
    360 F. 2d 948
    YOSEMITE CHEMICAL COMPANY v. THE UNITED STATES
    [No. 62-58.
    Decided May 13, 1966.
    Defendant’s motion for reconsideration denied July 15, 1966]
    
      
      Keith Misegades, attorney of record, for plaintiff.
    
      Martin Avin, with whom was Assistant Attorney General John W. Douglas, for defendant.
    Before CoweN, Chief Judge, Laramoee, Dukfee, Davis and ColliNS, Judges.
    
   Per Curiam :

This case was referred to Trial Commissioner Donald E. Lane who, on July 8,1965, filed a report consisting of his opinion, findings of fact and recommendation for conclusion of law. Exceptions and briefs were filed by the parties and the case was submitted to the court on oral argument of counsel. Since the court is in agreement with the opinion and recommendation of the commissioner, with modifications, it hereby adopts the same, as modified, as the basis for its judgment in this case, as hereinafter set forth. The court concludes, therefore, that claim 7 of TJ.S. Letters Patent 2,603,226 is invalid, that claims 1-5, inclusive, of said patent are valid and have been infringed, that plaintiff is entitled to recover, and judgment is entered for plaintiff to that extent with the amount of recovery to be determined pursuant to Rule 47(c) (2).

Commissioner Lane’s opinion, as modified by the court, is as follows:

This is a patent suit arising under the provisions of 28 TJ.S.C. § 1498 for the recovery of reasonable and entire compensation for unlicensed use of the alleged invention described and claimed in TJ.S. Letters Patent 2,603,226, issued July 15, 1952, upon the application filed November 7, 1947, by Noble C. Smith, now deceased. The patent was duly assigned to plaintiff, a California corporation, by the executor of the inventor’s estate, so that plaintiff was the assignee and owner of the patent both at the date of its issuance and at the date of the filing of this suit. The parties agreed at pretrial that this court has jurisdiction over all the issues raised by the petition and answer, and that the issues of patent validity and infringement should be first determined, with any accounting issues to be deferred until resolution of the question of liability. Patent claims 1 through 5 and claim 7 are in issue here. It is concluded that claims 1 through 5 of the patent are valid and have been infringed by defendant’s procurement and use of the Eureka Chemical Company’s compositions E-220 and E-221. Claim 7 of the patent is found to be invalid.

Tire patent in suit, hereinafter referred to as the Smith patent, discloses a method for preventing and removing the accumulation of various materials such as rust, scale, marine growth and the like from metal surfaces such as the compartments of marine dry docks by the use of emulsifying agents. Claims 1 through 5 of the patent relate to a two-stage process for the removal of foreign materials from the said surfaces, while claim 7 defines a single-step process which merely prevents such substances from accumulating upon clean or cleaned surfaces.

The two steps comprising the removal process defined by claims 1 through 5 include: first, use of an emulsifying agent in oil capable of forming with water a water-in-oil viscous gel emulsion, which upon contact with a rusted or corroded surface will by its inherent swelling characteristics mechanically break the foreign materials from the surface; and second, use of an oil soluble thinner capable of reducing the viscosity of the gel emulsion formed in the first step, so that the said emulsion and the materials which adhere to it may be loosened from the surface and removed. The purely preventative process detailed in claim 7 differs from the removal process recited in claims 1 through 5 in that the separate step of applying an oil soluble thinner to reduce the viscosity of the gel is eliminated.

One of the primary applications of the two-step process of claims 1 through 5 of the Smith patent, and the one relevant to the present infringement suit, involves its use in cleaning the inner walls of the ballast tanks of ships or marine dry docks. In this process the emulsifying agent in oil is floated upon the surface of a body of water inside of a tank. As the level of the water is caused to rise and fall, the emulsifying agent is progressively deposited upon all the inner surfaces of the tank, where it begins to emulsify and to penetrate behind the foreign materials and break them loose from the surface. In a few days, after the gel emulsion has completely formed and has successfully broken away the foreign materials, the oil soluble thinner is applied in order to reduce the thickness of the gel formed so that gravity flow and subsequent submersions may carry away the materials which have been Broken from the surface and which adhere to the gek

In the original claims which accompanied his application for the patent, the patentee described the agent to be used in the first step of the process merely as an “emulsifying agent in oil capable of forming a water-in-oil emulsion.” The Patent Office examiner rejected the original claims presented on the grounds that they: (1) were anticipated by prior art, and (2) were not sufficiently definitive as to the ingredients of the emulsifying and thinning agents to be employed. In response to this rejection, and several subsequent rejections, the inventor canceled, amended, and added claims in order to cure the defects noted by the examiner. Eventually, seven claims were approved, all of which included a specific recital that the agent to be used in promoting the viscous gel emulsion be comprised of a “fatty acid soap [or organic soap] of a divalent metal.”

Defendant urges, first of all, that the Smith patent is invalid on the grounds that the invention had been fully anticipated by the prior art (85 U.S.C. §§ 101, 102), and that the invention would have been obvious to those skilled in the art at the time it was devised (35 U.S.C. § 103). In support of this contention, defendant has introduced several earlier patents to establish the fact of anticipation and to show the general state of the art. Most significant is the Wakefield patent (British Patent 469,889, August 4, 1937), which discloses a lubricant for preventing corrosion of metal working parts, particularly the parts of rock-drills used in mines where acidic water is encountered. This patent teaches that corrosion may be prevented by the use of a lubricating oil containing a fatty oil or wool-wax (a cruder form of lanolin) and one or more of the soaps of calcium or barium (inter alia), in such proportions that the lubricant is capable of absorbing the water to form a water-in-oil emulsion. The compound recommended by Wakefield to prevent corrosion is chemically similar to that contained in the Smith patent, and the teaching of Wakefield anticipates claim 7 of the Smith patent, which likewise defines a process for the prevention of rust. The Wakefield patent, however, does not anticipate claims 1 through 5 of the Smith patent, for it would not have been obvious for a person of ordinary skill in the art of removing marine corrosion to look to and modify the Wakefield teaching, which relates primarily to lubrication and to corrosion prevention.

The references submitted by defendant show that it would have been obvious for a person seeking a method of applying a chemical compound to the inner surfaces of a marine tank to employ the “flotation” method described by Smith in claim 5 and in the specification of his patent. This method for coating the interior surfaces of closed containers by floating a chemical upon a body of water was well known in the field of paint or chemical application prior to the time the patentee filed his application. None of the references, however, discloses the use of such a chemical composition as that recommended by Smith to remove the corrosion from said surfaces.

The patents cited by defendant do not individually anticipate the invention defined in claims 1 through 5 of the Smith patent; and it would not have been obvious to combine and modify the teachings of these patents, drawn from diverse arts, into the one process defined and claimed by Smith. In summary, it is found that claim 7 of the patent in suit is invalid in view of the prior disclosure of the Wakefield patent, and that claims 1 through 5 are valid over the prior disclosures submitted.

Defendant asserts that even if the patent claims are distinguishable from the prior art, they are invalid due to indefiniteness and ambiguity under 35 U.S.C. § 112. It is contended that the patent specification discloses only one example of an emulsifying agent in oil that would work to produce a viscous gel emulsion, namely “calcium lanolate,” a term not found in the ordinary chemical dictionary. According to defendant, this term is imprecise and would not be understandable by one of ordinary skill in the field of chemistry who wished to employ the teaching of the patent.

It is the patent claims which measure the invention. See Chesterfield v. United States, 141 Ct. Cl. 838, 844, 159 F. Supp. 371, 374 (1958); Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143 (1942). The Smith patent claims specify that the active ingredient to be used in the first step of the removal process is “an emulsifying agent in oil, said agent comprising a fatty acid soap [or organic soap] of a divalent metal.” This terminology is in itself a definitive disclosure that would enable a person skilled in the art to practice the invention. “Calcium lanolate” is suggested in the specification as one example of such a fatty acid soap. This term should be understandable to the ordinary chemist; but in any case, the patent claims and specification do not limit themselves to this particular example and are sufficiently definitive and unambiguous to be valid.

Defendant urges also that the patent claims are inoperative due to overclaiming, in that they are so broad and generic in nature as to encompass a variety of chemical compounds that would not serve the function of the invention. The assertion is made that substantial experimentation would have to be undertaken by one wishing to follow the teaching of the Smith patent in order to determine which specific divalent metal soaps would be effective in producing the viscous gel emulsion required in the removal step of the patented process. See Chesterfield v. United States, supra; Cooke v. United States, 113 Ct. Cl. 65, 81 F. Supp. 1018 (1949); Corona Cord Tire Co. v. Dovan Chem. Corp., 276 U.S. 358 (1928).

It appears that not all substances technically falling within the general category of “fatty acid or organic soaps of a divalent metal” will work to promote sufficiently viscous water-in-oil emulsions. But the fact that there may be, and indeed are, certain divalent metal soaps that do not work in the invention, however, will not invalidate the patent claims per se. Union Oil Co. of Calif. v. American Bitumuls Co., 109 F. 2d 140 (9th Cir. 1940); Binks Mfg. Co. v. Ransburg Electro-Coating Corp., 281 F. 2d 252 (7th Cir. 1960). Broad statements of the law to the effect that a patent mnst describe the invention with a great degree of precision must be read in light of the circumstances of each individual case. Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F. 2d 124 (2d Cir. 1958), cert. denied 358 U.S. 884 (1958). The relevant patent statutes require that the claims be adequately described to indicate their true content and scope, but the disclosure called for need not be greater than that which is reasonable under the circumstances, having due regard to the nature of the subject matter involved. In re Hudson, 205 F. 2d 174, 40 C.C.P.A. (Patents) 1036 (1953). The inventor is not to be deprived of the fruits of his labor by too technical a requirement of disclosure, and it is adequate for purposes of validity if his claims are sufficiently clear and exact to be understandable by those skilled in the relevant art. Lever Bros. Co. v. Procter & Gamble Mfg. Co., 139 F. 2d 633 (4th Cir. 1943); Hazeltine Research, Inc. v. Dage Elec. Co., Inc., 271 F. 2d 218 (7th Cir. 1959); Research Prod. Co. v. Tretolite Co., 106 F. 2d 530 (9th Cir. 1939). In the present suit the evidence as a whole fails to corroborate defendant’s assertion, based upon the Chesterfield case, supra, that substantial experimentation would have to be undertaken to determine which compounds falling within the literal range of the claims would be effective for use in the removal process. The Chesterfield case is distinguishable from the case at bar. In that case, the patent claims, relating to the use of certain alloys of nickel and cobalt, were quite indefinite, considering the crowded state of the art — covering broad ranges of compositions, many of which were taught by earlier patents. In the present suit, to the contrary, the claims are relatively narrow, and the ordinary chemist skilled in the art would know or could ascertain beforehand which organic soaps of a divalent metal form satisfactory viscous emulsions without baying to conduct independent experimentation. Moreover, the patent specification assists those who would practice the invention by identifying certain chemical compositions that do in fact work. See Union Oil Co. of Calif. v. American Bitumuls Co., supra. Thus, although it can be said that the general term “fatty acid or organic soap of a divalent metal” may technically encompass certain inoperative species, the claims, by themselves, or as read in light of the specification, may be readily comprehended by those skilled in the art, do not cover inoperative species, and would pose no particular problems in application. See Locklin v. Switzer Bros., Inc., 299 F. 2d 160 (9th Cir. 1961), cert. denied, 369 U.S. 861 (1962). Hence, the patent claims are sufficiently clear and descriptive to serve the purposes of the invention, and are not so broad as to be invalid. Lever Bros. Co. v. Procter & Gamble Mfg. Co., supra; Hazeltine Research, Inc. v. Dage Elec. Co., Inc., supra; Application of Storrs, 245 F. 2d 474, 44 C.C.P.A. (Patents) 57 (1957).

The infringing acts alleged by plaintiff involve the procurement and use by the Navy of certain chemical compounds supplied by two manufacturers, the Eureka Chemical Company and the Clearkin Chemical Company, during the 6-year period from September 8, 1952, to September 8, 1958. On March 23,1954, the Navy issued a procurement specification to cover a chemical composition capable of removing and preventing rust in the ballast tanks of various ships. The specification outlined the method to be followed in the application of the chemicals to the tanks, and in this respect it parallels very closely the flotation method recited in claims of the Smith patent. The dispute as to patent infringement here essentially concerns the question of whether defendant’s use of certain chemicals in this method stated is covered by cl aims 1 through 5 of the patent in suit.

In the proceedings before the Patent Office, the patentee inserted into his claims a recital that the emulsifying agent to be used in the first step of his process be comprised of a “fatty acid [or organic] soap of a divalent metal.” The original claims accompanying the patent application were substantially broader in scope, in that they merely disclosed use of “an emulsifying agent in oil,” without specifying what the ingredients of such a substance might be. The Patent Office examiner rejected all of the original claims and several supplemental claims for lack of invention and for indefiniteness, and in response the patentee narrowed his claims by introducing the limiting element of a divalent metal soap. All of the claims eventually approved by the Patent Office include this limitation.

It is a rule of patent construction that the claims of a patent must be read and interpreted with reference to claims that have been canceled and rejected. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942); Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-1 (1940); Martin v. United States, 86 Ct. Cl. 311, 378-9 (1938). Where an applicant has been compelled by the rejection of his application for patent to narrow his claims by the introduction of an essential element of limitation, he is thereafter bound by the limitation thus inserted, and his patent claims cannot be accorded such a scope of interpretation as would in effect reinstate the original claims. Straussler v. United States, 154 Ct. Cl. 275, 280-1, 290 F. 2d 827 (1961); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784 (1931). Plaintiff’s contention that the use of any emulsifying agent in oil in the method steps outlined in the Smith patent would constitute infringement cannot be sustained in light of the pertinent file wrapper history, as the patentee here specifically narrowed each of his original claims to recite emulsifying agents comprised of a fatty acid or organic soap of a divalent metal. This recital was inserted in order to obtain issuance of the patent in the first place, and plaintiff therefore can claim patent protection only as to the use of such emulsifying agents as contain this particular material. See Haliczer v. United States, 174 Ct. Cl. 507, 514, 356 F. 2d 541, 544-45 (1966); Lavelle Aircraft Corp. v. United States, ante, pp. 325, 328, 358 F. 2d 1005, 1007-8 (1966).

During the 6-year period covered by this suit, the Eureka Chemical Company, pursuant to the above-mentioned procurement specification, furnished the Navy with two compounds, designated E-220 and E-221, for use in the treating of metal surfaces by the two-step process indicated by the Smith patent. E-220, used in the first step, contained an emulsifying agent in oil comprised of lanolin or wool fat and a fatty acid soap of calcium — a divalent metal. This composition satisfied the Navy’s testing requirements, forming a rigid gel emulsion and successfully penetrating and loosening corrosion. E-221, a compound comprised mostly of diesel oil, was used in the second step of the process, to reduce the gel viscosity. Defendant’s use of the E-220 and E-221 compounds in the method stated in the Navy specification is covered by claims 1 through 5 of the Smith patent in suit.

During the 6-year period in question, the Clearkin Chemical Company furnished the Navy with certain compositions pursuant to said specification. The Clearkin composition designated “Corrosion Battler A” contained lanolin or wool fat, but only trace amounts of a divalent metal. The president of the company stated by affidavit that no divalent metal was intentionally added to this compound by the company. Although laboratory analysis of the ash content of “Corrosion Battler A” did in fact reveal certain traces of various metals, both monovalent and divalent, the amounts found • were insignificant and could likely be attributable to sources other than the soap of the compound. The Clearkin composition “Corrosion Battler A” does not in effect contain any “soap of a divalent metal,” and this compound therefore cannot be said to infringe the Smith patent claims, all of which are specifically directed to emulsifying agents comprised of a fatty acid or organic soap of a divalent metal.

Plaintiff also alleges infringement of its patent by a compound known as Texaco Float Coat, supplied to the Navy by the Texas Company, although it does not rely on this fact for a showing of specific liability in the case. No proof has been submitted as to the composition of Texaco Float Coat.

In summary, it is concluded that claim 7 of the Smith patent in suit, relating to a single-step process for the prevention of rust, etc., is invalid in view of the disclosure of the prior Wakefield British patent. Claims 1 through 5 of the Smith patent are found to have been infringed by defendant’s use of the Eureka Chemical Company’s compounds E-220 and E-221 in the flotation method for removing rust. Defendant’s use of the Clearkin Chemical Company’s composition “Corrosion Battler A” [and Texaco Float Coat] is found not to come within the invention defined in claims 1 through 5 of the Smith patent.

It is recommended that a judgment be entered for the plaintiff on the issue of liability, and that the case be remanded to the commissioner for further proceedings under Rule 47(c) (2) to determine the amount of recovery.

FINDINGS oe Fact

1. This is a patent suit arising under the provisions of 28 U.S.C. § 1498 for reasonable and entire compensation for unlicensed use of the alleged invention described and claimed in U.S. Letters Patent 2,603,226, issued July 15, 1952, upon the application, filed November 7, 1947, by Noble C. Smith, now deceased. The patent, entitled “Method for Preventing and Removing Accumulations of Foreign Materials,” was duly assigned to plaintiff, Yosemite Chemical Company, by Frank J. Keaton, special administrator of the estate of the said Noble C. Smith. Plaintiff is a corporation organized and existing under the laws of the State of California, and was the assignee and owner of the patent both at the date of its issuance and at the date of the filing of this suit.

2. The parties agreed at pretrial that this court has jurisdiction over all the issues raised by the petition and answer, and that the issues of patent validity and infringement should be first determined, with any accounting issues to be deferred until resolution of the liability issues. The petition was filed on February 14,1958, and it was stipulated that recovery, if any, is limited to the 6-year period of September 8, 1952, to September 8,1958.

3. The patent in suit, hereinafter referred to as the Smith patent, discloses a process for preventing and removing the accumulation of such materials as rust, scale, dirt, and marine growth from various surfaces by the use of emulsifying agents. Use of the process in flotation tanhs of marine dry docks constitutes one of its primary applications, and the one relevant to the present suit. The patent contains 7 claims, but plaintiff has withdrawn claim 6 from consideration; so the only claims in issue here are claims 1 through 5 and claim 7. Claims 1,6 and 7 are typical and read as follows:

Claim 1
The process for removing material such as rust, scale and the like from a metal surface comprising the steps of: filling the interstices in said material and between said material and said surface with an emulsifying agent in oil, said agent comprising a fatty acid soap of a divalent metal automatically adapted to and capable of forming with water a water-in-oil viscous gel emulsion adapted to expand during its formation; providing the water to the agent so filling said interstices; permitting the formation of said gel emulsion in said interstices whereby its. expansion during said formation will tend to loosen said material from said surface; thinning said gel with an oil soluble thinner capable of reducing the viscosity of the gel to facilitate its removal from said surface together with the material so loosened from said surface.
Claim 5
The process for removing material such as rust and scale from the metal side walls of a container that comprises the steps of: providing a body of water against said walls, floating an emulsifying agent in oil on the surface of said body and in contact with said walls, said emulsifying agent being an organic soap of a divalent metal having the characteristic of adhering to said walls together with water upon raising and lowering the level of said body and of forming a water-in-oil emulsion with said water after it has so adhered to said walls, raising and lowering.the level of said body to cause said adherence and coating of said walls and the said formation of said emulsion on said walls, said emulsion having the further characteristic of being expansible during its formation whereby its said expansion between the metal surface of said walls and any of said material will force said material from said walls and into the emulsion coating said walls, then reducing the viscosity of said emulsion by applying an oil soluble agent thereto, said agent being capable of reducing the viscosity of said emulsion so that the emulsion and any of said material will fall from said walls.
Claim 7
In the process for preventing the accumulation of material such as rust, scale and the like on a clean metal surface, the steps of applying to the surface to be protected an oil containing an emulsifying agent, said agent having the property of forming a water-in-oil emulsion with said oil containing said agent, said emulsifying agent being an organic soap of a divalent metal, applying water to said coated surface to effect the formation of said water-in-oil emulsion and subsequently recontacting said coated surface with water to maintain said water-in-oil emulsion.

4. Patent claims 1 through 5 relate to a process for the removal of the foreign materials from metal surfaces, while claim 7 concerns the preventative process of keeping such materials from accumulating upon clean or cleaned surfaces. The removal process covered by claims 1 through 5 contains two basic steps: first, use of an emulsifying agent in oil, defined in claim 1 as a fatty acid soap of a divalent metal, and in claims 2-5 as an organic soap of a divalent metal, such as will form with water a water-in-oil viscous gel emulsion, and which upon contact with a rusted or corroded surface will by its inherent swelling characteristics mechanically break the foreign materials from the surface to be cleaned; and second, use of an oil soluble thinner capable of reducing the viscosity of the already-formed gel emulsion, so that the emulsion and the materials which it has removed and which adhere to it may be loosened from the surface and easily removed. Claim 7 is directed specifically to preventing rust and omits the application of an oil soluble thinner.

5. The first five patent claims, in defining the nature of the rust removal process, recite methods of applying the chemical agents to form the desired emulsion such as (1) filling the interstices in the foreign materials and the spaces between the materials and the surface to be cleaned with the emulsifying agent in oil (soap of a divalent metal); providing the water to the agent so filling the interstices; and permitting the formation of the viscous gel emulsion in the interstices, thereby loosening the foreign matter from the surface; or (2) coating the metal surface with the emulsifying agent in oil and in the presence of water so as to form the emulsion; or (3) depositing between the foreign materials and the surface to be cleaned a fluid containing the emulsifying agent in oil, with the said fluid forming an expansible emulsion when water is provided. Claim 4 recites floating the emulsifying agent in oil on a body of water, and then immersing the corroded surface in the water below the agent and before the formation of the emulsion; and then withdrawing the surface through the agent such that the latter will adhere to the surface; and claim 5 recites providing a body of water against the metal side walls of a container, and floating the agent upon the surface of the water and in contact with the walls, then, coating the walls of the container with the compound by the action of raising and lowering the level of the body of water. This last method of application is the one most commonly used in the ballast tanks of marine dry docks and is referred to by the parties as the “flotation” method.

6. In the specification of the patent, the inventor asserted that in the removal of the foreign materials, the prior art had generally required that these materials be dissolved or chemically changed, while his own process is dependent upon a purely mechanical phenomenon.

7. The main distinction between the cleaning process contained in claims 1 through 5 and the purely preventative process of claim 7 lies in the elimination in the latter process of the separate step of applying an oil soluble thinner to break down or reduce the thick gel.

8. Defendant urges that the Smith patent is invalid on the grounds that the invention was fully anticipated by the prior art (35 U.S.C. §§101, 102), and that the invention would have been obvious to those skilled in the art at the time it was made (35 U.S.C. § 103). In support of its contention, defendant relies on four patents to establish, the fact of anticipation, identified as follows:

1. Allen_ 63,453 1867
2. Wakefield (British)_ 469,889 1937
3. DeGroote_ 2,086,215 1937
4. Wandel _ 1,565,536 1925

9. The Allen patent discloses a method for preventing and removing “incrustation” from steam boilers by the use of hydrocarbons such as crude petroleum. This 1867 patent suggests the use of the “flotation” process described in claim 5 of the Smith patent as one satisfactory method of applying the petroleum to coat the inner surfaces of a boiler shell. The Allen patent, however, contains no suggestion as to the use of emulsifying agents or chemical compounds similar to those mentioned in the Smith patent.

10. The Walcefield patent relates to a lubricant for preventing corrosion of metal working parts, particularly the parts of rock-drills used in mines where acidic water is encountered. This British patent discloses that the said lubricant is comprised of a lubricating oil, wool-wax (a cruder form of lanolin), and one or more of the soaps of either a monovalent or divalent metal. The Wakefield patent specification specifically states that corrosion of metals subjected to acidic water is prevented by the use of a lubricating oil containing one or more of the soaps of calcium or barium {inter alia) in such proportions that the oil absorbs the water to form a water-in-oil emulsion. Wakefield recommends a compound similar to that disclosed in the Smith patent, and speaks of its use as a corrosion preventative, but only as incident to its primary application as a lubricant for mining machinery. The teaching of Wakefield does not anticipate the invention defined in claims 1-5 of the Smith patent. It would not have been obvious for a person of ordinary skill in the art of removing marine corrosion to look to and modify the teaching of the Wakefield patent, which relates primarily to the lubrication of mining drills. However, the teaching of the Wakefield patent does anticipate Smith patent claim 7 which defines only a process for preventing rust.

11. The DeGroote patent discloses a method for breaking down water-in-oil type petroleum emulsions into component parts by use of a demulsifying agent such as a sulfonated hydrocarbon. Defendant asserts that the use of an oil soluble thinner as the second step in the Smith process to break down the viscous gel emulsion formed by the first step is precisely taught by the DeGroote patent. DeGroote, however, uses the demulsifying agent to completely break down the petroleum into its components and separate the water from the emulsion. The object of the second step of the Smith process, on the other hand, is to merely reduce the viscosity of the water-in-oil gel emulsion, such that some would still remain to protect the walls of the tank. The teaching of the DeGroote patent, drawn from the remote art of petrochem-istry does not anticipate step 2 of the Smith method. It would not have been obvious to a person of ordinary skill in the art to use the DeGroote method in removing rust and scale.

12. The Wandel patent, cited as a reference by the Patent Office examiner, discloses a method for the removal of rust on metal articles by the use of a water, oil, and soap emulsion. This patent teaches the application of a paint-like material to relatively dry metals, the material being allowed to dry and form a film, and then removed from the metal surface by peeling or scaling. Although the Wandel patent process employs a somewhat similar chemical compound, it depends for its effectiveness on the drying of the film created, while the Smith process provides for the reapplication of water in order to maintain the emulsion. The conditions prevailing in the flotation tanks of marine dry docks are not conducive to use of the Wandel method, and it would not have been obvious how to apply its teachings to the method disclosed by Smith, where water is constantly present.

13. Defendant asserts that it would have been obvious for a skilled person to combine the teachings of the above patents and arrive at the process claimed by Smith in his patent, namely: (a) use of the “flotation” method of application disclosed by Allen to coat the interior of a closed container with rust-removal materials; (b) use of a water-in-oil emulsion to remove or prevent corrosion as shown by Wake-field or Wandel; and (c) use of a demulsifying agent as in DeGroote to subsequently break down the said emulsion. The cited patents, however, are drawn from diverse arts— diverse from one another, as well as from the art of the Smith patent in suit. These patents do not individually anticipate the invention defined in the claims of the Smith patent, and it would not have been obvious to combine the teachings of these three non-analogous patents into the process defined and claimed by Smith.

14. Defendant also cites four patents to show the general state of the art, identified as follows:

1. Taylor- 1, 850, 700 1932
2. Ruedrieli- 2,309,102 1946
3. Roden- 2,374, 565 1945
4. Johnston- 2,415,353 1947

15. The Taylor patent, cited by the Patent Office examiner, discloses a method of applying “paint and the like” to a surface, particularly to the inside surfaces of a tank, by placing a quantity of paint in the bottom of the tank and gradually introducing water below it such that the paint will float upon the water. As the water level is raised the paint floats to the top of the tank, coating all surfaces in the process. Unlike the Smith method, which deals with the actual cleaning of corroded surfaces, the Taylor process requires that the walls of the tanks first be clean and dry before they are to be painted. It would have been obvious for a person seeking a method of applying a chemical compound to the inner surfaces of a marine tank to look to and employ this “flotation” method, which was a matter of common knowledge in the field of paint or chemical application.

16. The Ruedrioh patent teaches that it would be old to use a mixture of lanolin or lanolin saponified by calcium as a rust preventative for metals in storage for extended periods. The Roden patent discloses a non-drying rust preventative composition adaptable for use on corroded metallic surfaces, particularly those that have been severely exposed to acids and salt brine. The composition is comprised of a homogeneous mixture of oil, wool fat, and a heavy metal salt of a high molecular fatty acid. The Johnston patent teaches that soaps of alkali metals, such as potassium or sodium, tend to promote the formation of oil-in-water emulsions, while soaps of polyvalent metals such as calcium tend to promote water-in-oil emulsions. These three state-of-the-art patents relate to various types of chemical compounds which have been used to remove or prevent rust, but they fail to establish with clarity that the Smith method would, as a whole, have been obvious at the time it was devised to a person having ordinary skill in the art of corrosion prevention.

17. Defendant asserts that the claims of the Smith patent, in reciting use of “an emulsifying agent in oil, said agent comprising a fatty acid soap [or an organic soap] of a divalent metal,” are invalid due to indefiniteness and ambiguity (35 U.S.C. § 112), since the sole example of such an emulsifying agent or soap disclosed by the specification is “calcium lanolate,” a term not found in the ordinary chemical dictionary. According to defendant, this term would not be understandable to one of ordinary skill in the field of chemistry who wished to employ the teachings of the Smith patent. Plaintiff, on the other hand, maintains that “calcium lanolate,” is a term generally understood in the art and would create no special problems for the ordinary chemist in interpreting the claims and specification of the Smith patent. The patent specifies that the active ingredient to be used in the first step of the removal process is an emulsifying agent in oil capable of forming a viscous gel emulsion, such agent comprising a fatty acid or organic soap of a divalent metal. “Calcium lanolate” is merely suggested in the specification as one example of such an agent. The patent claims are not limited to this particular compound, and are sufficiently definite and unambiguous to be valid.

18. Defendant urges that patent claims 1 through 5 and claim 7 are invalid for being inoperative, failing to perform their intended function due to overclaiming of the invention. The basis of this contention is that the said claims are so broad and generic in nature as to encompass a variety of inoperative species, and that substantial experimentation would have to be undertaken by one wishing to use the invention to determine which specific chemical compounds falling within the broad range of the claims would be effective in serving the purposes of the invention. The patent claims recite the use of a fatty acid soap or organic soap of a divalent metal as the emulsifying agent in oil required to form the prescribed viscous gel emulsion. Not all fatty acid soaps or organic soaps of a divalent metal will work to form water-in-oil viscous emulsions. The patent specification identifies chemical compounds that are effective.

19. With his original application for the patent in suit, filed November 7,1947, the patentee presented 13 claims, none of which called for soaps of a divalent metal, but referred merely to an “emulsifying agent in oil capable of forming a water-in-oil emulsion.” On April 20, 1949, the Patent Office examiner rejected all the said claims on two grounds: (a) for lack of invention over the prior art, and (b) for lack of a more precise definition. As to the second ground, the examiner noted that, “* * * the claims are indefinite as to the emulsion and its ingredients, and the agent employed to reduce the viscosity of the applied emulsion. Such expressions as ‘emulsifying agent in oil capable of forming a water-in-oil emulsion,’ ‘agent to reduce its viscosity’ and the like express little more than the desired characteristics of the ingredients without pointing out what these substances are.” In response to said rejection, the applicant on October 12, 1949, amended some claims, canceled others, and presented additional claims, some of which specifically included a recital of divalent metal soaps. In the remarks accompanying these amendments, the applicant stated that, “* * * as to the examiner’s request that the phrase ‘emulsifying agent’ be eliminated, claims 14 and 15 have been added specifying certain of the chemicals. However, the original claims have been retained because it is believed that the phrase is sufficiently definitive. Anyone skilled in the art knows what such agents are and the phrase is widely used in the literature.” On July 31,1950, the examiner again rejected all the claims submitted on the basis of the prior art and as improper definition. On January 22,1951, Smith canceled a number of claims, and presented some additional claims, several of which were specific as to a recital of a divalent metal soap. In the accompanying remarks, the patentee stated that claims 26 through 29 had now been made more specific as to the agent to be employed. After an interview with the Patent Office examiner, the applicant filed a supplemental amendment on May 1, 1951, which canceled all those claims which did not specify a divalent metal soap, amended claims 26-28, and added several new claims, all of which recited a fatty acid or organic soap of a divalent metal. In the remarks accompanying this supplemental amendment, the applicant pointed out that these revisions were made “* * * along lines discussed with the examiner in order to more clearly and properly define the invention * * *. The claims are now believed to be in accordance with the conclusions reached at the personal interview the examiner courteously afforded applicant’s associate counsel and applicant’s personal representatives, and formal allowance of said claims is respectfully solicited.” On September 6, 1951, six of the claims were allowed, and appear now as claims 1 through 6 of the patent as issued. The remainder were rejected. Finally, the applicant responded on December 18, 1951, by canceling all the rejected claims and presenting an additional claim, specific as- to the emulsifying agent, which was subsequently allowed, and appears as claim 7 of the issued patent. It is found that applicant expressly limited claims 1 through 5 to the use of emulsifying agents defined as fatty acid or organic soaps of a divalent metal.

20. On March 23,1954, the Navy issued specification MIL-C-17936 (SHIPS) to cover a rust-preventative compound capable of application in ballast tanks by use of the flotation method. The methods defined in the patent claims in suit are found in this specification — insofar as it outlines the method steps to be used in the application of specific chemical compounds.

21. During the 6-year period covered by this suit, September 8,1952, to September 8,1958, the Eureka Chemical Company, pursuant to the above Navy specification, furnished the Navy with two compounds, designated E-220 and E-221 for the treating of metal surfaces. The accused compound E-220 contained an emulsifying agent in oil, composed of lanolin or wool fat and a fatty acid soap of a divalent metal (calcium). This composition was found by the Navy to satisfy the laboratory testing requirements of the specification, forming an extremely rigid viscous gel emulsion, expansible during its formation and capable of penetrating and loosening all but the heaviest deposits of corrosion. During the relevant 6-year period, the Navy used the compounds supplied by Eureka in the method steps outlined by the specification MIL-C-17936 (SHIPS) and recited the Smith patent claims— applying E-220 to rusted metal surfaces, contacting the surfaces with water to form a viscous gel, and then subsequently contacting the gel with E-221, a compound comprised predominantly of diesel oil, in order' to reduce the gel viscosity.

22. The defendant’s use of the E-220 and E-221 compounds in the method stated in the Navy specification is covered by claims 1-5 of the Smith patent in suit.

23. During the 6-year recovery period, the Clearkin Chemical Company furnished the Navy with certain compositions, under the same Navy specification MIL-C-17936 (SHIPS), for the treatment of metal surfaces. The Clearkin compound, designated “Corrosion Battler A,” is said by the Navy and by the president of the company to contain wool fat or lanolin, but no soap of a divalent metal. Analysis of the ash content of a compound alleged by plaintiff to be Corrosion Battler A, undertaken by the Multiphase and American Spectrographic Laboratories, however, does show trace amounts of monovalent and polyvalent metals. Defendant alleges that: (1) these trace amounts of metals could be due to the oil present in the Clearkin compound; or (2) even if these trace amounts are assumed to come from the soaps themselves, they are very insignificant in amount and would not be capable of forming the viscous gel emulsion called for in the patent claims; and (3) since monovalent and divalent metal traces were both found in the ash, they would tend to form opposite types of emulsions (oil-in-water and water-in-oil, respectively), and would effectively neutralize each other, forming no emulsion at all.

24. The defendant’s use of Corrosion Battler A compositions containing only traces of divalent metal soaps does not infringe claims 1 through 5 of the patent in suit.

25. Plaintiff also alleges infringement of claim 7 of the patent in suit by a compound known as Texaco Float Coat, although it does not rely on this for a showing of specific liability in the case. No proof exists in the record as to the composition of Texaco Float Coat.

26, Summarizing the foregoing findings, it is found that claim 7 of the patent in suit, relating to preventing rust, is invalid in view of the prior disclosure of the Wakefield patent, and it is found that claims 1 through 5 are valid over the prior disclosures and have been infringed by defendant’s use of Eureka Chemical Company compositions E-220 and E-221 in a method for removing rust. It is found that defendant’s use of Corrosion Battler A and also Texaco Float Coat does not come within the inventions defined in claims 1 through 5 and 7 of the Smith patent.

CONCLUSION OK LAW

Upon the foregoing findings of fact, which are made a part of the judgment herein, the court concludes as a matter of law that claim 7 of U.S. Letters Patent 2,603,226 is invalid, that claims 1-5, inclusive, of said patent are valid and have been infringed, and that plaintiff is entitled to recover, and judgment is entered to that effect. The amount of recovery will be determined pursuant to Rule 47(c) (2). 
      
       In arguing that the patent claims are inoperative, the government relies on certain experiments conducted for it by the Navy, using calcium stearate, a nonpreferred fatty acid soap of a divalent metal which will not form a sufficiently viscous emulsion. The official who supervised these experiments, however, testified that he knew beforehand that this particular soap would not work well. Plaintiff contends that the ordinary chemist would think of using only the effective, fatty acids in following the patent claims and specification, thus excluding such inoperative species as calcium stearate.
     