Harlan F. Stone

“ It is the contention of the respondent, and the court below held, that its product claims 28, 30, and 31, concededly broad enough, as stated, to cover the petitioner's product, are valid, and that all starch veneering glues, at least when mixed with three parts of water or less, having substantially the properties of animal glue, infringe the patent whether made by Perkins' process or otherwise.
We take it, as the respondent argues, that product patents or patents of compositions of matter are distinct from patents of the process by which the product may be produced. ”

“ Because of their high water absorption, glues produced from starch, before Perkins, were too viscous, and hence required too large an admixture of water for use successfully as a wood-veneering glue. The controlling difficulty to be overcome in the development of a starch glue suitable for veneering was what may be called the normally large water absorptive quality of starch, corresponding to the viscosity of the resultant glue, a reduction of the one effecting a reduction in the other. ”

“ Respondents say that laboratory tests would be insufficient, and that 'the best and probably the only satisfactory test is to try it out on a large scale in a furniture or veneering gluing factory.' A claim so broad, if allowed, would operate to enable the inventor, who has discovered that a defined type of starch answers the required purpose, to exclude others from all other types of starch, and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery, and would discourage rather than promote invention. ”

“ The respondent brought an infringement suit in the Northern District of Illinois against the Solva Company, asserting an infringement of claims in each of the five groups by the product of that company, comprising in part at least a raw cassava starch glue base which, for present purposes, may be taken as identical with the product of the petitioner. Upon appeal to the Seventh Circuit Court of Appeals, Solva Waterproof Glue Co. v. Perkins Glue Co., 251 F. 64, that court rendered an opinion, in some respects obscure, which has given rise to widely differing views as to its effect. ”

“ The glue made of this ingredient within the specified range was a new product. This was invention of a new composition of matter, and was the real contribution Perkins made to the art. As such, it was entitled to the protection of a patent, but as thus described and limited petitioner's product does not infringe.
To so describe the product is not, as the court below seemed to think, a limitation of product claims by reference to process claims. A patentable process is a method of treatment of certain materials to produce a particular result or product. ”

“ The patent is entitled 'A Patent for Starch Glue and a Method of Making It.' Perkins was the first to make successfully a starch glue suitable for wood veneering and similar uses. Glue made from animal substances, known as animal glue, has long been in common use as an adhesive, and is especially adapted to use in wood veneering, in which thin sheets or layers of wood are fastened together by the use of an adhesive bonding material. ”

“ Thus the inventor who advances the art by discovery that a certain defined material may be combined in a product useful for certain purposes seeks to extend his monopoly to any product which may subsequently be made from materials not within any defined range described in the patent, but which is likewise useful for those purposes. ”

“ Apparently no brand of raw starch which Perkins could procure in commercial quantities when conducting his experiments could be used as a glue base without the artificial degeneration of his first step. But it appears that the defendant has been able to purchase in such quantities a starch which is a natural agricultural product having a low-water absorptiveness and other characteristics making U.S. 222, 26 L. Ed. ”

“ The patent has thirty-eight claims, divisible into groups. One group covers the process of producing the degenerated starch glue base, the first step process, already described. One group embraces the glue base product produced by the first step process. ”

“ The characteristic qualities of animal glue, making it peculiarly suitable for that use, are a low absorptiveness of water and a consequent high degree of fluidity, facilitating its application by mechanical means, high elasticity, and great tensile strength. ”

“ Wood v. Underhill, 5 How. 1, 5, 12 L. Ed. 23; Tyler v. Boston, 7 Wall. 327, 330, 19 L. Ed. 93; Bene v. Jeantet, 129 U.S. 683, 9 S.C.t. 428, 32 L. Ed. 803; Howard v. Detroit Stove Works, 150 U.S. 164, 167, 14 S.C.t. ”