(dissenting).
This case concerns the distillation of crude petroleum — primarily the recovery of gasoline, incidentally of the several by-products of such oil. The resultant gasoline is one of the most, if not indeed the most, important factors in modern civilization, for on gasoline depend wars, transportation by steamers, land carriage of passengers and freight by auto, truck and locomotive lines and the thousand and one stationary plants of commerce, to say nothing of the use of petroleum alone which has largely displaced coal in homes.
Petroleum is in the main distilled by large companies which maintain staffs of the highest technical skill, men versed in the distillation art and eager to note any advance or improvement made by other companies.
The oil distilling art has been and is the subject of numbers and numbers of patents and has resulted in a development of particular staffs in the patent office which by study and experience are fitted to determine that delicate question of the patentability of the varied oil distillation processes submitted to them for patent reward.
It will therefore be seen that a prima facies of unusual weight arises in favor of the patent here involved which, after a protracted inquiry, was finally issued. Seeing then that this patent presumably involved invention, we next inquire what measure of proof does the law require to overcome the prima facies of patent validity.
In that regard this circuit, speaking by Judge Woolley in Skelly Oil Co. v. Uni*656versal Oil Products Co., 3 Cir., 31 F.2d 427, 431, said: “A patent relied upon as an anticipation must itself speak. Its specification must give in substance the same knowledge and the same directions as the specification of the patent in suit. Otto v. Linford, 46 L.T.(N.S.) 35, 44. It is not enough to prove that a method or apparatus described in an earlier specification can be made to produce this or that result. Flour Oxidizing Co. v. Carr & Co., 35 R.P.C. 457. A singularly sensible test of the rule of anticipation is given in -British Thomson-Houston Co. v. Metropolitan Vickers Electrical Co., 45 R.P.C. 22, by asking the question — ‘Would a man who was grappling with the problem solved by t-he patent attacked, and having no knowledge of that patent, if he had had the alleged anticipation in his hand, have said: “That gives me what I wish ?” ’ The Pope Alliance Corporation v. The Spanish River Pulp & Paper Mills, Ltd. (Privy Council Appeals, No. 33 of 1928)”. This was restated in this circuit in Worthington Mower Co. v. Gustin, 3 Cir., 80 F.2d 594 (petition for certiorari denied, 297 U.S. 725, 56 S.Ct. 500, 80 L.Ed. 1008) and in American Safety Table Co. v. Singer Sewing Mach. Co., 3 Cir., 95 F.2d 543, 550 (certiorari refused, 305 U.S. 622, 59 S.Ct. 82, 83 L.Ed. 397).
Resting on this measure of proof, it is clear from a study of this record that no prior patent or practice showed, or indeed sought to show," the process disclosed by Lewis in his unitary, complete distillation process as contrasted with the multi successive distillation process as the prior art. In that respect the distillation art was stalled and static. Therefore, this court in its decision filed December 21, 1937, 106 F.2d 644, held:
“This case concerns the recovery, by a single distillation of crude petroleum, of its by-products. The recovery of such by-products by successive distillations- was well known, but this patent concerns the obtaining of such by-products by a single, as compared with recovery by additional, successive, distillation.
“In a general way we may say that distillation is effected by'the fact that crude petroleum vaporizes at different degrees of heat and in and from such different vapors various by-products are secured. The different temperatures at which vaporization takes place were well known and the apparatus and processes for securing desired by-products from such different heat zones were known and used But to obtain all the by-products the art practiced different distillations. In other words, it practiced successive, isolated, or what may be termed tandem distillations, in order to recover all the by-products. Such successive distillations were regarded as a necessary burden in the art, although they required additional expensive apparatus, delay, and the additional labor and fuel incident thereto. For example, one apparatus could by one distillation recover those by-products incident to vaporization at the highest and lowest vaporization heat points, but to recover the by-products at the intermediate vaporizing points the returning, undistilled, and unvaporized liquid was, as we have said, subjected to a further distillation process in order to thereby vaporize and recover their by-products. In other words, there was a second, triple, and indeed in some cases five successive, isolated, independent distillations of the unvaporized fluid, un■distilled by previous operations. Thus liquidation by what was known as bubble towers was a common practice wherein the recovery, for example of gasoline, was effected by superheating, and the recovery of other products, for example kerosene, gas, oil and light lubricants, was effected at what we may call sub-heating, vaporizing points and the unvaporized liquid had to be subjected to another distillation process where such liquid vaporized at points intermediate the highest and lowest vaporizing heat incident to the primary distillation points of the then art practice. So also steaming towers were used. The apparatus and process of the prior art was tersely summarized in the testimony of a witness who knew and practiced the art. We find no testi.mony to the contrary by any witness who took part in the practical art. His testimony is: ‘With these earlier fractionating columns we took from that column only two products, a top and a bottom product. And if we wanted an intermediate product, we ran it through another still and a separate fractionating column; all steps were successive. So that for each intermediate product we had to have another still and another fractionating column.’ ”
So holding, this court held the patent novel, useful, inventive and infringed.
Thereafter, on petition, a rehearing was .granted and after further full argument by counsel and on due consideration had, this court on December 21, 1938, after a comprehensive and exhaustive discussion *657of the prior patents, again held the patent valid, as follows, 106 F.2d 647, 650:
“Heretofore we filed an opinion in this cause sustaining the validity of the claims in issue and holding them to be infringed. On motion, a rehearing was granted and the case heard anew. After due consideration had, the Court finds no reason to differ from its former holding that the patent was valid and infringed, but in view of the earnestness of counsel for defendants and the importance of the case, the Court deems it proper that an additional opinion be filed meeting specific contentions made on the rehearing. ******
“We state that in our judgment the step taken by Lewis appears to be more, much more than the mere exercise of the mechanical ingenuity of one skilled in the art of petroleum distillation, more than a new use for the old tools of the art. We think that it does in fact constitute inventive genius. The defense offered is a mosaic defense and as was said by this court in Craft-Stone, Inc., v. Zenitherm Co., Inc., 3 Cir., 22 F.2d 401, 402, ‘The patentee invented a new and useful product, and it is not permissible for an infringer to go to the prior art and defeat the patent by selecting the various elements of the patentee’s process from different patents, bring them together, and say that this aggregation anticipates. Knowledge after the event is always easy, and problems once solved present no difficulties. Webster Loom Co. v. Higgins, 105 U.S. 580, 26 L.Ed. 1177; Diamond Rubber Co., etc., v. Consolidated Rubber Tire Co., 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527.’ In the case at bar the defense offered must fall. It may not be sustained against the disclosures of the Lewis patent.
“After rehearing and full consideration we are confirmed in our prior conclusion. The Lewis patent constitutes invention over the prior art and the claims in issue are valid claims and must therefore be upheld.
“The appellee’s process is almost identical with the Lewis method and clearly infringes the claims sub judice.”
Subsequently another rehearing was granted, the case again heard and considered, with the result that an opinion is now filed which holds the patent void of patentability.
I respectfully submit the opinion fails to show any error in the second decision of this court filed December 21, 1938. On the contrary, it concedes the novelty, the commercial success of Lewis’ process, its adoption by the art, and the defendant’s infringement.
Referring to the Lewis process, the latest opinion — italics mine — concedes : “The result is one which the art had sought, but which had not been achieved prior to Lewis. The great commercial success of the Lewis process cannot be doubted. The individual tools of the art used by Lewis are old. He has combined them, however, to reach a useful and, in a limited sense, a new result. * * * That Lewis has shown mechanical ingenuity in adding the auxiliary steam strippers is not open to doubt, but has he displayed inventive genius? This is the crux of the case at bar in view of the fact that no exact anticipation is displayed in the prior art. His disclosures seem the result of a regular development of the art of fractionating hydrocarbons, he adding an in-genius and commercially valuable step. But, in the light of the development of the prior art, we cannot conclude that the end which Lewis achieved was the result of that incandescent and illuminating instant in which the mind grasps a hitherto undisclosed principle and with it achieves a new result whether by new tools or old. Lewis must be held not to have displayed inventive genius.” Measured by the test of the necessity of proof of an “incandescent and illuminating instant in which the mind grasps a hitherto undisclosed principle”, few patents could be sustained. But on practical, well recognized principles of the patent law, I am constrained to file this respectful dissent which is bottomed on and buttressed by these considerations: First, the prima facies of the. patent; second, the opinion of this court stated by Judge BUFFINGTON filed December 21, 1937; third, the opinion of this court stated by Judge BIGGS, on rehearing, filed December 21, 1938; fourth, the fact that the opinion of the court now to be filed, fails to show where the court was in error in its opinions of December 21, 1937 and December 21, 1938. In the opinion of December 21, 1937, the court held— and I have seen no reason in these protracted hearings and rehearings to differ from the facts and reasoning then stated — to wit:
“It is clear that the tandem distillations of the old and now abandoned art required separate, additional distillation equipment of large magnitude and great cost, ad*658ditional fuel, additional labor, additional oversight, and additional ground. All this was done away with by the substitution of a single plant, a single distillation, and such a by-product recovery as no one of the old agencies could by their distillation effect. Manifestly, a patentee who first showed a simple way by which these supposed necessary elements of cost, labor, fuel, and ground, were done away with and in their stead showed an unitary operative distillation process, made an important step in advance and met the requirements of the Federal Constitution, art. 1, § 8, cl. 8, which provided: ‘To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.’ ”
Such being my unchanged view, I am constrained to file this respectful but earnest dissent. “
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