General Foods Corporation v. Perk Foods Co., 16887.

• Decision Date: 12 January 1970
• Docket Number: No. 16887.,16887.
• Parties: GENERAL FOODS CORPORATION, Plaintiff-Appellee, v. PERK FOODS CO., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

419 F.2d 944 (1969)

GENERAL FOODS CORPORATION, Plaintiff-Appellee, v. PERK FOODS CO., Defendant-Appellant.

No. 16887.

United States Court of Appeals Seventh Circuit.

November 17, 1969.

Rehearing Denied January 12, 1970.

Herman J. Gordon, Chicago, Ill., for appellant.

Arthur G. Connolly, Richard E. Cornwell, Wilmington, Del., Sidney S. Gorham, Chicago, Ill., Michael J. Quillinan, White Plains, N. Y., Connolly, Bove & Lodge, Wilmington, Del., for plaintiff-appellee. Phillip B. Bowman, Miller, Gorham, Westcott & Adams, Chicago, Ill., James M. Mulligan, Jr., Connolly, Bove & Lodge, Wilmington, Del., of counsel.

Before SWYGERT and KERNER, Circuit Judges, and WISE, District Judge.^*

KERNER, Circuit Judge.

General Foods Corporation (General Foods), a Delaware Corporation, filed suit on October 24, 1964, against Perk Foods Co. (Perk), an Illinois corporation, alleging infringement of its patent for a "Novel Farinaceous Animal Food" known as "Gravy Train." Perk counterclaimed alleging invalidity and noninfringement of plaintiff's patent. The district court entered final judgment for the plaintiff-appellee holding its Letter Patent No. 3,119,691 issued to Ludington, et al., valid and infringed by the defendant-appellant. From this decision defendant appeals.

Before 1955, there were two types of prepared dog food sold commercially in the United States: one was the canned dog food variety with a moisture content of 75% and the other was of the "meal" type characterized by small particles with a cereal-like texture, and a moisture content of about 10%. Plaintiff's "Gaines Meal," the largest selling "meal" type product, was composed of small pellets about ¼" in diameter. The dog owner would sometimes add water, table scraps and table gravy to make it more palatable. However, the meal product would become mushy and stick to the feeding plate when moisture was added.

By 1957, Ralston-Purina Company developed a new type of nutritionally balanced dry dog food which was sold nationally under the name "Purina Dog Chow," and was immediately commercially successful. "Gaines Meal's" share of the market dropped substantially upon the introduction of the "Chow" product. It differed from the "Meal" product in that the particles were larger in size and were light, expanded, and porous. "Chow" was made from a mixture which included some farinaceous starch-containing grain material (e. g., ground corn, ground wheat), which were gelatinized and some proteinaceous material (e. g., meat and bone meal, soy bean meal).

General Foods, seeking to overcome its loss of market, instituted an extensive program to develop a competitive product. This effort resulted in production of two products consisting of a porous expanded fat coated dry dog food, one trademarked "Rally" and the other "Gravy Train." Both products were composed of the same ingredients used in "Chow." These newly developed dry dog foods are processed by extrusion. The extruder receives and processes a farinaceous mixture containing farinaceous and proteinaceous materials and permits the addition of water to the mixture, works the material therein by means of a screw, maintains the mixture under pressure, heats and gelatinizes the mixture and expands the gelatinized mixture upon extrusion from the extruder die. "Gravy Train" and "Rally" are similar except that "Gravy Train" is coated with a gravy former which produces gravy when wetted. A test market of "Gravy Train" and "Rally" was initiated in April, 1959, in two metropolitan areas, resulting in "Rally" being shelved, and "Gravy Train" being produced and marketed nationally since the autumn of 1959.

On December 30, 1959, Hovey Burgess, et al. (Burgess) filed an application for a patent for the product "Rally" and on January 20, 1960, inventors Ludington, Schara and Mohlie filed their patent application for "Gravy Train" which was assigned Serial No. 3,516 ('516). The "Gravy Train" application consisted of ten claims all of which were rejected on July 26, 1960. Claims 1-8 and 10 were rejected because of prior art and claim 9 was rejected as being indefinite since there was no antecedent for "said extrudate." However, the inventors responded to the Patent Office letter and amended the '516 application on January 26, 1961. On October 25, 1961, the Patent Office again rejected claims 1-8 and 10 because of prior art, holding claim 9 allowable. No further communications were initiated in the parent '516 file between the inventors or the Patent Office. Application '516 described "Gravy Train" as being unique because the basic kib is different, the expanded kib is fat coated and a gravy former has been added.

On April 23, 1962 (two days prior to the expiration of the six-month period of abandonment for failure to prosecute an application, 37 C.F.R. § 1.136), the inventors filed a second application for patent, which was assigned Serial No. 189,310 ('310), as a continuation-in-part of parent '516 and parent '516 was then abandoned. An amendment to the '310 application was filed May 17, 1962, accompanied by affidavits, requesting the application be made special because of alleged infringing products actually on the market. An amendment to the application was filed by the petitioners August 16, 1962. On September 25, 1962, the Patent Office rejected all claims. On November 5, 1962, the Patent Office received a third amendment, which was disposed of by an examiner rejecting claims 5-9, 12 and 14-17 (previously 1-4), finding claims 10, 11 and 13 free of prior art; and further declaring this action final on December 7, 1962. A fourth amendment was filed in the Patent Office on May 27, 1963. An appeal was taken to the Board of Appeals, dated June 6, 1963. A fifth amendment was filed August 19, 1963. The Patent Office allowed claims 14-17 and 5-11 on September 24, 1963. A sixth amendment was filed October 25, 1963, and patent issued January 28, 1964, Patent No. 3,119,691.

It is well settled that the validity of a patent must be presumed from the granting of the patent and the party asserting invalidity has the burden of establishing such invalidity by clear and convincing evidence. 35 U.S.C. § 282; Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 57 S.Ct. 675, 81 L.Ed. 983 (1937); M. B. Skinner Co. v. Continental Industries, Inc., 346 F.2d 170 (10th Cir. 1965); King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533 (10th Cir. 1965); Copease Manufacturing Co. v. American Photocopy Equipment Co., 298 F.2d 772 (7th Cir. 1961).

We agree with the district court that the patent does not teach or make a "unique" basic kib. The differences between the "Gravy Train" kib and the "Vets Nuggets," "Kasco," and "Dog Chow" kibs are so minor that patentability is not justified. Anyone skilled in the art, as admitted by the General Foods witnesses (Schara, an inventor, and Hudson, an attorney), could determine the technical aspects of various competitive fat and gravy coated dry foods and their manufacturing process, based entirely upon their examination of the products without any direct knowledge of the manufacture of any of them. Both the district court and the Patent Office found that the manufacturing of an expanded fat coated dog food product did not constitute an invention due to the teaching of prior art patents, Mathews (2,120,138), Chapin (2,489,267), Graves (2,853,027), Lanz (2,945-764), and Guidarelli (3,014,800) and we agree.

Since we are in agreement with the district court's findings concerning the unpatentability of the manufacturing process of an expanded fat coated dog food product and the lack of uniqueness of the basic kib, we are left with the consideration of patentability of "gravy formers," and "retarded rehydration." General Foods contends that the addition of the gravy former is novel and that the order in which it is applied to the basic kib is patentable.

The district court found that the addition of a gravy former to the basic kib is not obvious, stating "No one ever made a dry gravy forming animal food before plaintiff." The patent examiner, in his communication of July 26, 1960, to the parent '516 application stated:

Claims 1-8 and 10 are rejected as unpatentable over Luft or Evans which disclose the immersing of farinaceous material in melted fat and the addition of flavoring and other food ingredients to produce a product which upon addition to water will make gravy. No patentable distinction is seen in the recital that the fat is in the form of a coating. It would be obvious to control the temperature to produce a coating rather than impregnation. Note that Evans shows a gelatinized starch."

Thickeners have been known and used in prior art, and have been used in the manufacture of human as well as animal foods. The Guidarelli patent describes fat and gums sprayed on pellets. Gums have been known as thickeners over a long period of time. Parent '516 states "preferred gravy formers may be gums." Emphasis added. CMC is not mentioned as a thickener except when pre-gelatinized starch is employed. Thickeners (gums, CMC) have been known by those knowledgeable in the art to reduce the rate of absorption of water and had been revealed in prior art patents as early as Luft (1,380,815, June 7, 1921), and followed by Mathews (2,120,138, June 7, 1938); Chapin (2,489,267, Nov. 29, 1949); Evans (2,641,547, June 9, 1953); Graves (2,853,027, Sept. 23, 1958); Lanz (2,945,764, July 19, 1960); Guidarelli (2,014,800, Dec. 26, 1961).

The inventors stated that it is necessary to interpose a layer of fat on the kib and thereafter dust the gravy former on the fat-coated kib. The affidavit of Philip J. Wruk, Laboratory Manager of General Foods, who participated in the experimental work of the development of the patented product, stated "that this experimental work demonstrated that the functions of the two major surface components, i. e., the thickening agent or gravy-forming ingredient and the fat, are not impaired...