91 F.2d 935 | 2d Cir. | 1937
This is an appeal from a decree for the plaintiff entered on the usual bill in equity upon three patents. Ralph L. Evans is the inventor of all three; on January 21, 1932, he filed an application out of which came the patent last to be issued, No. 3,919,690; the other two were divisions of this application, and may be ignored in the view which we take of the original, The invention was for a means of waving women’s hair, consisting of a little pad containing a chemical which would generate heat when wetted. The pad was made up of a wrapper, a perforated envelope containing the chemical, a wet absorbent sheet next to the envelope, and a perforated flap to hold the two together. The pad was rolled around a tress of hair — itself wrapped upon a mandrel — and the chemical reaction of the water and the contents of the envelope gave out the heat. The invention spoke to an art which had been familiar with permanent hair waving for more than twenty-five years. In 1905, one, Nessler, produced a machine by which a tress, wetted with a soda or borax solution, was wound upon a mandrel and heated by electricity. He patented this in 1910, but it was expensive, laborious, and trying upon the customer. Between 1910 and 1920 it was improved by Suter and Frederics, and nine-tenths of permanent hair waving is still done in this way. The first chemical waver was devised by Sartory, who filed his application in August, 1924, and got a patent (No. 1,565,509) on December 15, 1925. He specified “calcium oxide, strontia, baryta or other suitable material or materials with
Evans must have been experimenting with such pads before this letter, for his application was filed on January 21, 1932; but as he learned of Poyner and Barnett during 1931, his period of probation was less than twelve months. He testified — ■ and there is no reason to question it- — that in practice Barnett’s pad had several disadvantages; the immediate reaction, when for instance calcium oxide — quick-lime— was used, was so swift that the operator would burn her fingers before she could wrap and secure the pad; if the reaction were delayed to prevent this, the “delayer” would unduly hold it back thereafter, at a time when it should be speeded up; finally, the temperature would not keep up for the necessary six or seven minutes, for the heat would go off too fast. The optimum waving pad would have none of these defects. The patented invention is the result of Evans’ efforts to make one; the specifications disclosed it as follows. It was said to relate to that kind of permanent waving in which the tress was subjected to the heating action of a chemical “such as calcium oxide,” and it was concerned with “controlling the development of the heat * * * wherein certain materials are used to delay * * * or to accelerate the development of the heat, or to extend the development of the heat over a longer period of time than could be done by the self-heating chemical itself, said materials being used also for delaying and then accelerating * * * or for delaying, then accelerating and finally extending the heat development.”
The “delayer” supposedly used by the defendant is “aluminum oxide,” “a basic substance”; such substances had been known to delay the reaction of calcium oxide. The defendant’s “accelerator” is alleged to be one-third of the copper sulphate, its heating agent; it was also known
This reasoning disregards the facts. Evans did not invent the curling pad; Sartory did. After Sartory came Poyner and the Barnetts, who took it out of the machine with its separate tubes and injectors, and used a wet sheet or slab instead. At most Evans could claim to be no more than an improver over these, upon whose shoulders he stands. Let us assume that he eliminated the defects of their work by establishing “controls.” That might require invention for several reasons. It might be hard to find out why the pads did not do their work properly; it might be hard— after one had found that out — to learn what reagents would correct their shortcomings; finally, it might he hard — after one had learned what reagents to use— to discover the right way to use them. As to the first, however, there was no possible difficulty; the pads must not burn the operator’s fingers before she could put them on; they must not be slow after she had done so; they must last long enough to give a permanent wave. These defects either appeared to Evans during his experiments, or were absolutely sure to appear when the pads began to be used. Their absence was merely the definition of an optimum pad, as everyone wanted it; no invention could lie in its conception, as such. Next, it might indeed have taken ingenuity to discover the proper reagents to correct these defects after they were discovered; but it did not. All those selected had been used for similar, though not identical, purposes. Any chemist desiring to delay the reaction of “calcium oxide” or the like in such a pad would certainly turn to the reagent which had so performed upon the same substances when used in other heating apparatus. Certainly, it was no act of creative imagination to pick out that substance for ihe same work in a pad, which it had done in a pack. That is all that Evans disclosed; he merely set out what the pad should do and what reagents would produce each of the needed' reactions. It is quite possible that in making the pads in práctice a good deal more was, and is, required. Apparently the substances available vary in quality and even the same substance is not uniform in its results. Their blending so that they may act in proper sequence, may demand much ingenuity; we need not question Evans’s skill in all this. The composition of his pad has changed more than once, and the substitutions have been improvements; certainly, the large sales waited upon them. But the specifications and the claims say nothing about blending or composition beyond enumerating what elements shall be used and what they will do; and these were all preordained for any competent chemist who wished to make the optimum pad. If more was required, he was left to his own devices; if the compounding of them, their proportions and their quantity, was plain, Evans’s solicitors were well advised not to claim the method; if it was not plain, the specifications are inadequate, and the patent is invalid for that reason.
It is quite idle to appeal to the plaintiffs success, or the delay of the art to produce the pad. Poyner or the Barnetts may have made a real invention; Sartory’s pad had limped along for over six years,
It is not necessary to say anything about the other patents, for they are merely examples of the original.
Decree reversed; bill dismissed for invalidity of the claims in suit.
We have added the emphasis.