Mandel Bros v. Wallace
| Decision Date | 08 November 1948 |
| Docket Number | No. 16,16 |
| Citation | 93 L.Ed. 12,335 U.S. 291,69 S.Ct. 73 |
| Parties | MANDEL BROS., Inc. v. WALLACE |
| Court | U.S. Supreme Court |
Mr. Leonard S. Lyon, of Los Angeles, Cal., for petitioner.
Mr. Charles J. Merriam, of Chicago, Ill., for respondent.
The respondent, owner of Wallace and Hand patent No. 2,236,387, filed a complaint against this petitioner for infringement of claims 1 to 6, 8 to 13, 15 and 16. The District Court held the claims invalid for want of patentable invention and dismissed the complaint. 67 F.Supp. 814. The United States Court of Appeals for the Seventh Circuit held the claims valid and reversed. 164 F.2d 861. The United States Court of Appeals for the Second Circuit had previously affirmed a district court's invalidation of the same patent. Wallace v. F. W. Woolworth Co., D.C., 45 F.Supp. 465; Id., 2 Cir., 133 F.2d 763. To resolve the conflict we granted certiorari.
The patent is for an 'improved' cosmetic preparation to retard or inhibit perspiration. Prior to application for the patent (1938), many antiperspirants were on the market containing acid salts of a metal, usually aluminum chloride or aluminum sulfate. The acidity produced by these acid-reacting salts is an astringent which retards perspiration. But, as stated in the patent specifications, the acid sometimes irritates the skin and also rots clothing to which the acid may adhere, particularly when that clothing is heated by ironing. Thus in the old antiperspirants the astringent qualities of the acid were desirable because essential to their effectiveness in retarding perspiration; on the other hand, the skin irritating and cloth corroding qualities of the acid were obviously undesirable. This was the problem as posed by the patent application.
The patent specifications asserted and the District Court found that though standard alkalies would neutralize and thus reduce acidity and consequent skin irritation and cloth corrosion, these alkalies would by neutralizing acidity also reduce the astringency essential to check perspiration. The claimed discovery of the patent is in adding to the old acid-salts cosmetics certain types of the reactive amino chemical group, particularly urea. This addition, the patentees asserted, results in an im- proved compound which checks perspiration but neither irritates the skin nor corrodes the clothing.
The District Court found that the addition of urea to the older preparations greatly reduced whatever likelihood there had been that application of the preparation would irritate skin1 or corrode garments. It found that the patentees were the first persons to use urea as a corrosion inhibiting agent in an antiperspirant. But the District Court also found that prior to the patentees' alleged discovery the use of urea as an anticorrosive agent was already a matter of public knowledge, and that it had previously been used as a corrosion inhibitor in compounds other than antiperspirants. As a consequence of these findings, the District Court held the patent invalid. The District Court and the United States Court of Appeals in the case of Wallace v. F. W. Woolworth Co., supra, had held the patent invalid for the same reason.
Long prior to this patent, it was generally recognized in the chemical field that urea would react with acids, bases, and salts to produce new substances. Urea had been in general use wherever these results were desirable for chemical stabilizations. And respondent concedes that before application was made for this patent it was commonly known, at least by chemists, that urea would react with acids in a manner which would reduce their corrosiveness. These facts are made clear by this record, by the opinions of the four courts that considered this patent, and by their discussions of the prior patents relied on by the respondent here.
Prior patents (Schu pphaus, No. 514,838, and Koch No. 2,011,292) had suggested use of urea as a stabilizer against decomposition of chemical combinations into deleterious acidic substances. It may be assumed that these patents standing alone would not have taught these patentees to experiment with urea to solve their cosmetic problem. They do, however, show the state of the prior art and point to the possibility of using urea to inhibit unwanted decomposition of substances containing acid or acid salts. Indeed, Koch dealt with the addition of urea to aluminum salts. And Missbach, in No. 2,069,711, proposed to protect clothes from the deleterious effects of dry cleaning fluids by the use of urea to prevent injury due to acidic substances brought about by acidic reactions of carbon tetrachloride. He claimed his invention provided 'an effective corrosion inhibitor.'
Shipp patent No. 2,174,534 pointed out that 'certain uses of sulfuric acids on textiles...
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