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[283 U.S. 1, 2] Messrs. W. Brown Morton, of New York City, and R. T. M. McCready, of Pittsburgh, Pa., for petitioner.
Messrs. Charles Neave, of New York City, and Melville Church, of Washington, D. C., for respondent.
Mr. Justice McREYNOLDS delivered the opinion of the Court.
The Brogdex Company, present owner of United States letters patent No. 1,529,461, relating to 'certain new and useful improvements in the art of preparing fresh fruit for market,' applied for August 13, 1923, and issued to Brogden and Trowbridge March 10, 1925, presented its bill of complaint to the District Court for Delaware (21 F.(2d) 110), April 15, 1926, wherein it charged that the defendant (peti- [283 U.S. 1, 6] tioner here), the American Fruit Growers, Inc., had infringed and asked an injunction, accounting, damages, etc. It relied upon claims Nos. 1, 2, 3, 4, 5, 6, 7, 9, 14, 15, 16, 17, and 18, which describe the process of treatment, also Nos. 23, 24, 25, and 26, which concern the product.
Both courts below held all of these claims valid and infringed; and directed that petitioner be enjoined from using any process therein specified, also from manufacturing, selling, or using 'treated fruit embodying and containing the invention described in said letters patent and secured by any of said (product) claims.'
Of the process claims, the following is characteristic:
The following is typical of the product claims:
The specification in respect of the patent states:
Petitioner admits ownership of plants which pack and sell citrus fruits, and that, when preparing these for market, it caused them to be dipped in a borax solution in order to prevent or retard decay incident to growth of blue mold. Under the treatment applied, the raw fruit is immersed in a cold or warm solution of borax or boric acid, permitted to remain until thoroughly wet, then rinsed, dryed, and brushed. Infringement is admitted, if the patent is valid.
In defense, petitioner maintains that the product claims of the patent fail to describe an article of manufacture within the meaning of the statute. Also that the process [283 U.S. 1, 11] claims are invalid for various reasons, among them anticipation by United States letters patent No. 683,899, issued October 8, 1901, upon application of Simeon Bishop.
Is an orange, the rind of which has become impregnated with borax, through immersion in a solution, and thereby rendered resistant to blue mold decay, a 'manufacture,' or manufactured article, within the meaning of section 31, title 35, U. S. Code (35 USCA 31)?
Any person who has invented or discovered any new and useful art, machine, maufa cture, or composition of matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof, and not patented ... may ... obtain a patent therefor.'
Answering affirmatively, the Circuit Court of Appeals said: 'The product claims define an article of manufacture, since the fruit is the result of a process which is defined and described and not a natural product. The product is a combination of the natural fruit and a boric compound carried by the rind or skin in an amount sufficient to render the fruit resistant to decay. The complete article is not found in nature and is thus an article of manufacture. Riter-Conley Mfg. Co. v. Aiken et al. ( C. C. A.) 203 F. 699.'
This position, we think, is not tenable.
Manufacture,' as well defined by the Century Dictionary, is 'the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by handlablor or by machinery'; also 'anything made for use from raw or prepared materials.'
Addition of borax to the rind of natural fruit does not produce from the raw material an article for use which possesses a new or distinctive form, quality, or property. The added substance only protects the natural article [283 U.S. 1, 12] against deterioration by inhibiting development of extraneous spores upon the rind. There is no change in the name, appearance, or general character of the fruit. It remains a fresh orange, fit only for the same beneficial uses as theretofore.
In Hartranft v. Wiegmann, 121 U.S. 609, 613 , 615 S., 7 S. Ct. 1240, 1242, this Court considered the meaning of the words 'manufactures of shells,' and held that 'cleaning off the outer layer of the shell by acid, and then grinding off the second layer by an emery wheel, so as to expose the brilliant inner layer,' did not convert it into a manufacture. 'The shells in question here were not manufactured, and were not manufactures of shells, within the sense of the statute imposing a duty of 35 per centum upon such manufactures, but were shells not manufactured, and fell under that designation in the free list. They were still shells. They had not been manufactured into a new and different article, having a distinctive name, character, or use from that of a shell. The application of labor to an article, either by hand or by mechanism, does not make the article necessarily a manufactured article, within the meaning of that term as used in the tariff laws. Washing and scouring wool does not make the resulting wool a manufacture of wool. Cleaning and ginning cotton does not make the resulting cotton a manufacture of cotton.'
And in Anheuser-Busch Brewing Ass'n v. United States, 207 U.S. 556, 562 , 28 S. Ct. 204, 206, where it was claimed that corks for bottles which had undergone special treatment after importation thereby became articles manufactured in the United States, this Court said: 'Manufacture implies a change, but every change is not manufacture, and yet every change in an article is the result of treatment, labor, and manipulation. But something more is necessary, as set forth and illustrated in Hartranft v. Wiegmann, 121 U. S. [283 U.S. 1, 13] 609, 7 S. Ct. 1240. There must be transformation; a new and different article must emerge 'having a distinctive name, character, or use."
If it be assumed that the process claims under consideration cover an invention, we think this lacked novelty when application was made for the patent August 13, 1923. The underlying conception had been adequately revealed in Bishop's patent of 1901
He claimed:
And in the specification he affirmed:
Read together, the claims and specification of the Bishop patent show that he intended it should have wide application and cover treatment of citrus, as well as other, fruits. He distinctly states the application of boracic acid prevents the usual rapid decay, and upon this basic fact respondent endeavors to support the patent in suit.
True, Bishop proposed as a secondary step the application of gelatine which he averred would exclude the air and enhance the appearance of the article. But Brogden and Trowbridge also said in their specification that, 'if the benefits of the invention are to be realized to the fullest extent,' the fruit after being soaked should receive an application of protective coating material, such as paraffin, or like waxy material. If the claims of the patent in suit are valid, one operating under the process described by Bishop would infringe-and, considering the circumstances here disclosed, that is enough to show invalidity of the later patent. Knapp v. Morss, 150 U.S. 221, 228 , 14 S. Ct. 81. It lacks novelty. The substance of its disclosures had been revealed by Bishop twenty years earlier. Sewall v. Jones, 91 U.S. 171 , 182, et seq..
Reversed.
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Citation: 283 U.S. 1
Docket No: No. 48
Decided: March 02, 1931
Court: United States Supreme Court
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