CITE:  179 F.2d 793
CMON:  March 1950
PLAIN: Davison Chemical Corp.
DEFND: Joliet Chemicals, Inc. et al.
COURT: United States Court of Appeals Seventh Circuit
DATE:  February 8, 1950


Rehearing Denied March 7, 1950.

Suit by the Davison Chemical Corporation against the Joliet Chemicals,
Inc., and others, to join the infringement of a patent.

The United States District Court for the Northern District of Illinois,
Eastern Division, Elwyn R. Shaw, J., granted the motion of defendants
for summary judgment and dismissed the complaint and plaintiff appealed.

The Court of Appeals, Lindley, Circuit Judge, held that the patent was
invalid for want of invention and that the motion of defendants for
summary judgment was properly granted.

Judgment affirmed.

  Only useful application of law of nature or scientific fact is a
  patentable method.

JUDGE: LINDLEY, Circuit Judge
Before MAJOR, Chief Judge, and FINNEGAN and LINDLEY, Circuit Judges.


In plaintiff's suit to enjoin infringement of patent No. 1,900,859 to
Connolly et al., March 7, 1933, covering a process for making silica gel,
the court, upon motion for summary judgment, having before it the Connolly
patent, its file wrapper, prior patent No, 1,297,724 to Patrick, March 
18, 1919, the deposition of Connolly, the affidavits of Mecredy and
Patrick as to the status of the prior art, not disputed by plaintiff or
defendants, allowed the motion, holding the Connolly patent invalid for
want of invention and dismissing the complaint. From that judgment,
plaintiff appeals.

Silica gel is a hard, transparent substance with ultra-microscopic pores,
possessing ability to absorb moisture from the air, making it useful as a
desiccant. It has other commercial uses where adsorptive purposes are
desired and where catalysts are useful, as in oil refining. Some commercial
uses necessitate very small pores in the physical structure while for
certain others, larger pores are desirable. All this was common knowledge
when Connolly applied for his patent. The industry was then manufacturing
silica gel by mixing sodium silicate with an acid under violent agitation,
allowing the resulting product to set, breaking it into small pieces,
washing it free from acid and salt and drying it at a fixed temperature.
Nothing appeared in the prior art, however, as to the desirability of
controlling the temperature of the water in which the material was washed
except that Patrick had asserted that "hot water" was preferable.

Patrick had described the process and received his patent therefor. In
his claims he prescribed washing but made no reference to the temperature
of the water. His only reference to that matter appeared in his
description where he expressed his preference for hot water without 
giving reasons.

It seems clear that Connolly discovered for the first time that a definite
relationship exists between the temperature of the wash water and the
porosity of the final product. He found and announced that the higher
the temperature, the lower the density. This scientific fact, apparently, 
no other delver in the art had discovered; therein lies the difference
between the two patents. In other words, Connolly adopted the process of
Patrick but claimed an improvement "pertaining to controlling the apparent
density of the gel which comprises adjusting the temperature of the 
heated water, the temperature chosen for the water being the higher as
the apparent density desired is lower"; or, as stated in Claim 7, "that
improvement relating to controlling the apparent density of the gel within
the range of about 0.52 to 0.79 when activated at about 600 to 1600 F., 
which comprises, adjusting the temperature of the wash water within the
range of about 160 to 190 F., the temperature chosen for the water being
the higher as the apparent density desired is lower." The process was old.
The washing was old. The specific suggestion of Connolly in his claimed
improvement that the higher the temperature of the wash water, the lower
the density of the final product was new. It follows, we think, that
Patrick did not anticipate Connolly's specific teaching; thus the question
before us is whether that teaching amounts to invention.

It is one thing of course to discover a scientific fact, a law existing
in nature, and quite another to invent a means of making that discovery
useful. One may well know of the physical power of leverage and that it
may be achieved by divers mechanical means, including the simple lever,
transmission of power from a larger gear wheel to a smaller one and the
transfer of power from a larger pulley to a smaller one, but the decision
as to whether invention grows out of a means devised to utilize such
physical quality or scientific fact or law of nature, whatever term one
may use, is the same as that involved in every case questioning invention
and that is whether the patentee has taught something which, within the
patent statute, amounts to patentable invention. Consequently the question
becomes one of whether, when Connolly discovered the scientific fact that
temperature of the washing water directly affects the density of the
washed product, he then devised a process for utilization of that scientific
fact which amounted to invention. What the skilled scientist, having been
informed of the newly discovered scientific fact, would have done, would
amount only to the exercise of ordinary in his profession. Knowing that 
the porosity and density of the gel varies directly in relation to the
temperature of the rinsing water, was it invention for Connolly to apply
the law of nature as he did?

While a scientific truth, or its mathematical expression is
not patentable invention, a novel and useful structure created with
the aid of knowledge of scientific truth may be. Mackay Radio & Telegraph
Co. v. Radio Corp., 306 U.S. 86 at page 94, 59 S.Ct. 427, 83 L.Ed. 506.
He who discovers a hitherto unknown scientific fact or law of nature has
no claim to a monopoly of it; if there is to be invention from such a
discovery it must come from the application of the law of nature or
scientific fact to a new and useful end. Funk Brothers Seed Company
v. Kalo Inoculant Company, 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588.
See also De Forest Radio Company v. General Electric Company, 283 U.S.
664, 685, 51 S.Ct. 563, 75 L.Ed. 1339; Wall v. Leck, 9 Cir., 66 F. 552,
555; In re Modine, 57 F.2d 355, 356, 19 C.C.Pa., Patents, 1058. Discovery
of a previously unknown law of operation, involved in no new method,
has never been held to be invention. The application of the law must be
novel and inventive in character. Luten v. Whittier, 6 Cir., 251 F. 590;
General Electric Co. v. Cooper Hewitt Electric, 6 Cir., 249 F. 69.

Keeping these principles in mind and applying them to the present case,
we assume that Connolly discovered that the temperature of the wash water
determined the pore size and, therefore, the specific gravity or density
of the gel but, we think, that, once having discovered this, it required
nothing more than the ordinary skill of the scientist to determine that
maintaining the temperature of the water at a constant point would make
the size of the pore, and the density of the silica gel, uniform.

In other words the artisan, knowing that the temperature determines
the porosity, could very readily, by empirical methods, determine the 
particular pore size required for a particular use of the gel and then,
by maintaining the wash water at the temperature at which such pore size
was attained, procure the uniform product desired. Stated otherwise, it
seems to us that Connolly merely transferred to paper his discovery of
a scientific fact which, when discovered, was sufficient to enable any
skilled artisan to accomplish what he achieved. "To find the range,
required nothing more than routine experimentation by a skilled chemist,
and that being so, invention was not involved." American Lecithin Co. v.
Warfield Co., 7 Cir., 128 F.2d 522, 526. See also Novocol Chemical Mfg.
Co., Inc. v. Powers & Anderson Dental Co., Inc., 4 Cir., 128 F.2d 904.
We agree, therefore, that the patent to Connolly is invalid.

Plaintiff insists that the court wrongfully entered summary judgment.
Rule 56(c) of Federal Rules of Civil Procedure, 28 U.S.C.A., permits such
a motion to be entertained "if the pleadings, depositions, and admissions
on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is
entitled to a judgment as a matter of law". Plaintiff's contention in
this respect, therefore, must stand or fall upon our determination of
whether there remained, in reality, "a genuine issue as to any material

Defendants' motion necessarily admitted all averments of plaintiff's
complaint well pleaded. Insofar as the validity of the patent involved
is concerned, they pleaded, as prior art defense, only the Patrick patent.
There are in the record the deposition of Connolly himself, two affidavits
and the file wrapper. From them the facts that we have related appear
without contradiction; that is to say, it appears that everything was
old except Connolly's discovery and his application of that discovery
and his application of that discovery to the process described in his
patent for an improvement over the prior art. His prescription for that
process, we have held, did not constitute invention. We are unable to
find remaining any genuine issue of fact between plaintiff and defendants.
Consequently, the court rightfully allowed the motion for summary
judgment. Such practice in similar cases is not new. Gatch Wire Goods Co.
v. W. A. Laidlaw Wire Co. et al., 7 Cir., 108 F.2d 433; Milcor Steel
Company v. George A. Fuller Company, 315 U.S. 143, 144, 62 S.Ct. 969,
86 L.Ed. 1332; Allen et al. v. Radio Corporation of America, D.C.,
47 F.Supp. 244; Luten v. Kansas City Bridge Co., D.C., 272 F. 533;
Juniper Mills, Inc., v. J. W. Landenberger & Co., D.C., 6 F.R.D. 463.

The judgment is affirmed.