Brief for Petitioner — Mandel Brothers, Inc. v. Wallace

Supreme Court brief1948

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Fant cme Lid

‘ “LIBRARY .

‘BUPREME CouRT. U SEP 20 3 jas

Supreme Court of the won] |

. ‘Ocromes Tank 1947, ee

eis

MANDEL Broruers, INc., a Sia |

oe ae “Petivioner,

vs. :

Joun H. Wattace, Jr, .

: = : Respondent.

\ BRIEF FOR: PETITIONER.

Go ae ‘LEONARD s, Lyon, aes e

eRe 811 West Seventh Street. Building,

ane Los Angeles \14, California, | ee

3 Tuomas ‘A. ‘SHERIDAN, aes

. x The Field Building, Chicago 3, 3, Illinois, : ie

A ree for Petitioner. x

ee " "Parker & Company, Law Printers, Los Angeles. Phone TR. 5206.

~ TOPICAL INDEX _

, ; \ EN

o Opinions of the: Coiacen Bebo crear ce ait Motels nacnnaiial Scie l

Jurisdiction wre siocsenspss Sue estc ds ese Tosa \oeuce ses Mitcssesavenaes 2

3 Statemest of the Case::.. oe eae Lee NEY COORD eaiadaantase : Lo naiele 2

: fe. a 3 /

“The Patent RR Re ere enn Se aera Dent genteecenttenesstecensneseessnses -

Public Use and Sale of the Earlier Arrid Containing Cresol :

Sulfonic Acid, Aluminum ‘Sulfate and Urea.......... sosercsascessseass: Q

_ The Development of the Later 7 ae a ea dis 49

Prior “Art. Patents. Dénjoristrate That the Power of Uren to.

'. Reduce Acidity and Corrosion of Fabrics Was Well Known 12

Shipp No. 2,174, a ee, 12.

. Missbach No. 2,069,711......... Saal FH ea LO SE A PO 15

"Koch No. ZOU 22 nit. <3 sep Sato “ai Rag

Specification of Errors Relied Uptime Bacaoeps eine

3 baa of. Argument caveat (ae ses taeee ‘cone sascusneraes seichan tio = rai 20

: Argumient ce pcbchoa pstiantsks PES eee fee pas. ERA § 22

he: Seventh Cireuit sie of Appeals Clearly Erred‘in Hold-

ing That the Prior Patents Were in an@Art Nonanalogous to

- the Patent | in Suit : a= 22 *

Oe ee ee ee ee

The. Sevenitli/ Cireuit Court of Apounls Erred in .Not Holding

-. the Patent ‘in Suit Invalid ‘in View of the Public Uses and

Sale of Antiperspirant Compositions Containing Urea More

Than. Two Years Before the — of the emt sa for.

_ the: Patent in Suit........ : as sas Dies iorelemetseatdsbes anes bois coed ... 3

The Wallace ‘and Hand’ Patent in Suit Does Not E ra the

Exercise of Inventive Paes nt REY 35

Long Felt Want. and Commeréial Success... Saas pica catee te 38 }

‘Conclusion jes : mince FEA EEN Geh Rah ON ORY a Selene 45

TABLE OF AUTHORITIES CITED

| Cases Soa, 1

Anerian Ualast Cov. Duty Bart Chy Ht Cay 20°

| UE eR Sa Rees Va ene ‘ 31

American Fruit Growers v. Brogdex, 283 U.S. 1, 75 L.Ed. 801.. 43

Andrews v. Hovey, 123 U.S. 267, 31 Lif). 160.....eeneen 30.4

Beedle v. Bennet, 122 U.S Tl, SO L.Ed. 1074... eee WD

Bone v. Marion County, 251 U.S. 134, 64 L.Ed. 1B... 42

Boston - Pencil’ Pointer Co. vy. Automatic Pencil Sharpener Co.,

276 Fed. 910 (C.C.A. y ) Se ides eo | ae

Bulldog Elec.. Prod. ‘Co. v. General Elec. Co., 105 F2 466

(CCA. 4) i CE OR eat 43°

A Butcher Packing Co. v. Cincinnati B.S. Co., % F.2d 567 (Co. ,

A a RES. Ot 4306

Conerehs Appliances Co. v. Gomery, 269 U.S. 17, 70 L. Ed.

222 Cok nametiintaben ids pssiceal Siscceiacaiicanelinsaladooe on > 36

Consolidated Fruit Jar" Co, v- Wright, ' 94 }-U. s. 92, 24 L.Ed, 68. 30.

_ Copenian Laboratories Co. ¥,, General Plastics Corp. is 149- F.2d °

SS ol et ey , Re we MILNE EN ih PREM RS T Sg”

. Cuno Engineering bors v. Automatic. Devices Corp., 34. U. >.

84, 86 LiEd. SB asa :-nn-nncssseesecseseennstecssnneesntenesennantecenmactucsccenneegeen as

Deer Go. Ine. v: U.S. Slicing Machine Co., 21 F.2d 812 (CEA.

O} ; sictashale celpaassdiigpeatanceig eset rican esaieaighiinighticaind 26

‘Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 :

US. 2 Te a 8 20, 24, 25, 26, 29

Egbert v.-Lippmatn, 104 U:S. 333, 26 L.Ed. 733.2 ne. 30

Elizabeth v. American N icholson Pav. Co., 7 U.S. 126, 24

L.Ed. 1000 eranasaiinstin etiingenesdihincesrresnenensmcseybossen seeaeteeteee 30, 31

Fry v. Rookwood Rosary: Co., 90 Fed. 494 saibeates F REE EE 42

Funk Bros. Seed Co. v. Kalo Inoculant Co., 92 L.Ed. Ad. Op.

BOO ecliicanl Sacceossidibainnsiing ienseddbiiiatoditianietaadetiala sid hii tiene darlene. senkecuiiims cM ao

Germer Stave. Cae v. Art Stove Co, ate Fed. 141 oeaate: 6)...

. PAGE

Grand | Rapids Shewcuse Co. Y. Measuregraph Co., 28 F.2d 497

Ge et a 31

Grant v. Waker, 148 Us . 547, 37 L.Ed. ae Sti 44°

Grinnell Washing Mach. Co: v. Johnson Co., 247 U. S. 426,

yp 2 LE ER aioe Cale EN Ceci 28 te

Hall v. Macneale, 107 U. S. 90, 27 L.Ed. 367.2 EMAIL 30, 31

Honolulu Oil Corp. -v. Halliburton, 306 U.S. 550, 83 L.Ed. 980 43

ironclad Mig. Co.-v. eo — Co., 143 Fed. 512 (C.C. |

Re te ea ee ae

Kendall v. Winsor, 21 How. (U.S.) 322, 16 Ce hs ae

Lempco: Products y. Timken, -110 F.2d 307 (CLAS 6)icsni sifoemias 43 —

| * Manning v. Cape. Ann Isinglass ete Co., 108 U.S. 462, 27 L.Ed.

SEES ELIA cae eee as os ictal ae

"McClurg v. Kingsland, i How. (US.) 202, I L.Ed. 102........ 30 ,

Root -v. ‘Third Ave, R-Co., 146 U.S. 210, 36 L.Ed. 946.......30, 31

‘Ship Scarf Co. v. Wm. Filene’s, Sons Co., 289 Fed. 641 (C.C

7 OA, 1) yan npetnstoncneaseansaneceainosangye je iapnsantdidinoidisasieioaaddlasiniacatamdatecines 38

Smith & Griggs Mig. Co. v. Secsignt. 123 U.S. 249, 31 L oh

Ss GENER “sostiehitdaseens Oi enon nat wh Pace EE PS ac Ewe orofe se ene aes 31

Tashjian v. ‘Forderer Cornice Works, 14 Ff. 2d 414 (C.C.A. 9)...

Toledo Pressed Steel Co. v. " Standard’ Parts, a U.S. 350, 83.

LEA. 1334 cp eneeecenceengeneecennennnne saplipaitcaioesoiaa . 41

Union Paper Collar Co. v. Van Deusen, 23: Wall. Ls 23 L.Ed.

"128 ae ota & kn OB 23 BE ah és LS cebhatdmels Titi inniatshdied hs dianeriilbitadetiiies nia taleiabamcuane 44

‘Wallace v. F. W. Woolworth Company, 45 F.Supp. 465, aff'd

133 F.2d 763 (C.C.A. 2)... -1, 2, 3, 6, 9,40, 14, 22, 35, 37, ‘39, 43

Worley v. Loker Tobacco Co., 104 0.8. 40, 26 L: Ed. 821... “30, 31

te eRe ‘ / & ‘Srarere. |

33 USC. $31: isons oom meas UO ce |

Bors

‘Supreme Count af the United tales, ,

} 3 . e - es “2 : ~ -

Joun H. WALLACE; Jr.,

“trial court is reported in 45 F, Supp. 465. The ‘opinion

of the Second Circuit Court of Appeals affirming: the —

ts ‘Octo Pie: 1947,

a ABs No. 582

-Manper Brotuers, Inc., a corporation,

. . Petitioner,

fs. . \

ay oF

' . \

: }

‘ : i

‘. _ | . Respondent.

’ BRIEF FOR PETITIONER. .~— {

* Opinions - of the ‘Courts Below’

7 The opinion of the Seventh Circuit Court of ‘Appeals: me.

this case holding. Walace and Hand patent No, 2,236,387 |

->{R. 167] valid'and infringed is reported i in 164 F.2d 861,

This pinion reversed the decision of the Distriet C ourt -

- for’ the Northern District of Hknois*which had held. the .

patent invalid. The opinion of the eo int this.

case appears in the record [R. 141].

“In the prev ious case of Wallace v. F. Ww. WwW sdiwoeik

Company, ip the District Court for the Eastern District

of New York, the trial court held the sanie “Wallace and

Hand patent here in suit: to be invalid. The opinion of the

“decision of the trial court is reported in 133 F; . 2d 763.

“Pet

| 3. granted: more 15, 1948.

Jurisdiction.

The opinion of the. Seventh Circuit Court of . Appeals:

in this case was “filed. December: 12, 1947 [R. 192]. and.

defendant’ s petition for rehearing was denied by the

Seventh Circuit Court. of Appeals ‘on January 6, #1048

[R.-201]. The defendant's petition. for certiorari Was»

° "

”

Statement. of the Case.

Respondent sued petitioner in the District Court for the

Norther District of Illinois, charging infringement of a

Wallace,and Hand patent No. 2,236, 387 [R. 167].

trial court held the patent invalid for anticipation and id’

- of inv ention. The Circuit Court of Appeals reversed its —

a judgment, * finding the patent in suit valid and jotesnge

_ In.a prévious case of Wallace v. F. W. Woolworth

| ¢ ompany, ia the District Court for the Eastern District

of New York, the’ patent was held invalid by the trial

court: (45. F. Supp. 405), which: “judgment was af-

: firmed by the Second Cireuit Court of Appeals ( 133. F. 2d°

763); and as ‘will appear later, there is a fundamental,

disagreement in the’ legal positions of the ‘gets asaiae of ‘

appeals on the question of validity on 1 substantially the :

same e records.

= The, Patent in Suit. Naga Ry poeta

The patent in suit is for a composition which i is intended

3 to be ‘applied’ to certain skin areas to inhibit or retard the

‘flow of: perspiration. ‘The composition of the patent con- °

sists solely of “solutions, containing an acid salt of a

heavy imetal, usually aluminum ‘chloride. or aluminum

- sulfate’ [R. 167, col. 1, Il. 5-7) and “a’ ‘normally. neutral

: water soluble. amino compourid possessing one ar’ more

“a Ae } ae, Oe t/ Pai 8: 2 F

’

act reactive crag (NHL) groups [R. 167, col. 2. +11.

A013 oa ase

Py Se

“The patent in mit acknowledes [R’ 167. col” 1, Il. 3-7]

'. that it had béen previous y propos to contrel the flow of

perspiration: from certain skin areas~by. the applicatio of -

solutions containing ‘an acitl salt of a heavy metal, usually -

aluminum. chloride ,or aluminum sulfate. The patent in.

sait asserts [R. 167, col, 1, Il. 7 fo 12) that, although such’

prior solutions’ were: effective to retard the flow ‘of per-

spiration,. they tended to be corrosive and irritating to, the

clothing and skin with w hich they came in contact. ¢

The patent proposes to add to such otherwise old anti-

_ perspitant compositions an amino compound for.-the sole .

purpose of inhibiting this corrosive and irritating action

.. of the Fomposition. In the antiperspirant compositions’

: sold by the defendant in this case,,as well as by the de-

fendants in the prior case of WW allace \ vv. F. W. Wookworth

AE ompany,, the particular amino compourid employed is

wea. In fact, the record does: rot contain any ‘evidence

of the utility. of. any other amino compeund except urea.

Thus, the sole nov elty. asserted for the composition of the

" patent’in suit consists in the addition. to an‘otherwise old

“composition of an amino compound such as -urea, for the..

" purpese of retarding the corrosive action of the old cone

_. position and ‘the sole question praposed by the patent in

‘suit is whether it constituted a patentable + invention to: add

an amino compound such as, urea to an otherwise old -anti-

_ perspirant composition, for the purpose of inhibiting. the’

corrosive action of the composition.

As. will appear hereafter more fully, all of the anti-

‘perspir: ant compositfons w hich have been marked as made

under fhe patent. in suit and the “Ever-Dry” antiperspirant

herdin alleged: to be an infringement of the: patent in suit

prior liquid anffperspirant compositions, ng one has found

‘ . .s Oon

. i ? .

a ¢ —_— = .

‘are in the. form of a cream’ fates than a solution:

Furthermore, as will hereafter more fully appear, while”

the patent in suit speaks of the corrosive character of the

it necessary to add urea or similar substances to a liquid:

antiperspirant composition to eliminate corrosiveness. It

is only where an antiperspirant composition is put out in

the form of cream that the practical art has found it of

any value to utilize such. materials. as urea to - “prevent .

corrosiveness.

While the fiapent: in suit refers to ae prior antiperSpir- :

ant preparations as “solutions,” the composition described

in thé patent in suit is also a solution.~ The ‘only specific

examples of an antiperspiran composition which appear

- in, the patent in. suit contain but“three ingredients. These

three ingredients are: first, aluminum sulfate; second, urea |

(first example) or: glycine (second example) ; and third,

water [R. 168, col. 1, IL. 20-33]. Nothing is contained in

the patent. in suit to suggest that the invention is of any.

particular value as employed jn the forny of an antiper? *

spirant cream, as distinguished from an @itispirant solu-

tion. >In 1 fact: no information is given in.the patent in att

‘as to how to produce a cream, except the general statement

that “Our improved ° compound may also be incorporated

in an “emulsion with wax or oil and applied to the skin in

this form’ [R. 168, col. 1, Il. REX | GR ee ee

The patented invention includes not only antiperspirant _

compositions which contain aluminum sulfate, or aluminum

‘chloride as the active antiperspirant ‘ingredients, but the °

. patent also includes antiperspirant compositions .in_ which»

any metallic salt of a strong acid is employed as an antl: ’

perspirant ingredient. - It includes ig of such metals

“as aluminium, zinc, cerium, zirconium, titanium, iron of

‘ cee \

‘

bismuth” : sind states that “salts of tin, lead and , cad-

‘mium are also effective” “And provides that the’ acid radical

of such, salts. may’ inélude “‘salts-of strong organic acids;

such as ‘sulfonic acids” {R. 167, col. 2, Il. 17324].

Furthermore, the: claims of the patent in suit do not. 3

\define and are not, limited. to any specific composition.

"Claims 1,°6, 11, 13 and 16 call broadly for a composition

in hich ‘arf acid reacting inorganic salt of a strong acid

may’ ‘be employed. While claims 2, 3, 4, 5, 12. and 15

recite ‘specifically aluminum sulfate and claim 9 recites

specifically ‘aluminum’ chloride, these claims require only | a

- that the composition “comprises” or “includes”: aluminum

"sulfate: or ‘aluminum chloride, and thus’ by their terms,

“include‘any ‘antiperspirant composition in awhich, in addi-

tion. to. aluminum sulfate or aluminum chloride, the com-

| position may inclyde other antiperspirant materials. | This.

- is ilhistrated by the fact that the commercial products :

:alleged to be made under’ the *patent in suit, ‘such .as

“Arrid” and “Fresh” are identified in the record merely

as products. which include respectively: aluminum sulfate:

{R. 117] and aluminum chloride {R. 117] without any

‘ identification @6f what. other: acid reacting inorganic salts

of a strong acid may be present. Furthermore, these

clainis live been urged and found to be infringed by de-

fendant’s Ever- Dry composition Which contains three anti- «

- Rrspirant ingredients in the following proportions, a

T% aluminum sulfocarbolate, 7% ‘aluminum sulfate, and

6.6% aluminum chloride [R. 15). As will later: ‘appear,

_antiperspirant compositions containing urea, aluminum

sulfate and cresol aria acid were in public: ‘use and on

sale more than two years prior, to the. application for the

| "patent i suit, ‘it being: respondent's’ position ‘that the in-

vention: of the patent in’ suit arose only when they pro- ee

. 4% :

- ry

duced a pr chitation omitting: ‘the: cresol. sulfonic acid fren :

the _composition. It is therefore to ‘be ‘particularly noted .

that the patent in suit does not claim’any specific composi-

tion, but-i is broadly inelusive of at least any antiperspirant

compositions w hich includes, in ‘addition .to aluminum. sul-

_- fate’ or aluminum chloride, urea; independent of the ques-

-« tion of whether or not other effective ingredients are also.

‘present insthe composition. | While claim 7 Of the patent

in suit specifies ‘a specific composition, ‘this claim i is not in

suit oF | to be infringed. BR eNGT: 8

; Public Use andSale of he ‘Barlier

_Arrid Contiining Cresol Sulfonic

Acid, Aluminum Sulfate and Urea.

| The plaintiff and patentee, Wallace, is a ‘manufacturing :

chemist who in 1932 was doing business «under the. name.

of the Wallace Laboratories [R. 113- 114].. ‘This contin-

ued up to the time of. the trial of the case of Ww ‘allade

Laboratéries v. F, W. Woolworth’ Company. Ww ‘allace

Laboratories has- sinee-been.. incorporated as Wallace Eab-

oratories,.Inc., and. Wallace i is at present vice- -president of

' Wallace Laboratories, Inc. The former Wallace Letiora-

‘tories developed and manufactured’ products. which were

sold by Carter Products, Inc., as a distributor [R. 113}.

Previous | to 1935 a liquid antiperspirant | ‘known as:

Perstop, which contained aluminum chloride, was manu-_

factured by Wallace Laboratories and sold by Carter

Products [R. 120]. Similar liquid anti iperspirants have—

been on the market for some.tw enty years and sold under

the name of “Odorono” {R. 114).

The coimventor of the" patent in’ suit, Hand,. was em-

ployed. by Carter Products in 1935, at which time he and

Wallace. cooperated together in the investigation of ark

2 Py re . : @

perspirant compesitions fR.. 114-115].- Hand conceived |

of the use of certain cresol sulfonic: acids as active anti--

_ perspirant. ingredients and ‘contemplated marketing-an

antiperspirant, composition containing: these materials in

the. form of a creain. Previous thereto, no antiperspirant |.

_ gomposition had ever’ been marketed in ‘the form ofa

in development of this cream. The work of Wallace and

\Hand on this: cream started in the spring. of 1935, “Im-

“mediately they fond the cream to he corrosive [ Exhibit

9, p..39]. They at once. tried to, reduce the acidity by

neutralizing with ‘such agents as sodium hydroxide and .

other strong alkalies [ Exhibit 9; pp. 40, 41; R. 128].

W heh the cresol sulfonic acid was neutralized with Aodium

‘hydroxide or other | strong alkalies, the corrosive prop-

“erties were overcome but at the expense of the anti-

perspirant properties [Exhibir ® 9, p. 40}. “Wallace and |

- Hand then ‘tried urea {Exhtbit. 9, p. 41; R. 128].

Urea. is \ well-known chemical compound which was

sold in -large quantities commercially | previous to any

v7,

“ alleged invention of: the. patent_in_suit_—The_properties

_ of urea. were also well known. The‘history of. the. ¢om-

* meroial development ; and properties, of urea are’ fully. -

_ covered in the two publications, “The Chemistry. of Urea”

by Werner, defendant’s physical Exhibit J; and “Crystal:

Urea. Industrial Development’ and Properties” by Ber-

liner, defendant’s physical Exhibit D. Urea is. prodticed .

‘commercially through the reaction of ammonia and carbon —

‘dioxide. At. ordinary: temperatures, urea in a solution

acts as a weak base.or a neutralizer for acids. forming

addition products thereto [ Exhibit. D, p.,519]. At more

_ devated temperatures urea: is, more completely ionized and

: therefore agtive as a stranger neutralizing agent, firfally

eF ra > lew

—t—:

- hydrolizing to give off. ammonia [R. 40; see also Ex

_ hibit D}.

‘The well-known property of urea to counteract acidity

is, stated, for example, in Exhibit D, page 518, as fol--

lows: “Urea forms additional compounds with acids, act-

| ing an as: monobasic compound. "le required only $.

i} ‘simple trial of this well-known weak base to find that it

~~-\markedly reduced the corrgsive action of the cresol ‘sul-

’ fonie acid while not reducing: ‘the antiperspirant proper-

- ties

_ wer considered by Wallace and Hand as insufficient, so

ey to irbprove the antiperspirant properties. they added to the

ties as. markedly as the sodium hydroxide or stronger’

alkalies _ [Exhibit 9; p. 41]. The antiperspirant proper-

of the cream containing cresol sulfonic: acid, however,

mer of 1935, therefore, Wallace and Hand had produced

an antiperspirant composition in the form of a cream _

| which, in addition to cresol sulfonic’ acid, used. urea for .

the purpose of preventing the corrosive character of the

fe seis and his product also contained, aluminum sul-

nin sulfate’ being present in an amount of

10%

Lid . 124]. This material was made by WaUace

_. Laborktories and sold by _ Carter Products ‘beginning in

the mifsummer -of 1935 and extending until September,

. 123]. At least some 30,000 pounds of. this ma-.

5 sold under the trade name of “Arrid” Bes 12}

two- ad ertisements by Carter ‘Products of this ‘ene’

Arrid [R.31, 32, 33, Exhibits A and B], which advertise-

ments show that it was represented that this product ‘was

noncprr sive to fabrics. These advertisements were. re-

the trial- court on the ground that they were

_ hearsay ab to plaintifXWallace, vgs aul

sii .

° : . a ; 3

Since this eatlier Arrid antiperspirant. composition was

in public use and on sale. niore than two years prior to the

filing on May 3, 1938 of the application for the Wallace

and Hand patent in suit [R. 167], the Wallace and Hand ©

patent in suit is totally invalid unless it discloses an inven-

- tion and is confined to that’ i vention, which invention’ is

separate and distinct from this: prior Arrid antiperspirant

Composition which contained urea and therefore was prior

_ art to the patent i in suit, oe ee

Phe’ rivelopesitie of the Later Asrid..

\ In, Shtember of 1936 Wallace arid ‘Hit made’ one

change ‘orily in the earlier Arrid w hich had beeh in public

use‘and on sale for more than two ‘Years. “This change

consisted merely in omitting the cresol sulfonic acid and

increasing correspondingly ‘the amqunt of alurfinum sul-—

fate present [R.. 125, 126]. | Respondent has taken the ~

- position throughout this litigation that the earlier Arrid’

“which contained cresol. sulfonic acid, in additiop to

aluminum sulfate and urea, was not. the-invention™ athe

~ patent in*Suit; and. has taken the position that. the later

Arrid first produced in September, 1936 is ae dis-

tinct from this earlier Arrid material.

In the ‘prior case of. Wallace DW oolworth, respondent

“sought to: distinguish the product produced in September,

193% (omitting ‘the cresol sulfonic acid) from -the-prior

y Products. ‘by so-calted “¢ “conductivity measurements [ Exhibit

9, p: 45). "It was asserted/ that -with salts such as:

—added-to cresol sulfonic acid had. an increasing effect on ax

~ the conductivity | Exhibit 9, pp. 45, 46].. This, it was

urged, proved that in the composition containing the cresol :

aluminum chloride and aluminum sulfate, urea had -no —

appreciable effect on the con lictivity, wheres urea 1 when ie

> bed enna

: 2 @

sulfonic ath the urea was all pa ee ‘with the Sd as

| “urea methylene dicresol sulfonate” [Exhibit 9, p. 45}.

_ while the later compositions omitting the cresol ‘sulfonic

"acid were asserfed to have uncombined’ urea’ present. ;

- These conductivity tests and the conclusions of respond:

“ent relative thereto aré ‘not referred to in the patent and-_

‘were resorted to initially for use in the prior case of.

Wallace. v. Wookworth. No. corresponding testimony -

ppears ‘in the , jrecord of this case. The only testimony. |

é ore ae ak case relative to such conductivity tests appears a

cross-examination. of. petitioner and defendant’ s wit-

ness, de Navarre, who testified’ that’ these conductivity

_ tests did not justify the conclusions sought to be drawn

_ therefrom: by plaintiff and ‘respondent’ [R.- 81}. It ig

further to be noted that the distinction sought to be ‘made’

“is not in conformity. with the language of the<patent : in

suit. The patent in suit ints out that the urea or neutral

_” protective- sedient” immediately reacts with the acid. on

- its liberatiod [R. 168, col. 1, ft. 50:56] and, accordingly,

proposes ‘the ntilization of just the theoretical quantity of =

urea to combine’ with the potential acid ion of the ‘salt

employed. [R. 167, col. 2, 1. 55-R.. 168, col. 1, Il 1-19),

Both the records in this case and in the W oolworth case 7

shew that the cresol sulfonic acid was onfitted from the

. Arrid compound becaiitse it was, found that it caused the

product to darken in color, resulting. in © discolorization

and, moreover, had the effect of generating bad odors

[Exhibit 9, pp. 42, 43; R. 124, 125]. :

To demonstrate the utility of the “composition of the

patent in suit,- plaintiff introduced evidence of certain

jroning tests [R. 13-22]. As to.these tests,- it is .to be

~~ noted that even without the addition of urea antiperspirant |

“ compositions at room temperatures have little corresive

ee - Les —11—

action on fabrics. It is. only. under temperatures corre:

sponding to those reached when garments ‘are ironed that

urea is of substantial value [R. 19}. The protection. -

afforded by urea, of ‘course, is not complete, ‘as even with

the use of urea customer complaints. are received {R. 35}.

The statement, in the: patent in suit that the addition, of

‘twea reduces the irritating action of the composition on

the. skin i is not supported i in the record. In the | prior case,

District’ Judge Byers held:

Ree “As to the part which the urea plays in arresting

‘skin ‘irritation which would .result from application ——

of aluminum sulphate alone, . the _only~-diréct -testi-

‘mony i is by the defendant's witness, Dr. Peck; a prac- __

ticing— ‘dermatologist, who says -that, except &s to _

ss having specially: sensitive skin, there is no

_irritition so caused. Since that-statement, was not

_., contradicted, it must be accepted. It is the only

'- Inedical as distinguished - from: chemical testimony. —

"; in the case,. and no reason has. been shown for dis-

} "regarding it, ange ae | eat eta t Ned

“The utmost: that can ® aid for the’ contrary.

theory, as stated at line 10 of page 1 of. the specifica:

tions of plaintiff’ S patent, is that skin-irritant. prop- ‘

“erty was ascribed é0 aluminum sulphate’ (and chlo- »

ride) in: apparent sincerity, ‘and the addition of’ urea

_ Was deemed to be _justifipd, in part at least, to arrest

or overcome that tendency.. It cannot be: said, how-

ever, that there is evidenge in the case to vindicate the

theory.” (45 Fed, Supp. 466. )

The record here is the same [R. 18].

—

oe. fe materials as low. molecular weight Zcohols and. ethers

Prior Art Patents Demonstrate That,,the

Power of Urea to Reduce Acidity and*Cor- ° Hebi

' rosion: of. Fabrics Was Well Known, Saw No <

‘Supp No. oa 174,534 [R. 175]. - } er uy ham

~—This ‘pa patent issued on. an application filed ear er han

- the date of invention alleged for thes patent_in . uit. It

discloses a process for parchmentizing fabrics consisting

in immersing them_ _for- “Short . periods in sulfuric acid

baths of. varying concentrations and it teache suse of

+ inhibiting the effect which the acid. sical ike on the .

fabrics. when used in such: a process. The t patent states

- [R. 175, col. 1, ‘I 8-14]:

“Tt is generally ‘known -that concentrated sulfuric

acid is destructive to textile materiats, rievertheless

certain uses of: sulfuric acids on textiles dre SO adv an-

tageous that endeavors have been made to'so treat tex:

tiles with sulfuric acid’ as to ‘obtain the desired effects

but to avoid the undesirable effects.”” ri plea ot By

The patent sherefore propdses a process for treating”

cotton fabrics with. sulfuric acid. “containing an agent

which will inhibit the tendering effect of the neat {R. 175,

col. 1, I. 6-7]. Bee ede as

Shipp employed’ as iseful inhibitors the same typeof —

compounds which are described in the Wallace and Hand

patent in suit. “The patent not only. refers particularly to

the use of urea, but gives a full description’ of the use of

the. sanie general #lass_ of amides .and. amino compounds

which are described in the Wallace and .Hand. patent in’

one [see Shipp patent R. 178, col. 2, 1.55 through p. 5, :

25]. For some purpoges, the patent also points out that *

| and ketones | may be enighope, jhe: patent summarizing by

_ saying [R. 175; col. 2, If. 1-5]:

a ~ effect of the acid on the celluivse: may be inhibited or

ya are termed inhibitors of: cellulose degrada- :

tion,’ ” ete 6" «

The trial court found that the action ‘of urea in the

invérition ‘of the _ Shipp patent.‘ ‘is quite like the effect.

ing aluminum chloride or aluminum. o{ Sulfate) which is

to be applied to the skin or. come in contact with ‘the

fabric” [Re 149, Finding 26]. This finding of fact is not

disturbed i in the decision of the Seventh Circuit ‘Court of

Appeals here on’ appeal. The Shipp patent contains a

disclosure of a test to be applied to determine whether

urea is‘or is not a sititable inhibitor. This test. is as

_ follows'[R. 175, col.°2, Il. 22-28):

rinsed very quickly: with a large volume ‘of water,

the fabric is disintegrated and destroyed. How-

“ ‘ever, if as much ‘as 25 parts by weight of urea is first

added to each 100 parts*of acid, then a fabric may

- -be treated with this. solution up to 60 seconds without

being appreciably tendered. s panel

This test procedure is erronéously referred to in the deci-

sion of the Seventh Circuit Court of Appeals as the Shipp —

process, ‘the Court of Appeals being* under the i impression

that the’ Shipp) process involved’ only the use of 96%*sul---

Ey furie acid. Actually, the Shipp patent. discloses the use of

| _ ‘acids of widely: io strengths fromP 65% upwardly

7 [see R. 175, col. 2, Il. 42-44]. In one of the examples : E

aoa “Now it has been. distovered” that the degrading -—

retarded by_dissolvinig in_the—acid—certain agents

' _|produeed-by adding: u urea toa cream or solution contain-.

ma 6 a.cetton fabric “is immersed in-96% sulfuric.

: acid at room temperature, removed immediately and, .*

vot

. Says that: “exte

«'skin, there is ma irritatien so caused.” And the trial court

of the process of the Shipp patent, f.e., Example 22, the

acid used -is “not a@ concentrated acid, but only 70%. acid

" [R. 179, col, 1, Il. 69-74]. °

In-connection with ‘the Shipp patent, the Seventh Circuit '

_ Court of Appeals, comments on the fact that the patentees

“of the patent | in suit found the old antiperspirant solutions —

“tended to injure the skin by corrosive action and inci-

dentally damaged the fabric of the clothing of | the user”

(164 F. 2d, at 865). ‘While the patent in suit states that

antiperspirant solutions may be irritating | to the skin and

suggests that the action of urea is to render such solutions

harmless to the skin, the ‘record in the case fails to show

any ‘improvement in antiperspirant compositions, . so far.

as the damage to the skin of the user is concerned, by the

-addition of: urea.*. While at the trial elaborate - tests were |

made of the inhibiting action of urea -in preveriting the

corrosion of fabrics in the matter: of irritation of -the.

skin, the record is left merely with the statement of —

plaintiff's expert, Teller, as follows [R. 18]: |

“Oo. 14. Is this matter of irritation : universal

matter,’ or does it occur in only a small. proportien of

* cases? | 7

“A. It is not universal. Soaye people’ can use these

. products without‘any harm‘ On the other hand, some

_ People can use them for sonfe length of time without

any harm and suddenly become sensitive to them.”

“Tn te case of Wallace’ v. Woolworth, the District Court

points out that the only direct testimony concerning the’

part urea plays in arresting skin irritation is that "by

defendant’s Dr . Peck, a practicing dermatologist, who .

_as to persons having specially sensitive

concluded that’ there” was no ev idence which would vif

‘s .

-" . : 1 ¢?

ro ® 4 :

sas St ae <i e

dicate the theory of the patent in suit that} the action of

~urea had any betteficial effect as far as arresting skin:

irritation, ‘ +

'. The action of urea in the Shipp formula~is clearly

_ identical with the action of urea in the patest in suit in so

“far as its inhibiting action is concerted. with respect to

the corrosion. of fabrics. This is fully supported in the

testimony at the trial of defendant’s expert, de Navarre

[R. 46, 47]. Clearly, the trial court was correct in finding.

that the Shipp patent gntirely anticipated Wallace and.

‘Hand in the discovery that urea, when combined with”.

. acid; would inhibit the corrosive effect of that acid.

Misspacu: No. 2,069,711 [R. 173]. -

« . This patent. relates. to chlorinated hydrocarbons: such,

‘ Aor exarhple, as the familiar carbon ‘tetrachloride which is

used for dry cleaning of fabrics. The patent points out -

[R. 173, col. 1,I. 4-12]: . © Sige oe

"It is known that these materials when exposed to

moisture, light, «ir, and heat, particularly during ©

distillation, as in the case of carbon tetrachloride,

. decompose with the formation of substances of an

objectionable charaeter, usually acidic’ substances

which. render the ‘material unsuitable for such pur-

_ poses as extractions as well as corroding equipment.”

The patent further proposes the addition of urea or re-

lated: amide, for the purpose-of stabilizing the chlorinated

hydrocarbon and inhibiting the corrosiori a¢tion thereof on :

fabrics. The patent. states: “Another objects of this

invention is to provide .an effective corrosion. inhibitor

for use ‘in .the presence of halogenated hydroca¥bons”

[R. 173, col. 1, Il. 24-28]. The patent therefore proposes —

the addition of 1% or’ tess of urea and, x a out

: ee ' .

Z ‘ . if . .

3 that the materials so employed are octet in view: of

the intended use of carbon tetrachloride i in dry cleaning of

clothes [R. 173, col. 1, Il. 37-46]? The explanation offered

by “Missbach of the inhibiting action of urea is as follows

[R. 174, col. 1, il. AS-217

“The stabilizing °effect eA inhibiting action: in.

corrosion of my inhibitor toward decomposition . PS gee

the halogen content is, I believe, accomplished. thus :—

Firstly, they neutralize of, remove any acid or ‘acid

substances, present ; setondly, they. Tetard the pro- ~

duction of ‘acid; thirdly, they form a protectite film °

on the RES the metal.” ”

In it? findings,,. thie trial court pdints out that the Miss-_

bach patent fully. describes : the action of urea as a Corro-

sion inhibitor ' to ‘prevent damage to . fabrics, . but holds

that this patent does not teach “that urea will inhibit the

: _ corrosive effect whfle leaving the solution sufficiently’ acid

~-. to be. astringent” [R. 149]. 3

While the ‘cleaning fluids described in the Missbach |

patent: rsa have contAined insufficient acidic properties ;

to bé effective as antiperspirant material ( just as the mate-

rials of the Shipp patent contain too much acid to be satis-

‘ factory® ‘for antiperspirant purposes) the anticipating effect

of the Missbach patent should not. be dismisse@ on this: -

ground. The patent in suit contains nothing novel con-

‘cerning the character of acidic solutions which would be _

effective as an -antiperspirant. “This is alt old and ad-— 4

_- mittedly well known i in the art. The only thing the aes

in suit purports to teach as: novel is that urea will prevent®

the corrosive action on Gates of such admittedly old:

acid antiperspirant ‘solutions. Admittedly, Missbach

teaches this property of urea. Respondent's expert, ‘Teller, -

admitted at the. trial that the. inhibiting aétion of urea.

“as to the corrdsion Of fabrics by acid solutions was fully»

~ disclosed in. Missbach [ [R.. 101]. . It ‘required, therefore,

“no inv ention but a; mere trial to oe OV er that urea gg

«ee

Kocu No. 2,011,292 [R. 7

This is ‘another ‘patent itlistrating a ee ‘of urea

* to an acidic preparation used in the treatment of textiles

‘or fabrics to-preyent corrosion. ‘The patent discloses that

/ 7

formate are employed in the’ textile industry and ‘suggests ,

the addition thereto of urea (or related’ compound ) to

- produce: stable solutions. The purpose of this addition of

airea is, described in the patent in these words [R.- 171,

~ col, 1, Ih 38-42]: a |

“The solutions of * these” products may | ~be used

with special advantage in the textile industry because

they do not contain any substances which would have

a detrimental effect whet used,: for instance, for 1m-

_-pregnation purposes. ’

~ solutions described in the Koch patent are used in thé

dyeing of textiles, “Where a corrosive acidic “compound

As explained by defendant’s expert, de Na avatre, the .

“would be objectionable as tending to deteriorate. cloth

[R48]. \He points out that the urea in the Koch formula.

—18—> BLN ait

- functions as: an ‘acid or corrosion “inhibitor just as in

‘the patent in suit [R. 48}. .

Respondent attempted through its ‘expert, Teller, to

distinguish from the Koch patent on the ground that the. «-

acetates and formates of aluminum were not ‘corrosive. to

cloth without -urea, and therefore sought to assert that

urea was added to obtain some other objective. He testi- -

- fied [R. 103]: ues

Big “QO. 65... If. the. substances were not harmful to

the fabric in themselves, why was it advisable. to add

urea, in your opinion? pene : oo

“A, I haven't the faintest idea of what-he hea }

been | trying to do here, unless it would have some

effect on dyes that might be very complicated.” |

The trial court, because of its’reliance on the Shipp.

' patent as showing that the action of urea was well known,

did not make finding as to the Koch patent. The New -

York District Court directly found the Koch patent to

disclose the same use of urea to mitigate the acids result-

ing from the reaction in solutions of aluminum salts as

“in the patent in suit, and therefore held the patent in Suit as

: displaying‘ no patentable invention over the Koch patent

(45° Fed. Supp. 465, 467). The Second @reuit Court

likewise reverted.to, and evidently relied upon, the. Koch

patent as disclosing an earlier use of urea-as a protective

_ ingredient for fabrics to which a sélution might be applied.

a“

“N

Epedfication of Errors Relied Upon. .

Petitioner relies. upon and urges as error the slings

of.the Circuit Court below upon-the Questions Presented |

in the Petition aor, a Writ of Certiorari (Pe 6) in this: -

” case, Ww hich are:

. Does the patent in suit exhibit patentable invention

in the addition of urea to. an antiperspirant composition

‘to inhibit corrosion of fabrics.in view of the _prior knowl-

- edge of the power. of urea to reduce acidity and its ability.

: to ‘inhibit corrosion of ‘fabrics -in the presence of acidity?

2 2. Is the decision of the Circuit Court of Appeals for

» the Sev enth Circuit in, the present case correct .in Tuling .

_ that the patentees are not bound by know ‘ledge in the prior a

art that urea has the: ability té “inhibit -the. corrosion of

fabries i in the presence of acid? .

ise a hes the decisions of the courts in the Secon Cir-

cuit and of the District Court below in the present case

x correct that, in view of the Prdgr art knowledge in. the

textile fabric art of the power of urea to inhibit corro- ff

sion, a mere’ routine experiment to determine that urea -

Will so act in an antiperspirant. cream does not. involve

invention ? er, ae a : :

4. Was ihe: court below correct in the present ‘case. in

rejecting the defense of anticipation by the admitted sale

and: advertisement for sale of the prior Arrid containing

- urea as not destructive to cloth because such advertise-

ments wére not shown to: shave been written by the patent

“owners? z Sy, > ng a

eee

Summary of Argument:

‘The Seventh Circuit Court of Appeals Clearly

Erred in Holding That the Prior. Patents Were

in an Art Non-analogous to the ieey Suit. .

‘The decision of the Court Pe ‘Appeals in this case was

predicated upon its ruling. that Wallace and Hand were

Lm bound by the teachings of the prior art, on the errone- —

ous ground that the prior patents were lacking in analogy a

to the patent in suit. Wallace and Hand merely added an —

inhibitor well known as capable of inhibiting the corrosion,

of fabrics to an otherwise old antiperspirant, merely for

the: purpose of securing its well known inhibiting action.

This was clearly*‘a completely analogous use of the inhibi-

tor, and this case is directly ruled by the decision of ‘this.

Court in Dow Chemical C ompany v. Hailiburton ‘Oil Well

Cementing Company (324 U-S. 320, 89 L. Ed. 973)!

The Seventh Circuit Court of Appeals. Erred. in Not Holding

the Patent in Suit Invalid in View of the Public Use and

Sale of Antiperspirant Compositions ° Containing Urea More

Than Two Years Before the. ‘Filing of the Application, for

the Patent in Suit. -

The application for the Wallace and Hand patent in.

‘suit was filed too late to be within the statutory period.

. for the filing: of an application since the extensive sale

and use of the early. Arrid- composition more than. two

years before the filing of the application. for the patent in

suit was got experimental and barred the patent in suit.

When. Wallace and Hand omitted the cresol sulfonic -

acid .from the earlier Arrid composition and increased

\ —21—

, see ’ :

. correspondingly the pefcentage of aluminum sulfate, they

did not make any invention patentable over the earlier

Arrid composition. ~The patent in suit covers broadly the.

use bf an amino compound such as urea and includes the.

~. earlier Arrid: as w ell as. the later Arrid composition, and s

- Is therefore void as not filed within the seapeneed period:

The Wallace ‘and Hand Wiaca in Suit Dous Not

Exhibit the Exercise of the Inventive Faculties.

‘ aa,

No exercise of the. inventive faculties but merely the ;

ordinary ‘skill ofa chemist is involved in producing the

composition of the patent in suit.. Not only was the | prop-

erty of urea Yo protect ‘textiles against , acid: well known

in the-textile art, but it Was part of the common: knowledge

of chemists. ‘It was adiittedly. known to Wallice and

Hand before they undertook to. produce the patented _com-

position. _ They at once adopted and used urea when they.

found a: corrosion problem arising in ‘their attempt to-

produce. an antiperspirant cream—subétantially conte-

poraneotisly therewith’ the same solution was. ‘provided

2 by others. : |

Nothing more than a simple trial was. required to estab-

«lish the value of urea in an ‘antiperspirant creatii. This

trial merely confirmed what any chemist ‘would have

expected to occur. The law does not permit a conclusion

that invention is involved by a mere routine trial. of this

class Which’ leads to no new or unexpected result.

3 Long Felt (Want and a Success:

This is. not a case involving any long felt want.

”

ARGUMENT:

oe The Seventh ‘Circuit Court of Appeals Clearly Erred

_¢ in Holding that the Prior Patents were in-.an Art ©

Non-analogous to the Patent in Suit.

In holding the patent invalid, the District eae | for the

Eastern District of New York (Wallace v.. F. W. Wool- -

worth € ompany, 45 Fed: Supp. 465) found that the action

“of urea tices the .effect of strong acid salts upon.

‘textile fabrics was known in the prior art, particularly in-

the prior art patent to Koch No. 2,011,292 [R.:171].

‘The District Court found that, in view of*this ‘knowledge,

otherwise old. antiperspirant composition.

‘no invention was involved in conceiving that. a similar -

action would be effected by the addition of urea to an

In affirming the decision of the District Court. for the %

Eastern ‘District of New York, the Circuit Court of -

Appeals for the Second Circuit (133. F. .2d 763) found

that the property of urea to protect. textiles against acids |

was well known in the art and was, in fact, known to the |

- patentee Wallace before he an any work to inhibit °

the corrosive action of an antiperspirant on clothing. ~~

‘It was found that the prior patents to Shipp No. -

2,174,534 [R. 175] and Koch No. 2,011,292 [R. 171]

éach jgught that urea had the ability to inhibit deleterious

effects af acids on fabrics. It concluded that no inven-

_ tion, but a mere routine laboratory” experiment; was in-

Jelbek: ‘inthe patentee’ s testing of urea to find that urea

would: do the same thing in an’ aritiperspirant composition,

stating (133 F. 2d at 764):

“This isa typical. case of pationt-“Skperiment *t ‘to

achieve a useful result. There. was no Jong felt want.

As soon as an astringent was used to check perspira- —

if Pome

a . ?

_ tion, the acidity of which proved to be excessive, urea —

was ‘the neutral ‘protective ingredient that about the’

same time occurred té” Wallace, Hand, Killian and

Montenier and even before then was known ‘by

_ chemists to protect textiles against acids ps i is shown

by the patents to >hipp and —.

& -

In its ‘deciatein in thé present case, the District Court

for the Northern District. of : Illinois, Eastern Division _

[R. 141], ‘based its conclusion that the patent was invalid

on the finding that the prior patent to Shipp * ‘anticipated

Wallace and Hand. in the discovery of the peculiar effect

of trea when combined. with an “acid” [R. 143], and that

nothing patentable was involved in ‘conducting a simple

experiment to establish that urea would have this action

in an antiperspirant cream [R. 144],

“In reversing: the decision of . the District Court in‘the -

_. present case, the Court of Appeals for the Seventh Cireuit—~

expresses no. disagreement-with these findings of the Dis- .

trict ‘Court for-the. Eastern District of New York, the

District Court for the Northetn District of Illinois, or

* the Second Ci ircuit Court of Appeals, to.the effect that

the jiroperty of urea to reduce acidity’ and. to inhibit the -

corrosive action ef acidic materials: on textile fabrics was

well known-in the prior art. The C ourt. of Appeals for -

the Seventh Circuit predicates ‘its decision. in this. case

on the erroneous round: that the textile arts, in which

e this property of urea ‘was well known, is nonahalogous |

to the art of producing antiperspirant compositions.. The

Seventh Cireuit Court of Appeals in this case predicates

‘its decision onan erroneous statement ‘of a rule of patent

~ Taw, to the effect that the patentees of the ‘Patent in suit

, Was corrosive to fabrics, were not

ee ae

4 - . : é

were hot bousid by what was known’. or shown in the

textile-arts, stating [164 F. 2d at 863; R. 195] :

“Tt is obviously necessary to determine whether the.

--Teferences lie within the confines of the prioy art by °°

which Wallace and| Hand were bou or whether

they lie in an art — in analogy to iperspir-

ants.”

a Consistent with this finding, Ahe court held oh F: 2d

‘ at 865; R. 198] : |

“It would seem obvious from. the foregoing an

nouncements tHat the District Court erred in its con”

clusion that the patentees were bound by the teach-

ings of the lad art of awe. *

This decisis of the Sdventh Circuit Court of . Appeals* ‘

was clearly an error. When it ‘became: apparent to Wail-

the

_ a problem was in the art of hai ling fabrics.

that Wallace and Hand, when -the\ found : t a cream

what was

known in the art of handling fabrics ‘to wih corrosion

is not only clearly illogical and- unsound. but a

_ contrary to-the latest decision on this subject by this.

— In Daw Chemical C ompany v. Halliburton Oil |Well

Cementing Company (324 °U. S. 320 at 327, 89 L. Ed.

973, at. 979) this court held :,

“All the oGrebe- Sicsetl siesann taryght was ts

_ obvious fact that hydrochloric acid could be inhibited

- lace*and Hand that their antipersptrant composition in

Gorin a

a cream was corrosive to fabrics, it is axio- -

matie that thetogicat place to look for a nt of such

Jie

To hold ar

to prevent corrosion while being used to dissolve.

limestone rock pursuant. to the Frasch_ method. of -

f acidizing wells. * * *.'No ‘new -or unexpected .

‘ F ; - —25—

results were obtained by ‘the addition a such an

inhibitor... It was perfectly plain to an expert that

the metal well equipment would thereby: be protected |

from corrosion. The’Grebe-Sanford method, in short.

involved in this respect no more than a mere applica-

tiott of an old process of inhibition to ‘a new and ;

analogous use of protecting metal well equipment.

from corrosion when the well is ‘being acidized to_

“increase ‘production. Such a ‘Process lacks the very

essence of an invention.”

Ta the Dow v. Halliburton case the particular inhibitors 7

used by. the Grebe-Sanford patent were arsenic tom-.

- . pounds. Such inhibitors had .been used extensively. eer f

commercial pickling ‘of iron and -steel products in gid

solutions, and in the transportation of acids in i

a3 containers.

The analogy hiibeioei the facts of the. Dow v. Halliburton

_ €ase and the case at bar is‘clear. In‘ the Dow v. Halli-

. burton case thé process of. acidizing a well without the .

use of ar inhibitor was old Yh the art. ‘In the case at bar.

the antiperspirant solutions of the patent in suit omitting

_ the inhibitor were old and well known in the-art. In Dow

< . Hattiburton the arsenic compounds employed .as inhibi-

‘tors in the patent in suit were well known in the iron

and’ steel art: , whereas, i in the case at ‘bar the inhibitor of

the patent in suit, urea ‘(and related compounds), was

well known in the. art of treating and cleaning fabrics.

—The-Wallace and Hand patent, in short, involves ae

more than a mere apfMcation of the old process of inhibi-

tionol fabries by the use of urea to the new and analogous

tse, of inhibiting corrosion of fabrics in the utilization of

antiperspirant compositions. No new and unexpected, ;

results he hss obtained by the addition of. such an inhibitoy:

—\

° ee

iad |

—_

In: the Dow v. “Hallibyrton- case the rule was ‘ipplied,

although: some 36 years elapsed betwe€n the issue of the

_ Frasch patent in 1898 disclosing - the- acilizing process

and the issue of the Grebe- Sanford patent in 1932 disclos- £

iting compounds, In. the pres-

ing the addition of the in

> ent case, the adoption of Yrea to inhibit: the, corrosion of

fabrics followed. substa “ally immediately sa as soon as it _

was found that agtiperspirant compositions in ‘the form of |

a cream were corrosive to fabrics, and the tecord stiow s:

grates,

that the same i idea of using urea to prevent. corrosion of

— Fabrics and in antiperspirant compositions occurred sub-

‘stantially simultaneously to others.

‘In. support of its decision that the use of- urea as an |

acid inhibitor in an antiperspirant composition was non-

analdgous to the use of urea as an acid inhibitor in the

art of handling fabrics, the Seventh Circuit Court of

Appeals _reties principally on: decisions of- the Seventh ’

Circuit such as-A. J. Deer Co. Inc. v. U-S. ‘Slicing Ma- —

chine Co., 21 F. 2d 812, and Copeman Laboratories Co. v. *

General Plastics C orporation, 149. F. 2d 962, but makes a

most obvious ‘misapplication of the language even of these

decisions, In A. J. Deer Co. Inc: v, Ur. Slicing Machine

Cé., ‘the court states (21 F. 2d at 813): a

“We are of opinior? that whether arts or uses are - °

analogous depends upon the’ similarity of their ele-

ments and purposes. If. the elements and purposes in

one art are related and similar. to those in another |

art; and because and by reason of that relation and

similarity make an n appeal to. the mind of a person

3 i

*< . m4 . . . ? - - : : - ae: xy

rg . o.4 - 2 Fa

| having mechanical skill and knowledge of the pur-

. ° . poses of the ot r art, then ‘we a are of’ opinion that

such arts must He said to be analogous, and, if the

_ converse-is true,{they are nonanalogous arts.” -

; A a , 2 se

Clearly; in the pres¢nt case the elements under considera-

tion are acidic solut

’ ar

action of thos¢ aciflc solutions on fabrics. The similarity

of the elements and the. similarity of the purposes of the

inhibitor is complete. Certainly: no chemist familiar wit

Oo Ge use. of urea for inhibiting. the » ‘corrosion of fabrics ge:

in theSfabric art, as shown, for, example, by the Shipp

ett, the K®ch patent and the Missbach patent, would

fail to receive a suggestion that urea would accomplish

Court in Cuno Engineering Corp. v. Automatic Devices:

Corp, 314 U, S..84 at 91, 86 L. Ed. 58 at 63, stated:

“A new application of old device may not “be

ms and urea as an inhibitor of the

the same purpose in an antiperspirant- composition. ‘This ab

patented if the ‘result claim@l as new is the same in’

- character as the original result’ (Blake v. San Fran- |

cisco, 113 US. 679, 683, 28 Led 1070, 1072, 5S

Ct 692): even though the new result had not before

\ "been contemplated. Pennsylvania R. Co.:v. Locomo- .

tive Engine Safety Truck Co.,-110 US 490, 494,

28: L ed 222, 223, 4°S Ct “ and cases cited.”

“dn this case the inhibiting agent: urea, gee only this

old purpose and elfect of , Peducing the corrosive action

- ot the agid incident to its contaet with fabrics: it has no

effect On the action of the acid in retarding the flow of

perspiration.

—

——_— :

“In Grinnell Washing g Mack. Co. v. Tohnson Co., 247

U. Ss. 426. at 432-4, 62 L. Ed. 1196 at 1199, this’ Court

states: ae eet ve ee yes,

iremusns * Merely Bee old devices into juxta-, |

‘couition, and thére allowing : each to work out its”

own effect without the production of something novel,.

> is not.invention. No one hy bringing together sev- .

eral. old devices without producing a new and useful -

result, the joint product of the elements of the com-.

ie bination and . something more than an aggregate of

old results, can acquire a right to prevent others from

using the same devices; either singly r.: in ‘other

‘ combinations, or, even if a’ new and useful result i is

_ obtained, can prevent others from using some of the

devices, omitting others, in combination.’ ° Hailes v.

Van Wormer, supe. te Wall. 353, 368 ).”

- Having quoted this statement of this. general ricisle,

‘this Court in. that .case proceeds (244 U.. S.. at 433, 62

_L. Ed. at 1200) to further clarify it: SOR

“Appfying the ‘rule thus authoritatively settled by

this. court, we think. no. invention is shown in‘assem-

~ bling these old elements for the purposes declaged. : No

er function is ‘evolved: from this combination ;’ the

new result, so far -as one is achieved; is. only that.

- which arises from the well- -known operation of each

“fie of ‘the elements. aioe | oe

3 5 7 A riagh ~

‘Germer StoveCo. v. Art ‘Stove Co., 150 Fed. ‘41 at

145 (G fa

saying : WER oe kee ea

A. 6), ‘applied this rule of. ‘want of. inv ention,

iGermer has done: no more in his: tens claim than to

unite ‘the Condit fire pot with a grate in which-the

S. sya) ! %, u-

\ |- i 1°)

dicount ‘of air might be controlled by a damper.

_ There is nothing new in his fire pot, for it is the

fire pot of Condit. There is‘no invention in his.

grate, for grates in which thé supply of air’ may be -

regulated were not new. The claim covers a mere

aggregation of elements, the fire pot and the fire °

; __grate each produging its own effgt after as before:

the combination, each operating in thé combination as -

it did before. The mere bringing @gether df old

parts and allowing each .to work out its own old .

_ effect, without. producing ine new product or result

‘as a consequent of the union and co-operating action,

is a mere mechanical juxtaposition. Goodyear Tire &

: Rubber ‘Co. v. Rubber Tire Wheel Co., 116 Fed. 363,

) 970,53 CC: Cc: Av 583; Qverweight Counterbalance, ~

er Elevatér Co. v. Henry Voight Mach. Co., 102, Fed. b

Se 98%, 43 C. C. A. 80.” ) :

‘Respondent cannot be aided here by stressing the fact.

that urea was first used -in an antiperspirant composition.

As stated by this Court in Dow v, Halliburton (342

US. 320 at 328, 89 L: Ed. 973 at ): |

“He who is merely the. first to titilize the existing

fund of public knowledge for new and obvious pur-

poses must be satisfied with whatever fame, per-

sonal. satisfaction or commercial success he may be

“able to achieve. . Patent ' monopolies, with all their

significant economic and social consequences, are not

reserved for those who contribute so insubstantially

to that fund of public knowledge.” —______ __—

ee ° The Seventh Circuit Court of Appeals Erred in Not

. Holding the Patent in Suit Invalid in View. of

the Public Use and Sale of Antiperspirant.. Com- _.

“+ positions Containing Urea More Than Tw6-Years

Before.the Filing of the Application for the

Patent in Suit. eres 5

_ Congress has ‘in express terms. limited the iny entions

for, which | ‘a patent may he obtained .by an ‘inventor to

: those “not in public use or on sale in this country +. es

more than two years* prior to his application” ( 35 U.S. C.

§31). Accordingly, if an invention has been in public use“

or-on-sale in this country more than two years prior. to.

the’ application, the right.to obtain a patent is lost. (Root

v. ThirdsAve. R.Co., 146 U.S. 210, 36 L. Ed. 946; ra

Andrews v. Hovey, 123 U. S. 267, 31 L. Ed. 160; Sinith, s

& Griggs Mfg. Co. v. Sprague, 123-U. § . 249, 31 L. Ed. ©

141; Manning v. Cape Ann Isinglass, etc. Co., 108 U. S.

462, 27. L. Ed. 793; Hall v. Macneale, 107 U. S. 90, 27 L.

"Ed. 367; Worley v. Loker Tobacco Co., 104 YJ. S. 340, 26 -

L. Ed. 821; Egbert v. Lippmann, 104 U. S. 333, 24 L. Ed.

755; Elisabeth v. American Nicholson Pav. Cc., 97 U. ‘Sx

126, 24 L.Ed. 1000; Consolidated Fruit Jar Co. v. Wright,

94 U. S. 92, 24 L. Ed. 68; McClurg v. Kingsland, 1 How.

(U. S.) 202, 11 L. Ed. 102.) |

Use of an invention by or under control of the inventor

for the purpose of ‘determining whether the invention is_

complete or requires modification or change before: final.

adoption does not place the invention. in public use: within

the meaning of the statute. (Smith & Griggs’M fg, Co. w)-

| ee: 123 U. S. 249, 31 L. Ed. 141; Beedle v. Bennet,

Xx See

—_————

“Amended ae i of Aug. s, 1939, 53 Stat. Siz, to ‘read “one ae

year” instead of two years. | -

—) oe

122 U.-S. 71, 30 L. Ed. 1074; Elizabeth v’. pean

Nicholson Pav. Co., 97 U. S. 126, 24 L. Ed. 1000; Kendall ©

~y, Winsor, 21 How. (U. S:) 322, 16 L. Ed. 165.) To.

come within this rule, the main purpose’ of the use must

be fo enable the inventor to determine whether the inven-.

tion is complete or requires modification or change before

final ep siS: (Smith & Griggs Mfg. Co. v. Sprague, 123

-U. S. 249, 31 L. Ed. 141). Thb rule has no application

iehere the use, althou,) originally fer the purpose of -

experiment, is continued for a longer period ‘than is rea-

sonably necessary to. determine ,whether the invention is

complete -or requires further modification or change.

(Root v. Third Ave. R: Co., 146 U..S. 210; 36 L. Ed.

946; Manniniy v. Cape Ann Isinglass, etc., Co., 108. U. S.

462, 27 L. Ed. 793; Hall v. Macneale;' 107 U.S. 90,

27 L. Ed. 367; Worley v. Loker Tobacco Co.,'104 U. S.

_ 340,26: L. Ed..821.) To bring a use or sale within the”

exception made in favor of experimental use or sale, there

must be evidence both of the need and of the. fact of:

‘experimentation, and the burden of proof is. upon. the.

patentee to establish that the public ¢ use or sale was experi- xs

-. mental within the exception 'to the rule (ote Rapids .

~ Showcase C6. v. Measuregraph Co.; 28 F. 2d 497-(C: C.

A. 8)), the presumption being that the use or sale is not —

experimental (American Ballast Co. v: Davy Burnt Clay

te Ballast Co., 220 Fed. 800).

“The thing implied as cicada out of the » protibition

_of the statute is a‘use which may be properly char-

acterized: as substantially for purposes of experiment.

Where the: substantial use is not for that purpose,

. but is otherwise. public, and for more than two years ..—

“prior. to the application, it comes within the prohibi-

tion.” (Smith & Griggs Mfg. Co. v. Sprague, 123

U. S. 249, Jl L. ue 141 at mised

ES eens s-| ’

“That it was capable of iabcoentaeak ‘need not be

denied, nor That, while it was in daily use; its owner

and inventor watched it: with the view of devising

means to meet ‘and overcome imperfections in ‘its .

| operation ; but this much can be said in. every such

case. There aré few machines, probably, which are

not susceptible of. further dev elopment and, improve-

ment, and the ingenuity of mechanics and inventors is

commonly on the alert to discover defects and invent -

remedies. The alterations ‘made in the machine in

question, however. useful,’were not vital to its organi-

zation. ‘Without them, it could and did work so.as to |

‘be -commercially successful. "(Hd 34. Li Fad. cat"

146-7.) Pe ;

Cleatly the Seventh c Cincnit Court. of Appeats -erred. in

dismissing | this defense on the ground that the sale of the

‘antiperspirant ¢ composition containing 10% aluminuni sul-

fate, urea and cresol sulfonic acid and cream forming ~.

constituents [R. 124] by Wallace and Hand was merely.

experimental. Same 30,000 pounds of this material w ere

sold by Carter Products beginning in the summer@i 1935

# and extending until September, 1936: [R.— 123]. ° The

_ advertisements ‘of Carter: Products relative to this mate-_

rial were rejected by the trial court as not the advertise-

_ ments of. the plaintiff Wallace. Yet, it. was ruled’ that these

sales by Carter Products were the mere experiments of

the inventors, Wallace and Hand, There is no. evidence

in the record and there. was no attempt made. by plaintiff

‘at the trial to show that the purpose of these sales: was

for experimentation, This is not a case where there was

a sinigle- lise or a single sale, but a continued succession

sales in the ordinary course of business, with the sole

: motive of obtaining the profits ordinarily derived from

S Seual

—33— | : #3 3,

trade. Te learly, . under the Kathoritice. given above, the

anticipating effect of this earlier Arrid- material on the

patent’ in suit should not be dismissed: on the ground that

it was a mere experimental use.

Nor does the record sustain the decision of the Seventh

Circuit Court of Appeals that the ev idence concerning’ the |

prior’ use and sale of this earlier Arrid material was

largely: excluded by the trial court. On the contrary, as

we have shown, the’ facts appear uncontradicted in the

testimony of the plaintiff: himself. .The only evidence

‘excluded. was ‘the offered adveftisements of Carter Prod- |

. ucts, Even if, despite the close connection between’ Carter

Products and the plaintiff and patentee as ‘shown by the

- record, the trial court was correct in finding stich advertise-

- ments were hearsay as regards Wallace, the defense is’

completely established. The advertisements were offered

- /merely to show that it was represented that these mateé-

rials were noncorrosive. It may well be that the later .

bum

products’ were less corrosive, but the undisputed \ facts

in the evidence are that urea was added to ‘this earlier

composition te: reduce’ the corrosive action, and that\ | in

ag fact, it did reduce the corrosive action. .- ea 1

Clearly, if there’ were any invention to be rate over

the prior patent art in conceiving that urea was useful to .

prevent corrosion of fabrics in antiperspirant composi- \

tions, this invention was embodied in this earlier Arrid - \:

antiperspirant composition and, therefore, ‘such invention~

cannot be utilized.to sustain the patent. in suit. All that .

was done in September, 1936 by Wallace and Hand was

merely to omit the cresol sulfonic acid and increase the

discovery of the value of urea and, —o it is not

_ percentage of aluminum sulfate from 10 ‘to 20. If this -

_ Change constituted an invention, it certainly’ ‘was not the

eo oe

the invention described or sought to be patentable in the

patent in suit. The patent in-suit is predicated on- the

broad _ statement, that the - ‘objects of the invention of the

patent are carried out by the addition jf an amino

compound, such as urea, to any heavy etal salt of a

strong acid [R. 167, col. 2, Il. 7-13]. .The patent is not

limited | to antiperspirant conipositions containing as the

sole ingredient aluminum sulfate as distinguished from. .—

antiperspirant compositions containing sulfonit’ ‘acids as

‘ well.as aluminum sulfate. In fact, the patent expressly

states: “* * * salts. of strong organic acids, such as

sulfonic acids, may also be used” | R. 167, col. 2, Il. 23-24].

' Thus, the patent by its own terms expressly includes the

~ earlier Arrid composition in public-use and on sale more :

* than two years before the application was filed..

F urthermore, the‘claims of the patent in suit are é broadly |

inclusive. Claims 1, 6, Al, 13,°14 and 16-in suit cover

broadly any. acid reacting inorganic salt of a strong acid, .

while claims 2, i 4, 5, 12, and~15 recite specifically —

aluminum sulfate, and claim 9 recites specifically alumi-

num chloride. These claims cover any compound which

comprises or includes’ aluminum sulfate or aluminum

chloride, and thus by their terms cover compositions in“

which, in addition to aluminum sulfate, the antiperspirant

~preparatign includes inetallic salts of sulfonic acids. This

is illustyated by the fact that the composition of petitioner,

which erein held to constitute an. infringement of each |

and all of the claims in suit, contains 7 % aluminum sul

By focarbolate, 7% aluminum sulfate, ‘and 6.6% Ve aluminum

chloride [R. 15]. Thus petitioner’s antipedspirant com- -:

position contains less aluminum sulfate than the early

Arrid in public uge and on sale more than two years be-

fore the filing « of the area in suit, e |

| aie

~ Clearly the invention attributed to the patent in suit

by the Seventh Circuit Court of Appeals, and the only

invention described ‘in the patent in suit, was. in public

use and on public sale by the patentees more than. two -

years before they applied for the patent in syit, and the

eet is thenetore void.

The Wallace arid Hand Patent. in Suit does not

Exhibit the Exercise of Inventive Faculties.

In order to sustain the patent in suit, it is not. only

necessary that the subject matter of the paterst_be_nével,

~ but it is further necessary that.the production of that ;

subject matter require the exercise of the inventive facul- bot \

ties-as distinguished from mere ordinary chemical skill. A)

_ No such invention was involved i in producing the patented

; composition. -

The property. of urea to protect ‘textiles against corro-

sion from’ acid was not only well known in the textile

art, as shown by the prior patents to Koch, Shipp and es

_Missbach, but this property of urea was thé conimon

knowledge: of alt ordinarily skilled chemists. Even if

WwW allace and. Hand had beenthe first discoverers of this

‘property of urea they could not have patented it (Funk.

_ Bros. Seed Co.ov. Kalo Inoculant Co., 92 L. Ed. Ad. Op. »

414, decided ‘by this Court. February 16, 1948). “The

record shows that before they made any test at all on. Z

the use of urea, tle patentees were fully familiar with ;

this property of urea [R. 127].. In the Woolworth case

" the witness ‘for the plaintiff, Killian, likewise showed that

this property of ufea was one well known to the ordinary

chemist [Exhibit 9, pp. 27, 28]. As soon as Wallace

and Hand experimented with an antiperspirant cream that _.

Was corrosive, the thought of-using urea to prevent that

oo, Was ces Weis RET,

° Ke :

+ °

; . «

. °

—36—

corrosion substantially immediatély occurred to them. It‘

likewise sitbstantially contemporaneously - occurred to 7

others. The proceedings in the Batent Office leading to

the grant of the patent in suit shows that before it was’

granted an interference was declared between. the applica- :

tion for Wallace and Hand and applications of two’ other.

_* persons, Jules B.’ Montenier and W. Kedzie Teller [ Ex-

‘hibit 9, pp, 318- 319]. ey im

This Court has repeatedly held’ that where substantially

as soon as a problem arises the’ same expediency is used ”

to solve that problem, not only by the pateritee, ‘but sub-

stantially. contemporaneously by others, such facts estab-

lish «that mere mechanical or- chemical skill, as distin.

- guished from: invention, is involved in the adoption of |

such an’ expediency.: Thus in Con. rete A ppliances. Com-

pany v. Gomery, 269 U: S, 177 at 185, 70 L. Ed. 222 at

_ 226-7, this Court held: . > | se

“Tt is but ‘the suggestion of that:common- experience,

‘ which arose spontaneously and by a necessity: of °

-human: reasoning, in the minds of those who had.

“become acquainted with. the circumstances with which:

_ they had to deal.’ Hollister v. Benedict Mfg. Co,, -

113 U. S: 59, 72, 28 L. ed. 901, 905, 5 Sup. Ct. Rep.

717. This progressive adaptation, much of which

preceded and some of which was co-temporaneous with

‘the - Callahan adaptation, of well known devices to

new but. similar ‘uses, ‘is but the display of the ex-

pected skill of the calling, and involves only the exer-’

cise of the ordinary faculties of. reasoning upon the

-materials. supplied by a special knowledge, and_ the

* facility of manipulation which results front its habitu-

al and intelligent practice.’ ‘Hollister v. Benedict Mig.

Co.; supra, at page 73 (28 L. ed. 905, 5 Sup. Ct. Rep.

717). No novel elements were used by Callahan in

—37—

his dévice. We are unable to find that their use in

‘. combination in it was more than: the application to

them of mechanical skill in the course of a mutual

development and expansion of the art.”

The Second’ Circuit Court of Appeals was clearly cor-

rect in holding in the Woolworth case (133 F. 2d at 764):

“This is a typical case of patient éxperiment to.

_achieve a useful result. There was no long felt want.

As soon as an astringent was used to check persipra-

tion, the acidity of which proved to be excessive.

urea was the neutral protective iaag teary that about

by the patents to Shipp and. pr Nuttaaier gees |

Not only had the thought of using urea occurred to the .

- patentees Wallace and Hand substantially immediately

after they found’ that their -antiperspirant. cream was

corrosive, but once this thought had occurred to them it

‘y required merely a trial to find that urea accomplished

the purpose....This trial led to ‘no new discovery nor to’

any unexpected result. Wallace and Hand by this trial

merely confirmed- what the ordinary routine knowledge of ~

. the chemist led them to. expect would occur. Inventions ,

do not arise by any such process. ‘The mere routine work

of. an \investigator involving no imagination does not con-

stitute|invention. This rile is ‘well illustrated by the deci-

_ sion of the Second Circuit. Court, of Appeals in tHis case

' _and.the\ decisions therein cited. The Second Circuit Court

vals was clearly correct in holding (133 F. 2d at .

of Ap

764): | ees

-“We have repeatedly held that skillful experiments

in a laboratory, in cases where the principles of the

Monfenier,. and even before them was known by -,

in:

investigations are well known, and the achievement

of the desired end requires routine. work rather than’.

. Imagination, do not involve invention. Ruben Con-.

denser Co. v. Aerovox Corporation, 2 Cir., 77 ¥F, 2d

266, 267; Ruben Condenser Co. v. Copeland ee

eration Corp., 2. Cir., 85 F.2d 537,..541; Firik v.

V. Foscato, Inc., 2 Cir., 79.F. 2d 842, 843: Claude

Neon Lights, Ipc., v. Rainbow. Light, Inc., +2_Cir.,

90 F. 2d 959, 962.”

When Wallace and Hand were led by their previous

knowledge Of the properties of lirea’ to expect that as’

.. applied to antiperspirant compositions these same proper-’

ties would he useful, they clearly merely. confirmed ina

‘routine manner (by-a process well known to all. chemists)

what they had. already anticipated. They made no. dis- —

covery, the process involved, no imagination oF no exercise

of the inventive powers. It cannot therefore’ be said that. -

‘the patent in suit involves any invention.

tone 4 Felt Want and. Commercial Success.

Evidence that a machine, process or composition of

matter has fulfilled a long felt want’or need and was com-

mercially sticcessful may be referred to only if alt the

.otlicr proof.in the case leaves the question of invention in

doubt. In Slip Scarf Co. v.: Wm. Filene’s Sons Co., 289

Fed 641, the First Circuit Court of Appeals affirmed the

refusal of. the trial court to give requests Nos. 20 and 21,

relating to. the jury’s taking into consideration, of the

question of invention, the difficulties’ existing before the.

invention that were overcome by the patented invention,

that it filled a want not adequately filled before, that tt

became public and went into extensive use, ‘that the

trade acquiesced in the patent by taking licenses, e¢,

4 go

and that others lad tried and failed ‘to-meet the difficulties,

saying, at 649: a Dyes

“The rule is that the class ef evidence above re- |

ferred to is to be made use of in determining the

question of invention’ only in a doubtful case. Duer |

- y. Corbin Cabinet Co., 149°U. S, 216, 13 Sup. Ct. 850,

. 37 L. Ed. 707; McClain, v. Ortmayer, 141 U,,S..419, *

' 429,12 Sup. C t. 76, 35 L. Ed: 800; American Sales-

book Co. v. Carter-Crume Co, (C. C. t 125 Fed. 499.”

- Here the. question is not open to. doubt. There is no

evidence in the record here that will sustain-a finding that |

the composition of the patent in ‘suit fulfilled any long felt

want.. This is{not a-case invelving.a long felt want but ®

quite the opposite thereto. It is.a case where a problem. |

Was” immediately solved as.soon as it arose. ‘Wallace and »

Hand were the first to attempt to market. an antiperspirant |

- cream [R.. 126]. Only the antiperspirant creams. ‘marketed -

have used urea to prevent corrosion. As we have shown,

within a very short period of time after finding anti:

_ petspirant creams produced corrosion, urea was adopted

by W allace’ and ‘Hand and substantially contemporaneously

by. others. $ he Court: of Appeals in the H ‘oolworth case

quite correctly’ ruled: ‘There was no long felt. want.”

In this case the Court of Appeals held [R. 193]:

“In this respect, the evidence 1 is convincing that Wal-

lace’s composition was tremendously successful com=—-—~

mercially. We think, too, that the evidence discloses ~~

clearly an existing public demand. for a compound

possessing the, desirable qualities mentioned and a:

= “fiilfillment ot that demand by the patented product.”

i a es > ‘

There is ne evidence in the record which can sustain

this conclusion. ‘of the Court ot Appeals. The record

: - ~ ats 2 . »

i~ me

sé

shows that for some twenty, years previous to the patent

>in suit liquid antiperspirant compositions were successfully

marketed without using any such material as urea to pre-"

vent corrosiog, and that subsequent to. the patent in suit

they: continued in successful competition with the patent —

in suit, such products being even sold by Carter Produets

up through the tinie of the trial of the case betow:. er ttt

The patentee, Wallace, testified »[R. 119, 120}:

“XQ 79.. In the anti-perspirant Perstop to which

you have referred, you relied upon aluminum pore

as the’ astringent constituent, is that correct?

“A. Wedid. ~ a \

“XQ 80. There was no urea incorporated ?

“A. There was not.

“XQ 81. That was in stick form? -

“A. Perstugi was a.solution of aluminum chloride.

“XQ 82. Typical of those which had been. used

- before generally in the art?

a Yes. . . ‘ . a

pee * ae [ee * ‘ *

Ne “XO 85. Over what period of time? -

~~ “AN” Ty believe it has been on the market since 19§.

“XQ 86. And is still on the “maiKet?-

“A. It is still on the market.

“XO 87.- And it is —_ sold by Carter I rroduets?

ee * It is.

| “XQ 88 Asan anti-perspirant liquid? é

“A. Yes. - |

Tae ay That contains no urea?

contains no urea.

“XQ 90. Is there any so-called protective ingte:

dient incerporated in Perstop?

- “A. There is not.”

—41— ;

There is no evidence in the record that ‘anyone familiar

with the liquid antiperspirant compositions on the market

_ previous to the alleged invention of the patent’ in suit ever

found any necessity for reducing the corrosive character

of those compositions or ever tried to ‘so do or ever failed

in trying t to so do. There. is no evidence in the record .

~ that anyone “having knowledge of these prior-antiperspirant_

_ compositions and knowledge of the use of urea as -an

inhibitor of. the corrosive activn ever ‘attempted to, or

failed to successfully produce an antiperspirant ‘composi-

_tion in *which urea was used to reduce the. corrosive charac-

ter of such antiperspirant compositions, In the absence of

such proof, the doctrine of fulfillment of a long felt want

"js not applicable to these cases. To bring a case within

- the doctrine of jong felt want, it is necessary to show that

those familiar with the relative prior art were unable to .

.solve the existing problem. “As said by this Court in

@Toledo Pressed Steel Co. v. Standard Parts, 307 U. S.

350 at 356, 83 L. Ed. 1334 at 1338: “But it does not ap-

i pear that either was: familiar with the relevant prior art.”

—-Paténtable navdty, originality or invention cannot be

ascribed to the use of that which was in fact public knowl.

edge. T he Jong. commercial sale of such weiuid anti-

perspirant compositions as Perstop and Odorono [R. 114]

_has made these antiperspirant compositions part of the

public knowledge... The prior patents to Shipp, Koch and

Misshach had made the use of urea as an inhibitor part

of. the public knowledge. Lack of knowledge of these -

_— and publications cannot remove them from. the

;

- .7

_ .

_ 42— 7

oe domain. Nor would the fact, if true, “that Wallace

and Hand were ignorant of these prior ‘paténts make them

the original and first inventors thereof under the patent

statute. ‘Their invention was anticipated because it was:

part ,of the public knowledge. - i

“Bone. -may have tens ignorant of them and his device

- may not have been their suggestion. They seem to |

_ have been unknown to American éngineers, not even /

the interest of the controversy in thé sixth circuit: { x

having developed their existence. From this local °

_ ignorance nothing can be deduced favorable to the |

_ "> patent. Its device having been described in printed

publications, although in foreign ‘countries, patenta-

ble novelty or originality cannot be asserted for it.

Rev. Stat. Sec. 4886, Act of March 3, 1897, 29 Stat.

at’ L, 692, chap. 391, Comp. Stat. Sec. 9430, 7 Fed.

Stat. Anno. 2d ed. p.. 23. Such is the provision of

the law, and we cannot relax it in indulgence to what

“ay seem the individual's merit.”. (Bone v. Marion

_ County, 251 U.S. 134 at 144, 64 L. Ed. 188 at 193: MN

_ See further Tashjian = Nenkew e ornice Works, 14

F, 2d 414, 415 (C. C. A. 9); Jronclad Mfg. Co. v: Dairy-

man's Mfg. Co., 143 Fed. 512, 513 (C. C. A. 2); Fry .

Rookwood Pottery Co., 90 Fed, 494.

“Entirely” irrespective of the. matter of. use, a man

is not entitled to the reward given inventive genius,

_ if his invention had theretofore been disclosed to the

; public through the public records of thie Patent Office:

The stattite rewards invention, and not diligence im

unearthing prior patents which have-not been turned

+ « *F

P 1

into commercial success.” (W. H. Butcher Packing :

Co. v. Cincinnati B. S. Co., 35 F. 2d 567 at 569

(C. C. A. 10).) Bae os ee aie

Although the proof established that ‘the Simmons pa-

tented method | actually, filled 4 ‘Jong felt want (Cf. 98 F.

_ 2d 436 at 439-40), this Court, in. Honalulu Oil Corp. v.

“Halliburton, 306. U. S.; 550 at 554, 562, 83.L. Ed. 980 at:

" 983, 987, held the Siewcoh patent anticipated by the

Franklin patent, although. there was no proof that anyone

had ever used the. Franklin device for the performance of

the Simmons method .and although the desc?iption in the

‘Franklin: patent was “to control flow and not to test

productivity of strata reached; before completion of wells |

(pe 562). This Court said of tne Franktin device :

contents of the producing stratum, sealed off frofm the

“Plainly, it may be tised as a tester; for by its u ra Rs

rest of the well and unimpeded in. its entry into the —

‘rat-hole by pressure of the rotary mud, can be

brought undiluted to the surface by a mechanism os

almost duplicating that shown by the patent in suit.”

-(p., 554.) a3

In the. case at bar—as it did in. the Woolworth case—

_ plaintiff stresses commercial success of the method prac-

tised by plaintiff as evidence that invention was required

» to. produce the composition of the patent in suit. Com-

_ mercial success is not

Products. 7 v. Timken, 110 F. 2d 307 (C: €. A. 6); Ameri-

tan Fruit Growers v. Brogdex, 283 U..S.1, 75 L. Ed.

801; Bulldog Elec. Prod. Co. v. General: Elec. Co., 105

roof of invention. (Lempco es

Wes

| .

i °

‘ Ne

F. 2d -466, 468- 9 (C. él A. 4).) The commercial. ‘success

. of the composition of the patent in suit was due to the

) preference of the trade for a product in. the form of a

. cream and to the. extensive advertisements thereof. IR. 125,

131), All that. plaintiff: has established: is that he has sold

large quantities of the’ composition of the patent in suit

‘ by meanis of extensive advertisements. Urea was the

natural buffer. to” add to reduce the corrosion, of acidic |

antiperspirant compositions {Exhibit 9, p. °26]. These

properties are®well ‘known..

“Articles of manufacture may be new in €he com--

“mercial sense when they are not new in the ~~ of

the patent law.” ‘(Union Paper Gollar Co. v. \Van

Deusen, 23 Wali. 530, 23. L. Ed. 128 at 133.) .

; “The fact’ that the patented article has gone into -

general use is, evidence @i its utility; but not con-

clusive of that, and still less of its patentable novelty.

McClain v. Ortmayer, 141 U. S. 419, 425 (35:80,

802) and authorities there cited.” (Grant 'v. Walter,

148 U. S. 547 at 556, 37_L. Ed. 552 and 557.)

“Nevertheless commercial success is an unsafe guide |

to invention ufless prior efforts to fill the space be

_shown (National, etc., Co. v. Bissell, etc., Co., 249

“S.Fed. 196; 161 C. C. A.. 232); and when they are.

shown, it is not infrequently found that the faculty

of invention .was not necessary to’ fill whatever

_yacancy existed.” - (Boston Pencil Pointer Co. ¥.

. Automatic. Pencil Sharpener Co., 276 Fed. 910 at

O1F-12 (C. CA. 2);) | |

—45—

Conclusion. _

“be \ of :

ba is respectfully submitted that the decision of ‘the

venth Circuit Court of Appeals sustaining the patent in

it on. the ground that the patentees - were not “bound |

‘py the prior knowledge of the properties “of urea in the

fabric art was clearly erroneous and that ‘the patent: ‘in

_suit should ‘be declared invalid’ urpon the ground that the ay

‘use of urea to prevent-corrosion of fabric was merely ‘a

well known expedient: in the art, and for ‘the further ‘rea-

son that the application for the patent was not filed w ithin

the cm period. ae

Respectfully submitted,

“LEONARD S. Lyon,-

‘. THOMAS A. SHERIDAN,

ah aad _ Attorneys for Petitioner.

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