[1] The first and second patents, in a suit for infringement by complainant here against a different defendant, also named Bird, came before Judge Ray. His opinion will be found in 175 Fed. 346. Upon that opinion this court affirmed decree against defendant, without itself writing anything. Judge Ray’s opinion is a very full one, discussing at length the prior art and the novelty and utility of the invention disclosed, with copious excerpts from specifications and claims. So complete an understanding of the questions therein discussed will be found on reference to that opinion that further discussion of the point therein decided is not necessary here.
The leading object of these two patents was to produce flexible weatherproof roofings in colors other than black: the flexible waterproof and weatherproof roofings of the prior art were black, or of a brownish black, unless painted. There is a foundation of felt, heavy paper, or what not, which is saturated or coated with a waterproof compound containing hydrocarbon material. Upon this foundation there is spread a facing which, with other ingredients, contains the desired pigment. In the prior art this facing was applied by painting it on the foundation, so that it became an adherent coating, as would ordinary paint when spread over the surface of wood. There were defects and difficulties attendant on this old method of coating, which are pointed out in opinion above referred to. The patentees overcame these defects and difficulties, and their process and product was held to be novel and meritorious.
This was done, to quote from the specifications, “by combining with the foundation a carrier or binder and a pigment so constituted and applied that they not only are thoroughly united with the foundation, so as to prevent cracking and peeling off, but, further, all injurious interaction between the constituents of the foundation and those of the pigment and its carrier is avoided.” The foundation is first prepared by saturating the felt with one of the many suitable waterproofing compounds then on the market. The pigment carrier or binder — -the facing of the completed roofing — is next prepared. Careful instructions as to its composition are given, SO' as to insure its coacting with the saturated foundation.
“Then the colored facing * * * is applied in the presence of heat to the foundation, which preferably should be in a heated condition, so that the * * * hydrocarbon mixture may be in a soft or molten state. When ready-made fabrics are used for the foundation, they may first he heated to bring the saturating * * * compound into a plastic state. In many cases the *378temperature of the colored facing is sufficiently high to soften the foundation.”
The novelty of the patented process, as contrasted with the prior art of coating the foundation with á paint, is pointed out:
“It will be observed that the hydrocarbon materia] of the foundation and the colored' facing are brought together while both are in a molten or plastic condition and that they are subjected to pressure while in such condition. This causes the foundation and the facing to interlock or amalgamate at their junction. Thus the finished article comprises three portions, one of which is formed by the facing exclusively, another by the foundation exclusively, and the third intermediate portion by an interlocking of the two first named.”
The invention is very clearly expressed in the third claim of the first patent. We quote that one, as it is the shortest:
“The herein-described process of manufacturing a flexible material, which consists in treating a suitable material with a hydrocarbon to form a foundation, and applying to the said foundation in the presence of heat, a colored facing consisting of a pigment and a mixture containing a resinous body and a fatty body.”
The second patent was, as Judge Ray held, a carrying forward, extension, and perfection of the first patent. It gives further instructions as to the composition of the facing. Of the three claims in suit here 4, 9, and 11, we need only quote:
“4. The herein-described process of producing weatherproof coverings, which consists in applying to a suitable foundation a facing containing a bitumen or pitch exhibiting a brownish color when viewed in a thin layer, said facing also containing a pigment adapted to become clearly visible or to develop upon exposure to the atmosphere.”
That the defendant’s covering in the suit in 175 Fed. 346, was an infringement of both these patents is not questioned by the defendant here. The covering now before us is' prepared by coating the foundation with the pigment carrier by a painting process, in the absence of heat, which was the old way of making such coverings, coating the foundation with the facing instead of interlocking the two.
Complainant contends that the absence of heat in defendant’s process does not take it out of the field of this second patent. It is pointed out that the claims do not contain the words “in the presence of heat,” or their equivalent (as did those of the first patent), and that the instructions in the second patent as to the process of making the weatherproof covering, which include heat, are prefaced with the words: “We will now describe in detail one particular way of making our approved covering.” Judge Mayer agreed with this contention, hut we do not find it persuasive. There is nothing to show that the interlocked facing — the novel idea which differentiated patentee’s invention from the mere adherent coating of the prior art, which was full of painted adherent coatings — was cast aside in the second patent. It was on this theory of novel method of securing a durable interlocking that the patents were originally sustained. No method other than heat to effect interlocking and durable attachment is described or suggested in the second patent. It is true that the patentee says that his pigment carrier *379is “applied to the fabric in any approved manner”; but the testimony seems to indicate that unless heat is used in its application the interlocking or durable attachment will not result, that if it were applied in the old way, the only way in use before the applications for these patents, viz., painting it on cold, the desired result would not be obtained. It is suggestive that in manufacturing its products under these two patents the complainant invariably uses heat. Maybe a durable attachment effected in some other way would effect the desired result, hut apparently a further exercise of inventive faculty is required to discover such third method as a substitute for hot application under pressure or cold painting. The patentee testified that he could “conceive of a method by which the mixture could be applied cold; in fact, several'methods,” although lie suggested only one method. He said that he “believed it was at least feasible” to comminute the pigment carrier mixture and then apply the particles under suitable pressure and without heat, so as to cause them to recombine and to attach themselves to the foundation. He had never tried this and did not know how practical it would be, although he did not think it would be as durable as though the interlocking actually took place. This, then, seems to be the situation. There are only two known methods of applying the facing — by cold painting or by heat. If the facing of the second patent is applied in the presence of heat, as taught by the first patent, the result will he satisfactory; if applied as a cold paint, the result will not be satisfactory. There may be some third method of applying it, which will also give satisfactory results, but no one has yet by experiment demonstrated its existence. Under these circumstances, to construe these claims as covering every method of durably attaching, known or unknown, at the date of the issue of the patent, would make them like the claim which was condemned by this court in Matheson v. Campbell, 78 Fed. 910, 24 C. C. A. 384, where we said:
“The patentee proposes to set himself in the pathway of future experimenters, * * ® and, as the result of each new experiment is disclosed, will fire away at it, calculating to ‘hit if it is a deer and miss if it is a cow.’ ”
Judge Mayer, however, held that the combination of materials used in defendant’s facing did not infringe the combination of materials covered by the claims of the second patent. With his reasoning and conclusion on that branch of the case we concur.
[2 J The third patent departs from the heat-interlocking feature altogether. Its facing is applied cold as a paint would be either with rollers or a brush or in any other similar way known to the art. The claims relied on are:
“3. The herein described process of manufacturing liquid cementing paint, ■which consists in incorporating or mixing with each other, a volatile solvent, a weatherproof plastic pitch of a color adapted to be dominated by that of an added pigment, and a pigment which is relatively inert to the other ingredients.”
“5. A liquid adapted for use as a paint, cement or the like, the said liquid containing a volatile solvent, a weatherproof plastic binder which contains a weatherproof pitch which appears light-colored and more or less pervious to light when viewed in a thin layer, and a pigment the color of which dominates that of said binder.”
*380As originally filed, the third claim, instead of the words “a weatherproof plastic pitch,” used the words “a weatherproof plastic binder” and the fifth claim, instead of stating that the binder “contains a weatherproof pitch,” stated that it “contains a pitch.” Similar changes were made in the other four original claims. These amendments were made-because of rejections on prior art, the patentee in the course of discussion with the Patent Office pointing out that three pitches referred in the prior art, viz., coal tar pitch, wool pitch, and rosin pitch, are “all deficient in that they are not weatherproof.” We concur with Judge-Mayer in the conclusion that to infringe these claims whatever pitch there may be in the binder (the pigment carrier or coating) must itself be weatherproof. Since the Gilsonite pitch which defendant uses is-not itself weatherproof, as the testimony clearly shows, we concur in the conclusion that infringement of the third patent is not shown..
Decrees affirmed, with costs.