Full opinion text
FORMAN, District Judge. This is an action brought by Smith, Kline & French Laboratories, a Pennsylvania corporation, assignee of Gordon A. Alies, of Monterey Park, California, to whom United States Letters Patent No. 1,879,003 was issued on September 27, 1932. The plaintiff charges' the defendants Clark & Qark, a New Jersey corporation, Charles L. Morris, Robert Brinton Morris trading as Professional Laboratories, David M. Olmstead, Benjamin Zirin and Standard Medical Laboratories, a New Jersey corporation, with infringement of the said patent and unfair competition, and seeks profits and damages arising therefrom. An answer was filed by Clark & Clark, Charles L. Morris, and Robert Brinton Morris trading as Professional Laboratories, who by way of counterclaim seek in-junctive relief and damages against the plaintiff. The suit is not pressed against David M. Olmstead, Benjamin Zirin and Standard Medical Laboratories. The answering defendants take the position that they did not infringe the plaintiff’s patent for the reason that it lacked validity in that: (1) Alies was not the original inventor; (2) the composition claimed was not new or novel in that one skilled in the art could ordinarily produce the same; (3) that the descriptions contained in the letters patent are ambiguous and indefinite and do not disclose the invention in clear and concise terms so as to enable one skilled in the art to produce the same; (4) that the claims of the patent are excessive, vague, ambiguous, and indefinite and (5) that the composition is an unpatentable combination of old and well-known elements produced in an obviously customary manner. Other contentions raised at the trial were that the disclaimer filed by Alies on August 29, 1934, is invalid; the patent and the claims of the disclaimer are invalid for the reason that no invention is involved to find that an old product works for a known use, particularly in a field where it was known that products of the type involved virere useful. The defendants further contended at the trial that if it is assumed that the discovery is patentable as an old product for a known use, then the claims of the disclaimer were invalid because they failed to “particularly point out and distinctly claim” the invention as required by law. In addition to a denial of infringement upon their part, the defendants likewise denied that they have been guilty of unfair competition as alleged by the plaintiff. Affirmatively, the defendants insist that they are entitled to recover against the plaintiff their provable damages for unfair competitive practices upon the part of the plaintiff, which forms the substance of their counterclaim. The invention relates to a composition of matter purporting to be useful for therapeutic purposes. The specifications describe the invention and state that the composition is physiologically active and produces effects in animals and man similar to the effect of the salts of ephedrine. In his patent Alies originally claimed: “1. As a new composition of matter, a salt of 1 phenyl-2-aminopropane. “2. As a new composition of matter, the hydrochloride of l-phenyl-2-aminopro-pane.” His disclaimer follows: “He disclaims so much of claim 1 of said patent as is in excess of the following: “ ‘As a physiologically active therapeutic agent capable of producing effects in animals and man similar to the effect of salts of ephedrine, a salt of l-phenyl-2-am-inopropane.’ “He disclaims so much of claim 2 of said patent as is in excess of the following: “ ‘As a physiologically active therapeutic agent capable of producing effects in animals and man similar to the effect of salts of ephedrine, the hydrochloride of 1-phenyl-2-aminopropane.’ ” The composition l-phenyl-2-aminopro-pane is also chemically known as phenyliso-propylamine and benzylmethyl carbinamine. The salts of the composition l-phenyl-2-aminopropane, which is the subject of the Alies patent and of this action, was in 1938 given the generic name “amphetamine sulfate” by the American Medical Association, by which name it will be generally referred to hereinafter. It is the identical compound which is prepared and sold by the plaintiff under the brand or trade name of “Benzedrine” or “Benzedrine Sulfate.” In Part I of this opinion we will discuss the patent phase of this case and in Part II we will take up the phases of unfair competition. Part I The Patent Amphetamine sulfate is the salt of 1-phenyl-2-aminopropane. It is obtained by Alies by means of a method of synthesis described by him in the specifications of the patent and converted into a salt which is pure and suitable for the purpose of therapeutic administration. The conversion of the product into the salt is effected by neutralizing the impure product with an acid. The conventional method of converting bases into salts is by the addition of an acid. Not all bases are capable of such transformation. It is impossible to convert some bases into any solid form such as a salt. Others cannot be so converted by the use of an acid. It is a specific matter for a specific substance and a specific acid as to whether or not the salt thereof is crystallizable or is obtainable in solid form free from other contaminating substances. Experimentation is requisite to determine which method of preparation is suitable to get a desired result. Amphetamine sulfate may be said to be more closely allied with the field of sympa-thomimetic amines than with any other field in medicine, pharmacology or chemistry. It is the knowledge of the art in this field that is advanced as the prior art upon which was based the discovery of amphetamine sulfate for therapeutic purposes. The autonomic nervous system, by which every single structure of the body is brought under a dual control, consists of two branches, the central nervous system and the sympathetic nervous system. There is also a division of the sympathetic nervous system known as the parasympathetic nervous system. The central nervous system consists of the brain and spinal cord, and some structures of the brain are independent of the sympathetic nervous system. In the central nervous system is generated, among others, mood, feeling of energy, feeling of sleeplessness, capacity to have appetite for food or sex. Examples of diseases of the brain are epilepsy and Parkinson’s disease. The sympathetic nervous system stems from the central nervous system and starts from points of the spinal cord and a structure at the lower part of the brain and winds its way through every organ of the body. It extends peripherally to the eye, to the skin, to every blood vessel, to the heart, to the lungs, to the gastro-intestinal tract and through every portion of the organism. The parasympathetic nervous system innervates the active organs of the body, such as the stomach, the intestines, the uterus, the prostaté or principally those organs which have smooth muscle tissue. A sympathomimetic amine is a substance which stimulates the peripheral parts of the sympathetic nervous system. Examples of this action are constriction of the blood ves-seis, increased rate and force of the heart beat, a rise in blood pressure, dilation of the pupils of the eye, relaxation of the bronchial muscles, a rise in blood sugar, increased metabolic rate, decreased activity of the gastro-intestinal tract of the stomach and intestines. Prior Art The following literature constitutes the prior art, some of which was offered by the defendants as anticipatory of the Alies’ claims: 1. “On a New Derivatives of the Phen-ylmeth-Acrylic Acid and of the Phenyl-Iso-Butyric Acid,” by L. Edeleano, published in the Berichte der Deutschen-Chemischen Gesellschaft (Ber. Dtsch. Chem. Gesell. 20:616, 1887). 2. “Handbuch der Organischen Chemie,” by Dr. F. Beilstein, Dritte, Um-gearbeitete Auflage, Verlag von Leopold Voss (Hamburg und Leipzig), 1896 and Vierte Auflage, Die Literatur Bis 1, Januar 1910 Umfassend, Verlag von Julius Springer (Berlin), 1929. 3. “Chemical Structure and Sympath-omimetic Action of Amines,” by G. Barger and H. H. Dale, published in The Journal of Physiology (Cambridge University Press, London), Vol. XLI, 1910-1911, p. 19 et seq. 4. “Adrenaline and Other Derivatives of Ethylamine,” by Percy May, published in The Chemistry of Synthetic Drugs (Third Edition, Revised), 1921 (Long-mans, Green and Co., London), p. 129 et seq. 5. References to the publications of Doctors K. K. Chen and Carl F. Schmidt may be found in the bibliography of their article entitled “Ephedrine and Related Substances,” published in Medicine, Vol. IX, No. 1, February, 1930. 6. “The Beckmann Rearrangement Involving Optically Active Radicals,” by Lauder W. Jones and Everett S. Wallis, published January 8, 1926, in The Journal of the American Chemical Society, Vol. XLVIII, January-June 1926, p. 169 et seq. 7. “dl-B-Phenylisopropylamine and Related Compounds,” by Donald Holroyde Hey, published in 1930 in the Journal of The Chemical Society, London (J. Chem. Soc., p. 18 et seq.). 1. Edeleano-1887 In 1887, Edeleano, a German scientist, wrote a paper for the Berichte der Deut-schen Chemischen Gesellschaft (Ber. Dtsch. Chem. Gesell. 20:616, 1887), in which he outlined a method of preparation of phenylisopropylamine C6H5CH2CH-(CH3)NH2 and its analysis. He stated: “The salts of the base are mostly very easily soluble in water, while the platinum double salt represents a compound difficultly soluble in water and crystallizing in matted small needles.” The synthesis of this product by Ede-leano was purely a chemical attempt and involved no physiological testing. Ede-leano’s statement relating to the solubility of the salts of the phenylisopropylamine base did not carry with it the procedure for the preparation of any salts of the base he described, nor did it describe any salt of phenylisopropylamine. Alies makes no claim that he was the first discoverer or inventor of the base of this composition. Edeleano stated that he prepared the composition, provided a method for such preparation and described the completed product in certain respects. There is no question that Edeleano did prepare the base of this substance. He made no reference whatsoever to its use for any purpose. There appears no reason, nor the suggestion of one, that he worked with this base other than purely from a 'chemical standpoint. He entitled his article “On a New Derivatives of the Phenylmeth-Acrylic Acid and of the Phenyl-Iso-Butyric Acid” and under the heading “Method of Preparation of Phen-ylmethacrylic Acid” set forth an account of what he did in his laboratory. He said nothing that gave rise to an inference that the substance had any effect or that it was useful for any purpose. Edeleano stated that the salts of the base were easily soluble in water, while the platinum double salts were soluble with difficulty. From this the defendants ask us to infer that Edeleano actually prepared the identical salt of this base which Alies claims as a patent. It is obvious that Edeleano prepared certain salts of the base, but it is quite impossible to determine which salts he prepared. He did not describe the method of preparation of the “easily soluble” salt of the base with'any characteristics by which it could be identified as a particular salt. It appears that certain salts of this base are easily soluble in water, some are not so soluble and others are not soluble at all. Hence, there is no disclosure by Edeleano of any particular salt of the base. We cannot say that Edeleano experimented with the salts, much less that he particularly prepared a salt which would be useful for therapeutic purposes. At this point, however, it is urged that the addition of sulphuric acid or hydrochloric acid to a base, in order to convert it into a salt, is a method used commonly by chemists, and that with the base described by Edeleano, together with the application of this well-known method of conversion, any skilled chemist could arrive at the composition which is the subject of this patent claim. A skilled chemist, following Edeleano’s methods as described in his paper and applying the knowledge of his profession and of the art prior to Alies, might very well be able to produce a salt of l-phenyl-2-aminopropane, but not a substance having the effects of the Alies’ compound for therapeutic purposes. To prepare such a substance requires original experimentation on the part of the chemist as to effect of the substance upon animals and man. Edeleano’s disclosure taught only the manner by which the base of the compound could be prepared and referred incidentally to two salts thereof without further identification. It is insufficient as an anticipation of a disclosure of effect and therapeutic usefulness of a certain salt of the base. 2. Beilstein — 1896 As evidence of an ancient disclosure of the patent, the defendants directed attention to “The Handbook of Organic Chemistry,” compiled by Beilstein, an encyclopedia of organic compounds, 1896 edition, in which was listed the base of phenyl-isopropylamine as follows: “l2 — (a)—Aminopropylbenzol (Phenisopropylamine) CeHe. CH2. CH (NH2). CH3. B. Beim Behandeln des Amids der Methylbenzylessigsaure mit (1 Mol.) Brom und (5 Mol.) Kalilauge (von 4%), unter Abkuhlen (Edeleano, B.20,618). — Flussig. Siedep.: 203°.” Substantially the same content of the listing appears in the 1929 Edition of Beil-stein. No mention is made in this later listing, the last to be published prior to the Alies patent, of the salt of phenylisopropy-lamine. Of course, these are only references to the paper by Edeleano and add nothing to the prior art. Adrenaline or Epinephrine 1895 to 1910 In 1895, two English scientists, Mather and Schaffer, published a paper concerning the effects produced by the introduction into animals of an extract of the suprarenal glands. This extract consisted of a salt solution of the tissues of the glands that lie at the upper pole of the kidney. They described as effects a marked rise of blood pressure, which stimulated a great deal of interest at the time. Several physiologists and chemists succeeded within a few years in the isolation in relatively pure form of a solution containing the active principle of this extract. By the year 1901 it became known as adrenaline or epinephrine. A chemical composition for these compounds was soon developed and it became possible to produce them in the laboratory synthetically instead of taking them from the animal body. Adrenaline was one of the first of the sympathomimetic amines. It had the disadvantages, for purposes of therapeutic use, of being ineffective orally and of having no prolonged action. The work in this field was therefore directed toward finding a compound of greater intensity of action, i.e., one that acts upon the sympathetic nervous system in smaller doses. 3. Barger and Dale — 1910 In 1910, Barger and Dale published their article in The Journal of Physiology (Cambridge University Press, London, Vol. XLI, 1910-1911, p. 19 et seq.), wherein they described a series of tests of a large number of synthetic derivatives of this type in which they set up certain specifications that have stood the test of time. These compounds are known by the term “sym-pathomimetic amines,” which was introduced by Barger and Dale and defined by them as “a term which indicates the relation of the action to innervation by the sympathetic system, without involving any theoretical preconception as to the meaning of that relation or the precise mechanism of the action.” Their experiments were done upon animals whose spinal cords were cut at the base of the axis vertebra and the neural arch of the vertebra was removed. The brains of the animals were completely destroyed. In their article Barger and Dale make the following statement: “Taking B-phenylethydamine as our starting point, we investigated first the ef-feet of varying the length of the side-chain. It was shown that lengthening the carbon chain of the purely aliphatic bases up to a certain point was attended with increase of activity. In the case of the fatty-aromatic base, however, we found that the side-chain of two carbon atoms gave the optimum of activity. Aniline, which has no side-chain, and is therefore a purely aromatic base, had none of the specific action; benzylamine had a mere trace; and a-phenylethylamine, in which, again, only one carbon atom intervenes between the amino-group and the aromatic ring, was also very feebly active. Increasing the side-chain beyond two carbon atoms also resulted in a decline of activity, phenyl-propylamine being much less active than phenylethylamine (Fig. 4). The optimum constitution- of a fatty-aromatic amine for the production of the sympathomimetic action is, therefore, that which is found in adrenine itself, viz. a benzene ring with a side-chain of two carbon atoms, of which the second bears'the amino group.” At p. 29, supra. They arrived at the following conclusions, among others, as a result of their experiments: “(1) An action simulating that of the true sympathetic nervous system is not peculiar to adrenine, but is possessed by a large series of amines, the simplest being primarily fatty amines. We describe all such amines and their action as ‘sym-pathomimetic.’ “(2) Approximation to adrenine in structure is, on the whole, attended with increasing intensity of sympathomimetic activity, and with increasing specificity of the action. “(3) All the substances producing this action in characteristic manner are primary and secondary amines. The quar-ternary amines corresponding to the aromatic members of the series have an action closely similar to that of nicotine. “(4) The optimum carbon-skeleton for sympathomimetic activity consists of a benzene ring with a side-chain of two carbon-atoms, the terminal one bearing the amino-group. Another optimum condition is the presence of two phenolic hy-droxyls in the 3:4 position relative to the side-chain; when these are present, an alcoholic hydroxyl still further intensifies the activity. A phenolic hydroxyl in the 1 position does not increase the activity.” Pp. 58, 59, supra. Defendants claim that there is an insignificant distinction between the disclosure by Barger and Dale and the Alies compound. In conclusion No. 4, above, Barger and Dale showed that optimum activity in pressor amines is found in those structures which have a benzene ring and a carbon side-chain with the amino group attached to the second carbon atom in the chain. They investigated the varying length of the carbon chain to determine the optimum constitution of the fatty-aromatic amine for the production of sympathomim-etic activity. They concluded that phenyl-ethylamine, the structure of which consists of a benzene ring with a side-chain of two carbon atoms with the amino group on the second carbon atom constituted this optimum structure. It was determined by them that specifically an increase in the side-chain beyond two carbon atoms resulted in a decline of activity. This was proved when phenylpropylamine was used which has a chemical structure including a side-chain of three carbon atoms with the amino group attached to the terminal carbon. Alies found optimum activity in phenyl-isopropylamine (l-phenyl-2-aminopropane) which is a chemical structure in which is included a side-chain of three carbon atoms, but the amino group is attached to the middle carbon atom. This structure is different from that of phenylpropylamine and was not considered by Barger and Dale in their experimentation. They omitted to investigate the potentiality of the compound constructed by Alies. They fell short of disclosing the optimum activity later developed by Alies when he proved that phenylisopropylamine had a greater pressor activity than any other compound theretofore considered. They confined their research to sympathetic effects in the field of sympathomimetic amines. It must also be observed that no intimation as to effects on the central nervous system is given by Barger and Dale. Their experiments precluded any such effects because they worked on animals devoid of central nervous systems. 4. Percy May — 1921 In 1921, a volume entitled “The Chemistry of Synthetic Drugs” was published (Longmans, Green and Co., London). The author, Percy May, in a chapter concerning “Adrenaline and Other Derivatives of Ethylamine,” summarized the literature on the subject. He added no new data but quoted the conclusions of Barger and Dale in their entirety. S. Chen and Schmidt — 1923 In the year 1923, Dr. Carl F. Schmidt, presently Professor of Pharmacology at the University of Pennsylvania, went to Peking, China, to take temporary charge of the Department of Pharmacology in the Peking Medical College. His work involved research in Chinese drugs. Several Chinese drugs were studied with no noteworthy results. At the end of that year a young Chinese scientist, K. K. Chen, a graduate in chemistry of the University of Wisconsin, went to Peking to work with Dr. Schmidt. Although the Chinese thought that their drugs were potent, Dr. Schmidt had been unable to confirm this conception. At one of his family conclaves in China Dr. Chen’s uncle, a druggist, upon hearing this view, became rather indignant and stated that he knew from personal experience that there was at least one Chinese drug that was potent — ma huang. Dr. Chen brought some of this drug with him to Peking and an extract of it was injected into an animal, producing a sharp rise in blood pressure. This action was surprising, for the experiments conducted by Dr. Schmidt involving the injection of many plant extracts into animals always produced a drop in blood pressure. Dr. Chen succeeded in isolating crystals from the plant, ma huang, which crystals he identified as an alkaloid. Several experiments were made with the crystals and it was found that the active principle was a sympathomimetic substance. Experiments with the drug upon patients proved that it was effective and had a relatively low toxicity. A search for a name for the drug resulted in the discovery that it had already been isolated in 1887 by a Chinese chemist named Nagai, who had called it ephedrine. The drug was brought to the United States in 1924 and results of various clinical studies were published by Chen and Schmidt from time to time thereafter. (References to these publications may be found in the bibliography of a lengthy article published by .them in Medicine, Volume IX, No. 1, February 1930.) Since 1924 the drug has been in use quite extensively. Although ephedrine was isolated and its chemical structure known for many years, it was regarded as a very toxic substance until it was introduced in this country by C'hen and Schmidt. It had several advantages over the other drugs in the field, like adrenaline or epinephrine, in that it produced the same effects when taken orally and its duration of action was a matter of hours rather than minutes. Physiologically, ephedrine stimulates the peripheral parts of the sympathetic nervous system, resulting in constriction of blood vessels, acceleration of the heart, dilation of the pupils, decreased movement of the gastro-intesti nal tract and relaxation of that tract and the bronchi. It has certain stimulant effects upon the central nervous system previously not described in compounds of this series. These effects upon the brain cells are comparable with that of caffeine. They manifest themselves in restlessness, nervousness, tremors, anxiety, insomnia in some individuals, and in an appreciable number of cases, particularly in women inclined to be nervous, may lead to nausea and vomiting. A depressant action upon the heart muscle, similar to myocardial depressants, imposes a limitation upon the therapeutic usefulness of the drug. It is extensively used to shrink mucous membranes when congested. Ephedrine, being orally effective and possessing a duration of action, displaced adrenaline. Prior to its discovery, there existed no better compound having the action which adrenaline had upon the peripheral sympathetic nervous system. Compounds of the same general type which had been made and tested were found to be weaker than adrenaline.. This work in ephedrine produced for the first time in the field of sympathomimetic amines not only effects upon the sympathetic nervous system but concomitant effects upon the central nervous system. However, it did not result in encouraging the exploitation of the latter effects, but rather regarded them as deleterious and to be diminished as far as possible or eliminated. 6. Jones and Wallis — 1926 The next publication to be considered in the prior art of the Alies compound is a paper appearing in 1926 in the Journal of the American Chemical Society (J. Am. C'hem. Soc., 48:169, January-June 1926), entitled “The Beckmann Rearrangement Involving Optically Active Radicals” by Jones and Wallis. This paper is based upon a thesis submitted by Wallis in partial fulfillment of the requirements of Princeton University for his degree of doctor of philosophy. Jones and Wallis purported to have isolated the dextro-rotatory form of benzyl-methyl-methylamine hydrochloride. The latter is the chemical equivalent of the hydrochloride of the dextro form of B-phenylisopropylamine or dextro amphetamine hydrochloride. They describe the properties of the product they allege they obtained as follows: “d-Benzylmethyl-methylamine Hydrochloride, (C7H7) (CHs) CH.NH3CL — When 1.296 g. of d-benzylmethylmethyl-isocyanate was placed in a small flask, together with 4 cc. of coned, hydrochloric acid a reaction started immediately, but progressed slowly. The flask was kept cool by allowing water to play over it. After an hour the two layers had disappeared, and carbon dioxide ceased to be evolved. Near the end of the reaction the flask was warmed to 38°. The solution was diluted with water and extracted thrice with ether to remove any unchanged isocyanate. The ether extract gave no residue of isocyanate upon evaporation. The solution gave a rotation of +1.88° in a 200 mm. tube at 20°. “The water solution was evaporated to dryness. A white, crystalline, hygroscopic salt was left. This was washed with ether and dried in the oven at 80°. The amount of chloride obtained was 1.25 g., melting at 147°. 1.20 g. dissolved in 25 cc. of water gave a rotation of +1.60° in a 200 mm. tube at 20°, (a)20° = +16.6°.” at p. 180, supra. D The defendants contend that Jones and Wallis in this work described the d-form of the hydrochloride of phenylisopropyla-mine and that it was known to Alies when he claimed to be the first to produce a salt of l-phenyl-2-aminopropane. Furthermore, they claim that this disclosure sufficiently described a salt of l-phenyl-2-am-inopropane, so that any chemist could produce it from the directions of Jones and Wallis and the Edeleano publication. A sharp issue is raised by the plaintiff on the question of whether Jones and Wallis actually obtained the substance they describe as d-benzylmethyl-methylamine hydrochloride. Alies testified that he produced d-benzylmethyl-methylamine hydrochloride, but that the constants in his compound were a melting point of 156° to-157° and an optical rotation of +26.6° at 20°, as against a melting point by Jones and Wallis of 147° and an optical rotation of +16.6° at 20°. He further testified that there were errors in the Jones .and Wallis article which made it impossible for him to follow their directions and get the product they contend they produced. Alies’ testimony is corroborated in detail by Dr. George H. Connitt, a research organic chemist in the employ of the plaintiff. Opposed to the above we have the testimony of Philip Sadtler, a consulting chemist on behalf of the defendants. He conceded that he had a financial interest in the termination of the case in favor of the defendants. It was his opinion that, a skilled chemist would have had no difficulty in following the directions of Jones and Wallis and that they described accurately a process to produce dextro-benzylmethyl-methylamine, although he had not personally attempted to produce it according to their formula. The work of Jones and Wallis, like that of Edeleano, consisted of chemical tests of compounds for chemical and not for physiological purposes. They gave no intimation in their article of effects of their preparations or of therapeutic uses therefor. The evidence on the accuracy or inaccuracy of the disclosures of Jones and Wallis comes from Alies, the plaintiff’s employee Connitt, the financial intimate of the defendants, Sadtler, and the disinterested witness Dr. Schmidt, who also was queried as to the accuracy of the Jones and Wallis disclosure on his cross-examination by plaintiff’s counsel. When Dr. Schmidt was first approached upon this subject with the question: “Well, from your examination of the abstract Would you have any doubt that Jones and Wallis described the preparation of the hydrochloride of l-phenyl-2-aminopropane ?” His answer was: “I would have none; I think they did, yes.” (Record, p. 294) Later in the same cross-examination Dr. Schmidt answered questions .as follows: “Q. The claim of the patent as originally issued called for a new composition of matter, a salt of l-phenyl-2-aminopropane. Now, if Jones and Wallis in 1926 had produced the hydrochloride of l-phenyl-2-aminopropane wasn’t that a salt of 1-phenyl-2-aminopropane ? “The Witness: May I answer that in my own way? “Q. You may. A. I would like to start out the answer by saying this was, as far as I know these were purely chemical attempts, it involved no physiological testing. “The Court: You mean the attempts of Jones and Wallis? “The Witness: And of Edeleano. A. (continuing) The compounds were made as purely chemical substances for chemical purposes, but not as far as I know for physiological purposes. “Now, to decide on whether they were or were not identical with the Alies compound would involve specialized information about their chemical constants, such things as optical rotation, melting point and the different precipitation and solubility reactions. On that I am not competent to state even if I did have the information, which I have not, so the answer, I am afraid, would have to be I don’t know.” (Record, p. 299) Again, on redirect, Dr. Schmidt testified as follows: “Q. Dr. Schmidt, with reference to the dextro compound named in the Jones and Wallis abstract to which you were referred, do you know the boiling point of that compound? A. No, I do not, Mr. Harding. “Q. Do you know its optical rotation? A. Only it must be to the right. “Q. That is, you don’t know what the figure would be? A. I do not, no, sir. “Q. You only assume that Jones and Wallis probably referred to the compound that they named because they say so, then, is that true ? A. Yes. “Q. In other words, the constants they give, boiling point and rotation, may be incorrect ? A. They may be, yes, sir.” (Record, pp. 307, 308) It would seem that Dr. Schmidt’s categorical answer as to the Jones and Wallis disclosure, first given by him, was considerably weakened by his further testimony. The attack upon the disclosure, it is true, conies from interested witnesses, Alies and Connitt, but they seem to be competent, qualified and able scientists, whereas the sole support for the defense comes from Sadtler, the quality of whose testimony is not impressive. Alies and Connitt supply the technical information of boiling points and optical rotations which Dr. Schmidt lacked. They are different from the constants of the Jones and Wallis disclosure in material aspects. Aside from the testimony of Sadtler, who admitted he did not attempt to make the Jones and Wallis product, we have no testimony to contradict Alies and Connitt. We are convinced that a skilled chemist, following the directions of Jones and Wallis, would not have obtained what they said they produced, and we are unable to find proof of anticipation upon their part of the Alies’ hydrochloride of l-phenyl-2-aminopropane and certainly no statement of uses or effects. 7. Hey — 1930 There remains to be considered a publication by Donald Holroyde Hey, entitled “dl-B-Phenylisopropylamine and Related Compounds,” which appeared in the Journal of the Chemical Society, London, in the year 1930 (J.Chem.Soc., p. 18, 1930). Alies applied for his patent on September 2, 1930, and the plaintiff objects to the admission of the Hey publication for the reason that only the year “1930” appears in evidence as the date thereof. The plaintiff argues that it may have been published on any day in 1930 subsequent to the date of the Alies’ application and therefore is not properly admissible in evidence. At the termination of the article appears the notation “(Received, November 1st, 1929.)” The publication is offered for the purpose of showing that Alies knew of the Jones and Wallis publication, for in an article written by him on the subject of “dl-Beta-Phenylisopropylamines,” which appeared in the Journal of the American Chemical Society in 1932 (Am. Chem. Soc., 54:271, January-April, 1932), at page 273, he* cited the Hey article as a report of a melting point of dl-b-phenylisopropyla-mine which was obtained from the reduction of phenylnitropropylene. Although the plaintiff may be technically justified in its objection, we prefer to consider the article as proffered by the defendants. Alies claims that although he cited Hey as reporting a particular melting point for a certain compound, he was not cognisant of the publication’s reference to Jones and Wallis at that time. If we assume that Alies knew of the reference in the Hey publication to Jones and Wallis, we fail to see how that strengthened the anticipatory ■effect of the Jones and Wallis publication, since its effectiveness or ineffectiveness as a. publication of prior art anticipatory of Alies’ claim does not depend upon the knowledge of Alies. History of the Alies’ Patent — 1930 Gordon A. Alies, the patentee, obtained kis degree of doctor of philosophy at the California Institute of Technology in 1926. He has worked in the fields of chemistry, physiology, pharmacology, experimental therapeutics, biology, • and experimental medicine. He became interested in making adrenaline derivatives in 1923 prior to the publications of the work of Doctors Chen and Schmidt. In 1924 he became associated as a research chemist with two doctors in Los Angeles who specialized in the field of allergic diseases, including hay fever and asthma. After 1926, when the work of Chen and Schmidt had become publicized and ephedrine had been made available in small amounts, Alies turned his attention toward the preparation of compounds that could be used as synthetic substitutes of ephedrine in order to make a greater supply of such materials available with the objective of ascertaining whether a useful drug had been found in allergic diseases that filled the clinical needs of the doctors with whom he was associated. He made a survey of ■the literature then existent and concluded that it would be possible to make a chemical compound of phenylethanolamine which would produce similar results to ephedrine in therapy. However, when prepared in a pure state and suitable for therapeutic purposes, it was found that it produced the peripheral effects of ephedrine but failed in that it did not have its duration of action and its oral effectiveness. No effect upon the central nervous system was observed when the compound was administered, even in very large dosages. Alies returned to the work after a lapse of a year spent in other research, reviewed the literature and set out to make another type of compound. This time he prepared the compound l-phenyl-2-aminopropane in the form of its salts of a purity suitable for therapeutic purposes. He carried out experiments in 1928 in the Department of Physiology at the University of California and discovered l-phenyl-2-aminopropane salts when injected into dogs and rabbits produced a blood pressure rise of long duration. He also noted that, unlike corresponding nearly related derivatives studied at the same time, this compound was orally effective in animals. He was well acquainted with the effects of ephedrine sulfate and ephedrine hydrochloride because he had administered them to himself on several occasions and was acquainted with the action on both the blood pressure and with regard to its other actions in the body. Accordingly he self-administered 50 milligrams of l-phenyl-2-aminopropane hydrochloride which he had prepared and also administered the same dosage to his associate. They observed that the effect upon the circulation consisted of a rise in blood pressure upon the first administration which was made by subcutaneous injection. This rise was both marked and prolonged, lasting for a period of about 8 hours. Alies found that when he went home he could not fall asleep and was awake the whole night. His blood pressure, taken upon his arrival at the laboratory the following morning, had returned to normal. A few days later the experiment was repeated. This time Alies took the same dosage orally and his blood pressure and circulation were watched by his associate, Dr. Miller. Again there was a similar rise in blood pressure of long duration. After a day of observation he again failed to get any sleep during the night. This made him realize that the drug had a waking effect that was many times that which he had observed with ephedrine in similar dosage. After these preliminary observations on himself Alies directed his interest toward the trial of the drug in asthma, which was the principal purpose for which he had been working upon it. Two asthmatic patients placed themselves at his disposal. They had been victims of the disease for long periods of time. The first one had suffered for the previous three years and Alies administered to him 50 milligrams of l-phenyl-2-aminopropane hydrochloride by mouth. After an hour his blood pressure started to rise and continued at a 'high level during the period of observation of the next six hours. The patient was very wakeful and alert, talked a great deal, and his blood pressure was taken from time to time. At the end of the day he was sent to his home and requested to return the next morning. He reported that he had not slept at all during the night but that he felt very well in spite of the lack of sleep. His asthma had been relieved during the whole afternoon and night, apparently as a result of the administration of the drug. The second asthmatic patient, a woman with a consistent asthmatic attack covering the previous year, also found relief from the asthma and a marked wakefulness as a result of the administration of the drug. It was necessary to administer phenobarbital to this patient to induce sleep. From his experimental work Alies says he clearly recognized that this was the first time in any compound other than ephedrine that there was evidence of two kinds of effect, typical of ephedrine from the standpoint of pharmacology and therapeutics, namely, that the compound exerted an effect upon the peripheral sympathetic nervous system, and also a very marked effect upon the central nervous system. This was in contrast with all previously known adrenaline-like compounds. Later Alies experimented with four individuals, including himself, to determine the amount of l-phenyl-2-aminopropane salt that was required to stimulate the central nervous system to effects that would persist through the day only and allow the individual to sleep at night. He administered 5 and 10 milligram dosages of 1- phenyl-2-aminopropane salts, daily, in the morning, and observed the changes of behavior during the course of the day. It was found that such dosages produced a tendency to stay awake later at night, but all of the individuals, including Alies, found that they were able to sleep successfully through the night. Such dosages on later experimentations with asthmatics were disappointing in the effect because they were insufficient to obtain effect upon the peripheral sympathetic mechanisms to satisfactorily relieve the asthma. Further experiments were made to study otheV peripheral sympathetic effects of 1-phenyl-2- aminopropane salts in relation to its toxicity in animals and to ascertain its ability to counteract the depression of barbitol hypnoses. Various other types of experiments were performed. At about this time it was reported that ephedrine had some slightly beneficial effect in the treatment of narcolepsy. Alies induced his co-worker at the University of California Medical School to make a study of the effect of his compound in the disease of narcolepsy. It was found that the 1-phenyl-2-aminopropane salt in this condition had therapeutic advantages far exceeding that which could be demonstrated by ephedrine salts. From this course of experimentation Alies concluded that he had discovered a useful therapeutic compound having effects similar to ephedrine with regard to its action upon the peripheral sympathetic mechanism and the central nervous system. The file wrapper discloses that on August 29, 1930, Alies applied for the patent. On April 18, 1931 the Examiner rejected all of his claims on the basis of two method patents (Buckner 700670, May 20, 1902, and Cole 1,378,939, May 24, 1921) and the Edeleano article in the Berichte der Deut-schen Chemischen Gesellschaft. On September 18, 1931, Alies amended his application by cancelling all of the method claims and certain words and phrases and inserting other words and phrases. This apparently satisfied the Patent Office, for on April 19, 1932, he was advised that his application would be allowed with two claims. On September 27, 1932, his patent with the two claims was allowed. On August 29, 1934, there was recorded in the Patent Office the receipt of Alies’ •disclaimer. Description and Claims It is the contention of defendants that Alies failed to “particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery” pursuant to the provisions of the statute governing applications for and issue of patents. 35 U.S.C.A. § 33. The claims, when read in the light of the specifications in order to determine their meaning, lead to the obvious conclusion that Alies claims the sulfate and the hydrochloride of l-phenyl-2-aminopropane as a new composition of matter useful for therapeutic purposes. The therapeutic purposes are further explained in the specifications by the description that the salts of the base “are physiologically active and produce effects in animals and man similar to the effect of the salts of ephedrine.” A consideration of the contention of defendants must be directed to the meaning and descriptive quality of the words “physiologically active and produces effects in animals and man similar to the effects of salts of ephedrine,” as applied to .a new composition of matter useful for therapeutic purposes. Although it is difficult to dismiss from one’s thoughts the present-day knowledge of the effects and uses of ampheta.mine sulfate and all that has been learned .about the drug since Alies’ application for a patent, it must be done in order to equitably determine whether Alies sufficiently described his discovery in 1930 to come ■within the requirements of the patent law. The discovery lies in the field of chemistry and therapeutics, more specifically in the field of compounds that act upon the central and sympathetic nervous systems of animals and man. The closest allied field known to the art in 1930 was that field in which compounds described as sym-pathomimetic amines were classified. Ephedrine was considered at that time to be one of those compounds. However, despite its effectiveness as a substance exhibiting sympathomimetic activity, it was the only drug in this field possessing the capacity to affect the central nervous system. In this respect it was not comparable to any other known drug and since the art considered these effects undesirable, no emphasis was placed upon these characteristics of the drug. A comparison of the sympathomimetic and central activity of ephedrine and amphetamine sulfate results in the conclusion that they are similar insofar as sym-pathomimetic action is concerned and both drugs possess a like degree of potency or intensity. With reference to action upon the central nervous system they are likewise similar, except that with respect to potency or intensity the action of amphetamine sulfate is considerably stronger than that of ephedrine. Prior to Alies’ discovery there existed no drug capable of having the central nervous effect of amphetamine sulfate. Initially, it was used to achieve the same effects therapeutically as ephedrine, only in greater intensity. Amphetamine sulfate was found to he decidedly superior to ephedrine in its action upon the central nervous system when used for therapeutic purposes, such as counteracting the effects of barbitol which depresses the central nervous system, in narcolepsy, in post-encephalitic parkin-sonism, in producing mood, in decreasing the appetite, in obtaining the effect of wakefulness, and in alleviating fatigue and similar states where the central nervous system stimulant effect is the primary activity. With varying degree ephedrine had been used prior to the introduction of amphetamine sulfate for each of these therapeutic purposes. Therefore, ephedrine had been completely replaced by amphetamine sulfate wherever it had been used for central stimulation. The two drugs, as far as sympathetic effects are concerned, are similar. Even as to these sympathetic effects, in many respects and for many uses, amphetamine sulfate had been found to be more effective and superior. It should be noted that amphetamine sulfate has the same high sympathetic effect of ephedrine along with a central effect produced with small dosage. In order to produce a central effect with ephedrine a large dose must be administered, which invariably results in a pronounced peripheral effect. The peripheral effect, so magnified, may be harmful to the patient to such an extent as to outweigh ,any advantages of the central effect. However, ephedrine, prior to the advent of amphetamine sulfate, was used for its central effects although cautiously. The same symptoms of anxiety complex (central effect) often produced by ephedrine could be obtained by large doses of amphetamine sulfate. Qualitatively the effects of both drugs are similar. Quantitatively, the effects are different. There are certain dissimilarities, such as the inability of ephedrine to produce warmth, well-being or a euphoric effect. Thus far we have considered the effects of both drugs on man. The effects of the drugs on animals are even more similar in so far as they are ascertainable. In 1930, amphetamine sulfate was used as a substitute for the salts of ephedrine for the reason that it produced the effect of the salts with greater intensity. Its capacity to produce these similar effects resulted in its use for practically the same therapeutic purposes as the salts of ephedrine, or to use the phrase of an expert witness, it was used for its “ephedrinelike” action. Alies intended to claim those effects that were similar to the salts of ephedrine. At that time the definition of the salts of ephedrine in contradistinction to the definition of the salts of adrenaline, the only other compound close to it in effect, meant effects upon the sympathetic and central nervous systems. His description of his discovery was based upon the art at that time. Alies then had no better way to describe his discovery to those skilled in the art in 1930. There was no confusion in the minds of skilled chemists, doctors or pharmacologists of the effect of the salts of ephedrine, and when told that a particular composition is physiologically active and has similar effects in animals and man, they would know the exact effects of such compound. Therefore, the objection by the defendants — inadequacy in description —directed towards the claims originally made by Alies, fails. Defendants submit that if the Alies’ patent is declared valid the public will be excluded from the use of amphetamine sulfate for effects which are not similar to the “practical” effects of the salts of ephedrine. The defendants persist in making comparisons between the effects of amphetamine sulfate and the “practical” effect of the salts of ephedrine. They say that the salts of ephedrine have no “practical” effect in obesity and for other clinical uses, and hence there is no comparison between amphetamine sulfate and the “practical” effect of the salts of ephedrine. We cannot agree with this position because we feel that the qualitative effects of amphetamine sulfate and the salts of ephedrine are similar. We agree that the central effect of the salts of ephedrine are quantitatively lacking in intensity compared with the effects of amphetamine sulfate. We also agree that salts of ephedrine for “practical” purposes are not as useful as amphetamine sulfate. Consequently the use of the compound is governed by the quantity of the qualitative effect desired in so far as effects are concerned. Our considerations are based upon the similarity of the qualitative effect in both compounds in the light of their therapeutic action as they have to do with sympathetic and central effects of the nervous system. We cannot presently concern ourselves with future discoveries of uses of this compound in fields unrelated to the effects it may have other than on the central and sympathetic nervous systems. We are now concerned only with what Alies has claimed as a new substance for certain therapeutic purposes. If other uses should develop for the compound and patents are claimed for those uses, the issue will then concern an old compound for an allegedly new use. Disclaimer The defendants attack the propriety of the disclaimer under the patent laws on the theory that it changed the nature of the claimed invention. They point out that if the disclaimer is improper it voids the entire patent and nothing remains to be adjudicated with reference to the charge of patent infringement in this action. In support of this proposition the cases of Milcor Steel Co. v. George A. Fuller Co., 2 Cir., 122 F.2d 292, affirmed 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332, and Altoo-na Theatres v. Tri-Ergon Corporation, 294 U.S. 477, 55 S.Ct. 455, 79 L.Ed. 1005, are submitted. The disclaimer involved in each of these cases was considered improper because it added a new element to the original claim of invention rather than limiting the original claim to that part of it which the patentee claimed as his invention. The patent in the Milcor case related to the construction of a wall which included a base member, a ceiling member, upstanding wall supports vertically movable and the means operative to prevent tilting. The inventor disclaimed any scope for these claims except, as to the ceiling member, a “vertical depending perforated flange, one side of which is overlapped by metal lathe” [122 F. 2d 293] and, as to the base member, “composed of a longitudinal strip having recesses to receive the lower ends of the webs of channel wall supports, the flanges of the ■channel wall supports overlapping the base member adjacent the recesses.” The court concluded that the limitation of the original claims by the disclaimer to the construction of the members was an addition to the original claim. The novelty consisted of the combination set out in the claims and the abandonment of a part of each claim resulted in transforming the combination into a new and different combination which the disclaimer statute could not be invoked to justify. Similarly, in the Altoona case, claims for a method of translating sound or similar vibrations to or from a film record and an apparatus for reproducing sound from vibrations recorded on a film by the use of light varied in accordance with the sound, were disclaimed so as to cover the combination only when used in conjunction with a flywheel. The court found that the flywheel was added as a new element to each of the combinations described in the claim so as to transform the original combination into a new and different combination. These cases draw a distinction between a disclaimer which limits the original claim, in that the invention claimed is a part of the original combination or composition which then can be severed from the whole without altering the combination which is claimed as an invention, and a disclaimer which although it narrows the original claim, in so doing adds an additional or new element to the original claim so as to alter or completely change a part of the original combination or composition which destroys its identity. The latter (not a valid disclaimer) is illustrated in the aforementioned cases by the addition of the flange to the ceiling and to the base members of the wall and the addition of the flywheel to the film record. In effect, the invention claimed originally and that claimed after the disclaimer must be the same invention except that it may be limited or diminished in scope and/or its parts particularized as long as the combination or composition is not altered. The decisions sustaining disclaimers as valid bear out this proposition. It is illustrated in the case of Johnson Laboratories, Inc., v. Meissner Mfg. Co., 7 Cir., 98 F.2d 937, where to a claim for a, compressed comminuted magnetic material with individual insulated particles, a disclaimer was added including the specifications that the particles should be of a particular minute size and of a specified “apparent permeability,” which disclaimer was sustained by the court, no new elements having been added and the residue including enough to support the claim. It was stated in the opinion: “ * * * Obviously, if a disclaimer purports to widen the invention and to make the claim broader, it is invalid. It cannot be used to change the character of the invention or to make a new patent. But if the reasonable intendment of the specifications is to disclose that the part disclaimed is separable from that retained, then the part disclaimed, if no new element is added, will not affect the residue provided the latter includes enough to support the claim of invention. A disclaimer is proper when the patentee has been wrong in asserting that the whole claim is new but right as to a part which constitutes invention and which does not depend upon what he disclaims.” 98 F.2d at pages 944, 945. Therefore, in the case of Cincinnati Rubber Mfg. Co. v. Stowe-Woodward, Inc., 6 Cir., 111 F.2d 239, a disclaimer of the words, “and elsewhere,” which had the effect of confining a patent relating to rolls in paper making to paper making machines, was declared valid, for it limited the claim by the exclusion of a part to a field which it might in its original form have covered. The case of Byrne Mfg. Co. v. American Flange & Manufacturing Co., 6 Cir., 87 F.2d 783, cited by the court in the Cincinnati case, was another instance where the validity of a disclaimer was sustained as not adding a new element. The original claim in that case related to the method of applying bushing to metal containers. Certain annular bushings and certain methods of applying bung rings to the metal containers were disclaimed and the disclaimer did not constitute a new element. In the instant case the original claims are (1) a salt of l-phenyl-2-aminopropane and (2) the hydrochloride of 1-phenyl-2-aminopropane as new compositions of matter. These claims are disclaimed to the extent that they are in excess of acting as a physiologically active therapeutic agent capable of producing effects in animals and man similar to the effect of salts of ephedrine. The composition to produce this effect is stated in the disclaimer to be a salt of l-phenyl-2-aminojmopane and the hydrochloride of 1-phenyl-2-aminopropane, which are the identical compositions originally claimed. The limitation or restriction of the disclaimer adds no new or additional element to the original claim of composition nor does it alter the original claim of composition so as to destroy its identity. The same invention is claimed. The authority for filing a disclaimer is found in the following statute: “Whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, his patent shall be valid for all that part which is truly and justly his own, provided the same is a material or substantial part of the thing patented; * * 35 U.S. C.A. § 65. As originally filed, Alies’ claims were for new compositions of matter. Literally as such they were meaningless, except to name chemical compositions. As mentioned heretofore, in the specifications of the patent, Alies set forth its purposes and further particularized those purposes. These references in the specifications must be read together with the claims of the patent to determine the real meaning of the claims, since nothing to which reference has been made in the specifications enlarges the claims. "The claims of a patent are always to be read or interpreted in the light of its specifications, Hogg v. Emerson, 11 How, 587, 13 L.Ed. 824; Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 22 S.Ct. 698, 46 L. Ed. 968; Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721; * * Schriber Co. v. Cleveland Trust Co., 311 U.S. 211, at page 217, 312 U.S. 654, 61 S.Ct. 235, at page 238, 85 L.Ed. 132. See, also, numerous cases following 35 U.S.C.A. § 33, notes 143 — 148, inclusive. When the claims of this patent are read with the specifications, they plainly indicate that the compounds are useful therapeutically as physiologically active in producing effects in animals and man similar to the effect of the salts of ephedrine. The disclaimer added nothing to the claims of the original patent and it may be said that it did not diminish the claims of the original patent when read in the light of the specifications. It indicated that the exact claims made by the patentee by disclaiming all in excess of “a physiologically active therapeutic agent capable of producing effects in animals and man similar to the effect of salts of ephedrine * * At most, the disclaimer left the claims of the patent where they were, but did not invalidate them. A further argument advanced by the defendants in support of their motion proceeds on the theory that the admissions of the plaintiff invalidate the original claim of invention leaving nothing to adjudicate with reference to the patent. The defendants contend that “the presumed prima facie validity of the present patent is entirely overcome by the fact that the disclaimer admits that the subject matter originally claimed was not the invention of Gordon A. Alies and that it was necessary to change the claims after the patent issued in order to distinguish what Gordon A. Al-ies claimed to have invented from what was admittedly old.” It is argued that the disclaimer rewrote the claims and what was originally alleged to be a new composition is now claimed to be a new use for an admittedly old composition which is not recognized as a patent under the law. The defendants point to the plaintiff’s answer to defendants’ request for admission under Rule 36 of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, in which— “* * * plaintiff admits that on August 29, 1934, Gordon A. Alies knew that the subjects-matter: “ T. As a new composition of matter, a salt of l-phenyl-2-aminopropane. “ ‘2. As a new composition of matter, the hydrochloride of l-phenyl-2-aminopro-pane.’ respectively, included that of which he was not the inventor and a