Johnson Co. v. Philad Co.

• Decision Date: 04 May 1938
• Docket Number: No. 8613.,8613.
• Citation: 96 F.2d 442
• Parties: JOHNSON CO., Inc., v. PHILAD CO. et al.
• Court: U.S. Court of Appeals — Ninth Circuit

96 F.2d 442 (1938)

JOHNSON CO., Inc., v. PHILAD CO. et al.

No. 8613.

Circuit Court of Appeals, Ninth Circuit.

May 4, 1938.

Charles C. Montgomery, of Los Angeles, Cal., for appellant.

Lyon & Lyon and R. E. Caughey, all of Los Angeles, Cal., Morris Kirschstein, of New York City, and T. Paul Titus, of Cleveland, Ohio (Morris Kirschstein, of New York City, on the brief), for appellees.

Before WILBUR, MATHEWS, and HANEY, Circuit Judges.

WILBUR, Circuit Judge.

This is an appeal from an interlocutory decree holding claims 2, 3, 4, 5, and 6 of reissue patent No. 18,841 granted Josef Mayer May 30, 1933, for a hair waving method, valid and infringed. This is the second reissue. The original patent, No. 1,622,957, was granted March 29, 1927. The patent was first reissued August 6, 1929, No. 17,393. Claim 2 was allowed in the original patent, No. 1,622,957. Claims 3, 4, and 5 of patent No. 18,841 were claims 8, 9, and 10 of reissue patent No. 17,393. Claim 6 first appeared in the second reissue.

Appellant's contentions are, briefly, as follows: That the patent is invalid because of failure to disclose essential features of the process; that the method lacks invention and does not disclose novelty in view of the prior art; that claims 3, 4, and 5 are invalid because reissue claims attempting to recover a rejected claim and without proper oath or showing; that claim 6 is invalid because a reissue claim without proper oath or showing, and because of laches and intervening rights; that claim 2 of the patent is not infringed; and that the court erred in holding that the sale or use by appellant of hair waving pads constituted contributory infringement of the patent and in enjoining their sale or use.

Sufficiency of the Disclosures.

The patent in suit discloses a method of applying the Croquignole style of hair waving to human hair on the scalp. Croquignole waving was not new at the time of the Mayer invention, but old in the art of artificial hair waving.

In the older or "spindle" type of permanent hair waving on a human head the hair was bunched together to form a substantially round strand, tied near the scalp and then, starting at a point near the scalp, helically wound around a rod or spindle. In the Croquignole style of hair waving the strands of hair are spread out and then wound upon a curler rod spirally, that is, turn upon turn, from their free ends toward the scalp. The patented method is substantially as follows: The hair growing on a square inch area of the scalp is spread out flat to form a substantially single plane and two clamps are applied near the scalp to the hair as thus arranged. The clamp furthest from the scalp is constructed with a spring at one end and has a locking arrangement at the other end composed of a notched or stepped end fashioned to receive a link. With this clamp, a resilient gripping action is obtained and the hair kept flat and under pressure throughout its full width. After the clamps are placed, the outer end of the strand of hair is placed under a tongue of a curling rod which clamps it to the rod. The rod is rotated so that the hair is wound on the curler. Then the hair on the curler is wrapped in flannel pads moistened with a hair waving solution. It is then covered with waxed paper and parchment and a clamping member is clamped over the rod and outside the parchment which incloses the hair. The clamp is perforated and resilient so that it can be readily sprung into position and will "somewhat grip the roll of hair." Heat is applied with an electric heater which is placed around the clamp. The claimed novelty in the patented method is in the use of the two clamps next to the scalp in the first step of the process. By the use of the second clamp the hair may be wound on the curling rod under tension. The pull is distributed evenly to the scalp without discomfort to the subject. Thus, a practical method of applying a Croquignole permanent wave to the hair on the human head is disclosed by the patent.

The appellant's attack on the sufficiency of the disclosures is directed to the fact that it is not stated in the patent that the hair is to be wound under tension on the curling rod. There is no merit in this contention. The patent was directed to those skilled in the art where the Croquignole wave was not new and where it was well known that strong tension must be applied to the hair while winding in order to produce a permanent wave. The disclosure was sufficient.

The appellant further contends that claims 2, 3, 4, and 5 of the patent fail to show utility in that they do not provide for holding the hair under tension while being heated. This contention is likewise without merit. That the tension of the hair obtained by winding must be retained during the heating of the hair was well known in the art and necessarily implied. It was not the essence of the patented process. The omission would readily be supplied by any one skilled in the art and was disclosed in the specifications by a perforated flexible container which, as stated in the patent, "will somewhat grip the roll of hair." It follows that such omission does not invalidate the claims. Deering v. Winona Harvester Works, 155 U.S. 286, 302, 15 S.Ct. 118, 39 L.Ed. 153; Webster Loom Co. v. Higgins, 105 U.S. 580, 26 L.Ed. 1177; Brammer v. Schroeder, 8 Cir., 106 F. 918, 930. We conclude that the patent and claims sufficiently disclosed the invention.

Invention and Novelty over the Prior Art.

Appellant contends that the patent in suit was anticipated by patent No. 1,400,637 issued December 20, 1921, to W. Szlanyi and patents issued to Z. Popin (patent No. 1,376,358, April 26, 1921, patent No. 1,416,750, May 23, 1922, patent No. 1,447,997, March 13, 1923).

The Szlanyi patent discloses a process whereby hair is wound in spiral form and a Croquignole wave imparted to it. Prior to the winding and heating of the hair, it is placed in a flexible hose shaped receiver made of cloth. The end of the receiver nearest the scalp is fastened to a heat insulating pad or shield which acts to protect the head from the heat. This shield is not a clamping device corresponding to the second clamp in the patent in suit and the process does not disclose the step of holding the hair under tension with a clamp so that in winding it an even pull is imparted to each hair. It is clear that the Szlanyi patent does not anticipate the use of the clamping device in the patent in suit; otherwise the method and result are substantially the same.

The Popin patent, No. 1,447,997, is for a shield adapted to protect the scalp from heat during the hair waving process. The shield is composed of two separate parts, one soft, as of felt, the other hard, as of asbestos. The band of hair to be treated passes through a slot in each, being inserted therein through a diagonal slot which extends from the horizontal slot to the corner of the part. This shield is not designed to tightly grip the hair and the Popin patents do not disclose the patented process in suit.

The evidence shows that the Mayer process solved the problem confronting hair dressers by providing a practical method of applying a permanent Croquignole wave to the human head. As we have said, the essence of the invention was applying clamps to the hair before winding. Although this step was simple, it apparently was not obvious to those skilled in the art of hair dressing and the introduction of the patented method met with immediate and substantial commercial success. Solving such a problem in a practical manner constitutes invention. See Craftint Mfg. Co. v. Baker, 9 Cir., 94 F.2d 369, decided by this court January 10, 1938; General Elec. Co. v. Wabash Appliance Corp., 2 Cir., 93 F.2d 671.

We have not attempted to discuss all the patents cited as anticipating the Mayer patent, but have examined them and find no merit in the claim of anticipation. We conclude that the patent in suit shows invention and is not anticipated by the prior art. As to claims 4 and 5 of the second reissued patent (9 and 10 of the first reissue patent) this same conclusion was reached by the Circuit Court of Appeals for the Sixth Circuit in the Naivette, Inc., v. Bishinger, Herold Bros. Co. v. Philad Co., 61 F.2d 433.

Validity of Reissue Claims 3, 4, 5, and 6.

Appellant contends that claims 3, 4, and 5 are invalid because reissue claims attempting to recover claim 1 of the original patent (1,622,957) which was rejected by the Patent Office.

This question was considered by Judge Byers in Philad Co. v. Rader, D.C., 15 F.Supp. 509. He there pointed out the fact that the claims in the reissued patent were narrower than claim 1 which was rejected upon the first application for the patent. He pointed out that the new claims all were confined to the use of the process in waving hair upon the human head; that the clamps described were restricted to those which gripped and that the nature of the covering applied to the roll during heating was specifically described in the new claims, while in the rejected claim it was referred to generally as "applying covering members to the roll of hair." These claims (3, 4, and 5) of the reissued patent were clearly narrower than the rejected claim 1.¹

The patentee was not estopped from making these narrower claims, particularly because the claim 1 was rejected upon the patent to Szlanyi, No. 1,400,637, which did not show a method of gripping the hair next the scalp, but did show a pad next the scalp containing a slot through which the strand of hair passed. See John W. Gottschalk Mfg. Co. v. Springfield Wire & T. Co., 1 Cir., 74 F.2d 583.

However, in view of the prior art patents to Popin, No. 1,447,997, and to Szlanyi, No. 1,400,637, the word "clamp" used in defining the first step of the process described in claim 4 should be construed to cover only a clamp having a gripping action.

Appellant contends in its brief that claim 6² is void "as a new claim without proper showing or...