justice while sitting on the circuit in Jones v. Sewall (3 Cliff., 563, 592, 593; Fed. Cas., No. 7,495), where, in distinguishing between the intent to be inferred from experimental practice of an invention and practice for gain, he said:

Such an inference (of intention to surrender the invention to the public) is never favored, nor will it in general be sufficient to prove such a defense, unless it appears that the use, exercise, or practice of the invention was somewhat extensive, and for the purpose of gain, evincing an intent on the part of the inventor to secure the exclusive benefits of his invention without applying for the protection of Letters Patent. (Curt. on Pats., 3d ed., sec. 389.)

We may add that the rule of dilligence laid down in Pennock v. Dialogue and Kendall v. Winsor finds support through analogy deducible from provisions of the patent laws other than the language considered in those decisions. Diligence in applying for the reissue of defective patents, for instance, is recognized as one of the conditions inhering in the power bestowed in that behalf, although the statute is silent as to time. (Mahn v. Harwood, C. D., 1885, 144; 30 O. G., 657; 112 U. S., 354; 5 Sup. Ct., 174; 6 Sup. Ct., 451; Miller v. Brass Co., C. D., 1882, 49; 21 O. G., 201; 104 U. S., 350; Wollensak v. Reiher, C. D., 1885, 310; 31 O. G., 1301; 115 U. S., 87; 5 Sup. Ct., 1132; Topliff v. Topliff, C. D., 1892, 402; 59 O. G., 1257; 145 U. S., 156; 12 Sup. Ct., 825; Wollensak v. Sargent, C. D., 1894, 164; 66 O. G., 1007; 151 U. S., 221; 14 Sup. Ct., 291.) Again, diligence in reducing an invention to practice is of the essence of the right to treat the date of the invention as relating back to its conception. (Twentieth Century Machinery Co. v. Loew Mfg. Co., 243 Fed. Rep., 373, and citations, C. C. A. 6.) Why should not the same considerations that exact diligence in such instances as these be controlling also in respect of applications for patents?

As already stated, however, counsel insist that this course of reasoning is opposed to the language of the patent laws; and special reliance is placed on the rule declared in Henry v. Dick Co., (C. D., 1912, 575; 176 O. G., 751; 224 U. S., 1; 32 Sup. Ct., 364; Ann. Cas., 1913D, 880.) That case has been overruled since the submission of the instant case, (Motion Picture Co. v. Universal Film Co., C. D., 1917, 391; 238 O. G., 311; 243 U. S., 502; 37 Sup. Ct., 416;) and it is to be observed that, in overruling Henry v. Dick Co., stress was laid on the fact that the statutes relating to patents do not authorize patentees to impose conditions upon the use of patented machines when once sold. By analogy it is not too much to say (in addition to what we have already said on the subject) that the absence of express statutory limitation as to the time within which an application for a patent may be filed cannot be regarded as entitling an inventor himself to fix such time in respect of a perfected invention, subject only to the rights of another inventor who may meanwhile have acquired a patent upon a like invention.

It is said that exaction of diligence in a case like this is opposed to the rule of the Paper Bag Case (C. D., 1908, 594; 136 O. G., 1297; 210 U. S., 405; 28 Sup. Ct., 748), allowing a patentee to hold his patented invention in non-use. So far as that case is claimed to concern the present controversy, it deals with the right of the holder of a validly-issued patent to refrain both from using and permitting others to use the invention. We are dealing with a patent whose validity is in contest, and with the right secretly to use a perfected invention indefinitely and for profit and then secure a patent. Under the patent laws the right of a patentee and the right of an inventor are of course not the same. A patent, as we have seen, vests in its holder the right to exclude others from using the invention; but a mere invention gives no such right. (United States v. Bell Telephone Co., 167 U. S., 224; 17 Sup. Ct., 809; Dable Grain Shovel Co. v. Flint, C. D., 1890, 529; 53 O. G., 1093; 137 U. S., 41; 11 Sup Ct. 8.) However, as before pointed out, under the patent laws an inventor has an inchoate right to obtain a patent. A patentee then who holds his invention in non-use is at least in the exercise of an absolute right to exclude others, while an inventor who simply for his secret use and advantage withholds a perfected invention is neglecting, indeed declining, to exercise his inchoate right to secure a patent; the patentee moreover unites his original right in the discovery with the exclusive right he receives under the patent, but the inventor rejects this course and resorts to one of his own until it fails him. The ultimate difference between the two courses is that the patentee at most receives the benefit of his monopoly only for the prescribed statutory period, but the inventor would upon approval of his course inevitably transgress the limits of that period and this too without the slightest sanction, but in abuse, of the patent laws. The Paper Bag decision therefore is plainly inapplicable.

(4) We are thus led to conclude that whatever view may be taken of the conditions existing at the time the patent in suit was applied for, the invention had been abandoned.

Accordingly, upon this ground the decree will be affirmed.

[U. S. Circuit Court of Appeals-Eighth Circuit.]

CORONA CHEMICAL Co. v. LATIMER CHEMICAL CO.

Decided February 11, 1918.

250 O. G., 514; 248 Fed. Rep., 493.

1. PATENTS-GRANTING OF PATENTS-PRESUMPTION.

The granting of a patent creates the presumption of patentable invention.

2. SAME-INFRINGEMENT-DISMISSAL-VALIDITY OF PATENT.

A patent for an improved acid arsenate of lead in the form of a fine powder cannot on motion to dismiss a bill for infringement be declared

invalid for want of invention on the ground that the prior art as disclosed by the patent showed that nothing new was produced except a difference in degree of fineness of the powder, for in so recondite a science as chemistry a difference in degree may produce revolutionary results, and hence the validity of the patent should be determined by trial on the merits.

APPEAL from the District court of the United States for the District of Colorado; Robert E. Lewis, Judge.

Bill by the Corona Chemical Company against the Latimer Chemical Company. Motion to dismiss the bill was sustained (240 Fed. Rep., 423), and complainant appeals. Reversed, with directions.

Mr. Russell Wiles (Mr. W. H. Swenarton and Messrs. Dyrenforth, Lee, Chritton & Wiles on the brief) for the appallant.

Mr. Walter W. Boughton for the appellee.

Before CARLAND, Circuit Judge, and AMIDON and MUNGER, District Judges.

AMIDON, Dis. J.:

This is a suit in equity by the Corona Chemical Company, as plaintiff, against the Latimer Chemical Company, as defendant, charging infringement of Hall Patent No. 1,064,639. The patent is for acid arsenate of lead in the form of fine powder, whereas the substance in the prior art had been in the form of paste. The patentee claims for his arsenate a distinct improvement in its adaptation for use as an insecticide. Defendant moved under the equity rules to dismiss the bill. The patent was attached to the bill. The court read it and the prior art as therein described, and ruled that plaintiff's invention produced nothing but a difference in degree of fineness of the powder, and dismissed the bill on the ground that this did not involve patentable invention.

(1, 2) There is nothing either in the patent or the bill to support the broad conclusion at which the court arrived. It is true that the patent disclosed that the powder of the patentee was finer than prior powders of the same substance, and to that extent the powder shows a difference in degree; but it was an unwarranted inference to say that the difference in degree did not produce a difference in the function of the substance when applied as an insecticide in the spraying of fruit-trees. That was an inference upon which the plaintiff was entitled to a trial upon the merits. The granting of a patent creates a presumption of patentable invention. In so recondite a science as chemistry a difference in degree may produce revolutionary results. (Minerals Separation Co. v. Hyde, C. D., 1917, 381; 234 O. G., 1311; 242 U. S., 261; 37 Sup. Ct., 82.) It would be an exceptional case which would justify striking down a patent in such a field on de84150°-19-19

murrer to the bill. We express no opinion as to plaintiff's patent, but simply hold that he is entitled to a trial.

The case is reversed, with directions to the trial court to overrule the motion to dismiss, and permit the defendant to answer, and then proceed with the trial of the case.

[U. S. Circuit Court of Appeals-Third Circuit.]

GLOBE KNITTING WORKS v. SEGAL et al.

Decided December 27, 1917.

251 O. G., 223; 248 Fed. Rep., 495.

1. PATENTS-INVENTION-NEW USE OF OLD DEVICE.

The transfer of elastic features previously used in drawers or overalls to union-suits, when they are subjected to different strains and do not perform precisely the same functions, and therefore do not produce the same result, may constitute patentable invention.

2. SAME EVIDENCE OF INVENTION-POPULAR RECOGNITION.

Where the question of invention is close, as it usually is when the thing done is simple, the thing achieved, its recognition by the art, and the demand for it by those who use it are matters properly to be put in the scale and weigh in favor of invention.

3. SAME-VALIDITY AND INFRINGEMENT UNION-SUIT.

66

The Clarke patent, No. 1,035,819, for an improvement in knit underwear of the type known as union-suits," while not covering a broad invention by the use of a new material in a new way, produced new results in such garments of a useful character, measured by the increased comfort they afford the wearer and the popular demand they created, and discloses patentable invention; also Held infringed.

APPEAL from the District Court of the United States for the Eastern District of Pennsylvania; Oliver B. Dickinson, judge.

SUIT IN EQUITY by the Globe Knitting Works against Keeva Segal and Benjamin Segal, doing business as the Quaker Manufacturing Company. Decree for defendants, and complainant appeals. Reversed.

Messrs. Prichard, Saul, Bayard & Evans for the appellant.
Mr. E. Hayward Fairbanks for the appellees.

Before BUFFINGTON, MCPHERSON, and WOOLLEY, Circuit Judges. WOOLLEY, Cir. J.:

The bill charges infringement of Letters Patent No. 1,035,819, issued August 13, 1912, to A. E. Clarke, assignor of the plaintiff, for improvements in knit underwear. The defenses are invalidity and non-infringement. The district court, while indicating its opinion that the garment of the patent lacked patentable novelty, dismissed the bill on the ground that infringement of the claim, if

valid, could not be found under the narrow construction which it gave it. (239 Fed. Rep., 322.) The plaintiff took this appeal.

(1) The patent is for improvements in underwear of the type generally known as "union-suits." These garments comprise a shirt and drawers made in one continuous piece. When the two elemental garments are thus combined in one, the demands of the human body upon the unified garment are radically different in number and character from demands made upon its two elements when worn separately. To meet these requirements and to attain their objectives of convenience and comfort, the art has produced union-suits of many patterns. The fundamental types, as known to the trade, are "open crotch" and "closed crotch." The manifest discomfort of the former has greatly increased the use of the latter. To the latter class, the garment of the patent in suit belongs.

The human body, in different positions of sitting, stooping, reaching, subject a garment of one close-fitting piece, extending over its entire surface from neck to feet, to many strains. These strains begin at the shoulders, and extending downwardly, are arrested at the crotch, where, if not relieved by some compensatory means, they produce a discomfort that makes the wearing of union-suits undesirable or wholly impracticable. Here is a problem. It was first met by the open-crotch pattern, and in a measure solved. But this solution of the problem produced a new discomfort, which caused the trade, in response to popular demand, to confine itself chiefly to the closed-crotch pattern with its original problem of shoulder-strain and crotch-binding, and to seek its solution.

Johnson (No. 973,200) conceived that the strain upon the crotch of a union-suit and its consequent tightness and discomfort, could be relieved by supplying more material at that place. Terwilliger (No. 992,291) conceived the same idea. Both obtained patents for the particular means which they conceived for putting that idea into practice. But this solution brought still another discomfort to the wearer of union-suits. Instead of being of a pattern that would fit the body snugly, when in motion or in repose, union-suits of these patterns were made larger from shoulders to crotch, in order to supply a fullness of material to take up the strains. The result was that the extra strain-relieving material, when not performing its function, became a useless and baggy excess of material and became also an active and ever-present cause of discomfort. This was the state of the art when Clarke entered it. Manifestly he was not a pioneer. He did not claim to have invented a union-suit. He claimed, simply, to have made improvements upon garments of that kind. He found in the art union-suits with crotches and flaps and inserts, and set about to solve a problem admittedly there.