Donner v. Sheer Pharmacal Corporation

• Decision Date: 29 April 1933
• Docket Number: No. 9613.,9613.
• Citation: 64 F.2d 217
• Parties: DONNER v. SHEER PHARMACAL CORPORATION.
• Court: U.S. Court of Appeals — Eighth Circuit

64 F.2d 217 (1933)

DONNER v. SHEER PHARMACAL CORPORATION.

No. 9613.

Circuit Court of Appeals, Eighth Circuit.

March 20, 1933.

Rehearing Denied April 29, 1933.

Thomas H. Sheridan, of Chicago, Ill. (Lynn A. Williams, of Chicago, Ill., Taylor, Chasnoff & Willson, of St. Louis, Mo., and Williams, Bradbury, McCaleb & Hinkle, of Chicago, Ill., on the brief), for appellant.

Richard A. Jones, of St. Louis, Mo. (Edward J. Brennan, of St. Louis, Mo., on the brief), for appellee.

Before KENYON, GARDNER, and SANBORN, Circuit Judges.

SANBORN, Circuit Judge.

The parties will be referred to as in the court below; the appellant as plaintiff, and the appellee as defendant. The suit is for infringement of letters patent No. 1,379,855, granted to the plaintiff May 31, 1921, upon an application filed March 3, 1921, for a cream depilatory. The defenses are lack of invention, vagueness of description, and non-infringement. From the decree dismissing his complaint, the plaintiff appeals.

This patent was sustained by Judge Lindley in the case of Donner v. Walgreen Co. and Neet, Inc. (D. C. N. D. Ill.) 44 F.(2d) 637. It appears that after that decision Neet, Inc., which had made and sold the cream depilatory known as "Neet," which was held to infringe the patent, took a license from Donner. The defendant in 1931 began to make and sell a cream depilatory in accordance with a process which it learned from a former employee of Neet, Inc., who had been in charge of the manufacture of "Neet." The defendant's product, of which the plaintiff complains, is called "Sheer," and is the same thing as "Neet."

In order to reach a conclusion as to the proper disposition of this case, it is necessary to determine: (1) What Donner's alleged invention is; (2) the state of the prior art; (3) whether the alleged invention is sufficiently described in the patent; (4) whether the advance in the art made by Donner was the result of invention or mere mechanical skill; and (5) whether the defendant is an infringer.

The Donner Invention.

The claimed invention relates to a depilatory for removing human hair. Its object is stated in the specifications to be the preparation of a depilatory in the form of a cream or paste by the incorporation of a depilating agent in an air-restraining base in such manner that the finished depilatory or depilating cream or paste is permanent and stable and may be applied directly to the skin for the removal of hair with facility and safety. Donner points out that existing depilatories are in the form of powders, liquids, or lotions, and that their application is attended with inconvenience and waste. The powder depilatories must be mixed with water, are messy, and the material is likely to be wasted. Liquid depilatories are difficult to confine to a small area to be treated. Lotion depilatories, which are essentially imperfect suspensions of alkali and alkaline earth, sulfids, polysulfids, and sulfhydrates in water, are subject to the same objection. Donner states in his specifications: "My invention consists of a depilatory, the physical state of which is a plastic mass of tooth paste or cold cream like consistency, and thus overcomes all difficulties of application attendant upon the use of those mentioned above. It is permanent, complete, and handleable; it can be taken from the jar or tube in quantities as desired, and can be applied over an area such as is occupied by one or two hairs on a mole, or upon a surface as extensive as the entire face. Likewise it can be applied to surfaces such as the armpits, with grace and convenience. Furthermore, once placed in position upon the area to be depilated, the cream remains without danger of running or spreading until the hair is disintegrated." He further states that he has found that the sulfid depilatories in common use have consisted of sulfids, polysulfids, and sulfhydrates of alkali, alkaline earth, and earth metals in solution or suspension in water alone or in admixture with one another in various proportions and strengths; that in all of these the dissolved sulfhydrates constitute the active depilating agent; that those which are undissolved have little or no depilating power; and that, when the depilating solutions are exposed to air, chemical changes take place which impair or destroy the usefulness and safety of the depilatory. He also says: "In my invention I have overcome these difficulties by taking advantage of the air-restraining properties of colloids and colloid-like bodies, which are capable, when mixed with the depilating agent and any suitable vehicle, of producing a pasty or cream-like mass, in while the molecules of the depilating agent are permanently suspended, and which renders them proof against the substantial entrance of and interaction with air; thus guaranteeing their stability, and the permanence of the preparation. The colloids used, besides having the properties of adhesiveness and air-exclusion, are such that do not decompose the depilating sulfid or sulfhydrate solution." He states that he has found that the objectionable odors of hydrogen sulfid which have attended the sulfid depilatories can be avoided by securing pure solution and by thus eliminating the presence of free hydrogen sulfid.

After thus disclosing the objects of his invention in his specifications and the invention itself in general terms, he states:

"As an instance of manufacture I place a quantity of quicklime (CaO) in a large vessel, and slake it by pouring upon it approximately 4 times its weight of water. The interaction of the water and lime result in the formation of a mass of calcium hydroxid (Ca(OH)2), thus: CaO + H2O = Ca(OH)2. To this calcium hydroxid mass I add sufficient water to bring it to the consistence of a thin magma; that is, about 10 parts of water to 1 of lime are used. This is strained through gauze or a wire sieve to remove extraneous or gritty matter, and then distributed in suitable vessels, preferably glass, preparatory to charging with hydrogen sulfid. I then pass a current of hydrogen sulfid gas through this slaked lime cream until the whole assumes an even pale blue color, after which the current of hydrogen sulfid is removed. This pale blue magma, consisting of calcium sulfid (CaS), calcium hydroxid (Ca(OH)2), and a solution of calcium sulfhydrate (Ca(SH)2) and calcium hydroxy-sulfhydrate (Ca(SH) OH) constitutes the depilating mixture, of which the calcium sulfhydrate solution is the principal depilating agent. When made in this manner the calcium sulfhydrate solution is generally saturated; that is, it contains approximately 7% of calcium sulfhydrate.

"In the process as above outlined the presence of an excess of hydrogen sulfid is carefully avoided. However, should the process of sulfuretization be carried too far and the product have a marked hydrogen sulfid odor, the excessive uncombined hydrogen sulfid may be removed by subjecting the sulfuret to the action of a low grade vacuum, or by the addition of a suitable excess of milk of lime (Ca(OH)2), as above stated.

"To any desired quantity of this depilating magma light calcined magnesia (MgO) is added in sufficient quantity to make a pasty mass of about the consistence of a cold cream or tooth paste. If the magnesium oxid is substantially pure approximately 1 part of it to 5 parts by weight of the depilating magma is required to bring the mixture to this consistence. A small quantity of oil of rose-geranium is added to impart an odor to the mixture, (usually 1 cc. to 500 grams of the paste), and the whole is admixed until an even, homogenous paste is secured.

"The product is a smooth, velvety cream, of the density and consistence of a toothpaste, and is of a pale blue color. It is substantially free from sulfid odor, and is possessed, instead, of the fragrant odor of oil of rose-geranium, and is essentially soluble in and miscible with water in all proportions. It is permanent and stable in commercial containers (jars and collapsible tubes) at ordinary temperatures, and is of sufficient strength to effect the removal of hair from within 3 to 10 minutes from the time of its application, without irritation or injury to the skin.

"While I have thus described a preferred embodiment of my invention I do not wish to limit myself to the exact materials or proportions outlined in the preceding. A variety of materials of like or similar properties may be used in lieu of those described herein, without departing from the scope of my invention or the spirit of the appended claims."

He then states that other inert powdered substances which are nonreactive with the depilating solution may be used with the colloidal adhesive to increase the density of the product. He also points out that other colloids or colloid-like substances may be used in lieu of the light magnesium oxid to effect the adhesion of the component parts of the mixture and to protect it against air deterioration.

The patent contains seventeen claims. Those upon which the plaintiff relies are 1, 2, 3, 6, 7, 13, 14, 16, and 17. Claims 2, 3, and 7 are sufficient for the purpose of this opinion. They read as follows:

"2. A composition of matter comprising a depilatory mixture and a vehicle carrying the same, in the form of a finished, stable, depilatory cream."

"3. A composition of matter for the purpose specified, comprising a depilating agent incorporated in an air-restraining base."

"7. A composition of matter comprising a depilatory mixture and a colloid carrying the same, in the form of a finished, stable depilatory paste."

It seems reasonably plain that what Donner did was to show how a common liquid depilatory could be converted into a stable cream depilatory. Depilatories were old, but stable cream depilatories were new with Donner. By combining the old method of creating a depilating liquid or lotion with a colloid or colloid-like substance, Donner produced a process of incorporating the depilating liquid into a...