This is a civil action under R.S. § 49151 seeking the issuance of a patent. The application for patent of Folkins and Miller, entitled “Process for the Manufacture of Carbon Disulfide” was rejected by a 2-1 vote of the Board of Appeals of the Patent Office.
The process involved, as indicated, is one for making carbon disulfide from natural gas. A prior patent, No. 2,330,-934, had been issued to one Thacker for the production of carbon disulfide from hydrocarbons, and is relied upon by the Patent Office in this litigation. However, since Thacker had used methane, the hydrocarbon with the lowest molecular weight, as his starting material, he did not encounter- the • difficulties which ensued when Folkins and Miljer attempted to operate the Thacker process with natural gas as the charging stock.
■ Now natural gas is a mixture of lower boiling and lower molecular weight'hydrocarbons of -the type intended by Thacker to be used in his-process. The' mixture is usually made up of 85-9.0% methane, 5-10% ethane, and'the remain-', der of the higher molecular weight hydrocarbons such as propane,-butane, pen-tañe, and hexane. There certainly is no-invention involved in the use of natural gas' by the applicants, since such úse was *364indicated by Thacker. The invention, if any, lies in the discovery by the plaintiffs of the cause of the difficulties encountered when natural gas and not merely methane alone was used in the 'Thacker process, and its’ obviation. These difficulties consisted of the plugging of the process lines with coke and tarry materials. After some experimentation with the sulphur and the catalyst used, it was. decided to prepare the natural gas before charging it in. As a consequence, an absorption and stripping system was installed and the amounts of propane and the heavier hydrocarbons were reduced before charging in the natural gas. The result was the Thacker process became commercially successful and the occurrence of' tars was eliminated.
No invention is claimed for the absorber-stripper system since the prior art taught the elimination of the higher hydrocarbons from natural gas. The plaintiffs base their claim on the discovery of the source of trouble.
They rely heavily on Gasoline Products Co. v. Coe2 in which the invention involved the discovery of the cause of the corrosion that was taking place in the coils of an apparatus used for the cracking of petroleum oils. The apparatus, however, had -been in use for a period of seven years, and in that time no one had been able to discover the cause of the difficulty. Here the Thacker process was in operation only three months before the source of' the trouble was located. There had béen no history of unsuccessful attempts to solve- the problem extending over a long period of time as in Gasoline Products, supra. In other cases relied upon by the plaintiff3 the need for improvement had long existed, competent investigators, had failed to fill it, and the difficulty was discovered only after repeated experiments and failures, with none of which circumstances are we presently confronted.
Not all improvements amount to invention. There must be some exercise of the inventive faculties and more than the mere exercise of mechanical skill.4 In Safety Car Heating & Lighting Co. v. General Electric Co.,5 Judge Learned Hand enumerated the factors to be considered in appraising an inventor’s contribution to the art. They are “the length of time the art, though needing the invention, went without it: the number of those who sought to meet the need and the period over which their efforts were spread”.
Those skilled in the art, it seems to me, would know that the higher hydrocarbons are more reactive than the lower. The discovery that these higher hydrocarbons were taking part in side reactions to form the coke and tar products did not involve the inventive faculty. The language of the court in Bostiteh, Inc., v. Precision Staple Corp.6 it seems is particularly applicable here:
“But his improvement came so shortly after [Thacker’s] patent that, despite its commercial success, we are not convinced that more was required than the skill of the'craftsman and that the exacting standard of ‘invention’ which the Supreme Court’s decisions demand was satisfied.”
Similarly, we find in Universal Oil Products Co. v. Globe Oil & Refining Co.7 the Court finding that the conception was “on its face too obvious to constitute patentable invention, and * * * was advanced shortly after any need of it arose.”
*365 The question before the court is not whether or not the plaintiffs’ application is patentable but whether or not the Board of Appeals was clearly wrong in denying a patent.8 I do not find so. Counsel will prepare tentative findings of fact and conclusions of law and proper order.
. As amended, 35 U.S.C. § 63.(1946). This section was repealed by Sec. 5, Act of July 19, 1952, c. 950, 66 Stat. 815, and is now replaced by 66 Stat. 803, 35 U.S.C. § 145 (1952).
. 1936, 66 App.D.C. 333, 87 F.2d 550.
. United Chromium, Inc., v. International Silver Co., D.C.Conn.1931, 53 F.2d 300; Miehle Printing Press & Mfg. Co. v. Whitlock Printing Press & Mfg. Co., 2 Cir., 1915, 223 F. 647.
. Walker, Patents (Deller, 1937), Sec. 24 and Sec. 17; Cuno Engineering Corp. v. Automatic Devices Corp., 1941, 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58.
2 Cir., 1946, 155 F.2d 937, 939.
2 Cir., 1949, 178 F.2d 332, 336.
. 1944, 322 U.S. 471, at page 487, 64 S.Ct. 1110, at page 1117, 88 L.Ed. 1399.
. Morgan v. Daniels, 1894, 153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 657; Abbott v. Coe, 1939, 71 App.D.C. 195, 109 F.2d 449.