CITE:  180 F.2d 26
CMON:  Janaury 1950
PLAIN: Joseph E. Seagram & Sons, Inc.
DEFND: Marzall, Commissioner of Patents
COURT: United States Court of Appeals District of Columbia Circuit.
DATE:  January 23, 1950.


Joseph E. Seagram & Sons, Inc. brought a suit against John A. Marzall,
Commissioner of Patents, to compel the issuance of a patent.

The United States District Court for the District of Columbia rendered a
judgment for defendant, and plaintiff appealed.  The Court of Appeals,
Washington, Circuit Judge, held that the court properly rejected claims
for a patent to cover a method of testing beverages and like products
to determine consumer preferences on the grounds that the claims covered
non-statutory subject matter, were indefinite, and lacked invention.

Judgment affirmed.

Patent to cover a method of testing beverages and like products to make
advance determination of consumer reactions and preferences was properly
denied on ground claims did not constitute a new and useful art, machine,
manufacture, composition of matter, or any new and useful improvements
thereof within meaning of the patent statute. 35 U.S.C.A. Sect. 31.

  Method of testing consumer beverage preferences not patentable.

Before CLARK, PRETTYMAN and WASHINGTON, Circuit Judges.


This case involves a claim for a patent which would cover a method of
testing beverages and like products, in order to make advance determination
of consumer reactions and preferences.

Joseph E. Seagram & Sons, Inc., the plaintiff below and the appellant
here, filed this action in the District court under section 4915 of the
Revised Statutes, alleging that it was entitled to receive a patent which
the Commissioner of Patents had refused to grant. The District Court
dismissed the complaint, holding the claims of invention unpatentable on
the grounds that they constituted nonstatutory subject matter; that they
were indefinite; and that the claims lacked the invention necessary to
patentability, as the prior art disclosed methods substantially similar to 
those proposed by the claimant. Seagram brings this appeal under section
17--101 of the District of Columbia Code. 

Several claims of invention were filed. Claim 10 is representative, and is
as follows:

    "In the art of testing samples of beverages and the like, having
    chemically-indefinable sense-perceptible qualitative properties,
    such as bite, body, odor and taste, a method of obtaining, through
    human sensory reactions, substantially reproducible indications of
    qualitative properties comprising:
	"(a) preparing blind test samples of predetermined temperatures,
        amounts and concentrations;
	"(b) submitting at least one sample to each observer of a group
        large enough to reduce observation errors to allowable
        experimental limits and under uniform illumination conditions;
	"(c) causing each observer
            "(i) to subject the sample to the same sensory test for
            one particular indefinable, sense-perceptible qualitative
            property and
            "(ii) to indicate, within a predetermined range of time
            following the beginning of such test, his sensory reaction
            to the qualitative property tested, the indications thus
            obtained from the group being correlatable in well-known
            ways to evaluate the property tested."

We believe the District Court's holding to be correct on all three grounds.
While there is no case precisely in point, and while the tests of what
constitutes a patentable process are necessarily vague because of the
great variety of subject matters with which the Patent Office and the
courts must deal, it seems clear that appellant's claims do not
constitute a "new and useful art, machine, manufacture, composition of 
matter, or any new and useful improvements thereof," within the meaning
of section 4886 of the Revised Statutes.  Cochrane v. Deener, 94 U.S. 780,
24 L.Ed. 139; Greenewalt v. Stanley Co. of America, 3 Cir., 54 F.2d 195,
196; 1 Walker, Patents, 39--41 (1937).

Appellant's claims also lack definiteness. Predetermined, according to
appellant's own definition, merely means determined beforehand. If
appellant desired to patent detailed controls over the testing process,
they were not expressed in its claims. If all that is asserted as invention 
is the use of controls as such, then the prior art precludes issuance of
a patent. At best, the record appears to show that appellant has developed
methods for testing its own product which enable it to gauge with some
accuracy the preferences of its customers, and to put on the market a
product more pleasing to those customers than might otherwise be the
case. There is evidence also that other companies have been permitted
by appellant to acquire knowledge of its testing methods, and have
benefited therefrom. We can assume that appellant developed its method 
through intelligent, well trained and persistent experiment, acting in
the light of the defects which past experience had developed." But that
is not enough. General Motors Corp. v. Preferred Elec. & Wire Corp.,
2 Cir., 109 F.2d 615, 616. The showing here is not sufficient to bring
appellant's testing methods into the realm of patentability. 

Industry has traditionally sought to determine consumer reaction in order
to develop better products, and ones progressively more pleasing to the
public. To give appellant a monopoly, through the issuance of a patent,
upon so great an area in the field of marketing and determination of
consumer preference would in our view impose without warrant of law a
serious restraint upon the advance of science and industry.

Upon examination of the record, we find no ground for reversal. The
judgment of the District Court therefore should be 


{1} Act of February 9, 1893, c. 74, sec. 9, 27 Stat. 436; March 2, 1927,
c. 273, sec. 11, 44 Stat. 1336; March 2, 1929, c. 488, sec. 2(b), 45 Stat.
1476; Aug. 5, 1939, c. 451, sec. 4, 53 Stat. 1212, 35 U.S.C.A. Sect. 63.

{2} Act of Feb. 9, 1893, 27 Stat. 435, c. 74, sec. 7; March 3, 1901,
31 Stat. 1225, c. 854, sec 226; March 3, 1921, 41 Stat. 1312, c. 125,
sec. 12.

{3} Act of March 3, 1897, c. 391, sec. 1, 29 Stat. 692; May 23, 1930,
c. 312, sec. 1, 46 Stat. 376; Aug. 5, 1939, c. 450, sec. 1, 53 Stat. 1212,
35 U.S.C.A. Sect. 31.

{4} See Biesterfield, Patent Law 4--5 (1949) quoting Judge Learned Hand
in Kirsch Mfg. Co. v. Gould Mesereau Co., 2 Cir., 6 F.2d 793, 794.
See also Curtis Companies v. Metal Master Strip Service, 7 Cir., 125 F.2d
690, 692.