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    BERLIN MILLS CO. v. PROCTER & GAMBLE CO. , 254 U.S. 156 (1920)

    U.S. Supreme Court

    BERLIN MILLS CO. v. PROCTER & GAMBLE CO. , 254 U.S. 156 (1920)

    254 U.S. 156

    BERLIN MILLS CO.
    v.
    PROCTER & GAMBLE CO.
    No. 93.

    Argued Nov. 15, 1920.
    Decided Dec. 6, 1920.

    Messrs. Marcus B. May, of Boston, Mass., Charles E. Hughes and John C. Pennie, both of New York City, and Melville Church, of Washington, D. C., for petitioner.

    Messrs. Livingston Gifford and Thomas B. Kerr, both of New York City, John H. Brickenstein, of Washington, D. C., and Alfred M. Allen, of Cincinnati, Ohio, for respondent.

    Mr. Justice DAY delivered the opinion of the Court.

    This suit was brought by the Procter & Gamble Company against the Berlin Mills Company for the infringement [254 U.S. 156, 157]   of the patent of John J. Burchenal for a food product, issued on April 13, 1915, No. 1,135,351, to the Procter & Gamble Company, assignee. The District Court held the patent void for lack of invention, and also that the claims in suit were not infringed. The Circuit Court of Appeals, one judge dissenting, held the patent valid and infringed. 256 Fed. 23, 167 C. C. A. 295.

    The patent in controversy relates to a lardlike food product, consisting of a vegetable oil partially hydrogenized to a homogeneous, whitish, yellowish product. The record discloses that the making of lard substitutes has been accomplished by mixing melted fat with vegetable oils.

    These oils contain glycerids-olein, linolin, and stearin. The hydrogenation, or hardening process, has the effect to increase the proportion of the solid glycerids of high saturation. Stearin is called a saturated glycerid, for the reason 'that there are present in the molecule as many hydrogen atoms as possibly can be joined to the carbon atoms.' Linolin and olein are called unsaturated glycerids, and can be converted by the addition of hydrogen into hardened glycerids.

    The patentee in the specifications of his patent states the object of his alleged invention, and what he intended to accomplish, as follows:

    The patent has seven claims-two broad claims, which are the ones here involved:

    1. 'A homogeneous lardlike food product, consisting of an incompletely hydrogenized vegetable oil.'

    2. 'A homogeneous lardlike food product, consisting of incompletely hydrogenized cottonseed oil.'

    The five additional claims, more specific and limited, are not involved in this suit. Two of the four judges who considered this patent and the validity of the claims in suit reached the conclusion that they were void for want of invention; two judges of the Circuit Court of Appeals held the patent valid, and infringed.

    In deciding between these conflicting views, we must consider the genesis of the alleged invention, and what was theretofore known and disclosed in the art. Burchenal, the patentee, was not a chemist, and was the general manager of the Procter & Gamble Company, whose principal business had been the manufacture of soap. One Edwin C. Kayser, who had been in the employ of Crossfield & Son, an English firm, and familiar with the Normann process, to be hereinafter considered, came to this country in 1907, and saw Mr. Burchenal at the Procter & Gamble factory. A contract was made with Kayser, and an experimental plant was erected at the Procter & Gamble works for hydrogenating oil.

    It is the contention of the respondent that the merit of Burchenal's alleged invention arises from the fact that he was the first to originate and develop the process involved, so as to make a food product of the character described.

    The District Court found that Burchenal in fact invented nothing, and that all that was real invention, as established by the testimony, came from Kayser. But [254 U.S. 156, 161]   considering, for the purposes of this discussion, that the thought occurred to Burchenal, which he developed in the production of a food product, the subject-matter of this patent, the primary question is presented whether what Burchenal accomplished amounted to invention within the meaning and protection of the patent law.

    In considering the patentability of this alleged invention, it is to be remembered that this is not claimed to be a process patent. While the process is described in the specifications, Burchenal makes no claim that it is his invention, indeed, he concedes in the testimony that the process is not his, and counsel frankly say that the patent must stand or fall upon its validity as a product patent of a new and useful thing within the meaning of the patent law. If this product were the result of mechanical improvement only, when viewed in the light of that which was previously disclosed and open to public use, the step in advance being only that which one skilled in the art might well make, without the exercise of the originating or inventing faculty, then the achievement is not within the protection of the patent law.

    The English patent to Normann of October, 1903, disclosed to the world the process of converting unsaturated fatty acids, or their glycerids, into saturated compounds. After referring to other discoveries he says:

    An expert witness, called by petitioner, gives in his testimony certain views of this process which commend themselves to our judgment as entirely reasonable and accurate, and so well stated that we quote them in part:

    Further on he says:

    It is in evidence that this method, shown by Normann, is a practicable one, and may be used for the making of edible food products of the kind here involved.

    With the knowledge disclosed in the Normann patent conclusively presumed to be known by the patentee, was it invention to apply the known process to vegetable oils? In this connection the history of the application for the patent in suit in the Patent Office is interesting and instructive. It is true that claims 1 and 2 were finally allowed, and the patentee is entitled to the presumption which arises from the granting of them. But it appears in the history of the application for the Burchenal patent, found in the record, that as originally presented it contained two claims not so broad as the ones now in suit, and a third claim for 'A semisolid hydrogenized oil,' was added by amendment. All of the claims were rejected; the examiner saying:

    Replying to the communication of the examiner, amendment was made canceling claim 3. Further consideration was requested on claims 1 and 2, upon arguments which were presented. The claims were afterwards rejected upon reference to patents to Kayser of September 26, 1911, and November 14, 1911, the examiner stating that these patents were adapted to hydrogenize glycerids, the latter one specifically mentioning its adaptability for cottonseed oil, and that the process could be arrested at any time during its progress, and thus an incompletely hydrogenized article be produced.

    Subsequently the specifications were amended, giving more definitely the percentages of olein, linolin and stearin. The patentee concludes the amended specifications, stating:

    Additional and more limited claims were added, but ultimately the patent, containing the broad claims here involved, was granted.

    It is true, as the Circuit Court of Appeals states in its opinion, that the applicant never did acquiesce in the examiner's action rejecting his claims, and finally obtained what he had in the first place asked for.

    This record establishes that it was known before Burchenal took up the subject that a vegetable oil could be changed into a semisolid, homogeneous substance by a process of hydrogenation arrested before completion, and that it might be edible. This much of the art was public [254 U.S. 156, 166]   property and open to general use. The product of this process was known and open to public use. To supply such products as the patentee has described in the broad claims in suit may have been new and useful, but does not in our opinion rise to the dignity of invention, and is an advance step which would occur to one skilled in the art, when investigating and considering the subject. It follows that the decree of the Circuit Court of Appeals must be reversed, and the cause remanded to the District Court, with directions to dismiss the bill, on the ground that claims 1 and 2 are void for the reasons stated in this opinion.

    Reversed.

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