Wallace v. Mandel Bros.

• Decision Date: 06 January 1948
• Docket Number: No. 9261.,9261.
• Parties: WALLACE v. MANDEL BROS., Inc.
• Court: U.S. Court of Appeals — Seventh Circuit

164 F.2d 861 (1947)

WALLACE v. MANDEL BROS., Inc.

No. 9261.

Circuit Court of Appeals, Seventh Circuit.

December 12, 1947.

Rehearing Denied January 6, 1948.

Charles J. Merriam and William J. Stellman, both of Chicago, Ill., for appellant.

Thomas H. Sheridan and Charles R. Sprowl, both of Chicago, Ill., for appellee.

Before EVANS and MAJOR, Circuit Judges, and LINDLEY, District Judge.

LINDLEY, District Judge.

Plaintiff, owner of the Wallace and Hand patent No. 2,236,387 applied for May 3, 1938, issued March 25, 1941, appeals from a judgment of invalidity of Claims 1 to 6, 8 to 13, 15 and 16 inclusive. The District Court found that if the claims are valid, defendant infringes.

The patentees claimed "a perspiration inhibiting composition" of a liquid "solution of aluminum sulfate" or, as an alternative, "aluminum chloride," both well known and long used in anti-perspirant compositions in liquid form, to which they added a new element, urea (carbamide), as they said, as "a neutral protective ingredient." In their specifications they stated that their invention related to an improved perspiration retarding or inhibiting compound; that it had previously been proposed to control the flow of perspiration from certain skin areas by application of solutions containing an acid salt of a heavy metal, usually, aluminum chloride or aluminum sulfate; that such solutions, though effective in retarding perspiration, had proved unsatisfactory and hazardous in that their use frequently produced acute skin irritation and destroyed the clothing fabric with which they came in contact. They discussed various prior unsuccessful attempts to overcome this disadvantageous effect, saying that, prior to their invention, corrosive action of effective perspiration inhibiting preparations had been considered inherent and unavoidable. They commented upon other scientists' tested additions of alkalies to the old compounds, stating that when such acid counteracting agents were added, the perspiration retarding action was destroyed. They asserted that in their composition they had advantageously retained the desirable retarding effects of previous compounds and had, by the addition of urea, done away with corrosive action, thus avoiding any harm to skin or fabric. It is apparent, therefore, that their asserted invention is the use, in combination with elements known to the prior art, of urea, which has the quality of removing the undesirable corrosion of earlier commercial preparations, while, at the same time, retaining their advantages, which, plaintiff asserts, result from retention of acidity.

The court found that the acidity of earlier compounds had been harmful in that it irritated sensitive skins and injured the user's clothing; that urea is an organic compound, neutral in its action; that when added to the old preparations it does not weaken the perspiration inhibiting effect as did addition of the alkalies which counteracted the acid content and that the new composition successfully prevented corrosion and consequent injury to skin and fabric. In this respect, the evidence is convincing that Wallace's composition was tremendously successful commercially. We think, too, that the evidence discloses clearly an existing public demand for a compound possessing the desirable qualities mentioned and a fulfillment of that demand by the patented product.

However, the patent has been in litigation before the District Court of the United States for the Eastern District of New York, wherein it was held to have been anticipated. Wallace v. F. W. Woolworth Co., D.C., 45 F.Supp. 465. The decision was affirmed in 2 Cir., 133 F.2d 763. Plaintiff insists that the evidence in that case has been supplemented by such additional evidence as to impel a contrary decision upon our part.

The trial court discussed various prior art references including Schupphaus, No. 514, 838 of February 13, 1894; Missbach, No. 2,069,711, February 2, 1937, application filed January 23, 1935; Shipp, No. 2,174,534, October 3, 1939, applied for April 22, 1936, and Koch, No. 2,011,292 of August 13, 1935. Schupphaus was interested in "securing the chemical stability of nitro-compounds," that is, explosives. He said that it was well known that "such compounds, when stored for a long period of time, often undergo decomposition, which, slight at first, gradually increases until the whole compound has become more or less decomposed"; that others had attempted to overcome decomposition by adding to nitro-compounds an alkali such as silicate of soda, carbonate of lime, magnesia and others, without success, for the reason that such alkalies being unstable themselves, had failed to prevent decomposition and that he had succeeded by using urea "as a neutralizer," which, he said, "penetrates every article of the nitro-compound" and arrests decomposition. In short, his claims prescribed the process of securing chemical stability in a nitro-compound by adding to the compound or incorporating therein, urea as specified. Concerning this patent the District Court said: "Schupphaus suggested the use of urea as a neutralizer, which he had found effective."

Koch was coping with the problem of a stable solution of aluminum acetate or aluminum formate. He suggested as novel, addition to old compounds of various elements including the alcohols and urea or thiourea. He added to the old solution this new element, teaching that this addition created stability of such solutions and that the resulting compound might be evaporated to dryness without decomposition of the aluminum salts. In his claims, therefore, he prescribed adding to well known solutions of alumium salts "urea, thiourea. N-alkyl and aliphatic N-acyl derivatives of these compounds and salts of urea"; the resulting solution, he claimed, would not decompose and could be "evaporated to dryness." The District Court made no finding as to Koch; evidently it considered the reference inapplicable.

Missbach sought to improve cleaning solutions, such as carbon tetrachloride. He said that the compounds then being made tended to become corrosive; that the liberation of acid in them caused decomposition and that he proposed that they be stabilized and decomposition and corrosion neutralized by addition of another element. The additional factor, he said, need only be present as a small fraction of 1% of the total, such a small portion being efficient in stabilizing the solution. He suggested for his purpose various compounds such as the alcohols, polymerized castor oil, and others, including a group of compounds "which can be considered as derived from urea, termed ureides." He said that the addition of such an element to the old solutions neutralized or removed acid and retarded "the production of acid." He did not limit his invention to the use of a single substance but said that he might employ two or more of the suggested additional compounds. He claimed "Carbon tetrachloride containing a stabilizing amount of a ureide" and "carbon tetrachloride containing a stabilizing amount of guanidine." Concerning Missbach the trial court said: "We do not find anything in this patent that teaches that urea will inhibit the corrosive effect while leaving the solution sufficiently acid to be astringent."

But, said the District Court, "Shipp * * * is different." It found that "Urea was used by Shipp not as a neutralizer, but as an inhibitor of corrosive action and said that if addition of urea to a 96% solution of sulphuric acid would retard the corrosive or degrading effect upon cotton fabric, it might well be thought it would inhibit the corrosive action on skin or fabric and the acid residue left on the skin after using the ordinary preparations containing aluminum sulfate or chloride," and continued that "nothing but experimentation to be expected from skilled chemists was required to translate the disclosure of the corrosion inhibition of urea in the Shipp patent into the disclosure of the patent in suit for the...