CITE:  55 F.2d 854
CMON:  February 1932
PLAIN: Nestle-Le Mur Co.
DEFND: Eugene, Limited
COURT: Circuit Court of Appeals, Sixth Circuit
DATE:  February 5, 1932

Appeal from District Court of the United States for the Eastern Division
of the Northern District of Ohio; Paul Jones, Judge.
Action for infringement of patent by Eugene, Limited, against the Nestle-Le
Mur Company. From a decree in favor of plaintiff, defendant appeals.

Reversed and remanded, with instructions.

  "Machine" is device or combination of devices by means of which energy
  can be utilized for useful operation to be performed. Patents for
  machine, article of manufacture, or composition of matter differ
  fundamentally in nature from "process" patents. Process may be protected
  and patented only as a process.

Before MOORMAN, HICKS, and HICKENLOOPER, Circuit Judges.


This is an action for infringement of patent No. 1,266,879, issued to
Eugene Francois Suter, May 21, 1918, for electrical heating apparatus for
permanently waving hair. Claim 1 is the only claim in suit, and is printed
in the margin.   The District Court found this claim to be valid and 
infringed as against defenses of anticipation, aggregation, want of
invention, and noninfringement. The defendant below appeals.

The human hair is waved (permanently, so called) by winding strands or
tresses tightly around suitable curlers, dampening with borax solution or
other preferred preparation, enclosing these coils in stiff paper tubes,
inserting it in tubular electric stoves, and applying heat. The patentee
is said to have discovered that, since the hair is coarser and more abundant
near the roots, that portion requires heating for a longer period than
nearer the tips, where it is finer and more easily injured by excessive
heat. To accomplish this result, or practice this method, the patentee
duplicated the electric stoves or heaters in common use (see patents to
Grosert and Unger, No. 1,103,506, and to Kremer, No. 1,164,102), and
connected the electric circuit in parallel to the resistance or heating
coils {1}, so that by the operation of a switch the current to the upper
or outer heater could be connected or disconnected at will. The two heaters
are coaxially arranged, attached to each other and held in position by
hollow struts through which the electrical connections pass, and except
for these struts, are separated by air gaps to prevent heat from passing
from one to the other. The method employed by the plaintiff for use of
this device is first to connect electrically the lower heater, or that next
to the head, and, after that heater has been in operation for a gaiven
period of time, to connect the upper or outer heater by means of the switch.
Both heaters then remain in use until the waving operation is completed, 
and thus heat is applied for a longer period to that portion of the hair
nearer the roots. The device of the patent is said by the defendant to be
but the obvious and logical means of accomplishing the desired end of
applying heat for different periods of time to the different longitudinal
sections of the hair, to involve no more than the ordinary skill of an
electrician, and to represent merely a duplication of parts, and hence not
to be patentable.

The defendant's device is an almost exact copy of the plaintiff's commercial
device, but is claimed not to infringe chiefly for two reasons, (1) because
the connecting struts are of aluminum, a metal of high heat conductivity,
and the two heaters are thus said not to be "heat insulated from each
other"; and (2) because in operation the defendant first passes current
through both heaters for a given period of time and then disconnects the
upper heater whereby the heat is said to be thereafter maintained throughout
both heaters by the sole operation of the lower unit. The patent says
nothing as to the material of which the tubular struts are to be made, and
it is obvious that, if these struts are composed of a metal of high heat
conductivity, which joints the tubular members forming the inner and outer
casing of the heater, which members re likewise of high conductivity, the
two stoves cannot be completely "heat insulated" from each other. Claim 1
as originally presented in the application contained no call for heat
insulation. It was rejected upon reference to the patent to Grosert and
Unger, supra, an other patents, and was canceled, and claim 1 as now
contained in the issued patent was substituted. Under these circumstances
it is at least very doubtful whether any device could be said to infringe
which did not have the several units heat insulated from each other, and
whether the defendant's device, in spite of similarity of construction
to plaintiff's commercial device, is so insulated. See Grand Rapids
Refrigerator Co. v. Stevens (C.C.A.) 27 F.2d 243; Southern Textile
Machinery Co. v. United Hosiery Mills Corp. (C.C.A.) 33 F.2d 862;
Reynolds Spring Co. v. L. A. Young Industries, 36 F.2d 150 (all C.C.A. 6).
In our opinion, however, the ease need not turn upon this now
well-established principle.

We are not impressed by the contention that, because the defendant, as
manufacturer, instructed its vendees to operate the heaters by a method
differing from the method employed by the plaintiff, or even by a method
which is in direct opposition to plaintiff's method, infringement is 
thereby avoided. Both plaintiff's and defendant's heaters are susceptible
of operation in the same manner. The patent is a machine patent, and, so
long as all of the mechanical and electrical elements are identical in both
the defendant's and the patented devices, and both are capable of being
operated in the same manner and to accomplish the same result in
substantially the same way, there would be infringement through manufacture
and sale notwithstanding different methods of use were employed by the
hairdresser vendees.

Defendant also attacks the utility of the device, contending that human hair
is neither coarser nor more abundant near the roots to an extent requiring
application of heat for longer periods to those portions. We have no doubt
that by copying and using the patented device the defendant has estopped
itself from claiming want of utility in the sense of the patent statute.
Seymour v. Ford Motor Co., 44 F.2d 306, 308 (C.C.A. 6), and cases there
cited. As pointed out by us in the decision just cited, this defense of
want of utility is distinct from the that of lack of the exercise of the
inventive faculty, as to which no estoppel arises because of infringement
or use.

We come then to what we consider the main issue upon the present record.
Conceding the utility, or even the necessity, of applying heat for a longer
period to the hair near the roots in order to procure a better and more
permanent hair wave, the only real advance in the art seems to lie in, or
result from, the discovery of the advantages of that method. Having made
this discovery, the patentee designed the obvious electrical device to
effect his purpose. We say "obvious", for it seems to us that, if the
desired end of applying heat for different periods to different sections of 
the hair had been disclosed, it was well within the realm of electrical
and mechanical skill, in view of the prior art, to arrange a plurality of
heaters along a common axis, corresponding to the sections of hair to be
differently treated, to construct resistance or heating coils within each of 
said units, of the size and material best adapted to produce the intensity
of heat desired, and to connect such heating units in parallel and with
such switches that each might be operated independently of the other or
simultaneously. The question of law thus presented may perhaps be stated
as follows: Where one discovers a new and useful process for accomplishing
a given result, is the obvious mechanical or electrical device, obvious
to any one to whom the proposed method is disclosed, patentable apart from
the process? We are constrained to the opinion that is is not.

In Corning et al. v. Burden, 15 How. 252, 267, et seq., 14 L. Ed. 683, the
court refers to the fundamental difference between process and machine
patents, calling attention to the fact that a process may be patentable
irrespective of any particular form of machinery or mechanical device for
practicing it. Such process patent will cover all means of practicing the
process although such means may not be pointed out in or disclosed by the
specification. One may not secure a process patent merely covering the
operation of a machine, for such a patent would be but for the function 
or operative effect of the machine (Westinghouse v. Boyden Co., 170 U.S.
537, 557, 18 S.Ct. 707, 42 L. Ed. 1136); but, on the other hand, a patent
for a new and useful process is not invalidated because of a lack of novelty
in the mechanical means disclosed for practicing it. The subjects covered
by patents for a process and for a machine, although frequently related
and in a sense often founded upon the same mental concept, are nevertheless
in substance independent and radically different. As clearly stated in the
authorities here cited, "a machine is a thing", while "a process is an act,
or a mode of acting"; "a new process is usually the result of a discovery;
a machine, of invention." In Cochrane v. Deener, 94 U.S. 780, 788,
24 L. Ed. 139, it was distinctly pointed out that a process may be
altogether new, and produce an entirely new result, while the machinery
"suitable to perform the process may or may not be new or patentable."
The same thought underlies the language of Mr. Justice Bradley in
Tilghman v. Proctor, 102 U. S. 707, 728, 26 L. Ed. 279, and the decision
of Risdon Locomotive Works v. Medart, 158 U. S. 68, 79, 15 S. Ct. 745,
39 L. Ed. 899, where it was held that a process patent was invalid because
all that the patentee invented was a machine. We see no reason why the
converse of this is not equally true, or why a machine patent which does
not meet all the tests of patentability applicable to machine patents
should not be held invalid for that reason, notwithstanding the patentee
may have discovered a clearly patentable process. Compare, also,
Expanded Metal Co. v. Bradford, 214 U.S. 366, 29 S.Ct. 652, 53 L. Ed. 1034.

These decision seem to approach the question of the separate patentability
of a process and the machine for practicing it solely from the viewpoint
of the novelty of each, and this is not precisely the question with which
we are confronted, namely, whether other now well-recognized tests of the
patentability of machines must here by applied with the performance of
the process steps, in their order, as the previously recognized and
desired end, as the purpose for the accomplishment of which the machine
was designed. We are of the opinion that they must be so applied. A machine
is a device or combination of devices by means of which energy can be 
utilized or a useful operation can be performed. It is adapted to rendering
a mechanical service or to the fabrication of material so as to change
its form or produce a desired product. Doubtless superiority of the
product, or the more economical and efficient performance of the service,
is always the ultimate end sought -- the test of an advance in the art and
of the utility of the machine -- yet, where the entire utility of such
machine depends upon the method of its use in following the successive
steps of a prescribed process in the true sense of this word, the situation
is analogous to that presented by an aggregation; the ultimate improvement
in product or service is not determinative of the question of invention,
but of utility only; the ultimate unity of operative results is to be
disregarded and must yield, as a criterion, to the fact that separate
operations are independently performed by the several units, and the
court must determine whether, with the performance of these several
operations in view, an exercise of the inventive faculty was required 
to organize the machine. Compare, Concrete Appliances Co. v. Gomery,
269 U.S. 177, 46 S.Ct. 42, 70 L. Ed. 222; Grinnell Washing Machine Co.
v. E.E. Johnson Co., 247 U.S. 426, 38 S.Ct. 547, 62 L. Ed. 1196;
E. Fredericks, Inc., v. Eugene, Ltd., 3 F.2d 543, 547 (C.C.A. 2).
This principle applies to the present case, for, apart from the process
disclosed, the device of the patent in suit lacks all patentable utility.

If we are right in the conclusion just reached, the language of the
Supreme Court in Saranac Mach. Co. v. Wirebounds Co., 282 U.S. 704,
51 S.Ct. 232, 75 L. Ed. 634, is in point. It is true that a method patent
had there issued simultaneously with the machine patent in suit, as well
as a previously issued and then expired product patent, the applications
for all of which had been copending, and that the court limited itself
to a decision upon the validity of the machine patent. It is also true
that the court seems to base its decision largely upon an attempted 
extension of the monopoly of the expired reissue (product) patent by
resort to the machine patent (a position difficult to sustain, since
the applications were copending); but the opinion also deals with the
question of the exercise of the inventive faculty in the creation of
a machine to perform the method disclosed in the product patent first
issued, and this necessitates that the practice of the process be accepted
as the end in view in determining the validity of the machine patent. 
Thus on page 713 of 282 U. S., 51 S. Ct. 232, 236, 75 L. Ed. 634, the
court says: "Given the method of the reissue patent, failure to adapt
these obvious means to the solution of the problem in hand would, we
think, have evidenced a want of ordinary mechanical skill and familiarity
with them. Their adaptation to the new use was not the creative work of
the inventive faculty. It was 'but the display of the expected skill of
the calling, and involves only the exercise of the ordinary faculties of
reasoning upon the materials supplied by a special knowledge, and the
facility of manipulation which results from its habitual and intelligent
practice.' "

This language is peculiarly applicable to the present case, and, so
applying it, the problem was how to heat different sections of the
coiled hair for different periods of time, that is, how to practice
the method; and the obvious solution of that problem was by duplication
of the electrical heating device common to the art, the multiple units
being so connected that they might be operated singly or simultaneously.
This was but the exercise of the mechanical and electrical skill naturally
to be expected. The fact that no method patent was applied for or issued
seems to us immaterial. Having discovered a new and useful method, which
we assume was patentable as such (although see Thomas Lasting Wave Co. v.
E. Fredericks, Inc., 277 F. 186, C.C.C.A. 2), a machine patent was applied
for and issued upon an unpatentable device. This was an error in judgment
and administration for which the courts cannot and should not afford a

It is also clear that but little prejudice could result from an inventor's
indecision as to whether his invention should properly be the subject of
a patent for a machine or an article of manufacture, or of a patent for
an article of manufacture or a composition of matter. These three subjects
of patent are in a true sense all products or articles, but all differ
fundamentally in nature from a process. Cf. Burr v. Duryee, 1 Wall. 531,
568, 17 L. Ed. 650. The latter is not a "thing". It may be protected and
patented only as a process, and failure to observe this distinction is here 

The decree of the District Court is reversed, and the cause is remanded,
with instructions to dismiss the bill.

"1. In electrical heating apparatus adapted for use in permanently waving
hair, a plurality of independent tubular heaters arranged along a common
axis so as to heat insulated from each other, and in combination with a
switch whereby one of such heaters may be put into and out of operation

Thus patents are frequently issued for the machine and/or the process, but
the question of patentability of each must be separately decided. The
machine of the Eibel patent, No. 845,224 (see 261 U.S. 45, 43 S.Ct. 322,
67 L. Ed. 523), although in a sense practicing a new and useful method of
paper making, is an example where the means adopted to produce speedier
producing was not obvious to the skilled mechanic, and the machine was
therefore held to evidence the exercise of invention, and to be patentable
apart from any process. Such examples might be greatly multiplied.
55 F.2d -- 54-1/2

It also represents but a duplication of operative parts, which likewise is
not invention. Slawson v. Grand Street R. Co., 107 U.S. 649, 2 S.Ct. 663,
27 L. Ed. 576; Dunbar v. Myers, 94 U.S. 187, 24 L. Ed. 34; Indiana Lamp Co.
v. Alvo Mfg. Co., 296 F. 623 (C.C.A. 6); Condit Elec. Mfg. Co. v.
Westinghouse Elec. & Mfg. Co., 200 F. 144 (C.C.A. 1); Nathan Anklet Support
Co. v. Cammeyer, Inc., 264 F. 968 (C.C.A. 2).