Shelco, Inc. v. Dow Chemical Company
| Decision Date | 10 October 1972 |
| Docket Number | No. 71-1061,71-1062.,71-1061 |
| Citation | 466 F.2d 613 |
| Parties | SHELCO, INC., and The Shelco Company, Plaintiffs-Appellants, v. The DOW CHEMICAL COMPANY and Harry G. Schierholz & Co., Defendants-Appellees. SHELCO, INC., and The Shelco Company, Plaintiffs-Appellants, v. BOYLE-MIDWAY, INC. and American Home Products Corporation, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Seventh Circuit |
W. Philip Churchill, Ronald F. Ball, New York City, Edwin M. Luedeka, Robert B. Jones, Fitch, Even, Tabin & Luedeka, Chicago, Ill., for plaintiffs-appellants; Fish & Neave, New York City, of counsel.
Dimitri D. Allegretti, George P. McAndrews, Timothy J. Malloy, Molinare, Allegretti, Newitt & Witcoff, Charles J. Merriam, Edward M. O'Toole, Carl Kustin, Merriam, Marshall, Shapiro & Klose, Chicago, Ill., for defendants-appellees; Carl E. Moore, Chicago, Ill., William Yates, M. B. Lilly, Richard Waterman, The Dow Chemical Co., Midland, Mich., of counsel.
Before SWYGERT, Chief Judge, and KILEY and FAIRCHILD, Circuit Judges.
Certiorari Denied October 10, 1972. See 93 S.Ct. 125.
This is an appeal from a final judgment in a patent infringement action which held that the patent in suit, United States Patent No. 3,335,092, was invalid and which also awarded attorneys' fees and costs to the defendants. The only issues raised are whether the district court committed reversible errors in holding the patent invalid and in awarding attorneys' fees to defendants. We affirm the district court in both respects.
The patent at issue relates to the purported invention by Kenneth E. Perry of a chemical composition and a method for its use for the cleaning of baked-on soil from ovens. Although the patent contains thirty-two claims, Shelco, Inc., the plaintiff and assignee of the patent, asserts only the validity of Claims 5, 19, 31 and 32 on this appeal. Reduced to its essential elements, the invention claimed in Claim 19 amounts to an oven cleaning product that is an aqueous solution at least 50 per cent water by weight containing 3 per cent sodium hydroxide by weight as well as an unspecified quantity of any compatible surfactant and an unspecified quantity of either a glycol or glycerol humectant, which solution is to be applied from an aerosol container to a hot oven or grill. Claim 32 is the same except that it specifies propylene glycol in an unspecified amount as the humectant to be included in the product. Claim 5 claims the invention of a method of use of the product described in Claim 19 in which the product is to be aerosol-sprayed upon an oven or grill which is "at an unspecified elevated temperature," leaving the product on the hot oven for an unspecified time interval and then removing it. Claim 31 describes the same method for using the product set out in Claim 32.
The district court held that Claims 1 through 6, 14, 16 through 19, 26 and 28 through 32 of the patent were invalid on grounds of anticipation (35 U.S.C. § 102), obviousness (35 U.S.C. § 103) and indefiniteness (35 U.S.C. § 112). It further held that the patent was void in its entirety under 35 U.S.C. §§ 184 and 185 (). Since Shelco, Inc. does not challenge the propriety of the district court's determination of invalidity as to any claims other than numbers 5, 19, 31 and 32, we limit our discussion to those enumerated claims.
It is settled that, as a general rule, a purported invention is not anticipated "unless all of the same elements are found in exactly the same situation and united in the same way to perform an identical function" in a previously known product. Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 436 F.2d 1180, 1182-1183 (7th Cir. 1971); Amphenol Corp. v. General Time Corp., 397 F.2d 431, 438 (7th Cir. 1968). However, when the only features distinguishing the purported invention from a prior art product are insubstantial, the earlier may properly be said to anticipate the later product. As we said in Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 1234 (7th Cir. 1969), "It is sufficient for anticipation `if the general aspects are the same and the difference in minor matters is only such as would suggest itself to one of ordinary skill in the art.'"
The record here reveals the existence of three prior art products which, we believe, justify the district court's finding that Perry's purported invention was anticipated. The first such product which anticipated Perry was an oven cleaner made and sold by Capitol Packing Co. of Melrose Park, Illinois to Bissell, Inc. of Grand Rapids, Michigan. The unpatented oven cleaner bought and distributed by Bissell was first sold in November 1962, some eleven months prior to Perry's December 4, 1963 application. The formula pursuant to which the Bissell product was made from its beginning was expressed as follows (in percentages of its weight):
Sodium orthosilicate ............. 7%
Sole-terge 325 ................... 7%
TS-2S ............................ 2%
Safrol ........................... 0.075%
Water ............................ 83.925%
The evidence before the trial court established that sodium orthosilicate is a physical mixture of sodium hydroxide and sodium metasilicate in a proportion of 40-60 respectively by weight so as to generate a concentration of 2.8 per cent free sodium hydroxide by weight in the foregoing formula. It was also established that the remaining ingredients of the Bissell product included compatible surfactants and a glycol humectant. According to the instructions for its use, Bissell was sprayed from an aerosol can upon a cold oven. However, the district court specifically found that Bissell was suitable for use on a hot oven.
We agree that Bissell anticipates Perry. The only differences between Bissell and the Claims 5 and 19 product and method are a miniscule difference in the amount of free sodium hydroxide (2.8 per cent in Bissell and 3 per cent in Perry) and the recommended application to a cold oven in Bissell and to a heated oven of unspecified temperature in Perry. Those differences were inconsequential, and Bissell anticipated Perry's broader Claims 5 and 19. The use of propylene glycol as specified in Claims 31 and 32 as the humectant is an inconsequential difference which does not survive the anticipatory aspects of Bissell.
Perry's purported invention is also anticipated by an unpatented oven cleaner made and sold by Beam Chemical Company from 1957 to the present. Beam was sold with a glass or plastic spray bottle and with instructions to apply it to a warm oven. The formula used by Beam on April 8, 1960 and for some time before and after that date produced a solution containing more than 50 per cent water by weight, about 2.8 per cent sodium hydroxide by weight, compatible surfactants and a glycol or glycerol humectant which, occasionally during the period 1957 through 1962, was sometimes propylene glycol. Thus, the only real distinction between Beam and Perry was that Perry was aerosol-dispensed while Beam was dispensed by a so-called Windex-type sprayer. That difference is inconsequential as the district court found and as evidenced by Perry's statement in his patent that, "The same results were achieved by spraying the cleaner of the example on a hot oven with a conventional pressure atomizer." Beam therefore anticipated the patent in suit.
Finally, Perry's product was sold and used more than one year prior to the application, thereby calling into effect the statutory bar of 35 U.S.C. § 102(b). In October 1962 Perry made and sold a 30 gallon drum of the oven cleaner claimed in the patent without including the furfuryl alcohol "catalysts" required by some claims of the patent. The solution was more than 50 per cent water by weight and contained 3 per cent sodium hydroxide, a humectant and a surfactant. Also, not later than December 1962, Perry made a 20 gallon batch of the same oven cleaner which was placed in plastic squeeze bottles and used for testing purposes, except for one such bottle which was given to a home economist with Vaugn Electric Co. of Somerville, Massachusetts, to cultivate future orders for the oven cleaner. No confidentiality restrictions were imposed. The sale of this oven cleaner (called "Winbro 403" at the time of the sale) and the giving of one bottle to Vaugn Electric's home economist constituted a public use or sale of the invention more than one year prior to the application. That transaction barred the granting of the patent pursuant to section 102(b). Frantz Mfg. Co. v. Phenix Mfg. Co., 457 F.2d 314 (7th Cir.1972).
Had the applicable prior art described in the foregoing not anticipated the Perry oven cleaner, i.e., had it not been sufficiently identical to anticipate, it is clear that Perry's purported invention would have been obvious by the teachings of the above described oven cleaners. Given a prior art which included Bissell and Beam, the obviousness of Perry cannot be questioned. Moreover, the prior art tending to...
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