CHARLES W. RIVISE and A. D. CAESAR Caesar & Rivise, Philadelphia, Pennsylvania
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incidental to the paramount purpose. This is becoming increasingly apparent from the manner in which courts are adjudicating patents and patent rights.
W I T H I N RECENT years, the law of patents has undergone very important and far-reaching changes. Most of them have come about not through legislation but because of a radical change in the attitude of courts toward patents and patentees. Formerly, courts as a general rule considered it in the public interest to view patents with a liberal eye and to sustain them and to hold them infringed whenever possible. Today, the reverse appears to be true. The statutory law has not changed materially, but judges have become increasingly strict in interpreting and applying the patent laws. The effect has been to curtail greatly the field of patentable invention, and to increase greatly the requirements for patentability and validity. Courts have become much more critical as to what constitutes adequate disclosure of an invention, and as to definiteness of claimed subject matter as well as to scope of issued patents. Furthermore, court decisions have gradually but sharply whittled down the inventor's rights in his invention, so that it is no longer accurate to consider him as "a czar in his domain." In no other field have the effects of the changed - judi. cia1 attitude toward patents and patentees manifested themselves to a greater degree than in that of chemical inventions. It, has. t,herefore. herome increasinplv
PREREQUISITES OF PATENTABILITY
Congress has carried out the Constitutional mandate by enacting legislation to define the prerequisites of patentability and the conditions under which patents may be granted (2). These may be listed briefly as follows: (1) The alleged invention or discovery must be directed to patentable subject matter. (2) The alleged invention must be sufficientlyuseful and important to justify the grant of a patent. (3) The alleged invention must be new. (4) The new thing must have been created by the exercise of inventive ingenuity, and must involve invention over prior devices and practices. (5) The inventionmust be capable of being adequately disclosed and accurately defined. (6) The inventor must not have abandoned his invention or otherwise forfeitedhis right to patent protection. (7) The subject matter of. the invention must be patentably distinct from %hat of any prior patents
prosecuting patent applications. Renewed consideration must also he eiven to devisine wavs * " and means for exploiting patented inventions without running afoul of the anti-trust laws and of the recent decisions against expanding the "monopoly" of the patent.
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Patent. In this paper, we shall discuss 'bnly the first four prerequisites, namely, patentable subject matter, utility, novelty, and invention.
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PATENTABLE SUBJECT MATTER
The patent statutes list the following subject matters
CONSTITUTIONAL BASIS OF PATENT SYSTEM
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"The Congress shall have power. To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
Upon these thirty-two words is based not only our patent system but our system for protecting copyrights. It is exceedingly important to note that the paramount purpose of the Constitutional provision is to promote the useful arts and sciences. Pecuniary reward to the inventor is a secondary consideration and merely Presented before the Division of Chemical Education at the 113th meetinp of the ~~~~i~~~ chemical societv in hi^^^^. .. April 19-23, 1948.
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. .. ety of plant (S), other than a tuber-propagated plant, capable of being asexually reproduced; and (6) a design (4) for an article of manufacture. The foregoing classification is purely statutory, and limits the protection of the patent law to definite lines of activity. Each of the terms has been so defined by patent tribunals as further to limit the field of patentable invention. All other contributions are not patentable, regardless of how valuable to mankind they may be. Abstract Discoveries. Before entering into a discussion of the patentable classes of invention, it should be noted that the foregoing list does not include abstract forces of nature, causes, and effects
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In the recent case of Katz v. Horni Signal Mfg. Co. (5),the court stated: "Epoch-making 'discoveries' of 'mere' general scientific 'laws,' without more, cannot be patented. So the great 'discoveries' of Newton or Faraday could not have been rewarded with such a grant of monopoly. .
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67); (3) spinneret for viscose silk (Page 342); (4) Dopp sulfonator (page 432). Products. The term "manufacture" is synonymous with "article," or "article of manufacture," and includes everything that is made by the art or industry of man, except machines, compositions, and designs. As examples of articles may be mentioned a cake of soap (18), an abrasive disc, an artificial tooth, etc. A 'Lcompositionof matter" may be defined as that which is formed by intermixing or reacting two or more substances. A composition in the sense of the patent law may he a chemical union or a mechanical mixture, and may consist of fluids, solids, or gases. As examples of compositions may be mentioned a definite chemical compound such as calcium chloride, carbolic acid, 2,4D, D.D.T., etc., a synthetic resin, pharmaceutical, paint, insecticide, dye, etc. There has been some agitation against granting patents on newly invented chemical compounds. I n one case (IS), the dissenting judge contended that a claim for a new compound covered merely a chemical formula or a principle of nature. An article may be composed in whole or in part of one or more compositions of matter, some or all of which may meet the requirements of patentability. Patent No. 1,752,917 (14)covers both a composition consisting of bitumen intermixed with organic and inorganic fibers, and a storage battery container made of the composition. For convenience, the term "product" is very often used to include both articles and compositions. Unpatentable Products. The product of a process is not an article in a patent sense, unless it has been transformed f r o m r a s or prepared materials in such a manner as to acquire a new or distinctive form, quality, or property. The following are examples of things which were held not to be patentable products: (1) fruit, whose skin had been treated with borax to prevent decay (15); (2) alcoholic extract of odoriferous glands of muskrat (16). Takamine Patent No. 730,176 for the purified blood pressure raising principle of the suprarenal glands was held valid, because it was a new thing commercially and therapeutically (17). The "Aspirin" patent (acetpl-salicylic acid) was sustained on the ground that by reducing the amount of impurities, Hoffman, the patentee, had converted a deleterious substance long known to chemists into a valuable medicine (18). Calcium carbide in the form of aggregated crystals was held patentable over the amorphous compound, which was worthless commercially, unfit for use in gas generators, and rapidly deteriorated when exposed to the air (19).
To the examples given in the quotation may be added the following: (1) Thomson's discovery of the electron. (2) The discovery of ionization in aqueous solution by Arrhenius. (3) The discovery by Mills that the blood coagulant in tissue is in reality fibrinogen (6). (4) The discovery that certain metals such as tungsten (7) and vanadium (8a) are very ductile in pure form. (5) The discovery that certain strains of root-nodule bacteria do not exert a mutually inhibitive effecton each other (8b). It is very important t o bear in mind that though neither the cause nor its effect is patentable as such, the means by which the cause is applied to produce the effect may be patentable. Likewise, a new property in matter, when practically applied in the making of a new manufacture or composition may be the basis of a valid patent. In other words, the principle of nature is not patentable; but its utilization by means of an art, machine, manufacture or composition of matter, when properly expressed in one of these forms, is patentable. , As an example may be mentioned a method of purifying tungsten so as to render its inherent ductile characteristics available for practical purposes (9). Definition oJ "Art." The term "art" is commonly considered synonymous with the words "process," "method," and "mode of treatment." It may best be defined (10) as "an operation or series of operations performed by rule to produce a given result." Patentable processes may be roughly classified into (1) chemical processes, and (2) mechanical methods. As examples of chemical processes m a 5 be mentioned: (1) method of making an organic or inorganic compound such as a synthetic resin, a dye, a pharmaceutical, a pigment, etc.; (2) method of treating fabric to impart some desired property such as water-resistance, fire-resistance, etc.; (3) method of pickling metals. Incidentally, the first patent granted after the adoption of the Constitution covered a method of making potash and pearl ashes (11). Processes involving mental processes are generally unpatentahle. As an example may be cited methods for solving chemical problems. Definition of LLMachine." The term "machine" may be defined as an assemblage or combination of mechanical or electrical elements or both adapted to receive, transmit, and modify force or motion t o do work. The following are a few examples of chemical machin- UTILITY ery picked a t random from Riegel's "Industrial ChemisAn invention to have utility must not only have a try," Second Edition: (1) apparatus used in the good and useful purpose, but it must also be capable of chamber process for making sulfuric acid (page 16); accomplishing its intended purpose. (2) Mannheim mechanical salt cake furnace (page A method of artificially spotting tobacco leaves was
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held unpatentable, because the purpose of the invention was to deceive the public into thinking that the spots were natural (20). A tooth paste said to be capable of rebuilding decayed teeth was held unpatentable, because it could not accomplish this purpose (21). NOVELTY
A thing is said to be new in'the eyes of the patent law. unless all its elements can be found in a sinale prior description or structure where they do substantially the same work in substantially the same way. The novelty of an alleged invention may be disproved patented or unpatented inventions, by of prior,printed publications, or evidence of prior knolvledge or use. 1f the steps of a process are old, it is wholly i-aterial that the prior inventor did not know the underlying theory, or realize all the advantages of his invenhave seen, patentability cannotbe tion. as upon the discovery of abstract forces of nature, causes, and effects. rn recentcase, a method of irradiating food to increase the vitamin content was held invalid, because farmers had from time immemorial allowed their hay to lie in the sun to improve their food value (22). ~h~ fact that farmers did not know the whys and where. fares of the process was wholly immaterial. If a person invents a method for making a chemical which is in the literature; he is not entitled to a patent on the itself. This is so, even if there was no previously known method of making the compound (23). Likewise, if an inventor discovers that a known substance has entirely unsuspected and very useful properties. The literature mentions the condensation product of metacresol sulfonic acid and an aldehyde. Thuau discovered that this product had unsuspected therapeutic properties, and attempted t o pa4ent the substance as a therapeutic material. The patent w q refused, because it would in effectcover the use of an old material (24). Thuau did obtain a patent on the pure product, hecause the literature only mentioned the impure condensation product, and the pure product was considerably more effective. Thuau might also have obtained a claim covering a composition containing the condensation product as an ingredient, provided that the composition was new and had therapeutic properties. INVENTION
The question as t o what constitutes invention is the most difficult one in the entire field of patent law. In one instance, i t is possible t o say without fear of contradiction that invention of a high order is present. I n another case, it is possible to say that there is lacking that intangible something which distinguishes invention from mere mechanical or chemical skill. The difficulty resides in segregating and defining the intangible something so as t,o aid in the determination of the majority of cases which lie in between the extremes.
JOURNAL OF CHEMICAL EDUCATION
I n a recent case (251, the Supreme Court stated that to be patentable, a new thing, "however useful it may be, must reveal the flash of creative genius, not merely the skill of the calhng." This statement has given rise in the Courts and to a lesser extent in the Patent Office of a much higher standard of invention. For a time it appeared that no patent, irrespective of the amount of ingenuity involved, would be held valid. Fortunately, one court after another has rejected the so-called "flash of aenius" rule. As one court ($6) v . . a.~ t"l stated:
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interest is in the child; not in how or where it was horn
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I n the remainder of this paper, we shall consider a few useful rules for determining the question of invention in chemical casee. , Rule o f , . U n p r e ~ ~ t a b W .In determining whether invent~veIngenuity had been exercised, patent tribunals often reason by analogy. There is ample authority to the effect that reasoning by analogy is more restricted 1x1 a complex field like chemistry or biology than in a relatively simpler field such as mechanics, Chemistry is still an experimental science, and chemical prevision is hardly more possible today than it was in former times. In a recent case (271, the Patent OfficeBoard of APpeals st,ated: "It is now the well established praotice in chemical cases not to assume that untried chemicals will have the same effect as others unless there is such a structural similarity as to suggest to those skilled in the art that the r e ~ u lwould t be substantially the same."
This rule has particular application to processes involving catalytic action, and t o chemicals having physiological, biological, insecticidal, or similar activity. I n the Corona Tire case (28),it was argued that since triphenylguanidine (T.P.G.) had been used as an accelerator for vulcanization, it did not involve invention to suggest the use of diphenylguanidine (D.P.G.) for the same purpose. The SupremCCourt dismissed this argument with the statement that "the catalytic action of an accelerator is not understood and is not known except by actual test." In the Christmann case (29),an insecticidal composition containing a guanidine-hydrofluosilicic acid reaction product was held patedable, though prior patents disclosed the use of other hydrofluosilicic acid reaction products as well as a guanidine for the same purpose. The following are the essential facts of the Hutzler ease (30): It was old to use organic sulfides t o dehair animal hides. Nevertheless, it was held patentable to use thioglycollic acids t o remove human hair. The invention solved the problem of removing human hair without injury to the skin. Rule of Wietzel Case. In the Wietzel case (311, the court laid down the rule that if the prior art teaches a process for making one chemical compound and there is reason to suppose that the procees conld be used to make another old compound of related structure, i t would not involve invention to try out the process to find that it can be used for making the second compound.
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For example, organic thiocyanates can in general be made by reacting an organic chloride, an alkali thiocyanate, and alcohol. A process for making a specific thiocyanate according to this reaction would be unpatentable, even though the specific compound had not previously been made. What has been said does not necessarily mean that a patent could not he obtained on the specific thiocyanate. However, the specific thiocyanate, in addition to being a new compound, would have to possess nnexpected beneficial properties. A case in point is I n re De Croote, et al. (%), wherein the court allowed a patent for a new compound consisting of the reaction product between a blown castor oil and diethanolamine, though the process itself was not , patentably new. The Wietzel doctrine obviously does not apply if there is reason to believe that the old type reaction would not work with specific materials. In one case (8S), a process of chlorinating paraffin hydrocarbons was held patentable, because the court concluded that there was every reason to believe that the inventor's result could not be achieved because of the difficulty of controlling the reaction of free chlorine with gaseous hydrocarbons. Homologs and Isomers. Homologs and isomers are substances of substantially similar chemical constitution. Hence, a new compound, which is a homolog or an isomer of an oU compound, is not patentable, unless it has unobvious or unexpected beneficial properties not possessed by t,he known compound. For this reason, 2-nitro-2-pentene was held unpatentable over 2-nitro-2-butene (34). Likewise, l-chloro-2amino-pentene was held unpatentable over a lower homolog, and also unpatentable over the N-diethyl isomer (56). The term "homologs" is restricted to compounds differingby CH2 or a multiple thereof. Hence, in a recent case, naphthyl methyl compounds were held patentablc over the corresponding benzyl (phenyl methyl) compounds (36). Newly prodwed homologs or isomers .of well-known compounds may be patentable, if they have unexpected or unpredictable uses. If et,hyl alcohol (ethanol) were a newly invented compound, i t would be patentable over methyl alcohol (methanol). For despite the fact that ethyl alcohol is usually listed as a homolog of methyl alcohol, these substances differ considerably in their properties. Many persons to their consternation ascertained this fact with blinding results during the prohibition era. Di-(beta-chlorethyl) sulfide is the deadly mustard gas used in chemical warfare, whereas the corresponding alpha-chlor derivative is practically innocuous. Hence, these compounds, though position isomers, are patentably different. Certain mono and dihalogen substituted 8hydroxy quinolines were held patentable (87), because they are excellent insecticides whereas their isomers are practically inert. Judicious Seleclion of Substances. Generally speaking, it does not constitute invention to select judiciously
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from a list of previously used or suggested substances those that give the best results. Patentability was refused for a remedy for lung diseases (88), consisting of grated horse-radish, boiled in honey to the consistency of a jelly, and to he taken cold with balm of Gilead as a tea. Obviously, these substances had been judiciously selected from a list of wellknown remedial substances. The following are the pertinent facts of General Electric Co. vs. Paramet Chemical Carp. (89). The resin art disclosed the making of glyptal resins from glycerol, a dibasic acid, and a monobasic fatty acid. The fatty acids specifically mentioned in the literature were nondrying and the resultant resins were nondrying, but certain patentees stated that other acids might be used. It was held unpatentable to select a monobasic acid of a drying oil in order to produce a drying resin. The foregoing cases should be compared with GilbertSpruance Co. us. Ellis-Foster Co. (do), which involved a patented varnish consisting of a solution of a glyptal resin and nitrocellulose. The defendant contended that the patentee. had merely selected a glyptal resin from the long list of available resins in the art. However, i t appeared that prior workers in the varnish art in making up nitrocellulose varnishes had overlooked glypttll resins, because they did not believe that such a hard resin would he compatible with nitrocellulose. The court. therefore, concluded that the patentee had exercised inventive genius by seizing upon a thing which had been available to all but which had been grasped hy none. UTILIZATION OF COMMON EXPEDIENT
There is ample authority to theeffect that it does not involve inventio~ to utilize a prticess or expedient which is old in an analogous art, or which is common to many arts. In the Vinton case (dl), a method of reducing iron from heavy slag produced as a by-product of the blast furnace was held unpatentable, because the same process had been used in reducing the original iron ore in the blast. In the Hampel case (@), it mas held to be a common expedient to premix several ingredients before mixing them with another ingredient. I t was also held to be a common expedient to mix in enough water with a material to give the material a desired degree of moisture and workability. The court found that it was an old expedient to incorporate sulfanilamide in an ointment by dissolving it in a hot solvent and then while still hot, adding it to a heated base material (43). Purifying a crude chemical by distillation and refluxing is a common expedient. Hence, it was held unpatentable to purify phthalic anhydride in this manner (44). It was old to pump concentrated hydrochloric acid into an oil well to increase its yield. The use of dilute acid mixed with an inhibitor to prevent corrosion was held unpatentable (45). The foregoing cases should be compared with Tan-
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nage Patent Co. us. Zahn (46). It was held patentable to apply a method which had previously been applied to the dyeing of fabrics to the tanning of leather. In both the tanning and dyeing processes, the materials were treated with an acid, and the acid then converted to oxide by chemical reduction. However, it clearly appeared that the functions of the reagents and the results in the two processes were radic.ally different, and though the dyeing process had been in use for thirty years, inventors and scientists were vainly endeavoring to develop a practical process of chrome tanning. In the Sibley case (47), a patent was granted for a coating composition containing a drying oil, a positive oxidation carrier, and a specific inhibitor of oxidation. The specific oxidation inhibitor had been used in rubber compositions, but the patentee pointed out to the court's satisfaction that most of the known oxidation inhibitors for rubber would not work with drying oils. DISPROPORTIONATE RESULT
In conclusion, it should be emphasized that no matter how simple or obvious an invention may appear after it has been made, it is nevertheless patentable, if it has produced a disproportionate or unobvious change in result or solved a di5cult or previouely unsolved problem. It was held patentable in an old case (48) to add a small piece of aluminum to molten iron just as it was to be poured into the mold, because this relatively simple expedient successfully solved the problem of making a casting free of blowholes. A sealing composition for tin cans consisting simply of latex and bentonite was held patentable in a recent case (49). In the Edwards case (50), it appeared that Edwards had by the exercise of inventive genius discovered the reason why cement slurries for sealing oil wells failed to set properly. An obvious solution of the problem was accorded patent protection. In another case (51),a reversal of steps in a process of making sodium perborate was heldvatentable because the change in process resulted in a product of low bulk density. LITERATURE CITED (1) (2) (3) (4)
Article I, Section 8, Clause 8. Sections 4886 and 4929 of the Revised Statutes. Plants and designs are outside the scope of this article. See reference (3).
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63 U.S.P.Q. 190 (C.C.A. 2, 1944). Ex parte MILLS,1928 C.D. 4. GENERAL ELECTRIC GO. "8. DE FORESTRADIOCO., 28 Fed. (2nd) 641 1C.C.A. 3. 19281. ( s ) ' ~ n r kM A ~ D E N ,e l k , ~u.s.P.Q. 347 (C.C. .P.A. 1931). CO., (bl, FUNKBROTHERS SEEDCo., V S . KALOINOCULANT 76 U.S.P.Q. 280 (8. Ct. 1948). See iootnote 7. GLUECo., 1928 C.D. HOLLAND FURNITURE CO.08. PERKINS 266 (Sup. Ct. 1928). HOPRINS. Patent No. 1 issued July 31. 1790 to SAMUEL . A floating soap was held pstentahle in LEVERB R O ~US. PROCTER& GAMBLE MFG.CO.. 60 U.S.P.Q. 76 (C.C.A. 4. 1943). SCHENNG CORP.US. GILBERT,el al., 68 U.S.P.Q. 84 (C.C.A. 7 1948) -, - - - ,. Held valid in NATI~NAL BATTERY CO.VS. RICEARDSON Co., 17 U.S.P.Q. 60 (C.C.A. 6, 1933). AMENCANGROWERS case. 1931 C.D. 711 (Sup. Ct. 1931). Ex parte SPARHAWK, 64 U.S.P.Q. 339 (1944). PARKE-DAVIScase. 189 Fed. 95 (S.D.N.Y. 1911)
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c&, 181 F.104 (c.c.A.'~, 191b). UNIONCARBIDE RICKARDease, 103 Fed. 868 (C.C.A. 2,1900). case, 16 U.S.P.Q. 327 (C.C.A. 3, 1934). HOOVER VITAMIN Case, 63 U.S.P.Q. 262 (C.C.A. 9, 1944). 1894 C.D. 134 (Appedls D.C. 1893) denyIn re SCHAEPFER, ing patent protection on a. dye made from dizarine. Crooked handbookdisclosed the compound by name but did not give any method of preparation. 57 U.S.P.Q. 324 (C.C.P.A. 1943). In re THUAU, CUNO0&8e.942 C.D. 723 (Sup. Ct. 1941). TRABON Engineering ease, 58 U.S.P.Q. 97 (C.C.A. 6,1943). Ex parte KHARASCH, 19 U.8.P.Q. 185 (1933). 1928 C.D. 253 (Sup. Ct. 1928). 1940 C.D. 46 (C.C.P.A. 1940). 75 U.S.P.Q. 259 (C.C.A. 4,1941). 5U:S.P.Q. 177 (C.C.P.A. 1930). 53'U.S.P.Q.354 (C.C.P.A. 1942). 76 U.S.P.Q. 4PiC.C.P.A. 1947). In re HAMPEL, , U.S.P.Q. 544 (C.C.P.A. 1944). In re H ~ p s60 53 U.S.P.Q. 40 (C.C.P.A. 1940). In re LINCOLN, JONES, 65U.S.P.Q. 480 (C.C.P.A. 1945). Exparte SENN,71 U.S.P.Q. 273 (1946). I n r e TRA~TNER, 1929 C.D. 158 (Appeals D.C. 1928). 28U.S.P.Q.496 (C.C.A.2, 1936). 46U.S.P.Q. 535 (C.C.A. 3, 1940). lRR2C.D.203: 104U.S. 285 (Sub. Ct. 1881). -74U.S.P.Q.ljl (C.c.~.~.1947).. I ~ ~ ~ G R E E N B69 AU U.S.P.Q. M, 141 (C.C.P.A. 1946). In re FOSTER, 1937 C.D. 188 (C.C.P.Q. 1936). Dowcase, 64U.S.P.Q. 412 (Sup. Ct. 1945). 70 Fed. 1003 (C.C.A. 3,1895). 33U.S.P.Q.212 (C.C.P.A. 1937). UNITEDSTATESMITIS CD. US. MIDVALESTEELCO., 135 ~
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(51) Exparte MEES,66 U.S.P.(
I hope that the insight which you have here gainedinto some of the laws by which the universe is governed may be the occasion of some among you turning your attention to thesesubjects; for whatstudy is there morefitted to the mindof mon than that of the physical sciences? And what is there more capable of giving him an insight into the actions of those laws, a knowledge of which gives interest to the most triflingphenomenon of nature, and m k e s the observing student see: 'Tongues in trees, books i n the running brooks, sermons in stones, and good in evevthing. ' "-Faraday.
