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titioner,

v.

PROCTER & GAMBLE COMPANY.

appellant concerned the exaction of du- | [156] BERLIN MILLS COMPANY, Peties or taxes by the United States or its officers, or property taken by the government for public purposes. In such cases jurisdiction in the court of claims for the recovery of the duties and taxes or for the value of the property taken was declared.

"In the case at bar (assuming as true all that is charged) there was a wrong inflicted, if a wrong can be said to have been inflicted by the sentence of a court legally constituted after judgment upon issues openly framed by the opposing parties, both of fact and the applicable law, whether that law was §§ 2865 and 3082 of the Revised Statutes (Comp. Stat. §§ 5548, 5785, 2 Fed. Stat. Anno. 2d ed. pp. 1003, 1168) or the Constitution of the United States. But, conceding that a wrong was inflicted through these judicial forms, the case nevertheless is of different character from the Dooley [155] Case, as was also the Schillinger Case. The latter case passed upon the jurisdiction of the court of claims in actions founded on tort, and declared the general principle to be, based on a policy imposed by necessity, that governments are not liable (155 U. S. p. 167) 'for unauthorized wrongs inflicted on the citizen by their officers, though occurring while engaged in the discharge of official duties.' And it was further said (p. 168) 'Congress has wisely reserved to itself the right to give or withhold relief where the claim is founded on wrongful proceedings of an officer of the government.' Gibbons v. United States, 8 Wall. 269, 275, 19 L. ed. 453, 454; Morgan v. United States, 14 Wall. 531, 534, 20 L. ed. 738, 739."

The principle, reaffirmed in the case just quoted, is applicable here for the reason that the claim presented sounded in tort, and was in substance an action to recover for the wrongful acts of the United States officials in compelling the claimant to pay under duress and without authority of law the sums sued for. Following the well-established construction of the Tucker Act, as declared in many cases in this court, we think that the Court of Claims should have dismissed the petition because it presented a claim not within its jurisdiction. The judgment of the Court of Claims is reversed, and the cause remanded to that court with instructions to dismiss the petition.

Reversed.

(See S. C. Reporter's ed. 156-166.) Patents

invention prior art.

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The Burchenal patent No. 1,135,351, for a lard-like food product consisting of a vegetable oil partially hydrogenized to a homogeneous whitish, yellowish product, must be deemed void for lack of invention, since it was previously known that a vegetable oil could be changed into a semiof hydrogenation arrested before completion, solid homogenous substance by a process and that the product might be edible, and the product of this process was also known and open to public use.

[For other cases, see Patents, V. b, 7, in Digest Sup. Ct. 1908.]

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ON WRIT of Certiorari to the United

for the Second Circuit to review a deStates Circuit Court of Appeals cree which reversed a decree of the District Court of the United States for the Southern District of New York in favor of defendant in a patent infringement suit, and remanded the cause, with directions to enter a decree adjudging certain claims of such patent to be valid and infringed. Reversed and cause remanded to the District Court, with directions to dismiss the bill.

See same case below, 167 C. C. A. 295, 256 Fed. 23.

The facts are stated in the opinion.

Mr. Marcus B. May argued the cause, and, with Messrs. John C. Pennie and Melville Church, filed a brief for peti

tioner:

This court has interpreted the word Note. On patentability of inventions-see notes to Evans v. Eaton, 4 L. ed. U. S. 433; Corning v. Burden, 14 L. ed. U. S. 683; Thompson v. Boisselier, 29 L. ed. U. S. 76; Grant v. Walter, 37 L. ed. U. S. 553; Wollensak v. Sargent & Co. 38 L. ed. U. S. 138; Market Street Cable R. Co. v. Rowley, 39 L. ed. U. S. 285; and Dashiell v. Grosvenor, 40 L. ed. U. S. 1025.

On anticipation of patent-see notes to Leggett v. Standard Oil Co. 37 L. ed. U. S. 737, and Wollensak v. Sargent & Co. 38 L. ed. U. S. 138.

254 U. S.

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"art" as meaning method, process, or
procedure.

Telephone Cases, 126 U. S. 1, 31 L. ed.
863, 8 Sup. Ct. Rep. 778; Corning v.
Burden, 15 How. 252, 267, 14 L. ed.
683, 691; Cochrane v. Deener, 94 U. S.
780, 788, 24 L. ed. 139, 141.

A claim of a patent cannot cover both a product and a process, since each is a distinct subject of a patent or of a patent claim.

V.

Merrill v. Yeomans, 94 U. S. 568, 24 L. ed. 235; Providence Rubber Co. v. Goodyear, 9 Wall. 788, 796, 19 L. ed. 566, 568; Giant Powder Co. v. California Powder Works, 98 U. S. 126, 25 L. ed. 77; Keystone Bridge Co. Phoenix Iron Co. 95 U. S. 274, 24 L. ed. 344; Grant v. Walter, 148 U. S. 547, 37 L. ed. 552, 13 Sup. Ct. Rep. 699; Duran v. Schulze, 10 C. C. A. 97, 17 U. S. App. 620, 61 Fed. 819.

A manufacture or product of a proc-
ess may not be new, and therefore un-
patentable, while the process or agency
by which it is produced may be patent-
able. If the product is old, it is of no
importance, in considering its patent-
ability, to inquire from what material
or by what process it was produced.

Wood Paper Patent (American Wood
Paper Co. v. Fibre Disintegrating Co.)
23 Wall. 566, 23 L. ed. 31; Cochrane v.
Badische Anilin & Soda Fabrik, 111 U.
S. 293, 28 L. ed. 433, 4 Sup. Ct. Rep.
455; Merrill v. Yeomans, 94 U. S. 568,
24 L. ed. 235; Giant Powder Co. v. Cal-
ifornia Powder Works, 98 U. S. 126, 25
L. ed. 77; Grant v. Walter, 148 U. S.
547, 553, 37 L. ed. 552, 556, 13 Sup. Ct.
Rep. 699; Duran v. Schulze, 10 C. C. A.
97, 17 U. S. App. 620, 61 Fed. 819;
Sanitas Nut Food Co. v. Voigt, 71 C.
C. A. 535, 139 Fed. 551; Dunn Wire-
Toronto Fire
Cut Lug Brick Co. v.
Clay Co. 170 C. C. A. 326, 259 Fed. 258;
National Chemical & Fertilizer Co. v.
Swift & Co. 43 C. C. A. 421, 104 Fed.
87; American Tube Works v. Bridge-
water Iron Co. 65 C. C. A. 636, 132 Fed.
16; American Steel & Wire Co. v. Den-
ning Wire & Fence Co. 94 C. C. A. 634,
C. C. A.
169 Fed. 413, affirming
160 Fed. 125; Societe Fabriques de
Produits Chimiques de Thann et de
Mulhouse v. Lueders, 74 C. C. A. 15,
C. C. A.
142 Fed. 753, affirming
135 Fed. 102; Sewall v. Jones, 91 U. S.
171, 187, 23 L. ed. 275, 279; Maryland
Hominy & Coralline Co. v. Dorr, 46
Fed. 773.

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That which infringes, if later, would anticipate, if earlier.

Peters v. Active Mfg. Co. 129 U. S.

530, 537, 32 L. ed. 738, 740, 9 Sup. Ct.
Rep. 389.

The patent in suit assumes to deprive
the public of its vested rights.

Lovell Mfg. Co. v. Cary, 147 U. S. 623, 634, 37 L. ed. 307, 311, 13 Sup. Ct. Rep. 472; Brown v. Piper, 91 U. S. 37, 41, 23 L. ed. 200, 201; Smith v. Nichols, 21 Wall. 112, 119, 22 L. ed. 566, 567; Union Match Co. v. Diamond Match Co. 89 C. C. A. 172, 162 Fed. 148, 155; Sewall v. Jones, 91 U. S. 171, 187, 23 L. ed. 275, 278.

The commercial development of the patented product does not supply lack of novelty.

McClain v. Ortmayer, 141 U. S. 419, 429, 35 L. ed. 800, 804, 12 Sup. Ct. Rep. 76; Duer v. Corbin Cabinet Lock Co. 149 U. S. 216, 223, 224, 37 L. ed. 708, 710, 13 Sup. Ct. Rep. 850.

Mr. Charles E. Hughes also argued the cause, and, with Mr. Marcus B. May, filed a brief for petitioner.

Messrs.

Charles E. Hughes and brief for the Royall Victor filed a American Cotton Oil Company as amici curiæ:

Considered as product, the defendant's product belongs in the same class with the prior art products; it is to be distinguished therefrom only by the process of production. And, if process is the distinguishing feature,there is no infringement, as the process the defendant is very different from that of the complainant, and the patent is for a product, and not for a process.

of

Wood Paper Patent (American Wood Paper Co. v. Fibre Distintegrating Co.) V. Badische Anilin & 23 Wall. 566, 593-595, 23 L. ed. 31, 39, 40; Cochrane YeoSoda Fabrik, 111 U. S. 293, 28 L. ed. 433, 4 Sup. Ct. Rep. 455; Merrill v. mans, 94 U. S. 568, 24 L. ed. 235; Giant Powder Co. v. California Powder Works, 98 U. S. 126, 25 L. ed. 77; Grant v. Walter, 148 U. S. 547, 37 L. ed. 552, 13 Sup. Ct. Rep. 699.

The same rule should be applied in the light determining patentability in of the prior art as is applied in determining the question of infringement.

Peters v. Active Mfg. Co. 129 U. S. 530, 537, 32 L. ed. 738, 740, 9 Sup. Ct. Rep. 389; Miller v. Eagle Mfg. Co. 151 U. S. 186, 293, 38 L. ed. 121, 129, 14 Sup. Ct. Rep. 310.

Mr. Livingston Gifford argued the cause, and, with Mr. Alfred M. Allen, filed a brief for respondent:

The fact, if true, that the product

197

transiently existed before, causing no remark, adding nothing to the sum of human knowledge, seen with the eye, yet perceived not, unrecognized as serving any useful purpose, would not negative its novelty.

Ransom v. New York, 1 Fisher, Pat. Cas. 252, Fed. Cas. No. 11,573; Tilghman v. Proctor, 102 U. S. 708, 711, 26 L. ed. 279, 281; Clough v. Gilbert & B. Mfg. Co. 106 U. S. 166, 175, 27 L. ed. 135, 137, 1 Sup. Ct. Rep. 188; Carnegie Steel Co. v. Cambria Iron Co. 185 U. S. 403, 423, 46 L. ed. 968, 980, 22 Sup. Ct. Rep. 698; Wickelman v. A. B. Dick Co. 31 C. C. A. 530, 59 U. S. App. 616, 88 Fed. 264; German-American Filter Co. v. Erdrich, 98 Fed. 300; German-American Filter Co. v. Loew Filter Co. 103 Fed. 303; Tannage Patent Co. v. Donallan, 93 Fed. 811; Pittsburgh Reduction Co. v. Cowles Electric Smelting & Aluminum Co. 55 Fed. 301; Boyd v. Cherry, 50 Fed. 279; Chisholm v. John106 Fed. 191; American Bell Teleph. Co. v. Dolbear, 17 Fed. 604; Kuehmsted v. Farbenfabriken of Elberfeld Co. 103 C. C. A. 243, 179 Fed. 701. To stop the hydrogenation process, and utilize the material in the progress of its development in a way never before suggested or hinted at in the foodproduct art or any other art, would clearly involve invention.

son,

Tyler v. Boston, 7 Wall. 327, 330, 19 L. ed. 93, 94; Naylor v. Alsop Process Co. 94 C. C. A. 315, 168 Fed. 911; Badische v. Levenstein, 4 Pat. Design & Trade-Mark Cas. 468, Eng. House of Lords; Stevens v. Keating, 2 Webster, Pat. Cas. 181.

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 [157] of the patent of John J. Burchenal for a food product, issued on April 13, 1915, Number 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. 167 C. C. A. 295, 256 Fed. 23. The patent in controversy relates to a lard-like 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 glycerides-olein, linolin, and stearin. The hydrogenation, or hardening process, has the effect to increase the proportion of the solid glyc erides of high saturation. Stearin is called a saturated glyceride 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 glycerides, and can be converted by the addition of hydrogen into hardened glycerides.

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 glycerides of unsaturated fatty acids, and among these, notable quantities of fatty glycerides of lower saturation than olein. It is the presence of these glycerides of lower saturation that seriously affects the rancidity of the material. Öxidation is [158] largely the cause of rancidity, which oxidation weakens the fat at the point of absorption at the double bonds, and these glycerides of lesser saturation readily absorb oxygen from the air at ordinary temperatures, while the more highly saturated glycerides, as olein, only absorbs oxygen at elevated temperatures. It is evident, therefore, that oils or fats containing notable quantities of glycerides of linolic acid, or of lesser saturation, are distinctly inferior as an edible product to those containing a minimum of these glycerides with a larger per cent of olein. On the other hand, while it is important to get rid of the readily oxidizable glycerides of lower saturation, it is also important not to supply too large a per cent of fully saturated glycerides.

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, 98° F., are not so digestible as fats which are liquid at this point, or which have a melting point below 98° F. It is, there

02

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fore, my object in the preparation of, of samples gives 23 per cent of saturated
my new lard-like composition and food fats, 7.5 per cent linolin and 69.5 per
product, and in preparing same from cent olein, while the cottonseed oil be-
cottonseed oil, to change the chemical fore treatment contained 17 per cent
composition of the oil to obtain a product saturated fats, 37 per cent linolin, and 46
It will thus be seen
with a high percentage of olein, a low per cent olein.
percentage of linolin and the lesser- [160] that I have produced an ideal
saturated fats, and with only sufficient food product, which is high in olein,
stearin to make the product congeal at low in linolin and lesser-saturated fats,
and with only enough stearin to make
ordinary temperatures.
the product congeal at ordinary tem-
peratures."

"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 [159] kieselguhr being maintained in suspension in the oil, and its temperature being raised to about 155° C.

The patent has seven claims; two broad claims, which are the ones here infood volved:

1. "A homogeneous lard-like product consisting of an incompletely hydrogenized vegetable oil."

food

2. "A homogeneous lard-like 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 One Edwin C. Kayser, who of soap. 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.

"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 oleo-stearin, 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 The high smoking or burning. 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 o 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 iodine value ranging from about 55 to about 80. The product having an iodine value of 55 has a titer of about 42° and a melting point of about 40° C.; that having an iodine value of 80 has a titer of about 35° and a melting point of about 33° C. While but partially hydrogenized, containing from about The district court found that Bur1.5 per cent to 2.5 per cent of additional hydrogen more than in the nonhydro- chenal in fact invented nothing, and that genized material, it shows no free cotton- all that was real invention, as established seed oil when subjected to the Haiphen by the testimony, came from Kayser. test, thereby differing from all commer- But [161] considering, for the purcial lard substitutes containing this oil. poses of this discussion, It contains from 20 to 25 per cent of thought occurred to Burchenal, which fully saturated glycerides, from 5 to 10 he developed in the production of a per cent linolin, and from 65 to 75 per food product, the subject-matter of cent olein, and an average of a number this patent, the primary question is

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.

that the

199

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 glycerides, into saturated compounds. After referring to other discoveries he says:

"By causing acetylene, ethylene, or benzene vapor 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 vapors 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 [162] 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

easily decomposed by dilute mineral acids, the reaction passes off without any secondary reaction taking place. 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 48° C. and whose iodine number is 35.1, will, after hydrogenation, melt between 56.5 and 59° C., while their iodine number will be 9.8, and their color 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 glycerides occurring in nature; that is to say, to fats and oils. Olive oil will yield a hard tallow-like mass; linseed oil and fish oil will give similar results.

"By the new method, all kinds of unsaturated fatty acids and their glycerides 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 [163] 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.

Further on he says:

"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 "The quantity of the nickel thus added place. A chemist would know from this and the temperature are immaterial, and first paragraph, where he says that oleic will only affect the duration of the proc-acid goes to stearic acid, and from the ess. Apart from the formation of small second one, where he says that no side quantities of nickel soap, which may be reaction takes place, the chemist would

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