Two Faces: US v. Adams, 383 U.S. 39 (1966) (RCTA)
- UNITED STATES, Petitioner, v. Bert N. ADAMS et al.
- Argued Oct. 14, 1965.
- Decided Feb. 21, 1966.
- companion case to No. 11, Graham v. John Deere Co.
- Patent 2,322,210
- Patented June 22, 1943
- Applied Dec. 18, 1941
- Bert N. Adams
- 11 claims
- Patent 1,696,873
- Magnesium Primary Cell
- Patented Dec. 25, 1928
- Applied Aug. 5, 1925
- Robert T. Wood
- 9 claims
- Patent 282,634
- Chloride of Silver Battery
- Patented Aug. 7, 1883
- Applied Oct. 21, 1882
- Plymmon S. Hayes
- 1 claim
Introduction (Both For and Against)
According to 35 USC 103, an invention does not meet the non-obviousness requirement of patentability when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” That is, to determine patentability, a court or an examiner must inquire into the scope and content of the prior art; the differences between the prior art and the claims at issue; and the level of ordinary skill in the art.
In this case, we examine two patents to determine the state of the prior art when Adams filed his patent in 1941. The Hayes patent discloses a combination device consisting of a “chloride-of-silver battery” wherein a glass tube encloses a silver wire. The glass tube, Hayes’ the principal claim, prevents unwanted contact between parts of the battery and prevents battery exhaustion when it is not in use. The electrode plates consist of silver and zinc. The battery supplies a considerable electromotive force in a relatively small space, runs longer than its contemporaries, and can use acid solutions or a solution containing a small amount of sodium chloride with distilled water.
The Wood patent employs magnesium and a neutral electrolyte. It notes that all previous attempts to use magnesium as a negative electrode were unsuccessful. These previous attempts were desirable though unsuccessful because, while magnesium can provide a higher voltage due to its place near the top of the electrochemical series, it also corrodes rapidly in the standard solutions of the time. Its corrosion is decreased by means of the neutral electrolyte and oxidizing agents in the solution. Wood’s claims include electrolytes containing acids and salts of acids.
Engineering Argument for the United States
Given the state of the prior art as reflected in the 1883 Hayes Patent for “Chloride of Silver Battery” and the 1928 Wood patent for “Magnesium Primary Cell,” the 1943 Adams patent for “Battery” does not meet the non-obviousness requirement under 103. The Adams battery simply combines a collection of elements that were old and well known in the prior art. Adams employs magnesium and cuprous chloride electrodes in a solution of pure or salt water to create a functioning battery. The use of magnesium is well within the scope of the prior art as articulated in the Wood patent. Wood taught that the use of magnesium would have certain predictable advantages over other materials, notably in the voltage induced, due to its high position on the electrochemical series. Furthermore, zinc and silver chloride batteries are also old in the art; the Hayes patent discloses one variation and dates from the 19th century. That Adams substituted magnesium for zinc and cuprous chloride for silver chloride was simply the next logical step in the development of higher-voltage batteries.
Furthermore, Adams claims that the use of water to run the battery is non-obvious. However, this is incorrect as Hayes patented a battery that could function on a water solution of 2% sodium chloride. Like the Adams battery, the Hayes battery could also produce a constant voltage and current without the use of acids or the generation of dangerous fumes. For the voltage and current available, the Hayes patent was also relatively small. For all of these reasons, the combination that Adams puts forth is not patentable.
Engineering Argument for Adams
Given the state of the prior art as reflected in the 1883 Hayes Patent for “Chloride of Silver Battery” and the 1928 Wood patent for “Magnesium Primary Cell,” the 1943 Adams patent for “Battery” meets the non-obviousness requirement under 103. The lightweight Adams battery can produce both a constant voltage and current regardless of the rate of current withdrawn and without the use of acids or the generation of dangerous fumes. Furthermore, it was the first practical battery that can be produced, transported, and stored in dry condition while being rendered serviceable by the mere addition of water. The Adams patent also discloses key discoveries that differentiate it from the prior art.
While it is true that Hayes discloses a zinc-silver chloride cell that runs with a saline solution, there are several notable differences that would preclude obviousness from the Hayes invention. First, the battery is mechanically prevented from acting upon itself while it is not in use. Secondly, while that battery could function in salt water, it is principally effective in an acid solution. Additionally, neither Hayes nor Wood use magnesium and cuprous chloride electrodes. Wood uses magnesium instead of zinc, but he solved the magnesium corrosion problem with a “neutral electrolyte containing a strong soluble oxidizing agent,” not a system that prevented magnesium corrosion in water. What is most important in the consideration of the obviousness of the Adams battery is that the parts had to function together as a system. This system was both novel and non-obvious.
This is clear because the Adams battery had unexpected benefits and considerable advantages over other batteries. One of these benefits was that it was unaffected by temperature. The other patents do not mention a range of effectiveness. Another surprising result is its efficacy despite its continuous action. Prior art teaches that non-continuous batteries are better and that continuous ones (those that act internally despite not being in use) are not practical. Further, that the Adams battery has advantages over other batteries, such as constant power, shows that a mere substitution of components was not at work.
Finally, the Wood patent suggests that the Adams patent also satisfied several secondary conditions that the Court may use in determining non-obviousness. Wood notes that there were substantial attempts to make a viable magnesium battery and that they were unsuccessful. Thus, the Adams battery met a long-felt but unsatisfied need; was appreciated by those versed in the art that the need existed; and there were substantial attempts to meet the need for a magnesium battery.
While this information is not included in the other patents, the Court eventually found in favor of Adams. Many secondary considerations contributed: the commercial success of his invention; replacement in the industry by his invention; teaching away by those skilled in the art; and disbelief or incredulity on the part of experts. Adams had to “ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams.”