The Federal Reporter with Key-Number Annotations, Volume 256: Cases Argued and Determined in the Circuit Courts of Appeals and District Courts of the United States, May-July, 1919. Page: 25
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PROCTER & GAMBLE CO. V. BERLIN MILLS CO.
HOUGH, Circuit Judge (after stating the facts as above). 1. The
patent declares that-
"This invention is a food product consisting of a vegetable oil, preferably
cotton seed oil, partially hydrogenized and hardened to a homogeneous white
or yellowish semi-solid, closely simulating lard."
This is a description of a visible, tangible thing which for some years
has been manufactured and sold by plaintiff, as to which there is no
evidence that anybody else ever made it before, or that if this product
is entitled to patent protection there is any closely related prior art.
Invention is denied, first, on the ground once taken by an examiner
in the office, namely, that "if the problem of simulating lard from
cotton seed oil were presented to an oil chemist, an incomplete hy-
drogenation of the cotton seed oil would at once suggest itself to him
as a solution of the problem"; that is, (a) the matter is said to be
so obvious as not to rise to the dignity of invention.
Another objection is that hydrogenation of vegetable oils was not
new, and the discovery long prior to this application of catalysts not
belonging to the "royal" group of metals had paved the way to ef-
fective and comparatively inexpensive hydrogenation. Patent to Nor-
mann, British, No. 1,515 of 1903. Prior to Burchenal's effective date
it is admitted that the hydrogenic saturation of oil by catalytic means
had been practiced at least in well-known laboratories, and a hard
fat produced, solid at ordinary temperatures and showing on anal-
ysis a very large percentage of stearic or palmitic acid. It is obvious
that if one starts with (e. g.) cotton seed oil, which is liquid at or-
dinary temperatures, because it has too little solid fat in it, and by
chemical means so changes the molecular composition or arrange-
ment of the substance as to increase the ratio of solid fat (i. e., unites
enough hydrogen with linolin and olein to produce stearin), and thus
produces the hard fat commonly known as stearin, there must have
been a time during the development of the process when the union of
hydrogen had only progressed far enough to convert the liquid into
Therefore it is said (b) that no man is entitled to a patent upon the
thing or product which has always been produced when the process
of making another thing or product was (say) half done.
The third objection to invention is substantially this: The merit
or value of what Burchenal claims, and what this plaintiff makes and
sells, is that it looks hke lard, acts hke lard, and can be used for the
purposes of lard without offending the conservatism of chefs, house-
wives, and maidservants. But before Burchenal many imitation lards
were made by mechanically mixing hard animal fats and cotton seed
oil in varying proportions, and some of these mixtures show on an-
alysis substantially the same chemical characteristics as are shown
by Burchenal's chemically produced "homogeneous semi-solid."
Therefore it is said that to make the same thing as had been made
by earlier lard imitators, but in a different way, cannot warrant a
patent upon the resulting thing or product, whatever may be true in
respect of the process by which that product is reached. This is
as much as to say (c) that the Burchenal article when completed and
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The Federal Reporter with Key-Number Annotations, Volume 256: Cases Argued and Determined in the Circuit Courts of Appeals and District Courts of the United States, May-July, 1919., legislative document, 1919; Saint Paul, Minnesota. (digital.library.unt.edu/ark:/67531/metadc38827/m1/39/: accessed November 23, 2017), University of North Texas Libraries, Digital Library, digital.library.unt.edu; crediting UNT Libraries Government Documents Department.