The opinion of the court was delivered by: CHESNUT
In this case the plaintiffs are seeking a judgment entitling them to receive from the Commissioner of Patents, a patent including 28 claims of which the Commissioner was willing to allow only 2. The jurisdiction of the court and procedure is based on 35 U.S.C.A. § 63, R.S. 4915. The case is a proceeding de novo; Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 61, 5 S. Ct. 25, 28 L. Ed. 656; Mast, Foos & Co. v. Stover Mfg. Co., 177 U.S. 485, 20 S. Ct. 708, 44 L. Ed. 856; Nichols v. Minnesota Mining & Mfg. Co., 4 Cir., 109 F.2d 162; although the decision of the Patent Office, as an experienced tribunal, is entitled to the presumption of correctness. Poulsen v. Coe, App.D.C., 119 F.2d 188; Abbott v. Coe, 71 App.D.C. 195, 109 F.2d 449, 451; Robertson v. Cooper, 4 Cir., 46 F.2d 766. A considerable amount of testimony has been submitted on behalf of the plaintiffs here, which was not available to the Patent Office.
The claimed invention relates to a process for protectively coating fruits and vegetables, to retard shrinking, withering and loss of weight in transportation from orchard or garden to market, involving a period ordinarily of from three days to three weeks; and in addition to the process claims there are other claims, both specific and broad, for the chemical composition used in protectively coating the fruit. A brief statement of the prior progress in the art will contribute to a clearer understanding of the issues here involved.
The applicant for the patent is Charles D. Cothran, who for some years past has been in the research department of the Brogdex Company (the assignee of the patent application), which is engaged largely in the business of selling and licensing processes for protective treatment of fruits and vegetables. For some years past its president was Ernest M. Brogden, a portion of whose name enters into the corporate title of the Brogdex Company. The Company does business in California, Florida and Texas. In the case of American Fruit Growers, Inc., v. Brogdex Co., 283 U.S. 1, 51 S. Ct. 328, 75 L. Ed. 801, the Supreme Court considered and held invalid patent 1,529,461 to Brogden and another, claiming a new and improved process of preparing fresh fruit for market by coating it with a solution of borax which redered it resistant to the decay caused by blue mold, and other organisms and diseases. The Court held that the product claims of the patent as there worded failed to describe a "manufacture" within the meaning of the statute, 35 U.S.C.A. § 31; and held also that if the process claims covered an invention, novelty was lacking at the time of the application in view of a prior patent involving the application of a solution of boracic acid to the fruit. The objective of the present Cothran application is distinguishable from the borax or boracic acid solutions for fruit, in that Cothran's invention specifically relates to preserving the fruit from natural shrinkage and loss of weight, but not from the attacks of blue mold and other diseases, for which other preventives are designed.
Prior to Cothran's invention, and still in approved and extensive commercial use, the Brogdex method of preserving fruit in transit from orchard to market against natural shrinkage and withering is known as the "hot wax" method. For various phases of this Brogden obtained United States Patents Nos. 1,585,371 in 1926; 1,641,112 in 1927 and 1,940,530 in 1933. The problem involved in how to reduce the rate of natural shrinkage without at the same time adversely affecting the flavor and edibility of the fruit, the surface of which must not be sealed so completely as to interfere unduly with its so-called "breathing or transpiration"; and also to avoid injury to the fruit from the chemicals used. The method adopted, (which has largely become standard practice and resulted only from long research and experimentation) involves bringing atomized molten paraffin, usually containing a relatively small proportion of a considerably higher melting wax, such as carnauba, into contact with the fruit in a chamber heated to temperatures ranging from 180 to 220 degrees F., while the fruit is brushed rapidly with brushes to spread the molten wax thoroughly over the entire surface in a firmly adherent lustrous film which is so thin as to be virtually invisible but which is effective to cut down the rate of withering or loss of moisture to about 30 to 40 per cent of that normal for uncoated fruit, and is the approximate limit beyond which it is not safe to go in sealing the surface of the fruit. This process gives very good results but is comparatively expensive, adding about three cents per box to the cost of the fruit.
It is not claimed for Cothran's present invention that it is more efficient than the "hot wax" process; but it materially reduces the cost to about one cent per box. An important feature of the new process is to apply the wax at ordinary room temperature, thus eliminating the use of heat and brushing. In lieu of the latter Cothran's process consists in applying the wax and oil in the form of an aqueous emulsion sprayed upon the fruit or into which it is dipped, which gives it a high lustre or shine without rubbing or brushing. It is claimed that it is nearly as efficient as the hot wax process in retarding natural shrinkage and withering. Although the general idea of using an emulsion of wax and oil seems simple it required much research and experimentation by Cothran to find a specific formula that would give satisfactory results for the particular purpose. In the process of development of his thought he tried and rejected many particular formulas which by tests proved unsatisfactory; but by December 1932 he had found a satisfactory formula and reduced it to practice, and his process has proven commercially successful to such an extent that in 1940 approximately 2,500,000 boxes of fruit were usefully treated by the process. Most broadly stated, the formula comprises a thinly aqueous emulsion containing a waxy material emulsified with the aid of trihydroxyethylamine (or triethanolamine, for short T.E.A.) and a fatty acid. But the more specific formula, which has been used successfully in practice, consists of a waxy material, mainly paraffin; white mineral oil; the product of reaction between substantially equal parts of t-e-a, and oleic acid; and water. As oil and water and wax do not mix it is necessary to emulsify the ingredients so that the wax and oil can be held in suspension in the liquid. Amine is a strongly basic or alkaline substance derived from ammonia. Triethanolamine is now a comparatively inexpensive commercial product. It is a nearly colorless liquid of a faint ammonical odor fully soluble in water and strongly basic. The commercial product, however, had at times the appearance of corn syrup and is viscous in consistency.
The problem of finding a satisfactory process for preserving the fruit from the orchard to the market less expensive than the hot wax method, had long been in general contemplation by the Brogdex Company. The idea that a satisfactory substitute might be found in the use of t-e-a as an emulsifying agent for the wax and oil first occurred to Cothran in 1929 when he read an article in "Industrial and Engineering Chemistry" for July of that year, on the subject of "Triethanolamine Oleate for Oil Sprays". As a result of experimentation over several years he concluded that while amine soap employed as an emulsifying agent might vary widely in specific description, the kind best adapted for his use was prepared by reaction between the ethanolamine, more especially triethanolamine, (commercial) with a free fatty acid such as oleic, stearic, palmitic or linoleic acid. He filed application for his patent September 13, 1934, with 20 claims, and on June 28, 1935 added 8 more claims. The result of the prosecution of the application in the Patent Office was that the Examiner allowed claim 6, for the chemical composition, and claim 24 for the process of applying it; but rejected all the remaining claims, and this action was affirmed by the Board of Appeals. The allowed claims read as follows:
"6. An aqueous emulsion useful for protectively coating fresh fruits and vegetables and having approximately the following composition, all parts being by weight: 4.5 parts of waxy material, mostly parrafin; 0.5 to 1.5 parts white mineral oil; the product of reaction between substantially equal parts (0.5 to 1.5 part each) of triethanolamine and oleic acid; and water sufficient to make 100 parts."
"24. The process of protectively treating fresh fruits or vegetables in preparation for market which comprises distributing uniformly over the surface of each such article a small quantity of an aqueous emulsion of the character defined in claim 6."
It will be noted that claim 6 for the composition is very specific as to the formula, and claim 24 for the process is limited to the specific formula. The complaint here by the applicant is that these claims are so extremely limited in scope that they could be easily evaded by persons seeking to appropriate the benefits of the invention without payment therefor, and therefore they do not sufficiently protect the plaintiff's real invention. The first 16 claims are for the "composition" and the remainder for the "process". Some are for a very broad definition of the composition and some are specific, of which claim 6 is the most specific. Typical of the broadest claims are 15 and 28 which read as follows:
"15. A thinly fluid aqueous emulsion useful for protectively coating fresh fruits and vegetables, comprising waxy material emulsified with the aid of trihydroxyethylamine and a fatty acid."
"28. The process of protectively treating fresh fruits or vegetables in preparation for market which comprises distributing uniformly over the surface of each such article a small quantity of an aqueous emulsion of the character defined in claim 15."
Illustrative of what may be called the medium claims, that is less specific than 6 and 24, and more specific than 15 and 28, are claims 2 and 21 which read as follows:
"2. An aqueous emulsion useful for protectively coating fresh fruits and vegetables, comprising 1 to 10 parts of waxy material and a free oil in proportion less than half that of the wax, emulsified with less than 5 parts of an amine soap of a fatty acid selected from the group consisting of oleic, stearic and linoleic ...