be available. The adjudication was to authorize the issue of a patent on the applicant's filing a copy in the patent office "and otherwise complying with the requisitions of law." This statute was construed to require an appeal to the District Supreme Court as a condition precedent to the maintenance of a bill in equity.16

The provisions of the Act of 1870 were codified in the Revised Statutes of 1873." In the process the words "for any reason whatever" were deleted from Sec. 52, which became R. S. 4915. The omission was evidently because the words were surplusage, since the purpose of the revisers was not "to attempt any change whatever in the existing law" except "mere changes of phraseology not affecting the meaning of the law." 18

By the Act of February 9, 1893 19 the Court of Appeals for the District of Columbia was created and jurisdiction of summary appeals from Patent Office rulings was transferred to that court. Thus the remedy by bill in equity was now to be pursued in a District court only after an appeal to the Court of Appeals of the District had resulted adversely to the applicant; and an adjudication in the equity suit was subject to review on appeal.

So matters stood until the passage of the Act of March 2, 1927.20 In the hearings on the bill which became the statute, it was proposed that Congress eliminate either the appeal or the bill in equity, some interested parties suggesting abolition of the one remedy, others advocating dropping the other. Congress decided not to do away with either, but to allow an applicant "to have the decision of the Patent Office reviewed either by the court of appeals or by filing a bill in equity, but not both." 21 It is evident that no alteration in respect of the rulings which could be reviewed was intended; but the number of possible appeals was to be reduced, while saving to litigants the option of producing new evidence in a court, by retaining the equity procedure.22

Finally, the Act of March 2, 1929 23 transferred from the Court of Appeals of the District to the Court of Customs and Patent Appeals

10 Kirk v. Commissioner of Patents, 1886 C. D. 440; Fekete v. Robertson, 17 F. (2d) 335; Cooper v. Robertson, 38 F. (2d) 852.

17 The relevant sections are 4911-15 inclusive.

18 2 Cong. Rec. 646.

19 27 Stat. 434, 436.

20 44 Stat. 1335.

21 H. R. No. 1889, pp. 2-3; S. R. No. 1313, p. 4, 69th Cong., 2d Sess.

22 See H. R. 1889, supra, p. 3; Hearings, House Committee on Patents, on H. R. 6252 and H. R. 7087, 69th Cong., 1st Sess., pp. 21-22; Hearings, House Committee on Patents, on H. R. 7563 and H. R. 13487, 69th Cong., 2d Sess., p. 11; Hearings, Senate Committee on Patents, on S. 4812, 69th Cong., 2d Sess., p. 15; Hearings, House Committee on the Judiciary, on H. R. 6687, 70th Cong., 1st Sess., passim; cf. Hearings, House Committee on Patents, on H. R. 7563 and H. R. 13487, 69th Cong., 2d Sess., p. 31; Hearings, House Committee on Patents on H. R. 6252 and H. R. 7087, 69th Cong., 1st Sess., p. 79. 23 45 Stat. 1475.

jurisdiction of appeals from the Patent Office, but ex industria provided "Nothing contained in this Act shall be construed as affecting in any way the jurisdiction of the Court of Appeals of the District of Columbia in equity cases." This was of course to make it plain that suits in the District Court of the District of Columbia should be appealable as are suits under R. S. 4915 instituted in district courts in circuits outside the District.

Thus it is clear that throughout more than a century Congress has for correction of erroneous adverse rulings, which if unreversed would end the proceedings in the Patent Office, preserved the remedy by bill in a district court either as additional to or alternative to that by summary appeal and has made the effect of adjudication in equity the same as that of decision on appeal.

3. The Commissioner of Patents states that "when claims are finally rejected by the examiner and his action is affirmed by the Board of Appeals, the grounds then stated for such rejection, as well as any other grounds in support thereof, may be set up by this Office in answer to a subsequent suit by the applicant under Rev. Stat. 4915. If the adjudication by the court is favorable to the applicant, it is the practice of this Office to treat that judgment as conclusive with respect to any ground of rejection urged before the court in defense of the refusal to allow the claims in issue. In the usual case, following such adjudication, the application is allowed and, upon payment of the prescribed fee, the patent is issued. However in rare instances where, after termination of the suit, new reference is discovered which shows lack of patentability of the claims for a reason not considered by the court, this Office considers itself under a duty to reject the claims on the newly discovered ground, and to refuse a patent on those claims unless the applicant can overcome the new ground of rejection. Similarly, if another applicant or a patentee is claiming substantially the same subject matter as that held patentable in the Rev. Stat 4915 suit and a question of priority arises, interference proceedings may be necessary under Rev. Stat. 4904 to determine which of the adverse claimants is the first inventor. The foregoing is believed to have been the consistent practice of this Office for many years."

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4. This court has repeatedly indicated a view of the meaning of R. S. 4915 which is inconsistent with the decision below,24 although the exact question here presented was not involved in the cases under adjudication. The lower federal courts have consistently construed the section as conferring jurisdiction in cases which are indistinguish

Gandy v. Marble, 122 U. S. 432, 439, 39 O. G. 1423; In re Hein, 166 U. S. 432, 439, 79 O. G. 507; Frasch v. Moore, 211 U. S. 1, 8-9, 137 O. G. 230; American Foundries Co. v. Robertson, 262 U. S. 209; 212-213, 324 O. G. 963; United States ex rel. The Baldwin Co. v. Robertson, 265 U. S. 168, 180-181, 327 O. G. 5.

able from that at bar.25 They have so held in cases where it affirmatively appeared that further proceedings in the Patent Office would be necessary following adjudication in favor of the applicant,26 and where though it did not appear of record that further proceedings would be required in the Patent Office, it was evident that they might ensue adjudication, as where a patent was denied for want of invention.27 And, where an applicant has succeeded in a bill filed under R. S. 4915, the courts have not questioned the power of the Patent Office subsequently to disallow the claims for want of invention over a newly discovered reference to the prior art.28

The court below relied upon Hill v. Wooster, 132 U. S. 693, for its holding that a suit under R. S. 4915 cannot select a single issue which affects the applicant's right to a patent, without determining all the other issues on which that right depends. That case was one in which the Commissioner had decided an interference between the claims of two applicants in favor of one of them, and ordered that a patent issue. In an inter partes suit by the unsuccessful applicant against the successful one, this court held that if it appeared that neither application disclosed invention (a matter which should have moved the Commissioner not to declare an interference) the bill should be dismissed.29 The court did not purport to decide what Patent Office rulings are reviewable under R. S. 4915.30

On

[4] The ruling of the Board of Appeals in the instant case was neither a procedural ruling 31 nor an interlocutory one 32 as to which the District Court should not entertain a suit under R. S. 4915. the contrary, it finally denied a patent on the claims presented. In this respect it was like a dismissal of a suit in a court. Unless the applicant could sue to correct error in that dismissal, he could never

25 Dilg v. Moore, 34 App. D. C. 106, 150 O. G. 269; E. I. du Pont de Nemours & Co. v. Coe, 89 F. (2d) 679, 406 O. G. 243; Pitman v. Coe, 68 F. (2d) 412, 439 O. G. 5; Power Patents Co. v. Coe, 110 F. (2d) 550; Tully v. Robertson, 19 F. (2d) 954; Monopower Corp. v. Coe, 33 F. Supp. 934; Booth Fisheries Corp v. Coe, 114 F. (2d) 462, 519 O. G. 219; Forward Process Co. v. Coe, 116 F. (2d) 946, 524 O. G. 3.

26 Pitman v. Coe, supra; International Cellucotton Co. v. Coe, 85 F. (2d) 869, 471 O. G. 243; American Cyanamid Co. v. Coe, 106 F. (2d) 851.

American Steel & Wire Co. v. Coe, 105 F. (2d) 17, 504 O. G. 847; Abercrombie v. Coe, 119 F. (2d) 458; General Motors Corp. v. Coe, 120 F. (2d) 736, 534 O. G. 702; Radtke Patents Corp. v. Coe, 122 F. (2d) 937; Hydraulic Press Corp. v. Coe, 124 F. (2d) 521, 535 O. G. 438; Minnesota Mining & Mfg. Co. v. Coe, 125 F. (2d) 198, 535 O. G. 691; Poulson v. McDowell, 142 F. (2d) 267, 565 O. G. 147.

23 Gold v. Newton, 254 Fed. 824, 256 O. G. 649.

29 Section 16 of the act of 1836 (5 Stat. 123) supra, expressly provided that upon a bill filed as a result of Patent Office decision on an interference the court might adjudge either of the patents void in whole or in part. This language was evidently omitted in later acts as surplusage for obviously if either patent was void for lack of invention or other cause, the question of interference disappeared.

30 This is equally true of Radtke Patents Corp. v. Coe, 122 F. (2d) 937, on which the court below relied.

31 Butterworth v. Hoe, 112 U. S. 50, 29 O. G. 615; Shoemaker v. Robertson, 54 F. (2d) 456, 413 O. G. 565; Chessin v. Robertson, 63 F. (2d) 267; Cherry-Burrell Corp. v. Coe, 143 F. (2d) 372, 427 O. G. 621.

American Cable Co. v. John A. Roebling's Sons Co., 65 F. (2d) 801, 431 O. G. 534; Synthetic Plastics Co. v. Ellis-Foster Co., 78 F. (2d) 847.

sue under R. S. 4915. That he was accorded a right of suit in this case the language of the statute, its history, the administrative construction and judicial decision unite in affirming.

The judgment is reversed and the cause remanded for further proceedings in conformity to this opinion.

[Supreme Court of the United States]

SINCLAIR & CARROLL COMPANY, INC., v. INTERCHEMICAL CORPORATION No. 656. Decided May 21, 1945

577 O. G. 3; 325 U. S. 327; 65 USPQ 297

1. PATENTS-SUIT FOR INFRINGEMENT

INQUIRY INTO VALIDITY.

"There has been a tendency among the lower federal courts in infringement suits to dispose of them where possible on the ground of non-infringement without going into the question of validity of the patent. * It has come to be recognized, however, that of the two questions, validity has the greater public importance, and the district court in this case followed what will usually be the better practice by inquiring fully into the validity of this patent."

2. SAME-VALIDITY-INVENTION.

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"A long line of cases has held it to be an essential requirement for the validity of a patent that the subject-matter display 'invention,' 'more ingenuity than the work of a mechanic skilled in the art.' This test is often difficult to apply; but its purpose is clear. Under this test, some substantial innovation is necessary, an innovation for which society is truly indebted to the efforts of the patentee. Whether or not those efforts are of a special kind does not concern us. The primary purpose of our patent system is not reward of the individual but the advancement of the arts and sciences. Its inducement is directed to disclosure of advances in knowledge which will be beneficial to society; it is not a certificate of merit, but an incentive to disclosure. Consequently it is not concerned with the

quality of the inventor's mind, but with the quality of his product."

3. SAME-SAME SAME GESSLER PATENT No. 2,087,190.

In view of the finding of the district and circuit courts that a prior article had posed the problem of providing a solvent having the qualities of negligible vapor pressure at room temperature and high vapor pressure at 150° C. in order to compound an ink which would not dry at room temperature but which would dry instantly upon the application of heat after printing, Held that it was difficult to believe that if the author had known of the qualities of butyl carbitol and had had before him the catalog which listed that solvent, he or any other person skilled in the art could not have devised such an ink as claimed by Gessler in his patent, No. 2,087,190; and Held that this conclusion was reached even though the author had testified that he had worked for over a year trying to produce such an ink and did not succeed.

4. SAME-SAME-SAME-SAME,

Held that four prior patents taught an ink made with a solvent that would be non-volatile at room temperature and highly volatile when heated;

that Gessler did not discover butyl carbitol; and that reading a list and selecting a known compound to meet known requirements is not invention. ON WRIT of certiorari to the United States Circuit Court of Appeals for the Second Circuit. Reversed.

Mr. Justice BLACK and Mr. Justice DOUGLAS concurring in the result.

Mr. William D. Mitchell (Mr. Walter H. Free and Mr. Mark N. Donohue on the brief) for Sinclair & Carroll Company, Inc.

Mr. Robert W. Byerly (Mr. Ralph M. Watson on the brief) for Interchemical Corporation.

Mr. JUSTICE JACKSON delivered the opinion of the Court.

This infringement suit was brought by the assignees of a patent on a printing ink. Respondent, Interchemical Corporation, asserts that inks made by the petitioner infringe on claims 3, 10, 11, 12 and 13 of U. S. Patent No. 2,087,190 which was issued to Albert E. Gessler on July 13, 1937. Claim 3, which is typical, is as follows: "A printing ink which is substantially non-drying at ordinary temperatures and dries instantly on heating of the printed matter, consisting of coloring matter dispersed in an organic viscous vehicle consisting of a liquid component and a solid component completely dissolved in the liquid component in sufficient quantity to give the ink the consistency of an ordinary oil-varnish printing ink-the solid component being a member of the group consisting of natural and synthetic resins and cellulose compounds, substantially all of the liquid component having a vapor pressure at 20° C. as low as that of diethylene glycol monobutyl ether at 20° C., and the major part of the liquid component having vapor pressure which at 150° C. approximates that of ethyl alcohol at ordinary temperatures and forming a stable solution with the solid component." In other words, Gessler claims to have invented an ink which will not dry at room temperature but which will dry instantly upon the application of heat after printing. Such an ink is of no particular value in the printing of newspapers or other publications which use absorbent paper. This can be done acceptably with ordinary inks containing linseed oil which is nonvolatile at all relevant temperatures. The paper absorbs the ink when one side is printed, and the other side can be printed immediately without danger of smudging.

But the ink disclosed in the patent does have utility in the printing of magazines and other materials which use smooth non-absorbent paper. Since its disclosure by Gessler, it or similar inks which are claimed to infringe, have been used to print "The New Yorker," "Collier's," and "The Saturday Evening Post." Such publications previously would require considerably more time for printing since the reverse side of the paper which they used could not be printed until the first side was dry. Nor could the sheets be stacked or folded without danger of "offset" printing. The smooth paper would not absorb the linseed-oil inks, and delay of from one to twenty-four hours was