The Federal Reporter with Key-Number Annotations, Volume 256: Cases Argued and Determined in the Circuit Courts of Appeals and District Courts of the United States, May-July, 1919. Page: 26
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, - 256 FPI EiA REPOR'EB . .
ready for use must be old,'because other men had earlIier'arrived at
the same chemical result by other paths.
I1] Objection (a) raises,.the question, of fact encountered in a large
proportion of patent causes, and concerning which discussion is of
small value if the record discloses no one who ever tried-to do the
same thing in the same way. When novelty in that sense appears
the question really is one of 'measuring foresight by hindsight. The
problem seems easy now, but, when the object reached was desirable,
useful, and apt for commercial success, the bald fact that nobody ever
did it before is persuasive, though not conclusive,, evidence of sonime
invention. Burchenal's imitation lard has these attributes, and 'we
consider it a sufficient answer; to the statement that any oil chemist
could have done the thing, to note that no oil 'chemist did do it dur-
ifng the more than score of years ,prior to'Burchanal's application,
when cotton seed oil (especially) as an abundant American product
was endeavoring to supplant lard i'f the American market.
'The next objection to invention (b) really denies the possibility of
invention ever residing in noting or discovering a use for something
which if not a by-product, may be termed a half-product or unfinish-
ed product of an existing method of procedure. Without resorting
to the extreme doctrine of Potts v. Creager, 155 U. S. 597, 15 Sup.
Ct. 194, 39 L. Ed. 275, it seems to us that-the question presented by
this record depends upon whether the thing produced by partial hy-
drogenation is a different thing from that which existed before hy-
drogenation began and that which would exist when it ended. The
change introduced by catalytic introduction of hydrogen is chemical:
the analysis of the cotton seed oil at divers stages of the process of
manufacture differs. To be sure, the difference is only in the union
of additional atoms of hydrogen with the unsaturated fats (linolin
and olein); but if this molecular and chemical change induces a re-
sulting change in appearance, in utility, and in texture, it may well
be caled, when lardlike, a thing different from what it was as oil,
and 'eqitally different from what it would be at the point of satura-
The patent" law does not speak in terms of science, though scientific
evidence is necessary for the application of its rules. The chemical
composition of steam, water, and ice is the same, but they are differ-
erit things; and in the same common-sense way oil, lard, and stearin
are different things, although (with some chemical latitude) the oil
may be said, ultimately to become stearin, and to pass through the
lard stage on the way.
For substantially the same reasons we think there is nothing in the
last (c) objection to invention. It may be assumed as true that by the
mixture of cotton seed oil and animal stearin a substance can be pro-
duced which for practical lpiurposes is the same thing as Burchenal's
chemically changed cotton seed oil; but one is a mixture and the other
is not, And assuming the difference to be unimportalit from the stand-
p'oint df eitlhr chemist or cook, it's a vital difreiie from that' of
the laWy. .
We are therefoe of opinion that there was invention in Burchenal's
disclosure. Product 'patents may be justly subjdc'ted to critical scru-
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The Federal Reporter with Key-Number Annotations, Volume 256: Cases Argued and Determined in the Circuit Courts of Appeals and District Courts of the United States, May-July, 1919., legislative document, 1919; Saint Paul, Minnesota. (digital.library.unt.edu/ark:/67531/metadc38827/m1/40/: accessed March 21, 2018), University of North Texas Libraries, Digital Library, digital.library.unt.edu; crediting UNT Libraries Government Documents Department.