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: 29
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PROCTER & GAMBLE CO. V. BERLIN MILLS CO. 29
he could and did get something out of Kayzer's train of phenomena,
which the latter neither thought of, nor reduced to practice.
[8-8] 3. The final objection to a decree in plaintiff's favor is that,
properly consttued, the claims in suit are not infringed, because (a)
the defendant's product widely varies from that of the patent in the
relative percentages of saturated fats, olein and linolin; (b) the pro-
cess pursued by defendant is disclosed or assumed in the patent in
suit; and (c) that said claims are to be regarded as strictly limited,
if not substantially abandoned, through or by reason of the proceed-
ings in the Patent Office as revealed by file wrapper contents.
As to the first point (a), it is enough to note that, while the varia-
tion'insisted upon is true, it must, to negative infringement, be at least
a ;variation extending beyond the limits of a valid claim read in the
light of the disclosure. In this instance it is not denied that what the
defendant makes' and sells is not only lardlike, homogeneous in the
sense of mixtulreless, and wholly consisting of an incompletely hy-
dirogenized cotton seed oil, but it is within the limits of iodine value,
titer, and melting points specified in the application. Therefore it is
It is true (b) that defendant's process of manufacture is very dif-
fereni from that of plaintiff, and we are willing to assume it different
from and better than anything known to Burchenal or developed by
Kayzer. But this patent is upon a product, and if the product com-
plained of is the patented article substantially as described, it makes
no difference by what path or process, new or old, inferior or im-
proyed, the infringing product is manufactured. General Electric
Co. v. Laco-Phiilips Co., 233 Fed. 96, 147 C. C. A. 166.
The contention (c), that the office proceedings were such as to limit
or nullify the broad claims in 'suit amounts, we think, to this, viz.':
When this application was filed, in 1910, applicant demanded two
claims ,which, if anything, are slightly narrower than the two now
in suit. They were rejected by the primary examiner, and thereafter
many changes were made in the language of the claims submitted by
way of amendment. In our opinion, never at any time did the ap-
plicant acquiesce in the examiner's action, but consistently endeav-
ored to obtain; and finally did obtairi, in the claims first above quoted,
what he had in the' first place asked for.
It is the acquiescence of an applicant, and not the action of an ex-
aminer, or of many examiners, that surrenders to the public what the
applicant first 'declares to be patentable invention. The very word "ac-
quiescence" necessarily implies obedient action, perhaps enforced,
but still submission on the petitioner's part. Here there never was
any such acquiescence, and the patent as issued substantially contains
in the claims in suit the originally propounded definition of invention.
This is far within the rule enforced by us in Kinnear, etc., Co. v.
Wilson, 142.-Fed. 970, 74 C. C. A. 232, where a' rejected claim was
carried into and obtained -grant in another patent. Here the claims
rejected were at last substantially victorious in the same patent, ap-
parently through a change in the examining personnel.
For the reasons stated, the decree appealed from is reversed, with
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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/m1/43/: accessed September 25, 2017), University of North Texas Libraries, Digital Library, digital.library.unt.edu; crediting UNT Libraries Government Documents Department.