United States v. Adams

PETITIONER:United States
RESPONDENT:Adams
LOCATION:Congress

DOCKET NO.: 55
DECIDED BY: Warren Court (1965-1967)
LOWER COURT:

CITATION: 383 US 39 (1966)
ARGUED: Oct 14, 1965
DECIDED: Feb 21, 1966

Facts of the case

Question

Audio Transcription for Oral Argument – October 14, 1965 in United States v. Adams

Earl Warren:

Number 55, United States, Petitioner, versus Bert N. Adams, et al.

Mr. Douglas.

John W. Douglas:

Mr. Chief Justice, may it please the Court.

This case is here on certiorari to the Court of Claims, the complaint charged United States for having infringed the Adams battery patent held by the respondents.

A Commissioner of the Court of Claims after an evidentiary hearing issued proposed findings and conclusions holding that the patent was valid and that some batteries of United States had infringed that patent.

The full Court of Claims in the brief, one paragraph per curiam opinion adopted all of the findings and conclusions of its Commissioner on these two points.

The Government sought certiorari and only one aspect to the case.

It left unchallenged that part of the decision below holding that there had been an infringement if the patent were valid.

We brought to this part only the question whether the Adams’ patent was valid patent.

The basic principles involved in batteries of this general type are fairly easy to grasp.

What’s involved in this type of a battery are three elements, two electrodes, and an electrolyte.

The electrodes are metallic stripes or cylinders or rods.

The electrolyte is a liquid solution and the electrodes are suspended in this liquid solution and if the electrodes have a sufficiently different electro-motor force then small particles of matter known as ions will move from the positive electrode to the negative electrode.

And that movement will take place through the liquid solution in which the two electrodes are inserted.

An electrical charge can be recorded and measured by touching wires to the terminals of the electrodes.

The lower court found that the Adams invention consisted of a combination of electrodes and a combination of electrodes only.

This is set forth, we believe in finding 12th.

The Commissioner’s proposed finding which was subsequently adopted by the full court.

And as said forth in those findings what the Adams’ invention purported to teach was anode which is the positive electrode composed of magnesium and the cathode which is the negative electrode composed primarily of a copper salt known as “Cuprous Chloride”.

It did not Court — did not hold that the invention consisted of a combination of these electrodes with any particular electrolyte.

Now, this brings us to the statutory standards of utility, novelty, and nonobviousness.

We conceived that the Adams’ patent was useful.

We raise no contention on that point.

We contend, however, that it meets neither the test of novelty nor the test of obviousness as set forth by the Congress in Sections 102 and 103.

So far as novelty is concern, we believe that Skrivanoff, a British patent English issued in 1880 is as dispositive.

It was a combination patent.

It was not a carbon copy of Adams.

Adams was not a carbon copy of it in all respects but in our view the differences are sufficiently mind and trivial that the two, after all intense and purposes the same.

Skrivanoff called for a magnesium anode.

Adams called for the same.

John W. Douglas:

Skrivanoff called for a cathode composed of cuprous chloride.

Adams called for a cathode composed of cuprous chloride.

Skrivanoff —

Byron R. White:

(Inaudible) all of the — that was in that anode?

John W. Douglas:

No.

I’m going to continue Mr. Justice White.

In addition, Skrivanoff called for the addition cuprous chloride of carbon.

Adams called for the addition of carbon with a cuprous chloride cathode.

And finally, Skrivanoff however, did add other materials to carbon and to the cuprous chloride.

But in each cuprous chloride was the primary element in the cathode and there was no finding, indeed, no showing that this omission from Adams of these extra elements in Skrivanoff was significant.

Now, the Court sought to distinguish Skrivanoff on the basis of its non-operability and there was testimony to that effect and the Court found that it was inoperable.

Accepting that finding, we would say that operability in itself does not establish the novelty of a present invention over a prior art, or an element in that art because operability can stand from a number of different changes.

It might have stemmed from pure materials from a different type of container or from a larger electrode.

There’s no inherent reason why operability should stem from a patentable change.

In this case, there were no findings of the operability of Adams was caused by the differences between the Skrivanoff and Adams cathode.

And only if a cause and effect can be shown between the differences in the two cathodes, in our view, can the differences which are minor on their face be shown to be significant.

Indeed, the record suggests that Skrivanoff did not work because of the nature of electrolyte it employed.

And there was testimony that the electrolyte in Skrivanoff was too strong and it had water being used, the battery probably would have worked.

There was no finding to this effect.

We’re not resting our case, our novelty on this point but I’m merely saying is that unless there are some findings that a difference on operability stems from a difference in the make up of the two patents then there’s no basis for distinguishing the prior art for reasons of novelty.

And of course, Your Honors, it is true that a presumption of validity normally attaches to the patent, when issued by the patent office.

No such presumption in our view should attach here.

The file wrapper in this case which discloses the proceedings in the patent office is Title Exhibit 11.

Unfortunately, we did not include that in the printed record.

It is a part of the original record file with the clerk and the parties have stipulated that it can be referred to and cited by the parties.

But an examination of that file wrapper indicates no mention of the Skrivanoff patent.

And since the most important element in the prior art at least in our view was not mentioned.

It’s difficult to see how the patent should be assumed to be valid merely because of its issuance.

At a minimum, it suggests that no presumption of validity should attach so far as Skrivanoff is concern.

This brings us to the requirement that a patent not be obvious to a person skilled in the art.

John W. Douglas:

First, if a patent is found to be old, that’s the end of it, can’t be valid.

If it’s new, it must still get over the test of non obviousness.

Here, the Commissioner in the Court found that each of individual components comprising the Adams invention was known and had long been known in the art.

And the respondents have frankly conceded in their brief that this was so.

As a matter of fact the court below found that each of the individual elements have been available for 50 years.

Magnesium is used as an electrode had been anticipated by four sources cuprous chloride had been anticipated by three so that the question in terms of obviousness is whether or not the combination of these individually known electrodes can be said not to have been obvious to a person skilled in the art.

And I would suggest that on its face an argument to this effect cannot be maintained.

An electrode does not exist in the vacuum.

It does not generate electricity by itself.

It generates electricity only in combination with another electrode.

When your composing a battery of this type, you’re looking for possible combinations of electrodes and your looking for a difference in the electromotor force.

If you have used magnesium in a battery, you know in general what’s its electromotor force is in relation to other elements.

Same thing is true if you have used cuprous chloride.

So anyone in our view who knew that magnesium and cuprous chloride had been individually used as electrodes would have occurred to him to at least try combining the two and discover whether or not a practical battery could be developed.

And it isn’t a matter of just abstract reasoning.

There were suggestions or at least strong hints in the prior literature and the prior patents, to the combination to this effect was feasible.

The Codd Treatise in 1929 called for a magnesium anode and a copper electrode — copper cathode, Juno which is a patent, 1934, called for the union of magnesium on the one hand, a lead chloride on the other.

If one looks at the electromotor rating contained in Codd which describes the various elements in terms of their rating whether they’re positive or negative one would see that lead and copper are very close.

Just as one would see that magnesium comes near the top of the scale and chlorine comes near the bottom of the scale, and the important thing in an electrode or one of the important things in choosing an electrode is to choose one where there is a substantial difference between the two electrodes to be employed in the battery itself.

And finally so far as obviousness is concern, Skrivanoff — even if it didn’t completely anticipate the Adams battery, surely suggested the possibility of combining magnesium and copper chloride.

It is true that there are other elements not present in Adams but the possibility of omitting some of these other elements but not have been difficult, indeed, would have been the most natural thing in the world for someone skilled in the art to consider.

So all we have in our view is a selection of known battery elements from a known and finite list of possible components and a battery of known design with no change in the respective functions of the elements, that is to say, the electrodes comprising the invention.

Now, the Court in the respondents seek to avoid what we consider to be the obvious thrust of the prior art by pointing to some unique characteristics and results found by the Court to have been developed by the Adams batteries.

These findings are set forth and the Court’s finding 23 and there are two a number.

A constant current, sometimes referred to as a linear potential and the ability to operate under low temperatures.

And on this basis, the respondents in the lower court contend that the requirement of nonobviousness was satisfied.

But this approach in our view misconceives the basic nature of the obviousness test.

Potter Stewart:

Which findings are these which you tell us?

John W. Douglas:

The findings of the Court on the contributions of Adams of the unique nature I believe are finding 22 and 23.

What page?

John W. Douglas:

Page 704 of the printed record.

Potter Stewart:

Page 31 and 32 of your petition for certiorari?

John W. Douglas:

This approach Your Honors in our view doesn’t do justice to the standard laid down by the Congress in Section 103.

What Congress wanted in that Section was a comparison between the alleged teachings of the patent and the claims in the patent and the prior art.

And one looks to secondary evidence such as results or commercial success only where the evidence in the prior art is ambiguous.

If only there some kind of equivocation in the prior art.

When there is no ambiguity.

When the prior art is clear in terms of obviousness then one may look at this secondary element.

It’s a sort of best evidence rule which the Courts have developed and makes the great deal of sense because what the Congress was seeking to protect in accordance with the constitutional provisions was the enhancement of scientific advances and the encouragements are the same.

Here, the obviousness in our view is so strong that you don’t look for outside elements or outside matters such as commercial success or new results.

And I might say that even if and we would dispute this most vigorly but — vigorously but even if this were said to be a close question in terms of the prior art the new results asserted here would not have established patentability.

There were no findings in this Court of a long search for these particular qualities.

It’s true that there was a statement that the individual elements have been available for 50 years, that doesn’t establish a long search.

It’s true that the Court found that there was a long standing need that in itself doesn’t establish the search.

And maybe any number of reasons why scientists devote their attention to one thing rather than to another.

Priorities, problems with the prior art, the point is, what were looking at is whether or not someone did in fact searched for these qualities for a long time and there’s no finding in the Court’s record that this was so.

That being so the long felt need referred to by the Court would not have been important even if these were a close question on the prior art.

We don’t believe that it was a close question.

So the respondent seems to be saying in our view that the standard of invention is met if new results are achieved.

But this Court had said as far back as in Nap against Morris, 150 U.S. 221, that one can’t get a patent on new results.

Patents are given on devices, on processes, on embodiments, they’re not given on results anymore than there given on ideas.

Potter Stewart:

Today, you think the other side of the coin is equally valid that if there’s not a new result, this doesn’t necessarily mean that there’s not an invention?

John W. Douglas:

I’ll agree with that.

Potter Stewart:

You think the newness or lack of it of the result has — is basically irrelevant to the quality of invention?

John W. Douglas:

Yes, I do.

I would say that it comes into play only when the prior art is equivocal and ambiguous.

So in conclusion Your Honors, I would suggest the two basic elements in the decision of the lower court present this Court with significant and important questions which should be resolved.

The first is according to the lower court that operability will distinguish one patent from its prior reference.

We disagree with that.

We think there has to be a finding with the operability in fact stemmed from the difference between the two patents themselves.

John W. Douglas:

The second paragraph which the lower court committed was that it seemed to be precluding that new results in and of themselves was sufficiently to get over the test of nonobviousness set forth in Section 103.

And I think it important in preserving the delicate balance which this Court has long monitored between competitive enterprise on the one hand and patent monopoly on the other that these two doctrines be as — made clear that they’re not applicable —

Byron R. White:

What was the patented item here?

What was the claim?

Was it a — was it anything in the electrolyte that was used or was it just cuprous chloride and magnesium, is that all there is?

John W. Douglas:

The claims themselves Mr. White included a reference to electrolyte but the lower court found that the essence of the invention consisted of claims one and ten.

And there’s a statement in the opinion of the same effect on the Record 646.

There is no mention of the electrolyte in the specifications which are quoted in the Court’s findings and accordingly taking the Court’s findings we contend if the invention has been confined to a combination of the electrodes.

Now, I can understand if I —

Byron R. White:

Moving aside from the electrolyte or anything else?

John W. Douglas:

Quite aside from the electrolyte, I would say that I think — I could understand why the Court didn’t reach the conclusion that the electrolyte was part of the invention.

There was substantial prior art on the electrolyte and Juno had a electrolyte in 1934 of the similar nature, that’s at Record 572.

Niaudet who was a treaty’s writer had a water electrolyte suggested, that’s at Record 505 and accordingly, I think that may have been the reason why the Court did not find electrolyte to be part of the invention.

The significant fact is, they did so find.

Earl Warren:

Mr. Reilly.

John A. Reilly:

Mr. Chief Justice, may it please this Court.

As my Brother Douglas has said, the claims of the patent that are involved in suit, the entire 11 and we have relied primarily upon claims one and ten as being exemplary.

Claim one of the Adams’ patents reads, a battery comprising a liquid container, a magnesium electropositive electrode inside the container and having an exterior terminal.

A fused cuprous chloride electronegative electrode and a terminal connector with said electronegative electrode.

Claim ten calls in a battery, the combination of a magnesium electropositive electrode and an electronegative electrode comprising cuprous chloride fused with the carbon catalytic agent.

These elements had all been available in the art for more than 50 years prior to Adams had — went on the scene.

Magnesium was isolated in 1854, became commercially available in 1870, was suggested by Skrivanoff in 1888.

Cuprous chloride came into the art about the same time and was mentioned by Skrivanoff the proto-chloride of copper means cuprous chloride as a Government contends.

In the Skrivanoff recipe — in Skrivanoff disclosure which Mr. Justice White asked the question about.

We had cathode which comprised carbon or copper paste with the paste of phosphoric acid, amorphous phosphorous, metallic copper, and cuprous chloride, mixed together with sulfuric acid and applied hot to the carbon and covered with blotting paper impregnated with zinc chloride and sulfuric acid.

And when our expert put that together with the pure materials that he had available in 1960 and I don’t know that the materials in 1888 were any purer.

He had two files.

That was the use of cuprous chloride.

I asked the Government’s expert when he testified as to Skrivanoff whether when the mixture of the cathode was put together.

Did it still contain cuprous chloride?

John A. Reilly:

And he said, I don’t know?

All I have is the information concerned contained in the patent and beyond that I had no information whatsoever.

Following that, our expert attempted to put the entire Skrivanoff battery together including the magnesium anode and the electrolytes specified by Skrivanoff and he had an explosion which blew out the vent of his laboratory which is the device for exhausting air.

And at that point, he stopped working on Skrivanoff.

Now, the interesting thing about this battery and I would really like to show it to you.

I’ve taken the trouble or the effort here of putting together the parts of it because it’s so very simple.

This is a piece of magnesium which I have bent over.

Started out like this, it’s now bent this way and this is a cuprous chloride electrode which has been combined with a bit of carbon and it takes about five minutes to make it.

You take a piece of cuprous screening such as you use the mosquito netting and you draw it through a crucible of cuprous chloride and you get this sort of plating out on the wire.

And I connected the two electrodes together to a bowl and I might say that I’m going to put this together using the method taught by Alessandro Volta in 1880 —

This is not Skrivanoff?

John A. Reilly:

I beg your pardon?

I hope not.

But this is a very, very simple thing.

You just take a piece of Kleenex and wrap it around the cathode so as to prevent a short circuit between the cathode and the anode.

Then you put the cathode inside the anode and hopefully it’ll work.

Now, actually since 1800 everyone has known that this combination really can’t work.

Batteries were invented by the great Italian scientist, Alessandro Volta in 1880 — 1800 and at that time, he determined by a very simple experiment.

He used a sheet of silver, a piece of silver and a piece of copper, between them he put a little piece of cardboard.

And he took that battery and soaked it in water.

First water-activated battery and the first one that didn’t worked.

And immediately determined that since it didn’t worked he had add substances such as salts or basic materials or acids to the water in order to produce the ions that my Brother Douglas has mentioned so that electricity can be conducted by the water.

Pure water is an insulator.

It will not conduct electricity.

Magnesium is insoluble than water.

So is cuprous chloride.

So is cuprous chloride with carbon, insoluble in water so when you put the two substances into water neither one can dissolve in the water.

You can’t get a chemical reaction to form a conductive electrolyte and the water remaining can conduct electricity, so on the basis of conventional voltaic theory, this battery cannot operate.

And that’s the very good reason why nobody bought it with these things together.

As the expert the trial testified, in 1939 it was ridiculous for Adams to take two insoluble substances like magnesium and cuprous chloride and put them in an insulator like water and expect to have a battery.

John A. Reilly:

Now, if I have some water which of course (Inaudible).

The water is difficult.

John A. Reilly:

Now specifically, the Government’s position is that the battery is not new, it is useful and it’s obvious.

There is a very short answer to this and the answer is this.

If the components of Adams had been put together before, the battery would have had the characteristics of the Adams battery.

Chemicals are chemicals.

They work the same way every time if you have the same chemicals.

But the fact of the matter is that there has never been a battery prior to Adams that had its characteristics.

The Adams battery characteristics are opposite in most cases to every prior art battery, a 140 years of battery research.

This is the first different battery since Volta invented the battery of 1800.

Secondly, the Government says it’s obvious but when Adams took his battery a month after Pearl Harbor and went to Fort Monmouth as he was directed to do and displayed it to the assembled battery experts including Dr. Fishback and Dr. Mendel, who later on filed their owned patent on the same battery, they looked at the battery working in front of them with a steam coming out of it and told Adams it can’t work.

That’s the battery the Government say’s is obvious.

Now, I’ll put in the water.

Now, I’m using warm water here, hopefully so that this battery may activate before my 30 minutes are up.

The Government relies upon two additional references, the Niaudet text and the Hayes — and the Hayes patent.

Both, well, I think Niaudet with 1880 and Hayes is 1883.

The Niaudet text teaches the second water-activated battery.

My Brother Just — my Brother Douglas is correct on this and in the same text if you read it and you’ll find it at page — Record 515 on the same or the next page it says that the Niaudet battery which was actually the Marie Davy battery did not work and it didn’t work until another scientist named De la Rue came along and put salts or sal ammoniac in the water and then the battery worked.

So the art had it’s understanding of the battery theory reinforced by Niaudet.

You have to take all of the Government’s references put together because when you take the totality of the Government’s references in conjunction with the ones that Adams put in, you arrive at the inescapable conclusion that what the Government and Adams combined to prove was that no one in the battery art believed that water could possibly function in a battery.

Everybody in the battery art knew that you couldn’t use magnesium in a battery and the cuprous chloride had never been successfully used in any practical battery and that’s the totality of the Government’s art and ours.

(Inaudible)

John A. Reilly:

I don’t know whether you can see that small light that I have there, it’s only a one and a half volt lamp.

That’s all that this battery will produce itself.

What you say Mr. Justice White is quite correct.

Bert Adams was not a scientist.

He didn’t know that what he was doing was impossible.

He didn’t know that the combination he put together was ridiculous.

But as a matter of fact to be fair to Adams, Adams is a natural genius and he disbelieved these theories that I’ve been talking about.

He said that magnesium is soluble in water.

John A. Reilly:

And he believed that cuprous chloride could be solublized in water.

And he believed that water could carry a conductive electrolyte in combination with the magnesium and he is the only one who is right.

So untutored or not, he is a bona fide natural genius and understand the conditions under which this man worked.

He had no laboratory.

He made his experimental batteries that he delivered to the army by the dozens on his kitchen stove.

These were the people watching this untutored man come in and you can understand why they had difficulty believing him.

He just didn’t looked prepossessing, he didn’t appear to be the type that you would think could be a great scientist but the fact of the matter is, that if you go back to battery science you have to say that since Volta, there has been Edison, Adams — now, the 18 —

Byron R. White:

So this battery actually works, the one he brought to the army?

John A. Reilly:

Oh yes!

Byron R. White:

I thought somebody had to give him a little — had to inclose a little bit.

John A. Reilly:

I beg your pardon Mr. —

Byron R. White:

To the one he actually brought in worked, right then and there.

John A. Reilly:

Oh, quite correct.

That’s proven by the article Dr. Fishback wrote in 1952 where he said, “When we looked at this battery originally we thought that because of its self-initiation and exothermic reaction was inoperative but now we realized that those two characteristics give it two of his most important advantages and that’s why it files this patent on it.

And my Brother Douglas finds both with the claims of Adams, but if you read the claims of Fishback, you will find that Fishback is claiming a battery with a magnesium anode and a cuprous chloride cathode with carbon in it except he said that my battery is porous.

He didn’t tell the United States patent office which the Department of Justice sometime excoriates that the Adams’ patent taught how to make the cathode porous by the use of carbon.

And the 1880 Niaudet reference which has just been referred to taught the exact method that Fishback used to make his electrode.

So that the invention of Fishback is anticipated by the art that is cited by the Government today, yet the Government has not disclaimed that patent, it is still viable, it could be asserted against anyone.

Indeed, it could be asserted against Adams.

Now the third reference, the fourth reference presently relied on by the Government is Codd.

And the Codd textbook I think is the most devastating answer to the Government’s case.

It’s a textbook published in 1928.

It’s fairly extensive in three places, widely separate.

It mentions one, magnesium, and teaches that if you put magnesium into a sulfuric acid opposed to copper you can measure its electromotive force.

Two other or three other references put in by the Government teach that if you put magnesium and sulfuric acid it will be destroyed in a matter of minutes.

Other references put in by the Government teach, teach no one knew how to use magnesium in a primary battery as of 1928.

So it was perfectly obvious that what Codd was teaching was merely an electrical measurement method, it was not a battery.

The second substance mentioned by Codd is silver chloride 40 pages away from the mention of magnesium.

The third being mentioned by Codd is that the arts was trying to make water-activated batteries and it gave several examples.

And these water-activated batteries were made by putting the salts which you need to make the water conductive into the interstices between the electrodes.

John A. Reilly:

Then you pour the water in, the salts are melted by the water and the battery becomes conductive and operative.

So there in Codd mind you, is magnesium, silver chloride, and water.

No one suggested that they could ever be put together.

Codd didn’t suggest that.

The closest the Government comes to anticipating Adams is defined that almost all of the substances used by Adams which were cuprous chloride magnesium activate the battery with water were combined in a book, not in a battery, 1928 ten years before Adams.

Now, actually all of the references are distinguished because of the ref — several references cited by my Brother Douglas.

He mentioned Jiu Mao, and Jiu Mao was a patent in 1937, just two years before Adams and Jiu Mao said, “Here is the way you make magnesium work in a battery.”

Jiu Mao doesn’t work.

The testimony shows Adams’ expert, faithfully reproduced Jiu Mao tested it.

It does not function.

That’s Jiu Mao.

The second one is that silver chloride is cited by the Government and may refer to the Hayes and Niaudet, those patents.

Now, at the trial, Adams insisted that cuprous chloride which he disclosed in his patent and silver chloride which is not disclosed in his patent but which he told the army about in 1942 were equivalent.

You said they’ll both work in my battery.

We put in eight requested findings of fact to the Commissioner requesting the Commissioner to find that cuprous chloride and silver chloride were equivalents.

The Government opposed them all.

The Commissioner in his decision stated that he refused to find that cuprous chloride and silver chloride were equivalent, he therefore held that the Government’s procurement of silver chloride, magnesium, water-activated batteries was not an infringement.

We acquiesced the Government with no exceptions.

Now the Government comes to you and says in its petition for the reason for granting certiorari.

Cuprous chloride and silver chloride are equivalence and you should reverse the Commissioner because he didn’t in fact find that.

In other words, they ask you to reverse the Commissioner on a finding of fact — for filing to find or for making a decision that they themselves induced the Commissioner to make.

And as you know we have a motion pending on that.

Now, to get to the point about the battery being unobvious, the reason the Adams battery could — the reason the scientist couldn’t believe the Adam’s battery when saw it operating is because in fact it does not operate like any other battery.

I have here a draft which is a copy of plaintiff’s Exhibit 38 with the exception of the two ledgers.

And this graph was made by a battery scientist at Fort Monmouth named Shore.

Now, Shore was not one of the men that Adams talked to.

Shore was the man who was given a — just simply a copy of the Adams’ patent and asks to do some experimentation.

And the experimentation he did was to follow that art and make several batteries.

This is one of them.

And if you see this curve, this flat line going out about three-quarters away across the graph that is the curve of the battery he made following simply the instructions in the Adams’ patent.

John A. Reilly:

Now, he had some other duties that were not fully explained but at any event he took each of the elements in the Adam’s patent such as magnesium and he tried all kinds of other chlorides with it.

And then he would take cuprous chloride and find all kinds of different metals with it.

And then he experimented with different types of electrolytes and he found out that the only combination that worked was the one that Adams thought.

All the others were failures.

At the same time he ran some tests on two commercial Colesman’s (ph) batteries which at that time and this is 1944 were being procured by the Government for high altitude meteorological research and he plotted the curves of the voltage delivery of those two batteries and here you see that they go down.

Now this is an experimental Adams battery, built by a man who built two or three of them against the best commercial procurements of batteries that the Government could manage in the middle of the war.

Your Honors, this is the real prior arts.

This is what’s Skrivanoff pays Niaudet, Codd and all of the rest of them taught the battery art.

You couldn’t make a battery that would give you any constant current on continuous service.

You couldn’t make a battery that didn’t show an early failure.

This battery of Adams is the first battery that would give continuous power efficiently.

Every other battery when you put it on in continuous service declines so fast that it reached the point of an operativenss — even operativeness in a very short period of time.

This is the first battery that will give a level power like a generator.

And practically every electrical device, radio sending or receiving sets, whatever it may be requires level electrical power to work efficiently.

It cannot work efficiently on declining (Inaudible) fading radios and various other patents.

The third thing about this battery and the reason why the battery scientists at Fort Monmouth had so much trouble understanding how it could work is that when Adams demonstrated it and I don’t think you can see that here there’s too much water but the battery heats up and as a matter of fact it will boil.

The water in the Adams battery will actually come to a boil, steam will come out of it.

Now, every prior art voltaic battery, when it begin to heat up it was polarizing, losing power and destroying itself.

In the Adams battery the heating reaction is pure side reaction, it does not affect the level — continuous production of electrical power whatsoever.

But, because of the boiling phenomenon the Government felt and these experts felt that this was a battery that was running away and destroying itself.

In fact it is the boiling of the Adams battery that permits the battery to operate at -960 degrees below zero.

Almost a 100 degrees below the freezing temperature of the water it’s filled with and this is the battery that has licked the age old problem in the battery art of low temperature performance.

There is no other battery that will work well at 60 degrees below zero.

There’s just isn’t.

And the Adams battery today is used by the Government for more unusual and usual uses than any other battery.

This battery for example is used in meteorological research.

Its sent up to a 100,000 feet in the stratosphere where the temperature goes down to 60 degrees below zero and this is the only battery that will work under those conditions effectively.

Excuse me.

John A. Reilly:

Now, there were other reasons why the Government experts could not believe that it worked.

And these are the reasons why the battery is not really obvious.

John A. Reilly:

You can’t start this battery when you want to.

It isn’t like everyone of the prior art batteries which — they are both experts at the trial called a bell ringer, when they pushed the button, the battery delivers current and the bell rings, when you take your finger off the button it stops.

The Adams battery won’t do that.

It takes a half hour to start the Adams battery if you put it together unless you use special methods such as hot water to energize it rapidly and if you don’t do that the bat — and another thing about the battery is that you can’t stop it.

I can des –I can take that bulb out and break the external circuit, that battery will go right on boiling and generating and using itself up.

That’s what the Government experts called a self-destructive feature.

The other thing about it of course is the fact that it boils over and conventionally all the experts know that a battery that heats up was destroying itself.

Now, we say that the Government takes the position that the Adams battery is simply not new and simply obvious because it doesn’t wish to address itself, so the real question for which possibly this Court granted certiorari.

We feel that if you apply the test which were set forth in the A & P case and in Cuno and in Ray-O-Vac and when I refer to the ANP case I refer to both the majority in the concurring opinions.

We feel that when you apply the facts of records to those criteria, you’ll find that Adams meets the criteria of ANP completely.

For example, in ANP it was stated that as a result of the combination there had to be something unusual, the whole had to be greater that the sum of the parts.

Now what does that mean?

Supposing a battery that the whole were just equal to the sum of the parts, you’re using a better anode, a better cathode, possibly energize it in some better way.

You would get a better conventional battery.

These carriers might have come out a little further.

But it would still be a bell ringer.

It would still give you only intermittent as opposed to continuous power.

It would still give you only declining power as opposed to leveled power and it wouldn’t work at low temperatures.

In the Adams battery you put together an anode and a cathode and what do you get?

You get a battery that’s not like any other battery, indeed it’s more like a heat engine than a battery.

And it develops power in a way that it’s none like a battery but indeed is like a generator.

The whole is greater than the sum of its parts.

The second point made I believe in ANP was that it is necessary that the useful arts in majority opinion or the particular science involved had to be greatly advanced.

In this case it would be the science of electrochemistry.

I don’t think the Government disputes that the science of electrochemistry has been greatly advanced by Adams.

Here we have the first unexplained experimental results since Volta.

The voltaic theory no longer fits all observed experimental phenomena in the battery field.

The next point is —

Byron R. White:

Now, are these results still unexplained?

John A. Reilly:

Yes Your Honor.

John A. Reilly:

No one really understands this.

There are three things that are unexplained about the Adams battery.

First of all, no one understands why this combination does generate current.

Secondly, no one understands why this delivery curve of voltage remains leveled.

This is a primary battery.

You put the parts in it with all the electrical energy when you put it together.

And then as it grows older and is used there’s less and less material and you would expect and indeed all prior art batteries decline as you have less material, less magnesium, whatever it may be working in the battery.

This does not and no one can understand why it doesn’t go down.

Almost every curve that you see in nature are natural phenomenon has a curve to it.

That’s why they’re called curves.

This is the first straight line curve and when it comes to the end of it’s life it falls right off the cliff, this peculiar little zigzag in this graph is due to the fact that Mr. Shore lets its battery run out of water.

So you put some water in it, gaining back the life and decline.

Byron R. White:

So to this day, these phenomena that you described are unexplained in the — in — like in the area of electrochemistry or whatever it’s called?

John A. Reilly:

That’s correct.

Mr. —

Potter Stewart:

(Inaudible)

John A. Reilly:

(Inaudible)

Potter Stewart:

Is it still accepted that magnesium is not soluble in water?

John A. Reilly:

Yes.

Yes, magnesium is not soluble in water.

To any substantial degree I might say that magnesium is soluble in boiling water.

So I suppose if you want to make a battery out of magnesium all you have to do is create one that will boil and if that’s the answer this is the only boiling battery, that’s true though.

The second point or the last point and this particularly applied to the concurring opinion in ANP with the requirement that masters in the field of electrochemistry should have recognized the contribution to be an important scientific advance.

And in that connection I would like to just mention briefly what the masters in the field of electrochemistry have said about the Adams battery.

Dr. Fishback, magnesium, cuprous chloride batteries have obtained considerable importance particularly as meteorological batteries.

Dr. Chove (ph) in 1952, the exact nature of the complex chemical current producing reactions of this type of cell is not known in any substantial detail.

Morse, the water-activated battery systems are among the relatively new power sources which have become extremely important to the military during the past decade.

Morse, the definite trend to water-activated batteries for high altitude and seawater applications indicates they are unsurpassed as one shot power packs for low temperature use and for underwater operations.

Morse, there can be no doubt that the addition of water-activated batteries to the family of power sources has brought about developments which would otherwise have been technically or economically impractical.

Recognition by outstanding experts in the field of electrochemistry that this untutored simple man has made an important advance in the science of electrochemistry and I think the requirements that this Court enunciated in ANP for invention have been fully met by Adams and beyond that I think the statement in Cuno has been met.

John A. Reilly:

I think this is surely a work of creative genius not merely the skill of the calling.

Thank you.

Earl Warren:

Mr. Douglas

John W. Douglas:

If the Court please, so far as constant current is concerned, that had been suggested in a number of prior references, Wensky, Niaudet, Hayes, and Jiu-Mao all contained in the record and the suggestion in those prior references was that a metallic chloride would do the trick.

When this battery was taken up to Fort Monmouth, difficulty was that it boiled over and that’s what put the army scientist off.

But I think the significant point about my res — distinguished opponents argument is that it was devoted almost entirely to results.

There was no detailed effort to justify the scientific events in terms of the prior art except to say that one was operable and the other wasn’t and that something else achieve certain results whereas others had not.

Even if what he said was absolutely correct, this would still not established patentability because the test under Section 103 is, had this been apparent to someone skilled in the field in the prior art and there’s no findings that there was any such seach in this case and in fact the comparison of the Skrivanoff and Adams’ bat — patents saw that they’re virtually congruent.

And for these two reasons we believe that patentability should not be sustained.