Berlin Mills Company v. Procter & Gamble Company/Opinion of the Court
This suit was brought by the Procter & Gamble Company against the Berlin Mills Company for the infringement 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 special object of the invention is to provide a new food      product for a shortening in cooking, in which the liability      to become rancid is minimized, and in which the components of      such vegetable oils which are inferior and detrimental to use      as such a food product have been to a large extent converted      into a higher and more wholesome form. All such vegetable      oils contain glycerids of unsaturated fatty acids, and among      these notable quantities of fatty glycerids of lower      saturation than olein. It is the presence of these glycerids      of lower saturation that seriously affects the rancidity of      the material. Oxidation is largely the cause of rancidity, which oxidation weakens the      fat at the point of absorption at the double bonds, and these      glycerids of lesser saturation readily absorb oxygen from the      air at ordinary temperatures, while the more highly saturated      glycerids, as olein, only absorb oxygen at elevated      temperatures. It is evident, therefore, that oils or fats      containing notable quantities of glycerids of linolic acid,      or of lesser saturation, are distinctly inferior as an edible      product to those containing a minimum of these glycerids with      a larger per cent. of olein. On the other hand, while it is      important to get rid of the readily oxidizable glycerids of      lower saturation, it is also important not to supply too      large a per cent. of fully saturated glycerids. * * * Oil,      liquid at the ordinary temperatures, does not make the best      shortening, because the oil remains liquid, keeping the food      in a soggy condition, and the oil will even settle to the      under part of the cooked product and soil the cloth, paper,      or whatever it may come in contact with. Moreover, fats of a      melting point above the temperature of the human body, 98xF.,      are not so digestible as fats which are liquid at this point,      or which have a melting point below 98xF. It is therefore my      object in the preparation of my new lardlike composition and      food-product, and in preparing same from cottonseed oil, to      change the chemical composition of the oil to obtain a      product with a high percentage of olein, a low percentage of      linolin and the lesser saturated fats, and with only      sufficient stearin to make the product congeal at ordinary      temperatures.

'In manufacturing this product, cottonseed or other vegetable      oil is caused to chemically absorb a limited amount of      hydrogen by reacting on the oil with hydrogen in the presence      of a catalytic agent and at an elevated temperature. The oil      is preferably agitated in a closed vessel in the presence of      an atmosphere of compressed hydrogen, a catalyzer of finely      divided nickel carried by kieselguhr being maintained in suspension in the oil and its      temperature being raised to about 155x C.

'According to the present invention, the amount of hydrogen      absorbed is carefully regulated and limited. In practice, the      operation is stopped when the oil has been converted into a      product which cools to a white or yellowish semisolid more      closely resembling lard than do the commercial mixtures of      cottonseed oil and animal oleostearin, while in many respects      the product is superior to the best leaf lard as a      shortening. It is not so liable to become rancid, and the      product can be heated to a considerably higher temperature      than lard without smoking or burning. * * * The high      temperature to which my product can be raised without smoking      or burning makes the product ideal for frying, inasmuch as a      crust forms almost instantly on the food fried, which      prevents any absorption of the shortening. A lardlike product      thus prepared from cottonseed oil has a saponification value      of about 195, and an iodin value ranging from about 55 to      about 80. The product having an iodin value of 55 has a titer      of about 42x and a melting point of about 40xC.; that having      an iodin value of 55 of 80 has a titer of about 35x and a      melting point of about 33xC. While but partially      hydrogenized, containing from about 1.5 per cent. to 2.5 per      cent. of additional hydrogen more than in the nonhydrogenized      material, it shows no free cottonseed oil when subjected to      the Halphen test, thereby differing from all commercial lard      substitutes containing this oil. It contains from 20 to 25      per cent. of fully saturated glycerids, from 5 to 10 per      cent. linolin, and from 65 to 75 per cent. olein, and an      average of a number of samples gives 23 per cent. of      saturated fats, 7.5 per cent. linolin, and 69.5 per cent.      olein, while the cottonseed oil before treatment contained 17      per cent. saturated fats, 37 per cent. linolin, and 46 per      cent. olein. It will thus be seen that I have produced an ideal food product, which is high in      olein, low in linolin and lesser saturated fats, and with      only enough stearin to make the product congeal at ordinary      temperatures.'

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 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:

'By causing acetylene, ethylene, or benzene vapour in mixture      with hydrogen gas to pass over one of the said metals, the      said investigators obtained from the unsaturated hydrocarbons      saturated hydrocarbons, partly with simultaneous      condensation.

'I have found that it is easy to convert by this catalytic      method unsaturated fatty acids into saturated acids. This may      be effected by causing vapours of fatty acid together with      hydrogen to pass over the catalytic metal, which is      preferably distributed over a suitable support, such as      pumice stone. It is sufficient, however, to expose the fat or the fatty acid in a liquid condition to the action      of hydrogen and the catalytic substance.

'For instance, if fine nickel powder, obtained by reduction      in a current of hydrogen, is added to chemically pure oleic      acid, then the latter heated over an oil bath, and a strong      current of hydrogen is caused to pass through it for a      sufficient length of time, the oleic acid may be completely      converted into stearic acid.

'The quantity of the nickel thus added and the temperature      are immaterial and will only affect the duration of the      process. Apart from the formation of small quantities of      nickel soap, which may be easily decomposed by dilute mineral      acids, the reaction passes off without any secondary reaction      taking place. The same nickel may be used repeatedly. Instead      of pure oleic acid, commercial fatty acids may be treated in      the same manner. The yellowish fatty acids of tallow, which      melt between 44 and 48xC. and whose iodine number is 35.1,      will, after hydrogenation, melt between 56.5 and 59xC., while      their iodine number will be 9.8, and their colour slightly      lighter than before, and they will be very hard.

'The same method is applicable not only to free fatty acids,      but also to their glycerids occurring in nature; that is to      say, to fats and oils. Olive oil will yield a hard tallowlike      mass; linseed oil and fish oil will give similar results.

'By the new method, all kinds of unsaturated fatty acids and      their glycerids may be easily hydrogenized.'

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:

'Dr. Normann discovered, and sets forth in the patent, that      unsaturated acids or unsaturated oils by the action of      hydrogen in the presence of finely divided nickel may be      converted into corresponding saturated compounds. He defines the reaction rather carefully in some regards. He      says, for instance, if fine nickel powder obtained by      reduction in a current of hydrogen is added to chemically      pure oleic acid, then the latter heated over an oil bath, and      a strong current of hydrogen is caused to pass through it for      a sufficient length of time, the oleic acid may be completely      converted into stearic acid.'

"Apart from the formation of small quantities of nickel soap,      which may be easily decomposed by dilute mineral acids, the      reaction passes off without any secondary reaction taking      place.'

'I think that those two sentences which I have read very well      define the product which is obtained by such reduction,      especially the second sentence, where he says that the      reaction goes on in a quantitative way, we will say; that is,      he says that there is no side reaction takes place. A chemist      would know from this first paragraph, where he says that      oleic acid goes to stearic acid, and from the second one,      where he says that no side reaction takes, place, the chemist      would know exactly what the product is which is formed by      this reaction. * * *

'I would call attention particularly to the fact that he      hardened olive oil to a hard, tallowlike mass. Tallow is a      substance that is obtained from the fat of either cattle or      of sheep, and is a substance of somewhat semisolid character;      that is, its lower limit of melting point is within a lard      range, and its upper limit is just slightly beyond the lard      range, so that, if Normann hardened olive oil to a tallowlike      mass, that means that he hardened it to a product of a      semisolid character.

'Q. 63. Does Normann specify anywhere in his patent any of      the purposes for which his patents are intended?

'A. He does not. He says nothing in the patent as to what      these products should be used for. The presumption is that      they might be used for any purpose for which fats of that      general character could be utilized. They might be used for making candles; they might be used for soaps; they      might be used for edible purposes.

'By the passages I have read he has very carefully specified      what the product is, so that any chemist would know for what      particular purposes it might be useful.

'Q. 64. In the process of hydrogenation as described in the      Normann patent from which you made citations-that is, the      British patent, No. 1,515 of 1903-what would your conclusion      be as to the edibility of the resultant product when the      material hydrogenated was among those suggested by him, olive      oil?

'A. If an edible olive oil was started with, one would      certainly obtain an edible hydrogenated product.'

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:

'The composition of lard and of cottonseed oil, as to the      glycerids olein and stearin that they contain, is well known.      To make a product from cottonseed oil that shall simulate      lard, the content of stearin should be increased. [Referring      to patents.] It is thought, therefore, that if the problem of      simulating lard from cottonseed oil were presented to an oil chemist, an incomplete hydrogenization of      the cottonseed oil would at once suggest itself to him as a      solution of the problem. All the claims are accordingly      rejected on the above ground of lack of invention. Claim 3 is      further rejected on the product formed by the above-cited      patents.'

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:

'It will thus be seen that I have produced an ideal food      product, which is high in olein, low in linolin, and lesser      saturated fats, and with only enough stearin to make the      product congeal at ordinary temperatures.'

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 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. 

Notes