I dissent. "While the question of invention is in some degree one of fact, yet it so involves the general point of view from which the controlling legal principles are seen that I feel justified in expressing my reasons.
Considering situations somewhat analogous to this — peculiarly so in that they, like this, involve a seemingly simple modification in a common article of 'clothing — two of our most experienced patent judges have recently made comments in language which might as well have been written for this case. In Kurtz v. Belle (C. C. A. 2) 280 F. 277, we have one of the best reviews of the question of invention to be found in the books. On page 282, the late Circuit Judge Hough said:
“If we view this hat lining, or any hat lining, in the light of our own experience, it would appear trivial and unworthy the dignity of patent protection; but, looking at it through the evidence and (we hope) with the eyes of the hat lining trade, this patent represents a large and successful business. It is in the minds of all those who deal in hat linings, of the utmost importance. No one ever made a lining of such simplicity, cheapness, and general adaptability as has Kurtz, and he has done it by mechanical means of winning simplicity, to all of "which defendant has testified by deliberately imitating Kurtz’s product and engaging in expensive litigation to defend the imitation.”
Speaking of a slight change — seemingly very slight — in weaving the fabric intended for unstarched collars (Van Heusen v. Earl & Wilson, 300 F. 922), Judge Learned Hand, said on page 925 .(after reviewing the art), “Something had obviously occurred in the collar industry of major importance. * * * To any one in the least familiar with patents it must be evident that an invention of high merit had appeared in this art. * * * It is quite idle by logistic niceties to try to obscure this outstanding fact.” Indeed, the analogy between the semi-soft collar case and the present one is so unusually close, and to my mind that opinion so well interprets the point of view which a court in this situation ought to take that I review and quote from it more at length.
Multiple-ply interwoven fabric was common. It was made more or less stiff by the closeness of the weave. Stiff starched collars were common, as were soft unstarched collars. Many efforts had been made to stiffen up the latter type so that they would not so easily break. Nothing had been developed which proved acceptable. Bolton conceived that by using multiple-ply interwoven fabric for the collar and by weaving it more closely than usual, he would get a collar which would be stiff enough to maintain its satisfactory appearance and soft enough to be comfortable. This was the whole invention sustained in Judge Hand’s opinion, and sustained because of the extent to- which the industry and the public accepted the new thing.
Page 924: “Van Heusen’s collars appeared in April, 1921, and almost at once got a vogue which puts it beyond any doubt that they indeed answered the proverbial long felt want. This conclusion is corroborated by the history of the art [reviewing many prior patents]. * • * It is clear that in such a field.the winner had not expounded a text which he-who runs may read. * * * Before the year was out his success made it industrially necessary for the defendants to put on the market the present alleged infringements, which were quite new in their manufacture, and from that time forward the 'semi-soft’ collars began to drive the older 'soft’ collars off the market. * * * This was accomplished without any unusual cost of advertisement; the plaintiff's expenses for this purpose were no greater than for starched collars, and were small indeed, considering that a new commodity was being introduced. * * * For reasons, real or fancied, the public had at length found a collar winch suited its needs as nothing else had done theretofore. The business grew enormously in the succeeding three years. * • * The public had got something which it had been wanting for 20 years, and which after repeated efforts nobody had found before. The defendants recognized this at once, and trimmed their sails to the prevailing wind, as they had to.”
“I am faced with the usual collection of eases to prove that it is never invention to substitute one material for another. Cases like Hotchkiss v. Greenwood, 11 How. 248 [3 L. Ed. 683], * * * might indeed be piled up indefinitely. I do not conceive that the la,w has ever laid down any such absolute rule *557on this subject, or any other absolutes for that matter. The prospect of getting objective tests- for invention is tempting, but it is a mirage. How is it possible to say a priori what combination of elements needs an original twist of the mind, and what is within the compass of the ordinary clod ? Is it not clear that the quality of a man’s inventiveness must be tested by reconstituting the situation as it was in the light of the preceding history of the art? There is no vade moeum for such inquiries. Our unknown ancestor, who first substituted iron for bronze in the head of an axe, was the bright examplar of all inventors to come. Yet it was not an invention, if one is bound by this objective test. In this subject the standard escapes any abstract definition, because the end in view needs nicer adaptations, as in the cases of due care or notice. The defect of such a standard is indeed its uncertainty, but certainty is only one of the ends of law.” Page 929.
“ * * * What, then, it is very properly asked, is there left of Bolton’s invention, if it be so broadly construed as the plaintiff must construe it? Is the patent to depend wholly upon a new use to which such a fabric should bo put? Is it not a well-settled part of the law of patents that new uses are not patentable? To this I answer that, if it wore true that any multiple-ply interwoven fabric made into a collar would, in Bolton’s words, inevitably ‘maintain its shape without the employment of starch,’ I should say that Willard’s disclosures were an anticipation, because one had only to practice it as it reads and one would get the present collar. But this is not the truth. Willard had no such purpose in mind, and one might go on forever following his patents, without ever making a starchless stiff collar. True, one might by accident hit upon a properly close weave and interweave, but it would only be by accident. To be a proper anticipation, a reference must go further than that; it must tell you how you can get with certainty the result you are after.” Page 930.
If we transfer all this comment to the field of fine silk four-in-hand neckties, and for “semi-soft” substitute “resilient,” we have the present case. Neckties of fine soft silk had been long in use; they were too soft and stretchy; many efforts had been made to provide a lining which would give strength and body and which would minimize if not prevent the stretching distortion; Langsdorf conceived that by abandoning the idea of a firm and rigid lining and by adopting formerly known material, put into a new form specifically adapted to this purpose, he could make this type of necktie successful, and get one which would stretch enough to be tractable in handling but which would come back to and maintain its shape as no tie had ever done before at all, or has ever done since save by adopting his idea. He substituted bias-cut fabric woven from hard twisted wool for straight-cut loosely woven cotton fabric. Existing fabrics could have been selected from and cut out to get his result, but they would have been hit upon by accident. Without mueh advertising, extraordinary success followed ; everything else in this field has nearly disappeared from the market; and the defendants as well as many, and apparently all, competing manufacturers have been compelled to follow his lead. I am convinced that unless the collar case was wrongly decided this Langsdorf patent should be sustained; and I think Judge Hand correctly applied the principles involved.
I agree with my associates that the element of loose stitching is not of much importance. I think it has been over emphasized in the argument here, and perhaps in the opinion below. Given the basic idea of the stretchable outer covering and the resilient lining, it was seemingly obvious to any seamstress that if the two were to be united, it must be by stitching loose enough not to bind against the stretch and return. The loose stitching only provided the obviously necessary environment to permit the inventive idea to be operated. Its inclusion as an element in the claims did not help them; nor did it hurt them.
Of course the patentee is in trouble if we think of the word “lining” in his claims as a word which is satisfied by anything which is upon the interior surface of anything else; but that is not what he means. He is talking about a necktie lining with certaip qualities and effects and for certain purposes. It is no answer to refer to constructions which, while linings in a certain broad sense, did not have his qualities, purposes or effects. By “necktie lining” the trade and the public understood, not continuations of the outer fabric winding within itself, or mere stalling, but an independent portion giving body and strength. It stands without dispute, as I understand the record, that no one had ever before put into a necktie, a lining which did give body and strength and which, while permitting stretehability, confined that stretchability to the limits of resiliency, and was so constructed that the necktie as a whole would, not in vague theory but in daily practice, stretch a substantial distance, three or *558four inelies, and then immediately, in all its length not held, return to its original length, and thus retake its original smoothness and form. According to the testimony'and according to the sample exhibits, ties made according to the patent give satisfactory performance in these respects, while in others, older or' later, these qualities and capacities dwindle down to relative insignificance.
I am not able to find in the history of the fabric “resiline” the importance which my associates give it — indeed, I see no materiality in it. There was nothing substantially new about resiline. It was a wool fabric, woven with some skill, so that it would be particularly capable of resisting the tendency to crease when folded or bent, and then of coming back to its flat shape. This made it suitable for the lining of coat fronts and lapels, and would have been a quality of some value in necktie linings. It had never been actually used by anybody for any purpose, until Langsdorf bought and used some after his invention was completed and his patent application filed; the first sale of it ever made was to him. The evidence, confirmed by our inspection of the samples, shows no substantial difference between this resiline and the imported English fabric which Langsdorf had used in reducing his invention to practice for his patent office model. The record does not show why Langsdorf adopted and used resiline rather than the English fabric. It might have been slightly better; it might have been and probably would have been cheaper; it would have been advantageous to buy at a n'earby factory and control the output. No one of these reasons has, nor would all together have, so far as I can see, any bearing on the patentability of this invention. Langsdorf either had made a patentable invention or else there was no invention. about it — all before resiline appeared on the scene. Judging again by the evidence, confirmed by an inspection of samples, I am satisfied that resiline when cut straight had no substantial resilience in the sense in which the term is here of importance, viz. the stretch and return capacity. As then constructed, it was of no use in this invention unless it was cut on the bias; and no one ever had cut it on the bias or had thought of doing so.
Upon the whole ease, I think Judge Westenhaver reached the right conclusion as to patentability. When for many years the practical art has been trying to get a result by efforts in one direction and, by abandoning those efforts and turning in the opposite direction some one, though in a very simple way, gets a new thing, which the whole trade at once accepts as satisfactory and which largely displaces all competition in its immediate field, a court must be exceedingly sure of its ground .in order to reverse the verdict of those long familiar with the sub-, jeet in its practical aspect. To do so in this case is to say that, at any time before Langsdorf’s action, it would have been merely natural for any ordinarily competent tie maker to think and act as Langsdorf later did. That is retrospective prophecy. 'It cannot prevail against developed facts.
After these ties, with bias-cut resilient lining, had been on the market some time and taken possession of their part of the field, and the patent had been sustained in this ease in the court below, expert weavers worked out a method of making a fabric which, cut straight, has resiliency enough to do pretty well as a substitute for the bias-cut fabric to which some claims of the patent are restricted. The court below held this also to be infringement of some other claims. Both this question and any doubt whether, with my view of the importance of the resilient lining as such and the relative nonimportance of the loose stitching, the claims should have been treated somewhat differently than they were in that court, are questions as to which further discussion here is not worth while.