Full opinion text
CHESNUT, District Judge. This case presents a suit for infringement of a patent in the usual form. And the defenses are also the usual ones of invalidity of the patent and non-infringement. Separate findings of fact and conclusions of law have been made in accordance with rule 52 of the new rules of civil procedure, 28 U.S.C.A. following section 723c; but it is hoped this opinion will be sufficiently self-explanatory. The trial of the case occupied three full weeks, the stenographic record is about 3,000 pages, and the exhibits number about 150. It is accordingly impossible in an opinion of any reasonable length to deal in detail with the whole of the testimony in the case. An effort will therefore be made to simplify the discussion as far as possible and to limit it to the controlling points of the case. I start with an analysis of the patent in suit which is of course the controlling document. The patent is United States Patent No. 2,215,539, issued to John W. Bodman on September 24, 1940 as a continuation of application filed April 8, 1933, which was largely amended or rewritten in 1936 and further largely amended shortly before the issuance of the patent in 1940. The patent has been assigned to Lever Brothers Company, a Maine corporation, of which Bod-man, the patentee, is director of the research department. Lever Brothers Company is the plaintiff in this case and the defendants are the Procter & Gamble Companies, the alleged infringers by virtue of the manufacture and sale of their “New Ivory Soap.” The plaintiff and the defendants are the largest manufacturers and sellers of soap in the United States. The patent relates to an improvement in the manufacture of soap. In general terms the specifications in the patent make a sharp distinction between “framed” soaps on the one hand, and “milled” soaps on the other. The advantages and disadvantages of each type of soap are pointed out, and it is said that the general purpose of the invention is to make a new kind of soap which will possess many of the advantages of both milled and framed soaps but without their disadvantages or defects. What is particularly stressed as a desirable objective is to make a soap having “the firmness and fine grain or texture of the best milled soaps”; and on the other hand to also possess the advantage of some framed soaps which are floating soaps. It is also said that floating framed soaps have a texture that is not as fine or close grained as that of high grade milled soaps and therefore are not considered as high grade toilet soaps. Another disadvantage of the framed soap is that it contains, when cut into bars for use, substantially the same amount of water as kettle soap, namely about 30%, which begins to evaporate immediately the soap is wrapped and sent to storage or put on the market; and on drying out the framed soaps therefore tend to warp and twist, the degree of deformation depending particularly on the size and shape of the bars or cakes. This disadvantage makes most framed soaps unsuitable for toilet purposes. But as framed soaps can be produced relatively cheaply they have heretofore supplied a demand which could not be met by other soaps. In contrast to the framed soaps, milled soaps have a solid compact or dense structure and are of fine texture, do not warp easily and better retain their incorporated perfumes. Their more compacted soap mass in the milling and plodding process by which they are made, also eliminates any air present in them and gives a non-floating soap. This non-floating feature is said to be a disadvantage of the milled soap, and the patentee states that “numerous efforts heretofore made to produce a floating milled soap have not been successful. Another disadvantage of milled soaps is pointed out in that they have a tendency toward disintegration due to the fact that milled soap is made up of a plurality of pellets compressed together forming an agglomeration rather than a continuous unitary mass; with the result that the segmentation in the mass tends to laminations or cleavage planes within the bar or cake of soap into which water enters along the crevices, laminations or planes, and results in internal swellings tending to force portions of the bar to rapid disintegration.” The patentee states that his process for the manufacture of a new kind of soap will produce a “new floating soap of novel structure and other characteristics more nearly resembling a milled soap than a framed soap, in that it may possess some characteristics similar to those of fine texture milled soaps, such as firmness, fine grain or texture, smooth ‘feel’ to the fingers, and ability to retain the more volatile perfumes, and does not warp on ageing or drying. Unlike milled soap it floats, and furthermore may be distinguished from milled soap in having a continuous body and the uniform dispersion of fine voids throughout the mass thus resembling the fresh smooth surface of meerschaum.” However, the patentee points out that his new type of soap is not made in the way that milled soaps are made, that is by compacting fragments of soap into a self-sustaining agglomerate mass while they are in a softened condition, the operation taking place at room temperature although the effect of the plodder in amalgamating the soap fragments slightly raises the temperature of the soap mass. In contrast to the latter method of making milled soap the patentee describes his new process as follows: “the soap stock, preferably in solidified form in fragments or pellets, is reduced to a heated plastic or semi-fluid condition while it is intensely agitated or worked in the presence of air and under pressure in a chamber closed to the atmosphere. There results an aerated unitary, continuous mass of soap, as distinguished from the compacted agglomerate mass characteristic of milled soap. The intense agitation or working of the soap stock in the enclosed chamber in the present process is performed on a plasticized or semi-fluid soap stock under working pressure.” The patentee says that the result of his new process is “to produce a very desirable improved soap which wears'longer in use than either framed or milled soap, and yet which lathers freely for any purposes for which it is used. The penetrated layer of the improved soap when left in contact with water is not as soft as the penetrated layer of milled or framed soap as heretofore produced. If left immersed in water it does not swell in the manner in which both framed and milled soaps swell when lying in water for any considerable time and when dried does not shrink. When immersed in water only a relatively thin surface layer of this new soap becomes slightly softened. This is because the water does not penetrate as far into this soap, for example, in a given period of time as it does into comparative framed and milled soaps, and because the new soap does not absorb as much water as framed and milled soaps. Furthermore, the new process imparts to the soap a texture which is continuous and unitary and "free from laminations or cleavage planes extending into the body of the soap such as are formed in milled soap by compression of the pellets or pencil-like bodies from which milled soap has heretofore been made and along which water can travel and cause swelling and disintegration. As a result of these improved qualities a soap can be produced by the new process which gives off only the requisite quantity of lather when rubbed between the hands or on the wash, and does not become noticeably or undesirably soft and slimy at its point of contact with the washstand or a flat receptacle. The patentee also says that the detergent or cleansing properties of the new soap are brought into use more economically and under better control than in the. former kinds of bar or cake soap. Again the patentee points out that the soaps for toilet or other domestic use must not be undesirably soft and must not absorb too great a proportion of water and become so soft or slimy as to be unusable. To such objections it has heretofore been necessary to use a relatively large proportion of high titre fatty acids in making up the soap process; but such high titre fatty acids (palmetic, stearic, lauric acids) must not be too great in proportion as otherwise the soap will be too hard and not sufficiently free lathering. But by means of the new process, which controls the hardness and the lathering qualities of the soap, it is possible to use a much larger proportion of the salts of low titre fatty acids and so produce “a free lathering but hard soap”; and it is added that by use of the new process the percentage of the fatty acids which give the oleate and linoleate salts may be increased to substantially 75% and yet the resultant soap will be harder and longer wearing than milled soap has heretofore produced.” (Italics supplied) It will thus be seen that the objective of the patent was to produce a new type of soap which would bring together in one bar the desirable quality of framed soap in that it would float; but avoid the disadvantage of framed soaps in the tendency of large bars to warp; and would likewise have the good quality of milled soap with respect to its hardness, firmness and fine texture; but would be better than milled soaps in, that (1) the new soap would float; (2) would lather sufficient for reasonable use; (3) but would be better than milled soaps in that it would (a) more strongly resist water penetration; (b) would not so readily “slime” in use; (c) would not have “specks” in the soap bar and (d) would not swell nor tend to disintegrate by virtue of water penetration into the fissures, crevices or laminations incident to the mere agglomeration of pellets of soap into the completed bar of milled soap. It is important to note however that the patent claims in this case do not specify the avoidance of these just enumerated disadvantages of the milled soaps. We next turn to the patent specifications to learn the teaching of the patent as to the process by which the new type of soap was to be obtained. Very briefly stated, the process is to take a soap stock containing not more than 25% of water and to reduce it by heat to a “plastic or semi-fluid condition while it is agitated or worked in the presence of air and under pressure in a chamber closed to the atmosphere”. It will be noted that here the specification does not state the temperature, or the amount of pressure required to reduce the soap mass to a plastic condition; but elsewhere in the specifications it is stated that the temperature range in the process is from about 160 degrees F. to about 225 degrees F., and the pressure may be anything from 25 to 100 pounds per square inch. However, the patentee did not wish to limit himself absolutely to the specified temperatures as he says they would be modified, dependent upon the detergent components used, that is, the chemical composition of the soap mass, and the moisture content and the presence of other ingredients. It will be noted, however, that nowhere in the patent are particular temperatures or pressures specified for any desired kind or quality of the final soap product, with respect to degrees of hardness or softness, or lather ability. The general description of the process which has been just above stated makes it necessary to study the specifications and evidence to ascertain the more precise meaning of some of the language used in describing the process, particularly what is meant by the term “plastic or semi-fluid”, and what is meant by “pressure” and by “a chamber closed to the atmosphere”. The specifications do not precisely indicate what degree of plasticity is intended by the phrase “plastic and semi-fluid condition”; but the evidence in the case shows that this means the condition of the soap which is characteristic of what is called “neat or kettle soap” which results from the whole boiling process. The specifications do indicate that the purpose of reducing the soap mass to a plastic or semi-fluid condition is that it will thus resist the pressure of the agitating means, but can be thoroughly worked and mixed. The specifications indicate that the purpose or function of the pressure is to compress the soap mass so that it will more stoutly resist agitation and consequent mixing, and thus cause it to be more thoroughly worked and mixed with air, so that it will become a continuous mass in which the air is uniformly distributed throughout the mass, and the resultant continuity of the mass will be different from milled soap which is an agglomeration of small particles of soap rather than a continuous mass. The specifications recommend 25 pounds per square inch of pressure and also indicate generally that there should be a variation of pressure correlated to temperature, the pressure being increased with a rise in temperature; and the temperature itself to be varied according to the degree of wear, water absorption or water penetration desired in the soap. The purpose of closing the chamber in which the mixing takes place, from the outside atmosphere, is to prevent the escape of the air entrapped in the soap mass while it is being worked under pressure. It is also pointed out that in framed floating soaps as previously produced, the entrapped air bubbles are relatively large and irregularly distributed throughout the body of the soap; but in distinction therefrom the result of the new process is that the entrapped air bubbles are relatively small and are uniformly distributed throughout the body of the soap; and are so small and evenly distributed that when the final bar is broken open these air cells are not noticeable to the unaided eye, and the texture of the soap is thus finer than that of the finest milled soap. The patentee does not limit himself to any particular kind of mechanical means for carrying out the process. He points out that the result can be accomplished by many different kinds of mechanical agitation as for example, by a shearing and infolding action, and by any suitable kneading or working of the soap mass. What is required is a thorough working or agitation so that all portions of the soap mass will be moved relatively to each other and be exposed equally to the source of heat. The patent contains a drawing of a Ban-bury mixer which is a well-known machine described in the patent to Banbury No. 1,200,070, dated October 3, 1916; and the specifications illustrate in detail how the process can be carried out in that machine. Simply stated the machine consists of two large chambers with a large opening from one to the other so that the body of the chamber roughly represents the figure 8, each chamber equipped with a rotor and both chambers jacketed for the introduction of steam or other heating medium. Emerging from the upper portion of the jacketed chambers is a comparatively narrow bottle-neck, and above that in a vertical cylinder is a heavy plunger which can be lowered into the bottle-neck thus closing the chamber, and the weight or pressure of the plunger upon the soap plus additional steam pressure if desired, affords the compressing action on the soap which has been referred to. In the example given, small pellets of ordinary milled soap (which usually have a water content of about 15%) are poured into the chambers of the Ban-bury mixer, the plunger is then let down into the bottle-neck, and the rotors started for agitating and working the "soap mass, which is heated to the requisite temperature through the jacket. After 15 or 20 minutes operation the soap mass is ready to be released through a gate at the bottom of the chambers, and then can be drawn off into forms and upon cooling is ready to be cut into bars of the desired size. The patentee asserts that the result of carrying out the process either in a Ban-bury mixer or other machine having similar operating conditions, converts the soap stock into “a different kind of soap product”. And it is said that the detergent or cleansing properties of the soap ingredients remain substantially unaffected by the heat and agitation treatment, and that the new soap resulting is more economical in use, and also the process gives the soap maker a better control of the particular kind of soap that he desires to make. The patentee thinks that the desired result may be attributable to the “continuity” of the soap mass as distinguished from the different structure of milled soap. We turn now to the claims of the patent which, of course, mark the limits of the patent grant. Milcor Steel Co. v. Fuller Co., 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332. We find that there are 20 claims, of which the first 10 are for the process and the remainder for the product. In this case the plaintiff is content to rest the decision upon claims 5 and 7 for the process and the related product claims, 13 and 20. These claims are as follows: 5. “The process of producing a floating soap having a continuous aerated mass with a uniform dispersion of fine voids throughout, and a characteristic texture and firmness similar to milled soaps and shape-stability, comprising introducing a soap mass containing about 5 to 25% moisture into a closed mixing chamber, working said mass in the presence of air while heating at a temperature of from about 160 degrees F. to about 225 degrees F. to uniformly distribute air throughout said heated mass, maintaining sufficient pressure on said mass to retain the air therein, releasing said mass to cause it to solidify in a continuous and aerated state.” 7. “The process of producing a floating soap having a continuous aerated mass with a uniform dispersion of fine voids throughout and a characteristic texture and firmness similar to milled soap and shape-stability, comprising introducing a soap mass containing less than about 25% .moisture into a closed mixing chamber, working said mass under pressure in the presence of air and while in a plastic or semi-fluid condition to uniformly distribute air throughout said mass, and forming the mass into bars or cakes.” 13. “A floating soap, having a characteristic texture and firmness similar to milled soaps and shape-stability, said floating soap having a moisture content of less than about 25% and having a compatible gas finely disseminated through it in sufficient quantity to make it float, said floating soap resulting from the cooling of a plastic or semi-fluid soap mass containing less than about 25% of moisture subjected, in the presence of the gas, and under pressure, to mechanical agitation to disseminate under pressure the gas through the mass at a temperature sufficiently high to render it at least plastic or semi-fluid.” 20. “A floating soap having a uniform dispersion of fine voids throughout its mass, and a characteristic texture and •firmness similar to milled soaps and shape-stability, with a moisture content of less than about twenty-five percent, said floating soap resulting from working in a closed mixing chamber, a continuous soap mass containing about 5 to 25% moisture in the presence of a compatible gas under pressure, while the mass is heated to a temperature of from about 160 degrees F. to about 225 degrees F., and then releasing the mass to cause it to solidify in a continuous and aerated state.” It will be noted that claims 5 and 7 are substantially the same in wording with the exception that claim 5 specifies the requisite temperature for the heating of the soap mass while1 this specific requirement is omitted in claim 7. Likewise, with respect to the two product claims, the temperature is specified in claim 20 and not in claim 13. Analysis of claim 5 shows that the process consists of the following elements: 1 Introducing a soap mass of 5 to 25% moisture 2 into a closed mixing chamber 3 working said mass in the presence of air 4 while heating at a temperature of from about 160 degrees F. to about 225 degrees F. 5 to uniformly distribute air throughout said heated mass 6 maintaining sufficient pressure on said mass to retain the air therein 7 releasing said mass to cause it to solidify in a continuous and aerated state. Thus'producing 1 a floating soap 2 having a continuous aerated mass 3 with a uniform dispersion of fine voids throughout and 4 characteristic texture and firmness similar to milled soaps 5 and shape-stability. To be valid a patent must conform to the statutory conditions on which the monopoly grant is made. These constitute the principal and most important objective tests for the validity of the patent. The statutes are 35 U.S.C.A. §§ 31 and 33. They require that the invention or discovery must be “new and useful”; and the written application for the patent must describe the invention or discovery “and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; * * * and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.”. The necessity for compliance with this statutory requirement has been recently emphasized and applied by the Supreme Court of the United States in United Carbon Co. v. Binney & Smith Co., Dec. 7, 1942, 63 S.Ct. 165, 87 L.Ed. -. In considering the validity or construction of the patent claims it is important to first determine as a fact what was the discovery made by Bodman that was new. The answer to this will greatly simplify consideration of many of the less important controversial matters in the case. Bodman was the director of the research department of Lever Brothers, the plaintiff. Its leading soap product was “Lifebuoy”, a milled soap with an artificial reddish color. It had a very large sale, but there were some objections to it in that it was one of the softest of standard makes of milled soaps and in consequence was more readily permeable by water and had a strong tendency to slime in use. The effect was to discolor the water in which it was used and this was called the “bleeding” of the soap. Bodman experimented to minimize this objectionable feature. He had the idea that, if the soap stock reduced to solid milled pellets dried to a moisture percentage of about 15%, could be more thoroughly agitated and ground up than was possible in the ordinary plodding process for the formation of milled soap, the objection might at least be partially overcome. It occurred to him to use for this purpose a more powerful agitating means than in customary use for the plodding of milled soap pellets into the soap mass from which the bars would ultimately be cut; and he decided to use the Banbury mixer which has been described, and which theretofore had been principally used in the manufacture of rub•ber. At first he did not try to heat the soap in the Banbury mixer. But, as a result of one of the experiments he noticed that a part of the soap mass, on release from the Banbury mixer, had an unusually white color and it occurred to him that possibly it might float and he found that some of it did float. This seemed important to him because Lever Brothers had long been desirous of making a floating white soap which would be better than the defendants’ well-known soap product widely and popularly known and sold under the name of “Ivory”. The latter was a framed soap made by the boiling process and had been widely advertised under the slogan “It Floats”. Bod-man thought that possibly the floating quality of some of the soap product resulting from his experiments, was due to the heated condition resulting from the friction of the powerful agitating screws in the Banbury mixer whereby some of the soap mass had .become molten and in a plastic or semi-liquid state; but, as only some portion of the particular batch had this condition, it further occurred to him that if all of a particular batch could be uniformly heated to the requisite temperature during the agitation, all of it might have the resultant -floating quality. He thereupon had conducted numerous further experiments during which the soap mass in the Banbury was subjected to various degrees of heat applied in the surrounding jacket of the machine. As a result of many experiments at varying temperatures, he found that, if the temperatures were high enough there would result a soap product that had the following characteristics: (1) It would float; (2) would be hard and firm like milled soaps; (3) would not warp; (4) would not readily slime on reaction to water and (5) the bar of soap in use did not have the tendency to disintegrate that was characteristic of milled soaps by virtue of the cleavage planes, laminations or fissures in the soap mass. Bodman concluded that by this particular manufacturing process he had found a way to make a new type of soap differing from the former framed and milled soaps, and which would have beneficial qualities superior to the defendants’ old Ivory and could therefore successfully compete with it if not supplant it in the market for ordinary domestic use. It is important to note that Bodman thought that he had succeeded in producing a new and different kind of soap; and he so definitely and clearly stated in his patent application filed in 1933, and this statement was continued in subsequent amendments of the patent application, when filed as a continuation application in 1936 and also in further amendments made in 1940, two months after the defendants’ product of New Ivory, now claimed to be an infringement, was on the market and had come to the plaintiff’s attention. Why did Bodman consider his new soap product a distinctively new type of soap in distinction from framed or milled soaps ? The answer to this question is also important in considering the validity or scope of his patent. The answer will not be found in the patent specifications and claims as finally issued in 1940. But it is very clearly stated by Bodman himself in the 1933 and the 1936 specifications. He there points out that his understanding of the matter is that the intensive working of the soap in a plastic condition, caused by sufficiently high extraneously created temperature uniformly and continuously applied, resulted in a physical change in the arrangement among themselves of the tiny separate soap crystals constituting the mass of the soap. He describes this more particularly as follows: He points out that the soap stock is produced by the chemical combination of fatty acids and alkalis, and therefore usually contains as its major ingredients the sodium salts of oleic, palmitic and stearic acids in substantially the following proportions: sodium oleate 55%; sodium palmitic 25% and sodium stearate 20%; and that the ordinary effect of a larger proportion of sodium oleate in the soap results in a comparatively softer soap and a larger proportion of stearate causes a harder soap with greater wearing qualities. He then says: “Various theories have been advanced to account for the swelling of soap when left immersed in water, and for the undesirable and objectionable softening of the surface of the bar or caire left in contact with a wet surface. My conclusion based on numerous investigations and experiments is that these results are due principally to two factors: 1, the relative capacities of the soap crystals for absorbing water, or in other words, their relative absolute gelation capacity; and 2, the arrangement of the soap crystals in the bar or cake. * * * The sodium palmetic and sodium stearate crystals are, at the usual washing temperature, comparatively insoluble, whereas the sodium oleate crystals readily soak water and jell or quickly go into solution in the presence of sufficient amounts of water. In the framed and milled soaps as produced by the present commercial processes the various kinds of sodium fatty acid crystals uniformly arranged and distributed throughout the soap mass, that is to say, the relative quantity and arrangement of the oleate, palmitic and stearate crystals in each unit volume of the soap mass, are substantially the same as in every other unit volume of the soap mass and the crystals according to their relative quantities are uniformly distributed.” He then says that — “the' inference is that in the cake or bar of soap 'made by former processes the oleate, palmitate and stearate crystals do not coalesce but simply more or less firmly adhere to each other by the mechanical interlocking of the crystals, the oleate crystals to a large extent surrounding and enclosing the palmitate and stearate crystals. The oleate crystals dissolve readily, and since these are more or less uniformly-distributed throughout the soap mass and between and in intimate contact with the palmitate and stearate crystals, the mixture of the three component fatty acid salts swells and softens in the penetrated layer of the cake or bar, or if the immersion is continued long enough the whole soap mass is soaked through with water and can be easily disintegrated by the fingers. As the oleate crystals absorb water they swell and push outwardly the undissolved palmitate and stearate crystals, hence the swelling of the cake or bar of soap which has been left in water for an hour or more or over night, and hence the loss of the undersurface of soap which has been in contact with the wet soap dish or wash-stand.” Bodman then explains that the result of his process is to cause a rearrangement among themselves of the separate crystals of the oleate soap on the one hand and the palmitic and stearate on the other and the resulting soap mass is on the whole firmer, more resistant to water, and the soap bars wear longer in use. He says: “The fact is that by reason of subjecting the soap stock to a sufficiently high degree of heat, under the requisite pressure, and so working or mixing the soap mass under these conditions as to subject all parts thereof quickly to the source of heat, the relation of the oleate, palmitic and stearate crystals to each other is so altered, as by the suggested rearrangement of the crystals, that when a cake or bar of soap produced by the present process is immersed in water for any given test period, the dissolving of the oleate crystals and their absorption of water does not dislodge the palmitic and stearate crystals to an appreciable or measurable extent. * * * Hence the conclusion is that the palmitic and stearate crystals of framed or milled soaps as heretofore made are only loosely bonded.” In contrast with this characteristic of framed and milled soaps Bodman points out that his process results in rearranging the separate crystals in relation to each other so that they are all more closely compacted into a continuous mass, and more closely united. He also says: “The intense agitation or working of the soap stock in the enclosed chamber may be regarded as similar to the milling operation in compacting the solidified soap fragments, but since this agitation is performed on a plasticized or semi-fluid soap stock under pressure, the two operations result in radically ¡different products. Hence the difference between milled soap and the soap of the present invention is not a matter of degree but is rather a difference in kind or species due to a difference in mode of treatment.” (Italics supplied) It will be found on examination of the file wrapper of the patent that most or all of this theory of Bodman’s as to why his new soap constituted a new and different species, has been dropped out of the patent as issued in 1940; and the rather extensive quotations from the 1933 and the 1936 patent applications were not made with any idea that as a matter of law Bod-man is bound or limited by the first advanced but later abandoned expression of theory, but only to emphasize and make clear the important point that he thought he had discovered a distinctly new kind of soap as a product, and this tends to emphasize the feature of the patent with respect to the product rather than to the process. As a matter of fact, as appears from the scientific evidence in this case, Bod-man’s theory of his discovery as to how and why the particular process resulted in a new type of soap was along the right line although he, and apparently his scientific advisers in the research department of Lever Brothers, did not then quite correctly understand just what had happened to the soap. We must now turn to the scientific evidence in the case to learn what this was. The scientific fact is that the agitation of the soap at a sufficiently high temperature effects a transition change in the physical “phase” of the soap. It is well known that various physical substances have these physical phase transitions due to particular conditions affecting them. The most common illustration is that of water which at different temperatures assumes different physical properties. At 33 degrees F., water is, of course, a liquid; at 32 degrees or lower it becomes a solid; and at 212 degrees it becomes a vapor. And also with regard to carbon. It exists in the form of the very hard diamond, but some times in the form of the soft graphite in lead pencils. Likewise soap, in different physical phases, has different physical properties. This fact has recently been scientifically established by means of x-ray photographs of soaps agitated at different temperatures. The temperature at which the phase transition occurs for soap made from a given formula (as to its chemical composition from particular ingredients) depends upon the percentage of water content. This is some times called the “critical” temperature of the soap. It is illustrated by defendants’ Exs. Nos. 82 and 83, which show the critical temperature curve for a customary standard soap stock of 80% tallow and 20% cocoanut oil, which is the formula used by the defendants in their New Ivory alleged to be an infringement in this case. From this chart we see that the critical temperature of soap at which the phase transition change occurs shows a rising curve dependent upon the water percentage content of the soap stock. The higher the moisture content the lower the temperature at which the change occurs. Thus for a water content of 25% the critical temperature is 160 degrees F. For 20% moisture the critical temperature is about 185 degrees; and for 15% moisture the critical temperature is about 195 degrees, and for 10% moisture the critical temperature is about 230 degrees. If the water content is so low as about 5%, it is doubtful whether the phase transition occurs at all, as the soap mass is too solid and brittle to be effectively agitated. The correctness of the scientific data in this case is not seriously challenged by the plaintiff, but its interpretation of this data is that it is unimportant when related to its construction of the patent claims which is very broadly contended for. The more important aspects of the scientific data are clearly stated in the testimony of Dr. Andrews who is the present head "of the Department of Chemistry of the Johns Hopkins University. He also conducted some experiments with soap in a Banbury mixer. From his testimony and that particularly of the witness Strain, who is a chemical engineer in the research department of the defendant, and Dr. Ferguson who is the director of that department, the following facts are, I think, clearly established by the weight of the evidence in this case. ' 1. There is a peculiar and distinctive difference between the properties or qualities of soap agitated in a plastic state at a temperature above its critical temperature, as compared with similar agitation at a temperature below its critical temperature. Above the critical temperature the resultant soap is distinctly and characteristically a hard soap. It does not freely lather and does not readily slime. It resists water reaction. It is hard and very firm and waxy in its feel and in response to hand pressure. In this respect it is equal if not greater in firmness than the ordinary milled soap. But if the agitation of the soap mass is made at a temperature less than its critical temperature it is what is generally called a soft soap which freely lathers and readily slimes, and does not freely resist hand pressure when freshly made and ready for sale in ordinary commercial practice. The reason for this difference in the two kinds of soap is due to the phase transition change which occurs at the critical temperature. For convenience of description the phase condition which results from the higher temperature is called the “omega” phase and that which results from the lower temperature is called the “beta” phase. When we speak of the “beta” and “omega” phases we refer to the predominance of one phase to the other as causing the difference between the two kinds of soap, hard or soft. 2. The common run of milled soap formed by the old plodding process has characteristically the “beta phase” in soaps because, in the working of the soap by the plodder, it is not heated to a temperature above the critical point. It has shape-stability (non-warping) merely because it has a low water percentage. The disadvantageous feature of warping is due to a higher moisture content of about 30% in framed soaps, and in consequence exposure to the air results in evaporation of the excess moisture which causes warping. The non-floating feature of many milled soaps is due solely to the fact that they have insufficient air incorporated in the mass, and therefore their specific gravity is greater than that of water. The smooth or waxy feel of milled soaps is due to the fact that the mass is very closely compacted and pressed. But when we come to the matter of -the reaction of milled soaps to water, that is their latherability, their water penetration and tendency to disintegration in use, this results from the fact that the phase condition of the soap is “beta” and not “omega”. In this connection it will be remembered that it was Bodman’s objective to mitigate the high degree of water penetration, sliming effects and disintegration of the bar of soap. 3. The plaintiff’s present commercial product known as “White Swan” claimed to be a product of his new process, is distinctly “omega” and not “beta” soap, and has the properties pertaining to the omega soap phase. It cannot be produced in the Banbury mixer at a temperature less than about 190 degrees. It has a 20% water content. On the chart above referred to its critical temperature is 185 degrees and that is the temperature at which it is produced in the plaintiff’s production by means of the machine called the “Converter”. This name is not without significance on the point immediately being discussed, that is, whether the defendants’ process produced a distinctly new type or species of soap. In the specifications the process is referred to as “converting” milled soap pellets into a new kind of soap. This again shows how clearly the patentee was describing his new product in result as converted from an old type to a new type of soap. And this is actually what happens when the soap is agitated above the critical temperature, that is, there is then a phase transition change. That the new kind of soap described by the patentee cannot be produced at a temperature less than 190 degrees F. with a water content of 15% (as assumed by the plaintiff in the example in the patent), is convincingly shown by other evidence in this case. In the original patent application the process was described as applicable to the making of either floating or non-floating soap. The patentee said: “A floating soap produced by the present invention may have a specific gravity of about 0.50 to 0.98 and differs most widely from framed or milled soaps with respect to wearing qualities, that is length of life in use, sliming and swelling when treated at about 220 degrees F. Satisfactory floating soaps are produced at temperatures ranging from 190 degrees F. to about 210 degrees. At temperatures above 220 degrees the soap produced begins to lose its buoyancy until at 230 degrees F. and over, the soap produced sinks in water readily.” But in the patent specifications as finally issued in 1940 this statement is changed to read as follows: “Satisfactory floating soaps are produced at temperatures ranging from 160 degrees F. to about 225 degrees F. with a soap stock of the illustrative type used by way of example in this disclosure. The foregoing temperatures, of course, would be modified, depending upon the detergent components used, the moisture content and the presence of other ingredients.” While the temperature range was thus changed in the final wording of the patent specifications, it is to be noted that no change was given in the illustrative example used, and we are left to conjecture why the temperature range for a satisfactory floating soap was thus altered and lowered from 190 degrees to 160 degrees without explanation, especially when we find in the evidence a report made to Mr. Bodman on March 11, 1942, by his research assistant, a Mr. B. L. Maxwell, which in effect stated that “190 degrees F. represents the lowest temperature at which it was possible to obtain a desirable texture.” (See Def. Ex. No. 29) We may also note that during the progress of the patent application in the Patent Office Bodman and his assistants conducted extensive further experiments with regard to his process, and under date of January 16, 1939 he prepared a memorandum on what the plaintiff called its Converter soap, at the end of which the following conclusions (with others) were stated in summary: (1) The properties of converter soap are dependent on a unique physical structure resulting from the phase relationship or cycle of phase changes produced by the process conditions; (2) the properties of converter soap are not dependent on the air content of the soap; (3) with regard to any alteration of the solubility and lathering properties of soap when subjected to the converter process, for practical purposes, this may be adjusted by formula composition, retaining, however, the desirable converter properties of fine texture, unique air distribution, firmness, form retention and resistance to objectionable slime. The conclusion on this branch of the case seems to be clear that Bodman’s only real discovery was that a new kind of soap-could be produced by agitation of a soap mass at' a temperature which would bring about a change in the phase of the soap; and the process outlined by him was intended to result in this converted condition of the soap. The claims involved include as an element a description of the new type of soap as “a floating soap having a continuous aerated mass with the uniform dispersion of fine voids throughout and a characteristic texture and firmness similar to-milled soap and with a moisture content of less than 25%.” And, as we have seen, the process includes the element of introducing the soap into a closed mixing chamber, working the mass in the presence of air while heating at a temperature of about 160 degrees F., to 225 degrees F., to uniformly distribute air throughout the mass and maintaining sufficient pressure to retain the air therein. The patent treats 25% as the critical moisture content, which cannot be exceeded in the process, and the plaintiff stresses this as a particular'feature of novelty or invention, but the evidence in the case is not impressive or convincing that this is so. It rather appears that the moisture content is important only as correlated to the temperature at which the phase transition occurs, that is, the higher the moisture content, the. lower the requisite temperature. We now turn to the prior art to ascertain to what extent the product and the process áre new in the art of soap making. In short summary of this and without discussion in detail it may be said that the prior art does not clearly show any full anticipation either in literature, patents or uses of the particular discovery by Bodman. But it does show that there was no novelty in the method or process used by Bodman in making the discovery. Thus it was not new to powerfully and intensely agitate a soap mass containing less than 25% of moisture in a mixing chamber when open or closed, and to produce there either milled or framed soap as a floating soap. Nor was it new to make a soap with minute air bubbles (fine voids) throughout; and of course in the art of soap making there were many instances in which soap was heated to high temperatures. The well-known Doppcrutcher was a machine equipped with an Archimedean screw and a jacketed chamber in which soap stocks were commonly intensely agitated and mixed at high temperatures. In operation it was quite like a Banbury mixer, except for the plunger and pressure. Counsel for the plaintiff contend that in most, if not all, of the instances in which soap of less than 25% water content was used in the process of manufacture, the soap also contained a percentage of glycerine which added to the water content would bring the amount above 25% moisture and therefore contend that the patent specifications in referring to a moisture content include glycerine as well as water on the theory that glycerine had a similar effect to water in the operation. But the patent says nothing about glycerine in connection with moisture content, and it is sufficiently clear in the prior art and uses that there were instances of working soap under 25% moisture including glycerine. The Colgate process of making the well-known Colgate Shaving Stick, so popular some years ago, involved a water plus glycerine content of only about 11%. In appearance the extruded bar of Colgate soap was soft and plastic and malleable, expanded when released to the air, and had a very distinct white appearance, and also some of the product floated, although there was no occasion to make the soap in the shaving stick a floating soap. The weight of the evidence fails to show that glycerine functions like water in this connection. I conclude on this point that the moisture content as referred to in the patent means the water content. With reference 'to the literature of the former art, there is a succint paragraph in the standard text book on Toilet and Shaving Soaps entitled “Industrial Chemistry of the Fats and Waxes” by P. D. Hilditch, published in 1927 by Van Nostrand, New York, which, though not comprehensive as to the prior art, conveniently summarizes, much that is material in this case. In dealing with the subject of toilet and shaving soaps and under the paragraph caption of “Floating and Marine Soaps” on page 317, the author says: “In order to produce a soap which will- float on the surface of water, a cold-process soap, or a milled and plodded soap may be violently agitated or injected with air after being brought into a warm pasty condition and then allowed to cool and set in moulds. The solidified soap retains the air in the form of enclosed minute bubbles and the specific gravity of the whole is less than that of water, the product being sold as floating soap.” (Italics supplied) In this context there was evidence in the case that the word “pasty” means “plastic” and the word “warm” obviously refers to temperature although the degree is not stated. Apart from the elements of specific temperature and pressure which are stated features of the Bodman process, this quotation shows that it was old in the art to make a milled floating soap by means of violent agitation in the presence of air while the soap was in a plastic condition, and resulting also in the mass retaining the air in the form of enclosed minute bubbles. In the specifications of the patent as issued Bodman summarized the important elements of his process as intense agitation of the soap while heated to a plastic or semi-fluid condition under pressure in the presence of air in a chamber closed to the atmosphere. The only element of this process that was not practiced in the former art is apparently that of pressure, and possibly the closed chamber. The requisite temperature is not here stated other than that the mass must be heated to a plastic or semi-fluid condition. Claim 7 does not refer to specific temperature but only to the plastic condition; while claim 5 omits the description of a plastic condition and specifies the temperature as “from about 160 degrees F. to about 225 degrees F.” With respect to the product itself there was no one thing that was clearly new and not appearing in one or the other soaps long known and used; but the new feature aimed at in the patent was to bring together in a single bar of soap some of the advantages of both milled-and framed soaps eliminating some of their disadvantges. As to framed soaps the purpose was to retain their floating character but eliminate their tendency to warp; and as to milled soaps, the new bar was described as “retaining the advantage of its characteristic firmness, texture and shape-stability, to minimize its uneconomical use in water due to quick sliming and tendency to disintegration by virtue of water penetration into the cleavage planes.” We have seen what only was new in Bodman’s discovery. In view of this, are the claims of the patent as issued valid? It is important to a thorough understanding of this question to compare from the file wrapper — see Schriber-Schroth Co. v. Cleveland Tr. Co., 311 U.S. 211, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132 — the claims contained in the original application with the substituted claims made and allowed in 1940. The 1933 application contained claims which were all definitely related to Bodman’s discovery with respect to a change in the crystallography or arrangement of the crystals in the soap mass as a result of agitation at sufficiently high temperatures. In this respect the claims were quite specific; but in comparison the claims allowed in 1940 are very general. The claims as allowed are, of course, entitled to the presumption of validity but this must yield to the requirements of the statute, 35 U.S.C.A. § 33, which, with respect to claims provides: “and he shall particularly point out and distinctly claim the particular improvement, or combination which he claims as his invention or discovery”, if it is determined that this statutory requirement has not been met. After much consideration I have reached the conclusion that the claims do not comply with the statute in this respect. Permutit Co. v. Graver Corp., 284 U.S. 52, 60, 52 S.Ct. 53, 76 L.Ed. 163; Stelos Co. v. Hosiery Corp., 295 U.S. 237, 241, 55 S.Ct. 746, 79 L.Ed. 1414. The granted claims 5, 7, 13 and 20 in issue here do not distinctly claim Bodman’s real discovery. As we have seen, the real discovery was that the soap mass agitated at sufficiently high temperature, that is, a temperature above its critical point, assumed a different physical phase, which means a different arrangement or form or combination of its molecules or crystals. This temperature varies for the water content of the soap mass. And the new phase of the soap determines its particular qualities or characteristics with respect to hardness or softness, its resistance to water penetration and! its economical use. The specific critical temperature of the particular soap mass is therefore the all important thing in the process; but neither claim 5 nor claim 7 particularly points this out as required by the statute. Claim 7 does not mention the element of temperature in a plastic or semi-fluid condition, which was old in the art. Claim 5 does refer to temperature but apparently states that soap of any water content between 5 and 25% can be successfully converted so that it will have the new characteristics at any temperature between 160 degrees and 225 degrees. We have seen that this is not correct. Certainly the claim does not distinctly show that the required temperature is determined by and varies with the water content. And with respect to the product claims they specify only that the soap shall be floating, in a continuous mass, uniformly aerated and having the characteristic firmness and texture similar to milled soaps. The real discovery was that the new form of soap had very valuable qualities superior to milled soap with respect to water penetration and long wear in use. These are not described in the claims other than what can possibly be inferred from the use of the expression “continuous mass”. The claims contain with respect to the process the additional elements of pressure and agitation in a closed chamber; but the evidence in this case shows that pressure has little if any effect on the product, and that the closed chamber feature is not essential; and the uniform distribution of the air in the final soap product results in part at least from the rapid cooling of the soap after it has been extruded in bar form, and is not due only to the process described in the claim. The rapid cooling feature is not covered by the specifications or the claims. And as to pressure, the evidence also shows that the kind of pressure referred to in the patent specifications and the drawing is not actually used by either the plaintiff or the defendant in the production of its soap for commercial use. It is also significantly to be noted that the plaintiff has not offered in evidence samples of soap made in the Banbury mixer as described in the specifications; while the defendant has offered such samples produced as a result of numerous experiments with the Banbury mixer at different temperatures. As I hold that the claims of the patent are invalid, the judgment must be for the defendant; but even if the claims can be considered valid, the result would be the same because I find there has been no infringement. As to the latter issue, I have less difficulty although the discussion necessarily requires careful consideration of the proper construction of the claims and the evidence in the case. The patentee contends for a very broad construction of the claims or, what is substantially the same, a very broad range of equivalents with respect to the defendants’ alleged infringing process and product. This broad construction contended for becomes argumentatively possible only by reason of the general wording of the 1940 claims. Claim 5 is the most important of the four claims in issue. The words and phrases that are in serious dispute as to their proper construction and scope on the issue of infringement, either of the process or the product, are underscored in the following copy of the claim: “5. The process of producing a floating soap having a continuous .aerated mass with the uniform dispersion of fine voidfthroughout, and a characteristic texture and firmness similar to milled soaps and shape-stability, comprising introducing a soap mass containing about 5 to 25% moisture into a closed mixing chamber, working said mass in the presence of air while heating at a temperature of from about 160 degrees F. to about 225 degrees F. to uniformly distribute air throughout said heated mass, maintaining sufficient pressure on said mass to retain the air therein, releasing said mass to cause it to solidify in a continuous aerated state.” We must consider the proper meaning of each of these expressions in the light of the specifications and the evidence in the case. But we should first notice the theory advanced by the patentee, Bodman, in his oral testimony in the case in which he emphasizes as his invention the process rather than the product. He advanced the contention that his real discovery was that of a process method of controlling the resultant qualities of the particular soap that was desired to be produced. As his counsel puts it, the patentee is entitled to th,e exclusive use of the process to produce a soap of the genus described in the claims, although the process results in producing different species of soap, which may differ greatly in the degree of being soft or bard; or more specifically, the element of the claim with respect to the characteristic firmness and texture of milled soap is merely relative and therefore any soap produced, whether hard or soft, and though varying greatly in latherability and wear in use, is covered by the patent if it merely resembles milled soap in respect to firmness and texture, as compared with framed soaps. As Bodman expresses it in his testimony, what he discovered was how you could control the properties of soap with respect to its rate of wear, its water dispersion, water penetration or resistance to water penetration, and thus make a new kind of floating soap; or, in his own words, “so what I know I discovered here was a means for the first time of controlling the properties of soap and its behavior in water, the same composition by mechanical treatment rather than by chemical changes and formulae”. And again — “We have always been able to get these variations in the lathering properties and in the firmness of the soap by chemical means; but I am the first one to say how you can get these variable qualities in soap by mechanical treatment * * *. You can control the qualities of the soap, hardness, softness, and lathering properties, sliming, or the degree of sliming, laminations and so on, by varying the temperature from 160 degrees to 225 degrees F. as in the Banbury mixer.” Here Bodman is insisting on a much broader patent right than is permissible under these patent claims. They say nothing about the qualities of latherability of the soap or its water penetration or rate of wear. Far less do they undertake to tell how these properties can be “controlled” for any particular soap formula by varying temperature or pressure, or what the variations must be. When asked to explain how even' a skilled soap maker could know from the patent specifications or claims how to produce a soap of particular characteristics as to latherability and rate of wear by the patent teaching, Bodman’s answer was that such a person could experiment with the Banbury machine to reach the desired result. This clearly is not permissible under the patent statute which requires that the patentee shall describe in the patent the application of his process in such “full, clear, concise, and exact terms as to enable any person skilled in the art * * * to * * * use the same.” Tyler v. Boston, 7 Wall. 327, 19 L.Ed. 93; United Carbon Co. v. Binney & Smith, Dec. 7, 1942, 63 S.Ct. 165, 87 L.Ed.-; Standard Brands v. Yeast Corp., 308 U.S. 34, 38, 60 S.Ct. 27, 84 L.Ed. 17. It is true that in one or more places in the patent specifications there is a statement, in more or less vague terms, with respect to controlling the operation by the variation of temperature, but nowhere does the patent, as required by the statute, teach how the process can be used to obtain any particular desired result. What the specifications do teach is that if the emperical process outlined is followed the result will be a soap of the particularly described kind, that is, a soap having characteristic texture and firmness similar to milled soaps and being in a continuous mass with uniformly dispersed air; and from the specifications it will be found that the patentee says that the soap produced by the process will be a hard soap, even firmer than milled soap, and will wear economically. Bodman’s statement that the desired degree of hardness or softness of the soap can be obtained by varying the temperature from 160 degrees to 225 degrees is not in accord with the weight of the evidence, which shows that this variation in temperature is applicable to the varying water content with respect to the critical temperature at which the phase transition change occurs. The specifications read and considered as a whole, clearly do not teach that the degree of hardness or softness of the soap can be