374
that in fact neither he nor anybody in the rubber company had
vulcanized rubber goods, as Daniels described them, before the
Kratz publication. But we do not think this would invalidate the
patent, for the reason that the actual fact was that these test
slabs of rubber with D.P.G., if proven to be properly vulcanized,
as the evidence seems to show, were a demonstration of the utility
of D.P.G. as an accelerator and were a completed and demonstrated
discovery constituting reduction to practice. Production of rubber
goods for use or sale was not indispensable to the granting of the
patent. Hence, the affidavits, though perhaps reckless, were not
the basis for it, or essentially material to its issue. The
reasonable presumption of validity furnished by the grant of the
patent therefore would not seem to be destroyed.
Then it is claimed that the reference to the Kratz paper, which
was not attacked by the applicant for its insufficiency as a
reference under § 4886 of the Revised Statutes, should be treated
as equivalent to a prior patent, the priority of which could only
be overcome by evidence eliminating all reasonable doubt.
The
Barbed Wire Patent, 143 U. S. 275;
Deering v. Winona Harvester Works, 155 U.
S. 286,
155 U. S. 300;
Clark Thread Co. v. Willimantic Linen Company,
140 U. S. 481,
140 U. S. 489.
But the Kratz paper was not a prior patent, and, while it may be
that other circumstances, such as a reference to a publication made
before the application for the patent, may have the effect to
require the same convincing proof of earlier discovery to avoid its
effect (
Westinghouse, etc. Co. v. Catskill, etc., Co., 121
F. 831, 834;
New England Motor Co. v. Sturtevant Co., 150
F. 131, 137;
Wendell v. American Laundry Machinery Co.,
248 F. 698, 700), we do not think that the mere failure to invite
the attention of the examiner to the defect of the reference under
§ 4886, Revised Statutes, calls for the strict rule of proof
Page 276 U. S. 375
to avoid the reference. This conclusion keeps the burden of
proof on the defendant in attacking the patent on the ground of a
prior use.
It is also claimed that, because the trial court in this cause
found, after hearing the witnesses, the weight to be with the
petitioner and against Weiss, assignor of respondent, his
conclusions of fact, except for manifest error, are to be treated
as unassailable.
Adamson v. Gilliland, 242 U.
S. 350,
242 U. S. 353;
Davis v. Schwartz, 155 U. S. 631;
Kimberly v. Arms, 129 U. S. 512;
Tilghman v. Proctor, 125 U. S. 136,
125 U. S. 149,
and
Mason v. United States, 260 U.
S. 545,
260 U. S. 556.
We do not think that this rule applies in the case before, us at
least to its full extent, first, for the reason that the circuit
court of appeals, having considered all the evidence upon which the
trial judge reached his conclusion, declined to approve of his
findings, and second because, in the ,National Aniline &
Chemical Co., case, which is in conflict with the case here, the
trial judge reached a different conclusion on the same issue and
the same evidence which we have here.
Thomson Spot Welder Co.
v. Ford Motor Co., 265 U. S. 445,
265 U. S. 447.
We think therefore that the respondent is entitled under these
conditions to retain a presumption of validity for his patent in
the consideration of the case before us. This brings us then to the
evidence which Weiss adduces in support of his first discovery of
D.P.G. as an accelerator.
Morris L. Weiss received a degree in chemistry from the Cooper
Union of New York City late in 1917, and attended a course of
chemical study in the Polytechnic of Brooklyn. He entered the
employ of the Republic Rubber Company of Youngstown, Ohio, in
October, 1917. That company manufactured rubber articles largely
from shoddy or reclaimed rubber. It was seeking to find an improved
accelerator in T.P.G., and was building a plant
Page 276 U. S. 376
for its commercial use. Weiss, in addition to his usual work in
T.P.G., became interested in 1918 and 1919 in the possibilities of
the use of D.P.G. as an accelerator, which he had inquired into
because it was mentioned with T.P.G. among the guanidines in a
textbook of chemistry which he had read. He was required by the
rules of the company to enter his experiments in a book called the
"X Book," kept for the purpose. During the term of his employment,
prior to September 6, 1919 (the date of Kratz's reading his paper),
this X Book showed three dated and recorded experiments with D.P.G.
as an accelerator. Two of these were with a shoddy mixture, and
there is doubt whether they showed the marked superiority of D.P.G.
over T.P.G., as Weiss in another case seems to have admitted. But
there was another test with pure rubber recorded in the X Book of
successful vulcanization by D.P.G., the date of which is in
dispute. It was as follows:
Number X 2034
Made for accelerator tests --
E
50
D.P.G. 1
Sulphur 4
Zinc 43
M.G.O. 2
---
100
Cure 20/30
Stretch 14 1/2
Strength 3000
Set 1/2
Date 2.10.19
As it appears now, the date is February 10, 1919. Weiss does not
deny that first figure of the date has been changed, but says that
it was probably changed because it
Page 276 U. S. 377
was made originally by mistake as a "1," as on January 10, 1919,
when it ought to have been as a "2," as in February, and the change
was only to make it one month later. It is contended on the other
side, and it was testified by an expert on handwriting, and the
District Judge so held, that the change was made from 9-10-19 to
2-10-19, which would carry the original and correct date of this
test to the later date of September 10, 1919, or three or four days
later than the reading of the paper by Dr. Kratz to the American
Chemical Society, and after Weiss had been informed by his
colleague Daniels of Kratz's blackboard statement of the results of
his discoveries. Weiss says he made other tests between the first
successful one and the reading of the Kratz paper, but they are not
recorded under specific dates, nor are they in regular order. There
is a record of many tests after the Kratz paper, but none others
are shown to be before it except by Weiss' and Daniels' unassisted
memory.
Then it is said he did not claim discovery until his application
for this patent in November, 1921, while, in an application for
employment as a chemist at another rubber company in March, 1920,
he did claim credit for the new process in commercially making
D.P.G., but he attributed its importance to the revelation of the
Kratz paper. His explanation is that he then supposed that
accelerators were not patentable, and he was absorbed in cheapening
the production of D.P.G.
Other circumstances are detailed at length in the brief of
counsel to show that Weiss' real knowledge of the use of D.P.G. as
an accelerator was prompted by Kratz's paper, and could not be
independent discovery on his part before his hearing of and reading
it. But, after full consideration of all the doubt-giving
circumstances, we do not think that the attack on Weiss' proof of
February 10, 1919, as the date when he first discovered by a
completed
Page 276 U. S. 378
experiment the successful use of D.P.G. as an accelerator in
making rubber, has overcome the evidence given to support it and
the presumption of its correctness from the patent itself.
Second. Kratz's discovery. -- Dr. Kratz had been
engaged in the chemistry of rubber and in its manufacture for more
than seven years. He read his paper on D.P.G. and other
accelerators in September, 1919. He had been employed as a chemist
with the Diamond and Goodrich Companies, and, subsequently, with
the Norwalk Tire & Rubber Company of Connecticut, for several
years, and after April, 1917, with the Falls Rubber Company, of
Cuyahoga Falls, near Akron, Ohio. He had directed his efforts to
the subject of vulcanization almost exclusively, and was intimately
familiar with the commercial practice therein. His first work with
accelerators was as research chemist in 1913. On April 1, 1914, he
went with the Norwalk Company in the capacity of chemist, and in
April, 1917, he became chief chemist of the Falls Rubber
Company.
In 1916, while with the Norwalk Company, Kratz prepared D.P.G.
and demonstrated its utility as a rubber accelerator by making test
slabs of vulcanized or cured rubber with its use. Every time that
he produced such a slab, he recorded his test in cards which he
left with the Norwalk Company and kept a duplicate of his own. By
these tests, he arrived at figures representing the degree of
superiority of D.P.G. over T.P.G. and other known accelerators, so
that he could determine exactly how much D.P.G. it would be
necessary to use to produce the same accelerating effect as would
be produced by a larger amount of T.P.G. or of other accelerators
in the same time. This work was known to, and was participated in,
by his associate in the Norwalk Company, his immediate superior,
and the chief chemist of the company, Dr. Russell,
Page 276 U. S. 379
who fully confirms Kratz's records and statement. This work was
finally recorded in a carefully prepared contemporaneous report
which Kratz left in the files of the Norwalk Company, and which is
now produced by Dr. Russell in evidence before us. When Kratz left
the Norwalk Company to go to the Falls Rubber Company, he took with
him this record for his use in his future work, so that there are
two records of the same thing. The report in 1916 was as
follows:
"XI/1/16 G.D.K."
"Relative Catalytic Effect of Compounds Related to Sulpho
Carbaninide"
"The following formula was used to try out the activity of
various substances more or less closely related to
sulpho-carbaninide:"
White para . . . . . . . . . 100
Zinc oxide . . . . . . . . . 100
Sulphur. . . . . . . . . . . 5
"The following effects were recorded and, in cases where an
acceleration was produced, the amounts required to give a cure in
one hour equal to the cure produced by 3% of S-Carb, were as
follows (in the first column):"
[As shown in
Chemical Society
Paper, Sept., 1919
Aniline . . . . . . . . 3.50% 3.5
Di pheny this urea. . . 3.0% 2.975
Mono phenyl this urea . 1.5% 1.575
Thio urea . . . . . . . 1.0% 1.050
Tri phenyl guanidine. . 1.75% 1.750
Di phenyl guanidine . . O.25% O.262
Urea. . . . . . . . . . 0.33% O.875]
These results were confirmed by Kratz at the Falls Rubber
Company in 1918 and 1919, and were reported
Page 276 U. S. 380
in his paper at the chemical meeting in September of 1919, as
shown in the second column above, multiplied by 3.5 in order to put
them on the same basis.
These values were determined by Kratz in some eight or nine
tests in 1916 with each of the substances named, for which test
slabs were made in each instance, and the series was extended until
the desired result was obtained. The first substance is aniline,
and the second is this (diphenylthiourea). These substances were
generally known and widely used as accelerators, and therefore were
used as standards of comparison. They show that Kratz's tests
taught him in 1916 that D.P.G. was seven times as strong and as
active as T.P.G. The report to the Norwalk Company also shows two
different formulas by which Kratz made his own D.P.G. in 1916.
In the fall of 1917, when Kratz was chief chemist of the Falls
Company, he received a special order for 1,000 inner tubes for
automobile tires. In filling 300 tubes of this order of 1,000
tubes, which were made under Kratz's personal supervision -- for he
had then become chief chemist of the Falls Company -- he used
D.P.G. as an accelerator.
A little later, in 1918 and 1919, Kratz conducted at the Falls
plant a series of tests with D.P.G. closely paralleling the series
of tests which he had made in 1916 at the Norwalk plant and
confirming those already reported as above. At Norwalk, he had used
mostly zinc oxide as part of the rubber mix, and he desired to
verify the results obtained in tests of the same accelerators in
other compounds of rubber with other than zinc oxide. All this was
part of the preparation of his paper on accelerators to be read
before the 1919 meeting of the American Chemical Society. The year
before, he had attended the 1918 meeting of the Society expecting
to hear the subject discussed, but nothing was said, and so he and
his assistant,
Page 276 U. S. 381
Flower, gathered their material for a paper at the next meeting.
That paper, as read, covered much more than the mere demonstration
of the utility of D.P.G. as an accelerator. It dealt with a number
of other accelerators also. The authenticity and reliability of Dr.
Kratz's testimony about them is not questioned in this record. It
is not too much to say that the report of Dr. Kratz's results made
a great impression upon the rubber chemists of the country.
The only lack of corroboration of Kratz, and the only challenge
to his testimony of fact in this case, is in reference to his
account of sending to a customer the 300 inner tubes for automobile
tires accelerated by D.P.G. He says that they were sent to the
purchaser, whose name he gives, and that they proved to be
satisfactory, as he knew by having tagged them and having received
approval of the whole lot by the purchaser. He says that this was a
special order; that he had at the time a small supply of D.P.G.
which he himself had made; that these 300 tubes exhausted his
supply, and that, in filling the remainder, another accelerator was
used. This sale and the use of D.P.G. as an accelerator took place
in August, 1917, as shown by the memoranda that Kratz produces. The
record of the shipment of the 1,000 tubes, the memorandum shipping
order by Kratz and the O.K. by the president of the Falls Company,
are introduced.
Kratz says he did not tell anyone of his use of D.P.G. in these
300 tubes. This is urged by respondent as a reason for discrediting
it. Were this an isolated instance not taken out of the history of
all of Kratz's relation to accelerators and to D.P.G., it might
reasonably give rise to such question. But the undoubted fact that
Kratz had demonstrated the utility of D.P.G. in his eight or nine
tests in 1916 at Norwalk and the corporation of Dr. Russell as to
his work there, and the memorandum which
Page 276 U. S. 382
he had taken with him of the tests and of the report to the
Falls Rubber Company, and, indeed, the reflexive corroboration of
his paper at Philadelphia, show undoubtedly that he knew the
excellence of D.P.G. as an accelerator, and tend to confirm his
account as to the 300-tube sale. It was not unnatural that, with a
small amount of D.P.G., he should try it in a special order of this
kind from which he might confirm the conclusion he had already
reached. The effort to disprove it was vague and inconclusive,
which, it is only fair to say, was to be expected five years after
the event.
Kratz was not seeking a patent. He inferred, with reason, that
D.P.G. would not make a successful business accelerator because of
its then cost. He is wholly disinterested pecuniarily in the result
of this case. The fact that he is the only witness is not fatal or
any reason for denying its weight in connection with other
circumstances.
Reed v. Cutter, 1 Story 590, Fed.Cas. No.
11,645, 20 Fed.Cas. 435;
Coffin v.
Ogden, 18 Wall. 120;
Egbert v. Lippmann,
104 U. S. 333.
But, even if we ignore this evidence of Kratz's actual use of
D.P.G. in these rubber inner tubes which were sold, what he did at
Norwalk, supported by the evidence of Dr. Russell, his chief, and
by the indubitable records that are not challenged, leaves no doubt
in our minds that he did discover in 1916 the strength of D.P.G. as
an accelerator as compared with the then known accelerators, and
that he then demonstrated it by a reduction of it to practice in
production of cured or vulcanized rubber.
This constitutes priority in this case. It was not followed by
commercial use thereafter because of the then cost of D.P.G. But
this patent is for the mere discovery and application in the making
of rubber of a particular accelerator. It was the fact that it
would work with great activity as an accelerator that was the
discovery, and
Page 276 U. S. 383
that was all, and the necessary reduction to use is shown by
instances making clear that it did so work, and was a completed
discovery.
Bedford v. Hunt, 1 Mason, 302, Fed.Cas. No.
1217, 3 Fed.Cas. 37;
Reed v. Cutter, supra; 51 U.
S. Wilder, 10 How. 477;
Coffin v. Ogden,
supra.
It is said that these tests of Kratz were mere abandoned
laboratory experiments. There was no abandonment in the sense that
Kratz had given up what he was seeking for in demonstrating a new
and effective accelerator in D.P.G. If he had been applying for a
patent for the discovery, he clearly could have maintained proof of
a reduction to practice. A process is reduced to practice when it
is successfully performed. A machine is reduced to practice when it
is assembled, adjusted, and used. A manufacture is reduced to
practice when it is completely manufactured. A composition of
matter is reduced to practice when it is completely composed.
Walker on Patents, § 141a;
Hunter v. Stikeman, 13 App.D.C.
214, 226;
Mason v. Hepburn, 13 App.D.C. 86, 92;
Lindemeyer v. Hoffman, 18 App.D.C. 1, 5;
Roe v.
Hanson, 19 App.D.C. 559, 564.
Nor were the tests of Kratz abandoned laboratory experiments. If
so, then the cure by Weiss tested in February, 1919, was or the
same character, and was not of itself a reduction to use. Weiss
showed his production of vulcanized rubber with D.P.G. in February,
1919, only by a so-called laboratory experiment. He demonstrated
the value of D.P.G. as an accelerator by exactly the same kind of
experiment as that which Kratz had used two years before. Weiss
founded his claim on the cured slab of rubber which had been
vulcanized with D.P.G., and this Kratz had done two years earlier
with slabs of the same kind and composition deposited in the same
way in a platen mold.
Page 276 U. S. 384
Kratz's method of testing his rubber slabs is criticized. As
already said, it is the method known as the thumb and tooth test.
This is not so exact a method in determining all the qualities that
a test machine would show in the product, but it is, as already
said, one very generally used for practical purposes in factories
in determining that the vulcanization or cure is complete. It was
the one by the use of which Kratz disclosed and demonstrated to the
rubber chemists of the country who listened to him in September,
1919. that D.P.G. was an accelerator, and how powerful it was as
compared with others, and thereby revolutionized knowledge in the
art, as the evidence abundantly shows and as Weiss himself asserted
in his application for employment in 1920. It is true that, in the
test by Weiss of February 10, 1919, the details of tensile strength
and time of cure and elasticity were disclosed by machine test with
more particularity, but the speed of the cure and the "activity" of
D.P.G. and the fact of the cure were clearly shown by the simpler
test.
It is a mistake to assume that reduction to use must necessarily
be a commercial use. If Kratz discovered and completed, as we are
convinced that he did, the first use of D.P.G. as an accelerator in
making vulcanized. rubber, he does not lose his right to use this
discovery when he chooses to do so for scientific purposes or
purposes of publication, or because he does not subsequently sell
the rubber thus vulcanized or use his discovery in trade, or does
not apply for a patent for it. It is not an abandoned experiment
because he confines his use of the rubber thus produced to his
laboratory or to his lecture room. It is doubtless true that Kratz,
by his course in respect to his discovery as to the use of D.P.G.,
has abandoned any claim as against the public for a patent, but
that is a very different thing from saying that it
Page 276 U. S. 385
was abandoned as against a subsequent discoverer or
patentee.
The conclusion we reach, then, is that, so far as this record
shows, the first discovery that D.P.G. was a useful accelerator of
the vulcanization of rubber was made by George Kratz, and not by
Weiss.
We come then to the question of the validity of Claims 1, 5, and
9 of the patent, which seek to appropriate to the patentee the
process of treating rubber by combining with the rubber compound "a
disubstituted guanidine." Now the class of disubstituted guanidines
includes not only D.P.G., but all other derivatives of guanidine in
which two of the hydrogen atoms of guanidine nucleus have been
substituted by other groups. The fact that disubstituted guanidines
have been use as accelerators appeared in an article published by
one Du Bosc, July 15, 1919, a fact which would defeat the claims
applied for November 24, 1921. Moreover, the experts show that
there are between 50 and 100 substances which answer this
description, of which there is quite a number that are not
accelerators at all. Weiss could certainly not claim the entire
group of such compounds. He makes no showing that there is any
general quality common to disubstituted guanidines which made them
all effective as accelerators. Claims for their exclusive use
cannot therefore be sustained. This is shown by the decision of
this Court in this
Incandescent Lamp Patent, 159 U.
S. 465, where the Court said at page
159 U. S.
475:
"If, as before observed, there were some general quality,
running through the whole fibrous and textile kingdom, which
distinguished it from every other, and gave it a peculiar fitness
for the particular purpose, the man who discovered such quality
might justly be entitled to a patent; but that is not the case
here."
Reversed.