Catalin Corp. v. Catalazuli Mfg. Co. (79 F.2d 593, 1935)

L. HAND, Circuit Judge.

This is the usual suit in equity upon patent 1,854,600, for a product and process; the only claims in suit are for the process and only four of those, 1, 2, 3 and 5. The product is a chemical combination of carbolic acid (phenol), and formaldehyde, whose supposed novelty lies in its physical, as distinguished from its chemical, characteristics. Lt is in the form of a “gel,” a word denoting the hardening of a colloidal solution, or “sol.” In a true solution the molecules of the dissolved substance are thought of as being dissociated, separate “little masses” moving freely amid the molecules of the solvent; in a colloid the theory is that they group themselves together and move in clusters which keep their integrity. A well known reaction between phenol and formaldehyde takes place when the two substances are heated in the presence of an alkaline catalyst, and the “condensation product” takes a colloidal form. This colloid may then be neutralized by acid, and distilled until it' becomes a “gel,” that is, until enough water is driven off to trap the rest as imprisoned droplets in microscopic cellules from which they cannot escape. In this stage the “gel” is still viscous so that it can be poured into moulds where it is hardened by further heating. An opaque stuff results, which looks like ivory, is tough and has high tensile strength, owing to the droplets evenly distributed throughout its reticulated texture; the minuteness of these determine its gross characteristics. The defendant attacks the patent upon several grounds; it 'says that the patentee is estopped to read the claims as it must read them to succeed; that the specifications are insufficient for the practice of the invention; that the putative invention was anticipated, and that so far as it was- not, it was obvious; that the defendant does not infringe; that the judge erred in refusing to admit a later patent of the plaintiff's. Judge Galston has written an opinion (D. C.) 11 F. Supp. 603, which finds the facts fully; and, except in so far as we indicate otherwise, we accept his findings as we do his conclusions.

The first question is as to the supposed estoppel arising from what took place in the prosecution of the application through the Patent Office. What is now claim one previously read as follows : “A process for the manufacture of condensation products of a phenolic body and formaldehyde, which comprises producing a colloidal solution of a condensation product the composition of which is in the proportion of one molecule of phenolic body to about two and a half molecules of formaldehyde, by reducing the dispersity of a highly disperse system and thereafter allowing the sol thus produced to set into a gel which is then hardened by heat.” In place of the italicized words the following were substituted: “In the presence of excess of alkali, neutralizing the excess alkali and thereafter removing sufficient water from the sol to give a gel and thereafter hardening the gel by heat.” We have often said that we would not look at the arguments used by solicitors to the examiners; specifications. are intended to be the measure of the monopoly and of the contribution to the art. In each aspect they should be self-contained; that is the very purpose of their embodiment in a formal grant, which is all that .is accessible to the public without much trouble and vastly more uncertainty. If the doctrine of the "integration” of a written instrument has any basis at all, surely it should apply to such a document, for if a patent can be construed only by threading one’s way through all the verbal ingenuities which casuistical solicitors develop to circumvent the' objections of examiners, a labyrinth results, from which there is no escape. For this reason we have steadily refused to look further than to learn this: whether a patentee who seeks to disavow an element of his claim, was forced to introduce it in order' to avoid rejection. Westinghouse Electric & Mfg. Co. v. Condit Electrical Mfg. Co. (C. C. A.) 194 F. 427; Id. (C. C.) 194 F. 430; Auto Pneumatic Action Co. v. Kindler & Collins (C. C. A.) 247 F. 323, 328; A. G. Spalding & Bros. v. John Wanamaker (C. C. A.) 256 F. 530, 533, 534; Baltzley v. Spengler Loomis Mfg. Co. (C. C. A.) 262 F. 423, 426; General Electric Co. v. P. R. Mallory Co. (C. C. A.) 298 F. 579, 586. It is clear that the amendment just set out does not come within this exception; the phrase, “reducing the dispersity of a highly disperse system,” was really not descriptive of any steps in the process, but of the result of several of them; formally at least it was therefore objectionable as functional; the substitute described the process and introduced no new element which the plaintiff now asks to disown.

The next challenge is to the sufficiency of the disclosure for practicing the invention. It is quite true that the degree of heat and the length of heating the original mix are nowhere given. The general directions (page 2, lines 37-42), are merely to heat the proper proportion of phenol and formaldehyde with so much “condensing agents having basic properties” that the product will remain in solution. In example one the condensing agent is added'when the mix (with a little hydrochloric acid added) has been boiled till the “condensation product” separates. It is not heated at all thereafter, and the acid is added when the exothermic reaction “begins to weaken.” In example two the first mix contains very little of tjie condensing agent and only a third of the formaldehyde; it is boiled till an “oily layer” separates off. Then the rest of the formaldehyde and a little acid are added and it is boiled again for thirty minutes, when the bulk of the condensing agent is added, after which it is boiled a third time till the exothermic reaction has “ceased.” In example three the mix is complete at the start, and is “heated” until the exothermic reaction “sets in, after which” the acid is added; that is, during, or after the conclusion of, the reaction. It seems to us that from all this the extent of heating both in time and'degree is plain enough, though not quantitatively specified. Whether the process so described will produce the stuff is another question. Again as to distillation, the general direction is to distill until “the sol * * * gelatinizes in the presence of heat” (page 2, lines 18-20); “the resulting sol being caused to gelatinize” (page 2, lines 43, 44) ; is “thickened to gelatinization” (page 2, lines 119, 120). The examples say that the distillation should go on till “the product is clear” (page 3, line 49), and there is a difference in the testimony as to whether that may not be before the distillation is complete. We need not resolve that dispute, because it is plain that the disclosure means that the “sol” shall be concentrated by distilling (heating in a partial vacuum) until it is thick enough to become a “gel.” Though the time is not given in minutes, the heat in degrees, or the vacuum in subatmospheric pressure, there is not the least reason why it should be. If any one found that when “the product is clear,” it does not “gel,” he would, if he had common sense, distill it further. In practice the gelling point is determined by trial, just as a cook tries out her jellies. Finally, it appears that in the final stage — hardening the “gel” —the practice is to heat for from five to seven days, according to the size of the batch, rather than for the four days specified in the examples. Once more, if one were bent on making the process fail, this might be an excuse; but people who are familiar with the customary manipulation of these “condensation products” ought not to find difficulties. So much therefore for the formal sufficiency of the directions. As to their adequacy to direct skilled persons, it is enough to say that Judge Galston, who saw the witnesses, believed that they had actually made the stuff by following the recipe; we see no reason to question that finding.

The only stricture that seems to us at all serious is that the specifications do not expressly forbid the use of hydrochloric acid as a neutralizer, though, according to the plaintiff’s testimony, this would prevent the formation of any “gel” at all. The general directions merely are that the solution shall be “neutralized” (page 2, line 17; line 119); and hydrochloric acid in very small quantity is part