The opinion
BlaND, Judge,
specially concurring.
I agree that, in view of the product being old or so similar to other products in the prior art as to suggest its use as a disinfectant, appellant is not entitled to a patent for a method of protecting organic materials with the use of his stated materials.
I concur specially because it is settled law that one may have a patent for a method of treating plant life with an old substance, or even a patented substance (subject, of course, to the patent), if its application as a disinfectant was new, unobvious, and useful. Since the majority opinion does not clearly so state and since the latter part of the opinion is so limited in its discussion of the differences between the inventor of a product and the inventor of a process as not to distinctly differentiate between the disinfectant product and the process of using it I feel called upon to cite and discuss the authorities mentioned below.
*1230 It is not sufficient to say, in answer to the claim of a'discoverer of a new method of using an old product, that a patentee of a product is entitled to all of its uses and that the public is enitled to all unknown uses of a nonpatented product. To that effect, I think the holding in In re Thuau, 30 C. C. P. A. (Patents) 979, 135 F. (2d) 344, 57 USPQ 324 , should be modified. The following portion of the Thuau case is, in my view, repugnant to settled law on the question:
It is our opinion that not only is the weight of authority contrary to appellant’s contention, but that it is clearly contrary to the spirit, and in our opinion contrary to the letter of the patent laws that patents should be granted for old compositions of matter based upon new uses of such compositions where such uses consist merely in the employment of such compositions.
* * * * * *
The doctrine is so familiar as not to require citation of authority that a patentee is entitled to every use of whicli his invention is susceptible, whether such use be known or unknown to him. Likewise, with regard to an unpat-entable article or substance long in use, any member of the public has the right to every use of which the article or substance is susceptible so long as it is unchanged in any way, regardless of whether or not such uses were known prior to his own use.
Of course, any patentee is entitled to every use of bis material. This does not prevent another from getting a patent upon the use of the patentee’s particular material as a disinfectant if that use was not obvious and was foreign fronl its known use. The new inventor, however, could only practice his invention with the consent of the patentee, but with such consent he could prevent others from using it as a disinfectant and on the expiration of the article patent he would have a monopoly on its use as a disinfectant.
The latter part of the majority opinion implies, I think, that one cannot get a method patent for the use of an old compound as a disinfectant. This portion of the opinion would seem to suggest that unless he was the inventor of the compound he is not entitled to a patent for a method of its use in immunizing seeds.
While the opinion does not cite the Thuau case, the Solicitor for the Patent Office has quoted abundantly from it in his brief and states:
Involved in tbe issues presented by tbe present appeal is tbe question whether application of tbe doctrine of In re Thuau, supra, can be avoided by calling tbe use of an old compound a process, and expressing that use in claims drawn in broad method form. Single-step method claims of the same character as those here appealed have previously been before this Court as in In re Christensen, 468 O. G. 277 , 23 C. C. P. A. 1015, 82 F. (2d) 715; and In re Jones, 533 O. G. 1052 , 28 C. C. P. A. 1302, 120 F. (2d) 1019, but the Court apparently has not heretofore had reason to pass upon the question which this appeal raises.
The Board has several times ruled that where invention is involved in the discovery of the asserted new use of an old compound, that new use may he *1231 protected Toy a process patent. Ex parte Chamberlain, 2 USPQ 145 ; Ex parte Kurts, 15 USPQ 149 ; Mw parte Bosland, 44 USPQ 695 . Conversely, where the new use is obvious, such protection should be denied. The use of the compounds here claimed by Migrdiehian for, generally, treating organic materials, and, specifically, immunizing seed, is an obvious use. [Some italics mine.]
It would seem from the foregoing that the Solicitor, in view of the authorities cited, is of the opinion that a new use of an old compound may be'protected by a process patent if its use was not obvious, and apparently he is inviting óomment upon the Thuait case and does not urge its soundness.
I think the majority, while in effect applying the doctrine of the Thuau case, should frankly discuss it and rely upon it if they are of the opinion that it is controlling in the instant case.
I shall briefly analyze the authorities cited, supra, by the Solicitor and other authorities relating to the question as to the propriety of granting method claims in a patent for a new, unobvious, and useful purpose of an old compound, etc.
Ex parte Chamberlain, 2 USPQ 145 , involved a “method of pickling metals. It was found that the pickling bath itself, containing the particular proposed reagent, was not anticipated by the prior art, and the examiner was of the opinion that the bath could be allowed as a new pickling bath. Under these circumstances, the Board of Appeals said:
* * * we believe it is equally true that a new process is involved in applying it [the bath]. Such process should include the positive step of. immersing metal in the bath containing the essential identified ingredients.
Ex parte Kurtz, 15 USPQ 149 , involved a method of securing rubber to metal. The general steps of the process were old. The board held applicant’s material was not the same as that of the prior art references and stated:
Patents are frequently granted and sustained for. improved processes wherein the improvement resides solely in the substitution of a material not known to be an equivalent. The case of Tolfree v. Wetzler 25 F. (2d) 553 is illustrative. * * * Their equivalency may be apparent after appellant’s teaching but their availability is in no way suggested by any cited art.
The case cited by the board, Tolfree v. Wetzler et al., 25 F. (2d) 553 (C. C. A. 3rd), involved a method of stopping leaks. An old composition, gambier (extract from certain trees or shrubs), which “had been used for years in the tanning art and in other ways” and whose “qualities were known” was used in suspension in water to stop leaks. ■ Such use was held to be invention.
Ex parte Bosland, 44 USPQ 695 , involved the method of sizing cellulose textile materials. The prior art showed a similar composition used for an entirely different purpose. In its decision the board stated, “Assuming the composition per se to be old, this case involves the protection of a new use thereof,” and allowed the claims.'
*1232 Ecu parte Bosland, USPQ 696, a companion case of tlie Bosland case, supra, is even stronger in its statement of tlie well-settled rule.
Tlie following statement from Corpus Juris (48 C. J. 77) summarizes tlie law on this point:
[§S4] 17. AotucatioN to New Use. — The application of an old method or device to a similar or analogous subject with no change in the manner of applying it and no result substantially distinct in its nature is not invention. This is true, even if the new form of result has not before been contemplated, and regardless of how remote the new use may be from the old if no changes or modifications in the old device are necessary to adapt it to the new use. Invention is not involved in the mere conception of applying an old method or device to a new use. Even though changes or modifications are essential to the practical application of the method or device to the new use, invention is not involved if the new use is so analogous to the old that the thought of adapting the device and applying it to the new use would occur to a person skilled in the art and seeking to devise means to perform the desired function. The adaptation of the new device does not constitute invention, even though advantages not otherwise procurable are attained. On the other hand, invention is involved where0the new ■use is so remote from that to which the method or device has been applied, or .for which it was conceived,, that the thought of making the necessary modifications and, changes and applying it to the new use would not occur to a person ■shilled in the art and seeking means by which the desired, function could be performed. It is immaterial that once given the thought of applying the old method or device to the new use, the changes or modifications necessary to make the thought practical are obvious. [Italics added.] ' •
From Walker on Patents, Deller’s Edition, Volume One, pages 226 et seq.j tlie following statements are quoted :
It is not invention to use an old process for a new and analogous purpose.
* * * An old composition of matter applied to a new and analogous use does not involve invention. , .
It may be invention, to use an old process, machine, manufacture, composition of matter, or design, for a new and non-analogous purpose. (Potts v. Creager, 155 U. S. 597, 608 ; etc., etc.)
The courts have held that, while gravity is a simple, well understood force, a novel application of it to increase utility in an existing machine may be invention Qf a high order. (Bibel Process Co. v. Minn. Paper Co., 261 U. S. 45 .)
It should be noted that all of the appealed claims involved in tlie instant case are method claims and that the latter part of the majority opinion stresses tlie fact tliat appellant was not the inventor of the product.
I agree that in the instant case- the appellant, in his claims, defines an obvious use of an old compound, ór one so closely related to the old one that its use as a disinfectant would be obvious, and he is not entitled to the allowance of his claims.