American Patents Development Corp. v. Carbice Corporation

• Decision Date: 03 February 1930
• Docket Number: No. 27.,27.
• Citation: 38 F.2d 62
• Parties: AMERICAN PATENTS DEVELOPMENT CORPORATION et al. v. CARBICE CORPORATION OF AMERICA.
• Court: U.S. Court of Appeals — Second Circuit

38 F.2d 62 (1930)

AMERICAN PATENTS DEVELOPMENT CORPORATION et al. v. CARBICE CORPORATION OF AMERICA.^*

No. 27.

Circuit Court of Appeals, Second Circuit.

February 3, 1930.

Charles Neave, of New York City (George C. Dean and Clarence D. Kerr, both of New York City, of counsel), for appellants.

Darby & Darby, of New York City (Samuel E. Darby, Jr., of New York City, of counsel), for appellee.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

SWAN, Circuit Judge (after stating the facts as above).

The patent in suit relates to the refrigeration of perishable products of a sort not to be damaged by excessive freezing, such, for instance, as ice cream, by packing them around a block of solidified carbon dioxide, and inclosing the whole mass in a box or shipping case. Carbon dioxide (CO2) may exist as a gas, a liquid, or a solid, depending upon the conditions of temperature and pressure to which it is subjected. As a solid it has an excessively low temperature — approximately minus 140 degrees Fahrenheit. When solid carbon dioxide absorbs heat, it sublimes; that is, it evaporates as a gas without passing through the liquid state. This gas is itself very cold, having a temperature of minus 110 degrees. The rate of evaporation is slow, and one volume of the commercial solid carbon dioxide will evolve approximately 500 volumes of gas. These facts were known long before the patentee, Slate, entered the field. Prior patents show machines and processes for producing solid carbon dioxide and molding it into bricks or blocks. They suggest its use as a refrigerant and as a substitute for water ice, but none of them suggests the arrangement of refrigerant and things to be refrigerated which the patentee insists upon.

The prior art had taught that a refrigerant should be so placed as to be more accessible to heat than the products to be refrigerated. In the ordinary ice box, the water ice is placed in a compartment at the top, and the interior of the box is cooled by the circulation of convection currents of air. The accepted practice in shipping ice cream was to pack ice and salt in a container, with the can of ice cream in the center, cooling being effected by conduction. Slate reversed this process. He put the refrigerant in the center of the package, surrounding it with the ice cream or other substance to be refrigerated, and inclosing all in a packing box or insulating wrapping. Thus the foodstuff itself is made to help to insulate the solid carbon dioxide against outside heat. Further insulation is supplied by the constantly evolving gas, which is a poor conductor of heat. The gas, being heavier than air, displaces the air, until all the interstices within the packing box are permeated by the cold gas, which acts also as a refrigerant of those portions of the foodstuff remote from the solid carbon dioxide. The outside container or shipping case may be of any insulating material; in practice a box of wood, or of cardboard or corrugated paper, which may be thrown away, is used. The cake of solid carbon dioxide placed in the center of the package may also be inclosed in a box, or, as appears to be the practice, it may merely be wrapped in paper.

The refrigerant value of solid carbon dioxide is about twice that of water ice; that is, one pound of the former will absorb during evaporation twice as many heat units as will one pound of the latter while melting. But by utilizing the peculiar and well-known properties of solid carbon dioxide, by means of the above-described arrangement of the package, the patentee has made its refrigerating efficiency approximately 15 to 20 times that of a like weight of water ice. The cost of "dry ice" is about 10 times that of water ice; but its high refrigerating efficiency, its capacity to "melt" without becoming a liquid, and the saving in weight, and hence in freight, give transportation packages made up with dry ice advantages which more than offset its greater cost. Packages made up in accordance with the teaching of the patent have been used to an impressive extent. The Dry Ice Corporation began selling solid carbon dioxide commercially in March, 1925. In that year it sold 366,000 pounds. Up to the end of 1927, it had sold nearly 5,000,000 pounds, of which approximately 90 per cent. has been used in transportation packages by the ice cream trade. Prior to the time when plaintiffs began to market solid carbon dioxide, this substance was not manufactured in quantities of any commercial importance. Counsel assert, and we think justly, that plaintiffs have created a new industry.

Slate's original application was filed January 10, 1924. A divisional application, covering one of the specific applications of the invention claimed in the parent application, was filed September 27, 1924. This resulted in the issuance of the patent in suit on August 10, 1926. It is not a patent for a process. Process claims, originally included in the divisional application, were rejected, and the rejection was acquiesced in. As issued, the patent is only for a "refrigerating apparatus," consisting of a combination of elements, all old, but combined, it is urged, in a novel arrangement to produce new and useful results in the art of refrigeration. Claims 2, 3, 4, and 6 are relied upon on this appeal. It will suffice to recite claim 3 as illustrative:

"A transportation package consisting of a vented protective casing of insulating material enclosing a quantity of frozen carbon dioxide sufficient to afford refrigeration for the desired period and a quantity of freezable product in freezing proximity to said carbon dioxide and the gas evaporated therefrom and arranged so that said frozen carbon dioxide is less accessible for exterior heat than said freezable products."

We are satisfied that Slate discovered how to make up a package consisting of freezable foodstuffs, solid carbon dioxide, and their enveloping container, in an arrangement not previously known, and producing the new and useful result of making practicable the shipment of such foodstuffs to greater distances than was previously possible. That this discovery would be patentable as a process we cannot seriously doubt. See Yablick v. Protecto Safety Appliance Corp., 21 F. (2d) 885, 887 (C. C. A. 3): "The patentees translated a more or less isolated and hitherto comparatively unimportant fact of chemistry into a useful industry."

It is argued that the process is merely the operation of the peculiar properties of solid carbon dioxide, and that laws of nature may not be patented. Morton v. New York Eye Infirmary (C. C. S. D. N. Y.) 5 Blatchf. 116, Fed. Cas. No. 9865; O'Reilly v. Morse, 15 How. 81, 115, 14 L. Ed. 601. Nevertheless, a method of utilizing by specified physical means the operations of a law of nature is patentable, and this is what Slate taught. He did not, however, claim it as a process; he claimed only the "package" product of his process. So the patent, if sustainable, must fall within the statutory phrase "machine, manufacture or composition of matter." Rev. St. § 4886 (35 USCA § 31). The defendant denies that it is either.

"Manufacture" seems the most apposite. The courts have given it a comprehensive definition. In Johnson v. Johnston, 60 F. 618, 620 (C. C. W. D. Pa.), Acheson, J., said: "The term `manufacture,' as used in the patent law, has a very comprehensive sense, embracing whatever is made by the art or industry of man, not being a machine, a composition of matter, or a design."

This has frequently been cited with approval, and many courts have sustained patents for constructions which are not ordinarily thought of as a "manufacture." See Riter-Conley Mfg. Co. v. Aiken, 203 F. 699, 703 (C. C. A. 3); Cincinnati Traction Co. v. Pope, 210 F. 443, 446 (C. C. A. 6); International Mausoleum Co. v. Sievert, 213 F. 225, 228 (C. C. A. 6); In re Hadden, 57 App. D. C. 259, 20 F.(2d) 275; American Fruit Growers v. Brogdex Co., 35 F.(2d) 106 (C. C. A. 3). In the case last cited the court sustained a product claim, consisting of a combination of fresh citrus fruit and a small quantity of borax carried by the rind in an amount sufficient to render the fruit resistant to blue mold decay. Of this the court said (page 108, 35 F.(2d): "The complete article is not found in nature and is thus an article of manufacture."

In thinking of an article of manufacture, one naturally thinks of a permanent contrivance, which does not operate upon a subject that is part of itself. The mind unconsciously resists the incorporation of that subject into the "manufacture" itself. Here we have something, the foodstuffs, which it is the object of the package to refrigerate and deliver, and which at the same time is one of the elements making up the package, the article of manufacture. But we see no reason why a substance may not play this dual rôle, without invalidating the patented combination. Paraphrasing the language of Mr. Justice McKenna in Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U. S. 325, 335, 29 S. Ct. 503, 53 L. Ed. 816, we may say that, if the operative relation of the foodstuffs to the package were merely that of the log to the saw in the mill, wheat to the rollers which grind it, or pins to the machine which produces them — in other words, in no more operative relation than a machine and its product are — the invalidity of the combination would be scarcely questionable. But here the foodstuffs are really a constituent element of the combination package; their arrangement causes them to help insulate the refrigerant from outside heat, thereby retarding its evaporation. They themselves operate upon another element of the combination, and are not merely a subject operated upon by the article of manufacture. Nor do we see any reason for refusing to say that the package is a "manufacture," because it is intended to have only a temporary life. While it lasts, surely it is a combination of physical elements never put...