Full opinion text
FINDINGS OF FACT AND CONCLUSIONS OF LAW AUSTIN, District Judge. THE PARTIES, ISSUES, AND JURISDICTION 1. Plaintiff, Shelco, Inc., is a Massachusetts Corporaion having its principal place of business at Wellesley Hills, Massachusetts. Plaintiff, The Shelco Company, is a Delaware corporation having its principal place of business at Wellesley Hills, Massachusetts. The Shelco Company is a wholly-owned subsidiary of The Clorox Company, an Ohio corporation authorized to do business in Illinois. (PI. Pretrial Brief 7) 2. On December 4, 1969, The Shelco Company acquired substantially all of the assets of Shelco, Inc., including the right, title, and interest in U.S. Patent No. 3,335,092 (the patent in suit). Shelco, Inc. was the owner of the patent in suit prior to December 4, 1969. (PI. Pretrial Brief p. 7) Shelco, Inc. was the sole plaintiff until January 14, 1970, when, on plaintiff’s motion, The Shelco Company was joined as a party plaintiff on condition that it be bound by all proceedings in the case with the same force and effect as they are applicable to Shelco, Inc. (9-10). The Shelco Company also agreed in open court to assume any liabilities of Shelco, Inc. arising from this case (18-19). Hereinafter, unless otherwise indicated, the plaintiffs will be referred to as “Shelco.” 3. Shelco, Inc. became the owner of the patent in suit by way of an assignment from Winfield Brooks Company, Inc., the assignee of the patentee, Kenneth E. Perry (PL Pretrial Brief 7). There is a continuing relationship between Shelco, Winfield Brooks, and Mr. Perry, as follows: Mr. Perry is the President of and owns the controlling interest in Winfield Brooks, and he is a Director of and, through Winfield Brooks, owns approximately 35% of Shelco, Inc. (811, 1082, 1127-29). Winfield Brooks makes and Shelco sells the oven cleaner (“Jifoam”) which is the commercial embodiment of the Example of the patent in suit. (1087,1092,1302; Stipulated Statement of Uncontested Facts p. 3). 4. Defendant, The Dow Chemical Company, (hereafter “Dow”) is a Delaware corporation having a regular and established place of business in Chicago, Illinois. Defendant Harry G. Schierholz & Co. (hereafter “Schierholz”), is an Illinois corporation having a regular and established place of business in Chicago, Illinois. 5. On August 10, 1967, Shelco, Inc. filed a complaint (C.A. No. 67 C 1393) charging Dow and Schierholz with infringement of U.S. Patent 3,335,092, entitled “Oven Cleaner and Method of Using the Same.” Dow is the manufacturer of an oven cleaner (“Dow All New Oven Cleaner”) charged to infringe this patent and Schierholz is Dow’s distributor for this oven cleaner in the Chicago area. 6. On December 21, 1967, Shelco, Inc. filed a complaint (C.A. No. 67 C 2190) charging defendants Boyle-Midway, Inc. (hereafter “Boyle-Midway”) and American Home Products Corporation (hereafter “AHP”) with infringement of the same patent by manufacture and sale of Boyle-Midway’s “Easy-Off” oven cleaner). 7. All defendants have filed counterclaims seeking a declaration of invalidity of the patent and attorneys’ fees and Dow has further counterclaimed for treble damages under the antitrust laws. 8. This Court has jurisdiction of the parties and subject matter. Venue in this District is proper. 9. By order of October 1, 1969, C.A. Nos. 67 C 1393 and 67 C 2190 were consolidated for trial on the sole issue of validity of the patent in suit. THE PATENT IN SUIT 10. On December 4, 1963, Kenneth E. Perry filed his original application for the patent in suit (DX 74). A first revised application was filed July 6, 1964 (DX 75) and a second revised application was filed on August 26, 1965 (DX 76). The August 26, 1965 application matured into U.S. Patent 3,335,092 on August 8, 1967 (DX 77). 11. The patent relates to a composition for cleaning ovens, grills, and similar surfaces and to a method for applying the composition. Dow and Schierholz are charged with infringement of composition and method claims, specifically Claims 1-6, 14, 16-19, 26, and 28-32. American Home Products and Boyle-Midway are charged with infringement of the same claims with the exception of 31 and 32. (Stipulated Statement of Uncontested Facts, p. 3; PI. Pretrial Brief, p. 10). 12. The sole composition example of the patent in suit reads: "EXAMPLE Proportion, Ingredient: per cent NaOH (in the form of a 50% solution or 50° Baume) ........................ 3.0 Ammonium salt of the sulfate ester of an alkylphenoxy polyoxy ethylene ethanol, . . sold under the trade name Allpal CO-436 by Antara Chem. Co. (surfactant) ... 1.0 Sulfonate surfactant sold under the trade name Benax 2A1 by Dow Chemical Co. ... 0.1 Propylene glycol ........................ 20.0 Furfuryl alcohol ........................ 1.4 Tetrahydrofurfuryl alcohol ................ 0.7 Water (Including water of NaOH solution) .... 73.8 l. Exclusive of water in solution." Mr. Perry, the inventor, summarized his invention as being: “the development of the best oven cleaner on the market that could be— that was basically a safe aqueous caustic oven cleaner applied to a hot oven through an aerosol can, gaining the benefits both of the ingredients and the application through an aerosol can, * * *” (1249) 13. The composition claims, broadly, call for a liquid oven cleaner for application as a spray to a hot oven, consisting essentially of water in an amount of over 50% by weight of the composition, and an alkali metal hydroxide in an amount of from 1-10% of the composition packaged in an aerosol container with a propellant (e. g. Claim 16). Both sodium hydroxide and potassium hydroxide are classified as alkali metal hydroxides (51, 1254-55). 14. Certain narrower claims specify that the alkali metal hydroxide be sodium hydroxide in an amount of 3% and further call for the presence of any amount of a humectant and any amount of a surfactant (e. g. Claim 28). 15. A humectant, in the context of this patent, is a substance used to retard evaporation of the composition. (DX 77, Col. 3, lines 41-44; 59; 3358; 3385-86). No specific amount of humectant is specified by any of the claims. The specification says the amount of humectant may be as little as 1% or may be omitted altogether. (DX 77, Col. 3, lines 53-56, 70-73). The humectant can be either a glycerol (a polyhydric alcohol known commercially as glycerine), a glycol (an alcohol having two hydroxyl groups), or any alcohol having more than two hydroxyl groups. (DX 77, Col. 3, lines 41-44; 60-65; 1623-24; DX 624; 3351-55). 16. The term “surfactant” is a shorthand term for a surface active agent (39). In the context of this patent, a surfactant is a wetting agent (40; 2373). The surfactant can be one (or more) selected from the groups classified as anionic (carrying a negative charge in solution), cationic (carrying a positive charge in solution), or nonionic (carrying a neutral charge in solution) (65-66; DX 77, Col. 3, lines 62-70). No specific amount of surfactant is called for in any of the claims, nor in the specification. (DX 77, Col. 4, lines 3-6). 17. The method claimed by the patent is to spray the composition on a hot oven, leave the composition on the hot oven for an interval of time, and then remove the composition (e. g. Claim 1). Some claims state that the oven should be at a temperature of at least 140° F. (e. g. Claim 6). 18. While both the composition and method claims refer to the composition as being sprayed from an “aerosol container” by a “propellant,” the patent specification states that the “same results were achieved by spraying the cleaner * * * on a hot oven with a conventional pressure atomizer” (DX 77, Col. 3, lines 38-40). 19. In the patent in suit, the reduced caustic (3%) is said to have the advantage of making the cleaner safer, less corrosive, and easier to store (Col. 1, lines 48-52; Col. 2, lines 3-5). The spray is said to make the cleaner less messy to apply and easy to remove (Col. 1, lines 44-48; Col. 2, lines 14-17). The application to a hot oven is said to be more convenient in that the oven may be cleaned without waiting for it to cool (Col. 2, lines 63-67), and the elevated temperature speeds the reaction to the point where the cleaning can be done in 5 to 20 minutes, a fraction of the time required by paste cleaners (Col. 2, lines 50-56; 18-26). It is to be noted that while the patentee says that heat is essential to his invention (1318; 1325-26) Shelco maintains, under oath, that the composition is covered by the patent claims whether used on a hot or cold surface (PL’s Ans. to Interrog. 79.10, 805). 20. In written arguments and sworn affidavits submitted to the Patent Office during the pendency of Perry’s third application, Perry made the following statements: “This demonstrates the deep-seated opinion of those skilled in this art pri- or to applicant’s invention that (1) caustic oven cleaners should, under no circumstances, be applied to a hot oven and (2) the aerosol packaging of aqueous solutions of sodium hydroxide for oven cleaning was too hazardous to be acceptable, two misconceptions which applicant proved to be untrue.” (DX 76, p. 89) ****** “However, recently, after JIFOAM [Perry’s oven cleaner] disproved the prevailing belief of those skilled in the art that (1) aerosol packaging of acqueous solutions of sodium hydroxide is too hazardous and (2) applying a caustic solution to a hot oven is too hazardous, * * * ” (emphasis added) (DX 76, p. 91) ****** “Thus, after applicant had disproved the prevailing beliefs that aerosol packaging of aqueous solutions of sodium hydroxide for oven cleaners was too hazardous to be practical and that application of alkaline oven cleaners to a hot oven was also too hazardous, * * * ” (DX 76> p 94) ****** “In achieving this commercial success, it was necessary to overcome the prejudices of those skilled in this art, as evidenced by the Consumer Reports, against aerosol packaging of aqueous sodium hydroxide oven cleaners and against application of alkaline oven cleaners to a hot oven.” (DX 76, p. 96) ****** “So far as I know, I am the first to have thought of aerosol packaging a sodium hydroxide-water or sodium hydroxide-water-glycol oven cleaner and am the first to have thought of applying such aerosol oven cleaner to a hot oven at a time when others in this field were of the opinion that it would be dangerous and unsatisfactory to do either.” (DX 76, p. 94) 21. Although Perry’s testimony, continuing his approach before the Patent Office, contends for a very broad scope of invention, the advance over the prior art now asserted by Shelco is that Mr. Perry was the first to teach that an aqueous solution oven cleaner with reduced caustic (less than 10% free alkali metal hydroxide) and a large percentage (20%) of propylene glycol could be stored in aerosol metal cans and sprayed on a hot oven to produce a foam which would achieve quick, effective, and safe cleaning. (21-32; PI. Pretrial Brief 3-5, 16-24). This is considerably narrower than the position urged on the Patent Office and the patent’s broad assertion that the advance was over prior art oven cleaners which were applied as thick, messy pastes having a high (10%) free alkali metal hydroxide content and which were all applied to cold ovens (Col. 1, lines 20-43; Col. 2, lines 3-17). It is also considerably narrower than the claim language which, for example, does not speak of metal aerosol cans, nor foam, nor any proportion of humectant or propylene glycol, nor, in many cases, even a reduced caustic. 22. Without a surfactant, an aqueous caustic in an aerosol container with a propellant will not foam or adhere to a hot oven wall. (Lover 2165-2166). Most of the claims of the Perry patent do not call for the use of a surfactant (the foaming agent). (Claims 1, 3, 4, 7, 8, 9, 11, 12, 13, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 29, and 30). Mr. Perry, the inventor, echoing his Patent Office arguments, testified: “Q. Then a 3 percent aqueous caustic, with an aerosol can, applied to a hot oven is within your invention? * *- * * ■* * “A. In the broad claims, it would be so, sir.” (Perry 1341). Hence the term “spraying” found in the method claims is not limited to the spraying of a foam but was intended to cover any form of spray. That this was the intention of the inventor is shown by the statement in the patent that “The same results were achieved by spraying the cleaner of the example on a hot oven with a conventional pressure atomizer.” (Col. 3, lines 38-40). There are frequent references in the patent to “spray or foam” (e. g., Col. 5, line 59) which only confirm the broad intended meaning of the term “spraying” found in the method claims. 23. From the above findings, it is apparent that in its examination of the prior art the court must look primarily for art teaching the use of freely flowing aqueous solutions of free alkali metal hydroxides in amounts not more than 10% by weight that were suitable for spraying on a hot oven. In view of Findings 21 and 22, the vehicle by which the spray is dispensed is not critical; nor is the form of the spray (that is, whether it foams). With respect to the narrow claims, the Court, in addition, must look for the presence of a surfactant and a humectant, though the amount of either is immaterial. With respect to the humectant, the Court must further look for the use of glycols, glycerols or other polyhydric alcohols as the humectant and, with respect to two claims (31, 32) it must look for the use of propylene glycol as the specific humectant, though in no particular percentage. In view of the absence of any teaching in the patent that a high percentage (such as 20%) of propylene glycol functions as a particular safening agent, or that propylene glycol serves this function better than any other humectant specified in the patent, the prior art, contrary to Shelco’s contention, need not be examined for this teaching. The prosecution history of the Perry patent also casts light on the scope of inquiry into the prior art necessary for resolving the issues herein. PERRY’S ORIGINAL APPLICATION; HIS TWO REVISED APPLICATIONS; AND HIS CANADIAN AND GREAT BRITAIN APPLICATIONS 24. While the scope of the prior art to be looked for has been defined by Finding 23, the Court must also determine the effective filing date for the claims in issue; that is, the cut-off date for “prior” art. The prosecution history of the Perry patent casts light on this factor. 25. On June 4, 1963, Perry made a disclosure of his oven cleaner formula to his patent attorney. (DX 63) The disclosure stated: “For the oven cleaner, the ratio of tetrahydrofurfuryl alcohol and furfuryl alcohol is essential. It can be varied somewhat but neither can be eliminated or replaced with like alcohols.” (Emphasis added). 26. On December 4, 1963 Perry’s patent attorney filed Perry’s first application for patent (DX 74, pp. 1-15), serial 328,114. The first seven claims of the ten claims of the original application, as filed (DX 74, pp. 13, 14) were limited to an over cleaner composition which included a catalyst designated as furfuryl alcohol and tetrahydrofurfuryl alcohol. The remaining three claims were limited to a method of using the oven cleaner composition having the catalyst defined in the first seven claims. In other words, each claim of Perry’s original application contained the limitation to furfuryl alcohol and tetrahydrofurfuryl alcohol. The claims were appropriately and necessarily drawn in this limited way in view of Perry’s communication to his attorney disclosing his invention. 27. Perry’s disclosure further specified his invention and taught the neces- i sity of the furfuryl alcohols in his oven cleaner: “The present invention is based on the surprising discovery that a mixture of furfuryl alcohol and tetrahydrofurfuryl alcohol catalyzes and enhances the cleaning action of the sodium hydroxide, especially at elevated temperatures, to such a great extent that the amount required can be reduced to less than % and such reduced amount has a markedly greater and faster cleaning power.” (DX 74, p. 3, lines 21-27) (emphasis added) ****** 28. On April 20, 1964, more than one year after the sale to Vaughn Electric, Kenneth E. Perry filed an amendment to his original application, Serial No. 328,-114 adding a new Claim 11 which was not restricted to an oven cleaner composition containing the catalyst. (DX 74, p. 16) Claim 11 reads: “ * * * A method of cleaning ovens comprising spraying on the oven while it is hot, a composition in the form of a foam and containing as an essential ingredient, an alkali metal hydroxide, leaving said composition on the hot oven for an interval of time and wiping the composition off said oven.” (DX 74, p. 16) This claim was rejected by the Patent Office on April 2, 1965 “as failing to point out the invention in the methods claimed, since the necessary furfuryl-tetrahydrofurfuryl alcoholic mixture has not been set forth”. (DX 74, p. 19, paragraph 7). (Emphasis added) Perry abandoned this original application without response. (DX 74, p. 21). 28a. Perry filed a first revised application (DX 75) on July 6, 1964 in order to get the broadened disclosure of new claim 11 under oath. (DX 75, p. 15). The Patent Office, in the first revised application, believed that claim 11 was still faulty: “7. Claims 11-13 are rejected as indefinite and as failing to point out the alleged invention since the necessary hydrofurfuryl-tetrahydrofurfuryl alcoholic mixture has not been set forth.” (DX 75, p. 19, March 2,1965). In response to this rejection, Perry directly misrepresented a critical fact: “Original claim 11 has been incorporated into the specification. Such original claim was a part of the original disclosure.” (DX 75, p. 33) 29. In subsequent arguments in Perry’s first and second revised applications before the United States Patent Office and in companion cases before the Canadian and Great Britain Patent Offices, Mr. Perry argued that the “broad concept” of his invention — not limited to the use of the catalyst — was first disclosed on the date he filed Claim 11, April 20, 1964, which was more than one year after the sale of his oven cleaner. For example, on August 23, 1966 the Canadian Patent Office rejected all claims in the corresponding Canadian application (originally identical to the U.S. application, as amended by the addition of Claim 11), which were not limited to the use of the furfuryl-tetrahydrofurfuryl alcohol catalyst: “According to the disclosure page 3, lines 21 to 27, the invention of the present application is based on the use of a mixture of furfuryl and tetrahydrofurfuryl alcohols, which catalyzes and enhances the cleaning action of the sodium hydroxide at elevated temperatures. (Emphasis added) Therefore claims 1, 12, and 13 are rejected as not being supported by the disclosure and must be cancelled.” (DX 608, p. 417) 30. Perry argued that the disclosure of claim 11 (which was filed with the original Canadian Application but was not included in the U.S. application until the amendment of April 20, 1964— more than one year after a sale of Perry’s invention) provided disclosural support for the non-catalyst claims: “This broad concept of applicant’s invention is clearly set forth in claim 11 as originally filed with the application, with no reference being made therein to the presence of a catalyst in the cleaning composition. This broad concept of the invention and applicant’s intent to claim the matter broadly is all the more clearly realized upon reference to originally filed claim 12, [not in original U.S.. application, until amendment of April 20, 1964), which is dependent upon claim 11 but further recites the presence of the catalyst in the broad cleaning composition of claim 11. This is a crystal clear teaching that the invention is not limited to the presence of the catalyst. It is also clearly stated on page 11 of the original disclosure that the invention is not limited to the description of the specification but only to the compositions and methods claimed in the claims, among which is claim 11. Thus, when the original disclosure is viewed as a whole, which it must be, it discloses that the invention in its broadest aspect does not require a catalyst and that use of such catalyst is a narrower aspect of the invention as is the use of the humectant.” (DX 608, pp. 412, 413) (Material in brackets added) (Emphasis added) -X -X- * -X- X * “Thus the catalyst merely enhances and improves the overall broad inventive concept. In order to distinguish between the broad aspect (as per original claim 11) and the narrower aspect (the use of catalyst and/or humectant) of the inventive concept this paragraph [of the Canadian disclosure] has been amended to refer to such narrower aspect as a part of the invention.” (Emphasis added) (DX 608, pp. 413, 414) (Material in brackets added) 31. The earliest effective filing date to which Perry is entitled for the broad non-furfuryl alcohol limited claims (all of the claims here in issue) is not December 4, 1963, the date of his first application, but April 20, 1964, the date on which claim 11 was added to the first application. PRIOR ART PATENTS 32. The patent in suit relates broadly to the art of cleaning compositions and, specifically to compositions for cleaning cooking residue from ovens. Prior art cleaning compositions have traditionally utilized an alkali as their active (cleaning) ingredient. (40-41) Alkalis are basic substances which are characterized by the predominance of hydroxyl ions (OH=) when dissolved in water, as opposed to acidic substances which are characterized by the predominance of hydrogen ions (H+). The presence of these ions can be detected and expressed on a scale known as the pH scale wherein “7” indicates neutrality; “7” to “14”, increasing alkalinity; and “7” to “0”, increasing acidity. (47-48) The most commonly used alkali is sodium hydroxide (NaOH), but other alkalis, such as potassium hydroxide (KOH) or sodium metasilicate, (alone or mixed physically with 40% NaOH and sold as sodium orthosilicate) were also commonly used as the active ingredient in cleaning formulations, including oven cleaners. (40-41; 50-52; 55). 33. The cleaning reaction, generally speaking, is the reaction of the base alkali (frequently referred to as a “caustic” because of its high pH and consequent corroding effect on skin, eyes, and metals) with the fatty acids and other compositions which comprise the baked-on residue. (DX 72, Tab. 1, Col. 2, lines 9-15) This reaction produces an alkali metal salt commonly known as soap. (1731,1746-1747) This soap-making reaction is described by the term, “saponification.” (DX 72, Tab. 1, Col. 2, lines 9-15). The soap does not stick to the oven surface and can be wiped off, leaving a clean surface. (DX 77, Col. 3, lines 34-36). 34. In addition to the alkali cleaning ingredient, it has also been common in the prior art to add certain other ingredients to oven cleaners, such as humeetants, surfactants ammonia, and others, to enhance, in one way or another, the alkali cleaning action. (DX 2; 358-60; DX 3; DX 556; PX 32; DX 72). 35. Perlman patents 3,031,408 and 3,-031,409, which issued April 24, 1962 are prior art references which teach the aerosol packaging of a reduced caustic oven cleaner (preferably 2-3% sodium or potassium hydroxide). (DX 72, Tabs. 6 & 7). This cleaner also contained compatible surfactants and glycols which functioned as humectants. (1226-31; DX 77, Col. 2, lines 32-41) The ’409 Perlman patent also taught that the spraying of the cleaner as a foam can be accomplished by, but is not inherent in, aerosol packaging. Of the 32 examples disclosed in the patent, 16 produced a non-foaming spray. (DX 85, pp. 14-16) But, Perlman says, the same “exceptionally good cleansing action” may be obtained from the spray as from the foam. (DX 85, p. 12) A similar result is suggested by the patent in suit wherein it is said the same results were obtained from a “conventional pressure atomizer” as from a foam-producing aerosol package containing a composition having a surfactant. (DX 77, Col. 3, lines 38-40). 36. The Perlman oven cleaning compositions were not water-based, but were to be applied to an oven surface which had been wetted with water prior to the application of the cleaner. (DX 72, Tab. 6, Col. 4, lines 18-21, Tab. 7, Col. 3, lines 54, 71-73) The patents per se do not disclose the use of the compositions on a hot oven, but Dow’s expert, Dr. Colburn, testified that they are chemically suitable for application to a hot oven, and the file history of the ’409 Perlman patent, page 30, states that the “glycol or glycol ether is utilized to raise the flash point of the mixture and insure safe use of the cleansing composition upon heated oven surfaces” (99, DX 85; DX 86). It is thus apparent that the Perl-man cleaners were suitable for use on a hot oven and were intended to be so used if the housewife desired. In fact, the file history of the patent in suit disclosed (DX 75, pp. 34-45) that Mr. Perry applied two of the Perlman compositions and the commercial embodiment of the Perlman patents (an oven cleaner known as “Hep”) on a heated oven surface without difficulty and obtained better results on a hot surface than a cold surface. 37. Boucher patent 3,079,284 (not considered by the Patent Office), which issued February 26, 1963, is a prior art reference which discloses an oven cleaning composition with more than 50% water and containing sodium hydroxide in an amount as low as 5%, sprayed on an oven which is then heated to increase the “efficiency of the chemical reaction of the cleaning agent with the soil to be removed, e. g., the saponification of charred fats, or the like.” The use of heat is said to permit a lower concentration of sodium hydroxide thereby making the cleaner less irritating to the skin. Boucher states that the cleaning reaction produces “a soapy residue on the surface in which the remaining soil is suspended and which may be easily wiped off to leave the desired clean surface.” Boucher also discloses the use of ammonia as commonly used oven cleaner additive. (DX 72, Tab. 1). 38. Cleveland patent 1,370,188 (not considered by the Patent Office) which issued March 1, 1921 is a prior art reference which discloses a 5% sodium hydroxide aqueous solution which is to be sprayed hot onto a surface to remove paint. The function of the sodium hydroxide is “to enter into combination with the oil of the paint and convert it into soap which dissolves and is washed away, thus causing the pigment to become loose and in turn be washed away by the water.” Thus, the cleaning reaction known as saponification is common to both oven cleaning and stripping of oil-based paints. (DX 72, Tab. 3). 39. Phillips British patent 825,960 which issued December 23, 1959 discloses an oven cleaner containing an aqueous solution of sodium hydroxide in an amount as low as 5%. This oven cleaner contained a wax-like substance that enabled the packaging of the cleaner in solid stick form. The patent also teaches the use of surfactants and the inclusion of up to 15% propylene glycol (one of the humectants of the patent in suit). (DX 72, Tab. 4). 40. Arden patent 2,992,995 which issued July 18, 1961, is a prior art reference which discloses an aqueous solution of sodium hydroxide in an amount as low as 4% for cleaning purposes. This cleaner is to be used at temperatures over 200°F. in the form of a dip (that is, the cleaner is heated rather than the object to be cleaned). This reference also discloses the use of glycerol and glycol as evaporation retarding humectants. (DX 72, Tab. 5). 41. Although not a patent, a publication entitled Henley’s Formulas, Processes, and Trade Secrets, (1948) (DX 611, Tab. 14), a reference book for the home, carries the following instructions: “TO CLEAN A GAS STOVE — An easy method of removing grease spots consists in immersing the separable parts for several hours in a warm lye, [sodium hydroxide] heated in about 70°C. (158°F.), said lye to be made of nine parts of caustic soda and 180 parts of water. [5% sodium hydroxide and 95% water] These pieces, together with the fixed parts of the stove, may be well brushed with this lye and afterwards rinsed in clean, warm water. The grease will be dissolved, and the stove restored almost to its original state.” (Material in brackets added) 42. The prior art patents and the Henley publication described above illustrate that it was common practice to use alkalis such as sodium hydroxide as the cleaning agents for oven cleaning compositions; that aqueous solutions of sodium hydroxide in the range of 4 to 5% were common in oven cleaners; that the use of heat, either applied to the cleaning composition or the object to be cleaned was known to be desirable in speeding the saponification and other chemical cleaning reactions; that surfactants are commonly added to oven cleaning compositions ; that humeetants are commonly added to oven cleaning compositions; that glycerols and glycols, including propylene glycol are common, interchangeably-used humeetants in oven cleaners; and that oven cleaners packaged in aerosol cans were used in either foam or spray applications. OVEN CLEANER PRIOR ART NOT APPEARING IN PATENT OFFICE RECORDS A. John J. Sullivan’s Activities 43. In the early 1950’s, a young chemist, John J. Sullivan of Boston did chemical consulting work for a Connecticut concern, the Wolcott Company. (1542) The President of Wolcott, a Mr. Frank Wolcott, had been the original United States developer and merchandiser of the paste-type oven cleaner “Easy Off” which was later acquired by Defendant Boyle-Midway. After selling his paste oven cleaner formulation and business to Boyle-Midway, Mr. Wolcott developed an aerosol valve stem brush type applicator which would allow the safe, controlled application of a detergent foam to an oven surface. (1542, 1552) (See DX 533) 44. Mr. Sullivan’s original formulation work with water-based caustic oven cleaners parallels in time his working association, first with Mr. Wolcott’s brush applicator, and subsequently with a sponge-type applicator (DX 535) promoted by Mr. Frank Hoar of. Essex Laboratories and a Mr. Frank Sugrue, President of Shield Chemical Company until 1958. (1566) 45. The first caustic cleaner which Sullivan experimentally packaged in an aerosol container (in 1954) was a whitewall tire cleaner containing 15 to 16 per cent by weight glycol, 3 y2 per cent potassium hydroxide, 4 or 5 per cent silicate, % per cent surfactant, and the remainder water. (1548, 1585, DX 543) This heavy-duty detergent product was not put on the market in aerosol form because aerosol can and valve technology was not at that time sufficiently advanced to make the product attractive from either a technical or price standpoint. (1549) 46. By late 1956 and early 1957, Sullivan’s efforts were again directed toward aerosol packaging of a heavy duty detergent system. (1551, 1552) After several trial and error approaches to such a product, Sullivan developed an aerosol-loaded oven cleaner designated as OC No. 1. The components of this oven cleaner included 9 y2 per cent free potassium hydroxide, 2.7 per cent by weight of Tween 80 and 2.7 per cent by weight of Span 80. Tween and Span are trademarked ingredients which together functioned in the oven cleaner as a humeetant-surfactant system. The remainder of the material in the aerosol package was water and the propellants Freon 114 and Freon 12. (1553-1555, DX 556) 47. In January 1957, Sullivan placed OC No. 1 (at that time designated W-6) in an aerosol can and allowed it to stand at room temperature for a period of eight months. This test showed the product to be in excellent condition with sufficient pressure still in the can to allow a foam to dispense from the container. (1608, 1609, DX 555) 48. The amount of KOH flake (caustic potash) by weight in OC No. 1 is listed in Sullivan’s lab books as 11.3 per cent. The evidence shows that commercial grade caustic potash is from 90 to 92 per cent pure potassium hydroxide. (1618) 49. Thus, Sullivan added approximately 10.1 per cent by weight of pure potassium hydroxide to his OC-1 oven cleaner. The evidence also shows that when the potassium hydroxide is brought into mixture with the water and the Span 80 and Tween 80, a saponification reaction occurs between the Span 80 and and Tween 80 and the potassium hydroxide. After the reaction, which takes only 15 or 20 minutes, there is theoretically an amount of free potassium hydroxide in the OC-1 solution of approximately 9.6 per cent. (1618, 1619) 50. This theoretical figure of a percentage of potassium hydroxide less than 10 per cent was supported by independent experiment of Dr. Robert M. Lazo, whose expertise in the chemical field was thoroughly established. (3345, 3346) Dr. Lazo prepared a 600 gram sample of OC No. 1 which contained 11.3 per cent commercial grade caustic potash, 2.7 per cent Span 80 and 2.7 per cent Tween 80, with the remainder of the solution being water. By actual measurement, the OC-1 formula was determined to contain free potassium hydroxide in the amount of 9.83 per cent by weight. (3348) 51. Dr. Lazo described the Span 80-Tween 80 surfactant-humectant system as containing polyhydric alcohols, which means alcohols containing three or more hydroxyl groups. (3353, 3369) Span 80 is a nonwater soluble Sorbitan Monooleate. Tween 80 is a water soluble Sorbitan Polyoxyethylene Mono-oleate. (3362, 3368) 52. By January 9, 1959, Sullivan had shelf-life tested his OC No. 1 formula in drawn aerosol cans for two years. He found no leakers whatsoever in the drawn or two-piece can (with no side seam). (1656-1658, DX 568) 53. Sullivan’s OC-1 oven cleaner was on sale from 1957 up to and including the time Mr. Perry made his alleged invention. Sullivan loaded the OC-1 formulation in sample aerosol cans for Essex for subsequent submission to potential customers, including Bon Ami and others. During this period of time the product was submitted to customers with Risdon brand break-up buttons for spray foam application as well as with the alternate sponge applicator. (1660-1661, DX 569) The OC-1 formula was suitable for application to a heated oven surface and, in fact, was so used by Dr. Terry at Bon Ami (1816-1817). 54. Essex Research, with whom Sullivan had dealt, dissolved after having financial difficulties in late 1959. After that date, Sullivan dealt directly with customers, including Bon Ami and others in his effort to sell his aerosol loaded OC No. 1 oven cleaner. (1661,1662) In Sullivan’s words, his attempts to sell his oven cleaner were thwarted by cautious marketing men in the field who wanted a hand lotion that would do an oven cleaning job. (1577) 55. Sullivan personally offered his OC No. 1 product to the Fuller Brush Company in 1960, 1961 and 1962. (1575) Sullivan quoted prices to various prospective customers and employed salesmen and manufacturers representatives from 1960 through 1962 in an effort to find a customer willing to market his oven cleaner. (1576) Sullivan’s oral testimony was well corroborated by contemporaneous documents kept by him in the regular course of business. 56. Sullivan’s records show a price quotation to Armstrong Laboratories prior to Perry’s invention date, for up to a half a million pound shipment of the OC-1 formula for aerosol loading by Armstrong. (1686, 1687, DX 576) 57. Contemporaneous with his work on the development of OC No. 1, Sullivan also formulated a whitewall tire cleaner suitable for either aerosol spray foam or mechanical pump application. The product contained one per cent by weight caustic soda, two per cent D-66, a surfactant, and five per cent diethylene glycol, a humectant, with the remainder of the formula being water. (1650-1651, DX 566) A modification of this formula was made which contained one per cent caustic soda, one per cent D-66, ten per cent diethylene glycol and the remainder water. A test of this formula showed that the foam generation and stability of the product were excellent. Fifteen gallons of this whitewall tire cleaner were sold to a Mr. Ed Devine of Crystal C and C Co. (1652, 1653, DX 567). 58. The activities of John J. Sullivan constitute the placing of an aqueous caustic surfactant humectant aerosol oven cleaner, suitable for application to a heated oven surface, in the form of a spray foam, and an aqueous caustic surfactant humectant aerosol loaded whitewall tire cleaner, on sale prior to 1962. This was before Perry’s earliest work on the invention of his patent and more than one year before the filing date of his first application on December 4,1963. There is no evidence that Sullivan, who testified at the trial, ever suppressed, abandoned, or concealed his products or his work in this area. On the contrary, there is evidence of continuous sales activity on the OC-1 oven cleaner, by and on behalf of Sullivan, during the 1957-1963 period. B. The Oven Cleaner of the Beam Chemical Company 59. From 1957 to 1961 or 1962, Mr. M. A. Becker was President and Mr. Ralph Lemorande was Vice President of the Beam Chemical Company of Oconto Falls, Wisconsin, a manufacturer of various cleaning compositions. From 1961 or 1962 to 1965, Mr. Lemorande was President and Mr. Becker was Chairman of the Board of the Beam Chemical Company. (267-68; 522-23) 60. Mr. Lemorande’s work at Beam in the period 1957-65 included formuulating compositions, packaging, shipping, sales, correspondence, and total involvement in the operations of the company. (264; 571-73) Mr. Becker was involved in the distribution, financing, purchasing, and development of the company. (584-85) 61. Beginning in 1957 and continuing to the present, the Beam Chemical Company has manufactured and sold an oven cleaner, first under the name “Beam Oven and Grill Cleaner”, and, by 1958, under the name of Beam “Wipe Away”. (322-23; DX 24) The name “Wipe Away” was not used by Beam after about March 1962. (324-28; DX 26) 62. “Beam Oven and Grill Cleaner” was sold in glass bottles in 1957-58 and was applied in the form of a spray from a “Windex” type dispenser. (298-99; DX 17; 427-29) 63. Beginning at least in 1958 and continuing throughout the period that the name was used, Beam “Wipe Away” was sold in plastic “squeeze” bottles having an air space inside the bottle and a dip tube extending through the air space into the cleaner. The cleaner was applied by squeezing the bottle, causing the cleaner to be forced up the dip tube to one orifice of the nozzle and causing the air inside the bottle to be forced out another orifice of the nozzle, thereby mixing with the cleaner and causing it to be propelled from the container in the form of an atomized spray. (DX 24, 25; 327-28; 430; 533-35) The Windex-type dispenser and the plastic squeeze bottle are each examples of a conventional pressure atomizer. (317-18; 1479-81; 1792-93) 64. The glass bottle oven cleaner sold by Beam had a glue-on label which contained the following directions for use: “1. Hold bottle upright and squeeze to spray liquid on soiled surfaces. Works faster on warm surfaces. (N on-inflammable) ’ ’ “2. Wipe clean with damp cloth when soil is soft, time may be 5 to 20 minutes depending on amount of soil.” “3. Can be used for soaking purposes by adding 3 oz. to each gallon of hot water.” (DX 19) 65. The plastic squeeze bottles in which Beam “Wipe Away” was sold in 1958-59 carried the same directions for use as set out in Finding 64. (DX 24) 66. Prior to 1962, the Beam Chemical Company also sold its oven cleaner in gallon containers. The label for such containers in the period 1959-61 contained the following directions: “Apply on warm or hot surfaces— wipe clean with damp cloth”. For containers such as deep-fat fryers, the directions stated that “Wipe Away” could be used as a dip, in which case it was to be diluted, put in the container to be cleaned, and “heat to approximately 200°F.” (DX 22; 313-15) 67. The label for the gallon containers also stated, however, that for use on ovens the cleaner should be applied as a spray by using a “polyethelene bottle or pressure sprayer”; that is, the purchaser could either use the squeeze bottle (DX 24) which was packed by Beam in each case of four gallons or purchase a squeeze bottle or some other type of pressure sprayer to apply the oven cleaner. (DX 22; 435-36; 722-23) 68. Representative sales of Beam oven cleaner in one area (Boston) in the period 1959-60 are shown by invoices, packing slips, and bills of lading forming Defendants’ Exhibits 31 A-C and 32. (344-54) 69. Advertisements for sale of Beam “Wipe Away” appeared in the November 6, 1958 edition of the Green Bay Press-Gazette and the February 23, 1958 edition of the Milwaukee Journal. (DX 21, 21A; 309-12) 70. In 1958 Beam “Wipe Away” was demonstrated on live television by Mr. Lemorande, personally. During these demonstrations Mr. Lemorande would spray the oven cleaner on warm surfaces to demonstrate its cleaning ability and method of application. (408-09) 71. A printed publication in the form of a circular dated May, 1961, distributed by Cirelli Foods of Brockton, Massachusetts, one of the stores in which Beam “Wipe Away” was sold, contains the following statement concerning Beam “Wipe Away” (DX 29; 335-36): “BEAM WIPE AWAY cuts burnt-on grease and cooking deposits of all kinds! It is very easy to use, just spray it on — and wipe it off with a damp cloth; it will leave no residual. Wipe Away may be used on warm surfaces (in ovens and on grills it is better to allow units to cool to approximately 200°), and will clean surfaces instantly without having to wait for them to cool down completely.” Mr. Lemorande testified that this digest accurately set forth the directions for use of Beam Wipe Away. (337-38) 72. Mr. Lemorande was familiar with the composition of the oven cleaner sold by Beam in the period 1957-65 and personally did the mixing of the ingredients. (351-52) On April 8, 1960, Mr. Lemorande made a typewritten copy of the formula then being used for Beam oven cleaner. (DX 2; 354-55) The formula is as follows: Per Gallon of Concentrate 4 oz. Sodium Hydroxide (Wgt) Vz oz. Sodium Metaslllcate " 4 oz. Trlsodlum Phosphate " 3 oz Glycerine (Volume) 2 oz. Triethanolamine " Vz oz. Perma Kleer " 3.5 oz. Triton 102 (BM2) 1.5 oz. Dowfax " 2 oz. CMC Hercules (Wgt) 1 oz. Tamol N. '' 1.5 bz. QS Triton 15 " The “Per Gallon of Concentrate” statement in the formula means that water is added to the formula shown to make one gallon of oven cleaner. (857) Glycerine is a humectant and Triton 102 and Dow-fax are surfactants. (350-60; 78-79) The amount of glycerine exceeds the 1% referred to by Perry as being satisfactory. (76-77; DX 77, Col. 3, lines 53-56) 73. Expressed in terms of weight percent of the Beam oven cleaning composition, in the period 1957-65, the water content was in excess of 50%, and the sodium hydroxide content did not vary outside the range of between 3.5 to 5 ounces per gallon. (362; PX 2; 143-44) The 4 ounces of sodium hydroxide in the formula set out in Finding 72, expressed in weight percent of the composition, is about 2.8%. (72-73) 74. In the period 1957-65, the Beam oven cleaner at all times contained a humectant and a surfactant. (DX 2) The humectant was usually glycerine but on occasion during. 1957-62 it was propylene glycol. (361) The surfactants were of the nonionic (e. g. Triton 102) and anionic (Dowfax) type. (359-60; 78-79) 75. Prior to 1962, the Beam Chemical Company oven cleaner was a freely flowing liquid which contained sodium hydroxide and water in the amounts called for by each claim of the patent in suit in issue. 76. Prior to 1962, the Beam oven cleaner contained a humectant and surfactant of the types called for in those claims of the patent in suit which specify either a surfactant or a humectant. 77. Prior to 1962, the directions for applying the Beam oven cleaner were to apply it by spraying on a hot surface as called for by each method claim of the patent in suit. 78. Prior to 1962, the Beam oven cleaner was dispensed as a spray propelled by air from a conventional pressure atomizer in the form of a plastic squeeze bottle or a plunger-actuated “Windex” type bottle. (298-300; 435-36) The patent in suit calls for the spraying of the oven cleaner from an aerosol container by a propellant, and states that the cleaning results are the same whether the cleaner is sprayed on a hot oven from a conventional pressure atomizer (which uses air as the propellant) or from a conventional metal can packaged in known manner and containing a conventional volatile liquid propellant such as butane. 79. The Beam oven cleaner described in Findings 75-78 was publicly used and demonstrated, sold, and offered for sale on a large scale more than one year prior to December 4, 1963, the date of first application leading to the issuance of the patent in suit. 80. Aerosol spray-type metal cans and propellants were well known in the prior art as appears from the patent. (DX 77, Col. 3, lines 29-31) No particular (much less surprising or unobvious) advantage has been shown to result from the combination of the oven cleaner and a conventional aerosol spray-type metal can, nor is any problem in making this combination shown to have existed or to have been solved by the disclosure of the patent. There is no limitation in the claims which would indicate a problem. If a problem relating to the aerosol packaging of an aqueous caustic composition is alleged to have existed in the art and to have been solved by the patentee, it must be disclosed and the best method of solving it then known to the patentee must also be disclosed pursuant to 35 U.S.C. § 112. No such disclosure appears in the patent in suit. Instead, the patent clearly and unequivocally states that the cleaner (in addition to being packaged and sprayed from a conventional pressure atomizer) was “packaged in a .known manner" in a metal can, using a “conventional propellant.” (emphasis added) 81. The testimony shows that the idea of packaging the Perry oven cleaner in an aerosol can was not Perry’s but was suggested by Vaughn Electric Company, a firm that had been previously supplied with the Perry oven cleaner in Beam-type squeeze bottles by Mr. Hannon, Mr. Perry’s salesman. (1088-89; 1158; DX 56) There is no evidence that either Mr. Perry or the aersol packer, Shield Chemical Company anticipated or solved any problem, nor that they were surprised at the result of the aerosol packaging, nor that the combination performed other than would be the natural and expected result of the combination of conventional elements. 82. Plastic squeeze bottles and “Windex” pressure sprayers as used by Beam, were also well known in the prior art. Perry packaged his oven cleaner in Beam-type squeeze bottles as well as metal cans prior to his application for patent (1946-47; DX 54), and it appears from the patent (Col. 3, lines 29-40) that he obtained the same results from either type of spray dispenser. Perry was unable to name any structure other than the Beam-type sprayer which could have been the basis for his flat representation in the patent that the same results were obtained with a conventional pressure atomizer as with an aerosol dispenser. (2543-2547) 83. The selection of means by which to apply the oven cleaner in the form of a spray is a matter of choice, as is shown by the patent specification (see Finding 22) and the claims are broad enough to cover both metal cans and squeeze bottles. The combination of the oven cleaner and either a conventional metal can or squeeze bottle does not constitute invention, nor was the combination an invention of Perry, (even if it were inventive). C. The Work of Seljan 84. John W. Seljan was a man whose background included actual experience cleaning grills and ovens. His first experience with chemical formulating came when he was employed by the Cee-Bee Chemical Company in California in the 1940’s. (836, 838) Among other products, the Cee-Bee Chemical Company made industrial cleaners for metal plating industries and the air craft industry. (840) 85. One such formulation included 5 per cent potassium hydroxide by weight, Yio of 1 per cent sodium chromate employed as a rust inhibitor, and % of 1 per cent Triton X-100 employed as a wetting agent (surfactant). The remainder of the solution was water. (841-843). This formula was used with a steam cleaning spray apparatus with the formula being sprayed from one nozzle and the steam which was used to heat and rinse the metal, sprayed from an adjacent nozzle alternately with the formula. (843, DX 516). The system was used to clean an oily preservative from the metal. (849) 86. Seljan left Cee-Bee Chemical in 1952 and started his own chemical business called Coast-to-Coast Chemical Co., located in Gardena, California. From California, Seljan moved his business to Dallas in 1955 and to Green Bay, Wisconsin in 1957. (854) While in Green Bay, Seljan became aware of the Beam Chemical Co. and its oven cleaner product. (855, 56) Seljan immediately formulated an oven and grill cleaner to compete with Beam which he sold in gallon jugs accompanied by a Windex-type spray bottle which could be filled from the gallon jug. (857, 58; DX 517, 517-A) The formula used for this oven and grill cleaner was a mixture of 1 lb. sodium hydroxide in a gallon of water with approximately y2 per cent Triton X-100, a surfactant, and 2 per cent ethylene glycol, a water evaporation retardant. (858, 859) 87. When Seljan formulated his oven cleaner in Green Bay, he was aware of the fact that Beam Wipe-Away was sold for application to warm ovens and grills. (863) He selected a water evaporation retardant (ethylene glycol) for his formula to prevent its evaporation from the oven surface. (861) His knowledge of the humectant properties of ethylene glycol stemmed from his knowledge that it was commonly used in automobile radiators to prevent evaporation of the hot water. (861) Seljan sold his oven cleaner from July of 1957 through the first part of 1958. In all, he sold about 400 gallons of the formulation. (861, 862) 88. In November of 1958, Seljan returned to California where he manufactured a product called Dip-Away for oven cleaning. Seljan mixed his Dip-Away formula in a small metal drum in his backyard. This formula contained from 15 to 18 per cent potassium hydroxide, a dye to give color to the formulation, and ethylene glycol to prevent evaporation of the solution from the surface to be cleaned. (864-866) The ethylene glycol used was between 1 and 3 per cent by weight of the solution. (875) He supplied customers with directions for use of his oven cleaner which included instructions to spray the aqueous caustic solution onto a heated oven surface. He did this in response to his customers’ employees’ experience that spraying was a convenient method of application. (876) 89. During 1959, Seljan personally went to kitchens and restaurants to demonstrate the use of and sell his product. (875, 876) From August 17 through August 20, 1962, Seljan demonstrated his product at the National Restaurant Association Convention in San Franciseo attended by some 35,000 people. (880, 898; DX 501) During the demonstration, Seljan used an electric heating element to heat the encrusted stainless steel pans which were to be cleaned. The pans were heated to approximately 200°, the Dip-Away was sprayed on the pans and the grease and dirt were observed to dissolve in three to five seconds. (885, DX 501-A) During the demonstration in San Francisco in August of 1962, approximately 2,000 advertising brochures setting forth the spray-heated surface method of application were distributed to various people there. (898, DX 502) 90. Seljan marketed his product Dip-Away (later changed to Dip-R-Spray) in gallon containers. (DX 506, 876, 877) The gallon containers were packaged four one-gallon containers to a case and each case included a plastic spray bottle. (877) Prior to the August show in 1962, Seljan had sold between 1500 and 2000 such cases of Dip-Away. In each of these cases a label instructed the consumer to use the product on a warm or hot oven. (910) The small container into which the contents could be poured (DX 517) included a Windex finger action spray member. (911) Seljan was still successfully marketing his product at the time of his deposition on January 8, 1969. (923) 91. After Seljan had been exposed to the needs of the industry for an aqueous caustic oven cleaning product and after he had been exposed to Beam’s answer to these needs in Wisconsin, he was, within a short time, able to manufacture a product with similar components which worked in a similar fashion. The fact that Mr. Seljan had no formal education in chemistry but was immediately able to develop and market a successful aqueous caustic, surfactant, humectant, oven cleaner for spray application to a heated oven surface is strong evidence of lack of invention in the Perry product. D. The Bissell Oven Cleaner 92. In November, 1962, Capitol Packaging Co. of Melrose Park, Illinois made and sold to Bissell, Inc. of Grand Rapids, Michigan, an aqueous caustic oven cleaner which was packaged in a conventional aerosol spray-type metal can with a conventional propellant (DX 3, 5, 6, 7, 8). 93. The formula for the oven cleaner referred to in Finding 92 was developed at and by Capitol Packaging Co., (170-72) and in the time period from the first sale in November, 1962 until 1966 the formula, expressed in weight percentage of the composition, was as follows (DX 3; 83-85): Sodium orthosilicate 7% Sole-terge 325 7% TS-2S 2% Safrol 0.075% Water 83.925% 94. Sodium orthosilicate is a physical mixture (as opposed to a chemical union) of sodium hydroxide (NaOH) and sodium metasilicate (Na2Si03) in the respective weight proportions of 40-60. (55-57; 129-130) This fact is supported by testimony, calculations and tests performed by Dow’s chemical expert, Dr. Colburn, and by a recognized chemical text, The Condensed Chemical Dictionary (Sixth Edition). (130-31; DX 93) Based on both his formula calculations and his analysis of an aqueous solution of the product, Colburn testified that a 7% aqueous solution of sodium orthosilicate contains 2.8% free sodium hydroxide. (58-59) 95. Dr. Colburn further testified that both TS 2S and Solterge 325 are surfactants, the latter also containing about one-quarter free diethanolamine which is a humeetant containing two hydroxyl groups and therefore a glycol. (84; DX 91; 2497-98-; 3356-57) Safrol is a perfume. (84) 96. The formulation of the oven cleaner sold to Bissell by Capitol Packaging Co., in November, 1962, thus contained over 50% water, 2.8% free sodium hydroxide, a surfactant and a humeetant. 97. The oven cleaner sold to Bissell by Capitol Packaging Co., in November 1962 was packaged in a conventional aerosol spray-type metal can containing, as propellants, 6% Freon 12 and 6% methylene chloride. (DX 3) Freon 12 and methylene chloride are and were, in 1962, conventional propellants. Mr. Perry told the Patent Office that “the invention does not lie in any particular kind of propellant as long as it propels; * * * ” (DX 75, p. 31) 98. Contrary to Shelco’s contention that Perry was the first to overcome the alleged fear in the art that an aqueous sodium hydroxide solution could not be stored in a metal aerosol can without leakage, it appears from the testimony of Mr. Burkholder, Bissell’s director of quality control from 1962 to the present, and Mr. Weiner, President of Capitol Packaging from 1955 to 1966, that no problem of can leakage was experienced by either Bissell or Capitol Packaging. (246; 3288-89) This testimony is supported by the fact that a product manufactured according to the formula set out in Finding 93 was marketed by Bissell in a conventional metal aerosol can continuously from its introduction in November, 1962 until sometime in 1966, when the formula was modified. (3287-88; 3297) It is also supported by Mr. Weiner’s testimony that prior to November 1962, the formulation set out in Finding 93 was packaged in a conventional metal aerosol can and tested for shelf-life for a period of from nine months to one year without evidence of leakage problems. (227) In addition, Mr. Burkholder identified DX 106 as a can of Bissell oven cleaner made in 1963. (3290-91) This can showed no signs of leakage. 99. Bissell did experience some occasional minor instances of can leakage, but similar can leakage was experienced by Shelco as well. (246; 1110-11) There is no testimony that such leakage was due to anything other than inadequacy in the can’s side-seam soldering or other can construction defects. (1110-11; 3179-80) 100. As demonstrated in Court by Dow, the Bissell oven cleaner of DX 106, which was made in 1963, but contained the same formula and propellants as used in November, 1962, was sprayed from the can and was deposited on a metal surface in the form of a stable foam. (3292) The Court has evaluated the later spraying from the same container by Shelco, again in the form of a stable foam, and Perry's characterization of the spraying as, “a classic example of a plugged valve,” and finds such an attempted criticism of a seven-year old product to be inconsequential. (3392) 101. Dow also conducted a demonstration in Court of the foam characteristics of Shelco’s oven cleaner. This cleaner also sprayed from the can and was deposited on the metal surface in the form of a foam, but after a short period of time the foam had slid down the test panel onto the floor. (2174-75) 102. The Bissell directions for use contained on DX 106 do call for the oven to be cool and the pilot light to be off. Nevertheless, Dr. Colburn testified that the Bissell aerosol-packaged oven cleaner, as sold by Capitol Packaging Co. in November, 1962, contained nothing, from a chemical standpoint, which would interfere with its use on an oven heated to “say, 180 degrees Fahrenheit”. (89; 123) Dr. Colburn freely admitted that the chemicals methylene chloride and Freon decompose to some degree when exposed to a flame, and that one of the many decomposition products “may or may not be a poisonous gas called phosgene”. (123-24) He testified that if this gas were produced, it is in very small amounts. (124) There is no testimony that the Bissell oven cleaner would produce any poisonous gas if exposed to a flame. To the contrary, Dr. Colburn testified that he personally had tested oven cleaners containing propellants such as methylene chloride on hot ovens (for purposes not related to this litigation or any of the defendants in this case). (126) It should also be noted that the propellant used in Shelco’s cleaner (butane) is highly flammable by itself, (2542) but apparently this does not prevent its use as the propellant in the oven cleaner composition. 103. The court finds that the Bissell cleaner sold by Capitol Packaging Co. in November, 1962 was suitable for use on a hot oven. In addition to the supporting testimony of Dr. Colburn, this finding is also corroborated by Mr. Burkholder’s testimony that he knew of no problem or complaints arising from the use of methylene chloride or Freon 12 as the propellants in the Bissell cleaner (3289), and the fact that Perry himself could not name one specific complaint arising from his extensive use of concentrated methylene chloride solution (up to 70%) in paint cleaners and degreasers. (2494-97) 104. While Sheleo now expresses great concern over the possible production of small amounts of phosgene, the patent does not warn against the use of either of these propellants, and the claims were intentionally drafted broad enough to cover their use. (See Finding 97) 105. Sheleo’s position, as stated in answer to Dow’s interrogatories is that the composition claim