Vitamin Technologists, Inc. v. Wisconsin Alumni Research Foundation

HEALY, Circuit Judge

(concurring).

I agree with the result of the main opinion and with much that is said in it. I think, though, that we should confine ourselves to the issues actually presented by counsel. Further, it appears to me doubtful that the claims are fairly subject to the ■criticism that they broadly include a monopoly of the use of sunlight. The patents should be adjudged invalid on the less questionable ground of anticipation.

I do not doubt that Professor Steenbock is to be accounted a pioneer in his special field, namely, the artificial activation of vitamin D in foods. His researches illuminated some very dark places and brought about a clearer understanding of a natural phenomenon that before his time was seen as through a glass, darkly.

But I agree that Steenbock did not invent anything. The antirachitic properties ■of the vitamin D principle were well known, if imperfectly understood, prior to Steenbock. It had been recognized that these properties are present naturally and .abundantly in various organic substances, notably in cod-liver oil. Vitamin D had -also been produced in an artificial way by a process of irradiating living tissues with the mercury vapour lamp. As early as 1919 Huldschinsky had found that rickets could be cured by exposure of the patient to the ultra-violet rays either of the sun or of the lamp. Use of the lamp for activating vitamin D in inert substances, as distinguished from the activation of the principle in the living tissue of the patient himself, may possibly be another matter; and what is •claimed for Steenbock is that he discovered or invented a process for the activation of ■the vitamin in edible substances through •employment of this lamp, or similar avail■able apparatus.

For the purpose of the discussion, I as■sume — although the validity of the assumption is dubious — that the activation of living tissues by exposing the patient to the ultra-violet rays of the mercury vapour lamp is a different process from that Steen-bock is said to have invented. The one thing that can certainly be attributed to Steenbock is the conception — a truly remarkable conception in the then state of knowledge — that the artificial irradiation of certain foods with ultra-violate light confers upon the food the power of preventing the occurrence of rickets, or, to put it another way, produces vitamin D.

But recognition is not invention. In the use of this artificial process Steenbock was substantially anticipated by others laboring in the same general field. In 1923 Hume and Smith published a paper giving an account of their experiments with rats which had been rendered rachitic by placing them on a diet deficient in fat-soluble vitamins. The experiments were conducted in this manner: The rats were put in glass jars containing sawdust at the bottom. The animals were later removed from the jars, and the jars were placed below a mercury vapour quartz lamp so that the light shone directly down into them. After ten minutes these containers were covered with glass lids and were moved, whereupon the rats were put back in the jars and the covers temporarily replaced to hinder diffusion of the air. Thereafter the animals showed marked improvement in growth and weight, a result attributed by Hume and Smith to the irradiation of the air in the containers.

Steenbock was familiar with this experiment. After studies and experiments of his own he became convinced that the improvement in the condition of the rats was attributable, not to the irradiation of the air, but to the irradiation and consequent activation of the sawdust, which is edible to rats. In other words, Steenbock accurately interpreted the results of Hume and Smith’s experiments, the significance of which the latter themselves failed to comprehend.

In the same year Goldblatt and Soames published an account of another experiment, with which, also, Steenbock was familiar. They irradiated live rats with a quartz mercury vapour lamp, after which the livers were removed and fed to rachitic rats, with resultant marked improvement in growth. Thus by these scientists as well as by Hume and Smith the actual process of irradiating edible substances with the mercury vapour lamp had already been practiced. There had been, besides, other practices of natural or artificial irradiation of dietary substances, some of which are mentioned in the main opinion. I think, therefore, that Steenbock can not fairly be said to be the originator of the process. His contribution to the art lies, rather, in his interpretation of the results that may be achieved by the process. Compare Ce-lite Corp. v. Dicalite Co., 9 Cir., 96 F.2d 242, 248.

I think the Steenbock patents are subject to an infirmity still more fundamental. Ultra-violet light is a natural form of energy. Like the sun, which is the source of that energy, and like the air we breathe, ultra-violet rays are the property of all mankind. Men may devise or improve machines for their more effective utilization and may obtain patents upon the machine or the improvement. But it would be a monstrous thing if the energy itself could be made the subject of a monopoly. It must be remembered that sunlight by its own inherent process activates the vitamin D principle in both inert and living tissues and substances, albeit, because of unfavorable atmospheric conditions, sunlight is not effective in all cases. Nevertheless it is clear that the artificial process differs in no essential particular from the natural one. The intervention of the mercury vapour lamp — developed long prior to Steenbock — may adapt the natural process to wider fields, but in a patentable sense the process itself is as ancient as the sun.

It seems to me doubtful that the claims should be held invalid because lacking in particularity in respect of the period of time of exposure. It may be that they are sufficiently specific to enable .those skilled in the art to understand what is intended. I assume, therefore, that Steenbock discovered and sufficiently disclosed in his claims the most effective time period of exposure. Nevertheless such a discovery would not amount to a patentable invention. It would amount to no more than the ascertainment of a naked fact or principle in nature existing independently of the efforts of the discoverer. Cf. O’Reilly v. Morse, 15 How. 62, 14 L.Ed. 601; Tilghman v. Proctor, 102 U.S. 707, 722-729, 26 L.Ed. 279. If 'the discovery were patentable, it would be broader than the process itself in that it “would cover all processes which aim at the same result,” ¹ including even the purposeful exposure of dietary substances to the. direct rays of the sun.

1 Walker on Patents, Deller’s Ed., Vol. 1, p. 65.