277 U.S. 245 (1928), 285, Holland Furniture Company v. Perkins Glue Company

Docket Nº:No. 285
Citation:277 U.S. 245, 48 S.Ct. 474, 72 L.Ed. 868
Party Name:Holland Furniture Company v. Perkins Glue Company
Case Date:May 14, 1928
Court:United States Supreme Court
 
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277 U.S. 245 (1928)

48 S.Ct. 474, 72 L.Ed. 868

Holland Furniture Company

v.

Perkins Glue Company

No. 285

United States Supreme Court

May 14, 1928

Argued March 14, 15, 1928

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE SIXTH CIRCUIT

Syllabus

1. The narrowing by disclaimer of the process claims of a patent does not necessarily narrow the product claims. P. 254.

2. A patentable process is a method of treatment of certain materials to produce a particular result or product. The description of the process does not necessarily embrace the product. Either or both may be patentable. P. 255.

3. If the choice or designation of an essential ingredient of a composition of matter may be called a process, the process is one inseparable from the composition itself; the description of one necessarily limits the other, and the patent of the product cannot extend beyond a product having the designated ingredient. Id.

4. A patent for a composition of matter should contain some description of the ingredients entering into the composition which will both define the invention and carry it beyond the previous development of the art. P. 254.

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5. A patentee of a composition of matter, the product of a process, cannot, by claiming the use or function of the product, extend his monopoly over like products made with ingredients not described in his patent. P. 257.

6. Respondent's patent (Perkins reissue, No. 13436, limited by disclaimers) includes claims, not here in dispute, for a process of making starch glue by treating with caustic alkali and water any starch in which the capacity to absorb water is limited by nature or by artificial "degeneration" to a degree specified in the patent, resulting in a glue as good as animal glue for wood veneering and similar uses. It also includes product claims of which three (Nos. 28, 30, and 31), forming the only subject matter of adjudication in the case, are construed a claiming, in substance, any starch glue which, combined with about three parts or less by weight of water, will have substantially the same properties as animal glue. The characteristic quality of animal glue is that, when combined with three parts or less by weight of water, it is suitable for use in wood veneering. Held that the claims are void, as they do not describe the starch ingredient in terms of its own physical or chemical properties or those of the product, but wholly in terms of the use or function of the product. P. 256.

18 F.2d 387 reversed.

Certiorari, 275 U.S. 512, to a decree of the circuit court of appeals, reversing the district court and holding the present petitioner liable as an infringer of certain claims of the respondent's patent.

STONE, J., lead opinion

MR. JUSTICE STONE delivered the opinion of the Court.

Respondent brought this suit in the District Court for Western Michigan to enjoin infringement of the Perkins reissued patent, No. 13,436. So much of the judgment for the defendant, petitioner here, as held the product claims of the patent not infringed by respondent's product, was reversed by the Court of Appeals for the Sixth Circuit.

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Perkins Glue Co. v. Holland Furniture Co., 18 F.2d 387. The Court of Appeals for the Seventh Circuit, Perkins Glue Co. v. Gould Manufacturing Co., 292 F. 596, and the Court of Appeals for the Second Circuit, Perkins Glue Co. v. Standard Furniture Co., 287 F. 109, had previously held the patent not infringed by the same product. * This Court granted certiorari. 275 U.S. 512.

The patent is entitled "A Patent for Starch Glue and a Method of Making It." Perkins was the first to make successfully a starch glue suitable for wood veneering and similar uses. Glue made from animal substances, known as animal glue, has long been in common use as an adhesive, and is especially adapted to use in wood veneering, in which thin sheets or layers of wood are fastened together by the use of an adhesive bonding material. The characteristic qualities of animal glue making it peculiarly suitable for that use are a low absorptiveness of water and a consequent high degree of fluidity, facilitating its application by mechanical means, high elasticity, and great tensile strength. A high water content, characteristic of other adhesive preparations, delays [48 S.Ct. 476] drying, warps the wood, and, when dry, leaves too little bonding material to secure the requisite strength. In practice, animal glue is made suitably fluid for use in wood veneering by the addition of a critically small amount of water, three parts by weight to one of glue.

Long before Perkins' experiments, adhesive paste or mucilage made from starch was well known. The Gerard patent (1874, Belgian, No. 34,869) and the Dornemann

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patent (1893, French, No. 232,781) described a process of producing an adhesive or glue by dissolving starch in a solution of caustic alkali. The suitability of starch as a glue base in this and other processes depends upon its water absorptive quality, which varies with the starch of different plants, and under varying conditions with the starch of the same plant. Because of their high water absorption, glues produced from starch, before Perkins, were too viscous, and hence required too large an admixture of water for use successfully as a wood-veneering glue. The controlling difficulty to be overcome in the development of a starch glue suitable for veneering was what may be called the normally large water absorptive quality of starch, corresponding to the viscosity of the resultant glue, a reduction of the one effecting a reduction in the other.

It has long been known that the viscosity or the water absorptive quality of starches may be reduced by chemical treatment known as degeneration, in which changes in the arrangement of the atoms in the starch molecules are effected by use of a catalytic agent. In 1906, Gerson & Sachse (German, No. 167275) patented a process for the preparation of a starch base for glue manufacture by degenerating starch by the use of oxidizing agents in the presence of an alkali. But the resultant glue from this and other processes was not suitable for use in the woodworking trades. To make it sufficiently fluid for convenient use required too large an admixture of water, four parts or more to one of glue, so that the wood was warped, and, when dried, the glue was not sufficiently tenacious to be used successfully as a substitute in that manufacture for animal glue.

The Perkins patent described a process for making glue from starch and a resultant product "as good as animal glue," "which will have the great practical advantage that it may be practically used for the same purposes as the best animal glue." The process consisted of two steps.

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The basic material was a suitable raw starch, preferably starch made from the cassava root, and the first step was concerned with its conversion or degeneration so as to make a "glue base" with lower water absorptivity than ordinary untreated starch. This was to be accomplished by combining the basic raw material with oxidizing agents and subjecting them to heat. The method was that described in the Gerson & Sachse patent, and was not new. The characteristic feature of this first step, as described by Perkins, was not the manner of degeneration, but its degree. The degeneration of the raw cassava starch was to be carried to a point just short of its conversion into dextrine, a soluble starch, which, because of that property, is of little value in glue manufacture. The patent, in its reissued form, stated with precision the particular degree to which the water absorptive properties of the starch might be reduced in the preparation of a suitable glue base, and described with particularity tests (the "9 to 1 boil up" test and the 170 test) for ascertaining when that stage of degeneration had been reached.

The second step in the process consisted in the treatment of the glue base, as prepared by the first step, by the addition of three parts or less of water by weight to one of the glue base and a specified percentage of cellulose solvent such as caustic potash. This process was described by the Gerard and Dornemann patents, and was not new. The fundamental ideas of the process patent might be expressed in simple terms as follows: glue made by dissolving ordinary starch in an alkaline solution of three parts of water (the quantity with which the woodworking industry is accustomed) is too thick. Glue made from overdegenerated starch is too weak. Between the extremes there is a range of degeneration within which the starch base, when dissolved in

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caustic potash, will produce glue of ample fluidity without loss of tensile strength or other qualities characteristic of animal glue.

The product claims, of which more will be said presently, was for the resultant glue, in substance for a starch glue having substantially the properties of animal glue.

The patent has thirty-eight claims, divisible into groups. One group covers the process of producing the degenerated starch glue base -- the first step process, already described. One group embraces the glue base product produced by the first step process. Another group includes the process of dissolving the starch base by the use of alkaline solvents, the second process step; another, the combination of the two process steps; and, finally, the group with which we are now concerned is based upon the ultimate product, the glue itself. Three of the claims embraced in this ultimate product group are the only ones now in suit, 28, 30 and 31. They...

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