Inventive Adventures

Presentation given to chemistry students at Rensselaer Polytechnic Institute on April 18, 2022. The presentation covers patent basics, the statutory criteria for patenting, and case studies showing the type of patent claims that are available for chemistry-related inventions. The presentation touches on notable chemical and pharmaceutical inventions. The works of William Kroll (the Kroll process), Robert Burns Woodward (Nobel laureate for works in organic chemistry), Glenn Seaborg (a giant in nuclear chemistry), and Thomas Edison’s invention of the light bulb and GE’s rivalry with Westinghouse. The match patent that was “ended for humanity’s sake” and an overview of patented inventions in the pharmaceutical industry, including examples of genus-species, enantiomer, and polymorph claims frequently used to protect pharmaceutical inventions.

Thomas A. Edison, famed inventor of the first practical incandescent lamp, was granted U.S. Pat. 223,898 on January 27, 1880, which claimed “a filament of carbon of high resistance.”

Months after filing his application, Edison discovered a carbonized filament from bamboo in Japan could burn 1,200 hours. His patent was invalidated by the Patent Office based on an earlier patent to Sawyer, U.S. Pat. 205,144, but eventually upheld after six years of litigation.

Westinghouse sued Edison’s company, General Electric, under the Sawyer patent in a case that went to the Supreme Court, The Incandescent Lamp Patent, 159 U.S. 465 (1895).

The Court invalidated Sawyer’s patent noting that the materials described therein “were found to be so inferior to the bamboo, afterwards discovered by Edison, that the complainant was forced to abandon its patent in that particular, and take up with the material discovered by its rival.”

“I’ve not failed. I’ve just found ten thousand ways that don’t work”

Thomas A. Edison

Edison’s famous quote “I’ve not failed. I’ve just found ten thousand ways that don’t work” reflects his work in finding a material suitable for an incandescent bulb. Bamboo remained the material of choice until another GE inventor Irving Langmuir developed a practical way to make tungsten filament in 1913, U.S. Pat. 1,180,159.

The British inventor Alexander Parkes laid the groundwork for the plastics industry in 1856 with his development and patenting of Parkesine, later known as Celluloid. The material combined cellulose from cotton with nitric acid and a plasticizer. It was first widely used as an ivory replacement for billiard balls, then as a film negative for cinema and photography.

His patent was cited in the later dispute between American John Wesley Hyatt (Celluloid) and British George Spill (Xylonite).The court ruled neither of those companies had exclusive rights to the material due to Parkes’ earlier patent, which listed the critical ingredient camphor as a plasticizer.

“In answer to the American Inquiry ‘Who Invented Celluloid’ … I do wish the World to know who the inventor really was, for it is a poor reward after all I have done to be denied the merit of the invention.”

Alexander Parkes

Parkes never succeeded in business but was granted recognition as laying the groundwork for the plastics industry. He held over 60 patents.

In 1972, Stanley Cohen & Herbert Boyer laid the foundation for the biotechnology industry with the idea of recombinant gene expression while munching on corned beef and pastrami sandwiches during a conference on bacterial plasmids.

Cohen of Stanford University brought the idea of isolating specific genes in antibiotic carrying plasmids and cloning them through introduction to E. coli bacteria. Boyer of University of California San Francisco contributed the idea of a restriction enzyme that cut DNA strands at specific sequences, producing cohesive ends that could stick to other pieces of DNA.

The main Cohen & Boyer patent is U.S. Pat. 4,237,224 “Process for producing biologically functional molecular chimeras.” The patent was filed in 1974, granted on December 2, 1980, and expired 17-years after grant in 1997. The last Cohen/Boyer patent expired in 2001.

“Boyer and I didn’t set out to invent genetic engineering. Our invention came from efforts to understand basic biological phenomena and the realization that our findings had important practical applications.”

Stanley N. Cohen

The Cohen-Boyer patents were licensed to cover an estimated 2,442 new recombinant DNA (rDNA) products to 468 companies representing US $35 billion in sales. The licensing program brought US $435 million to Stanford and the University of California. 

Looking back at Artur Fischer’s achievements, it’s often noted that he held 1,110 patents－seven more than Thomas Edison.

His interest in patents began from frustration at the refusal of a photographer to take a picture of his daughter due to low light. He developed and patented a flash system that coordinated the light with a camera shutter. He also developed a toy system for building, Fishertechnik Building Blocks for Life.

“I am interested in any problem to which I can provide a solution.”

Artur Fischer

His most significant economic contribution, however, relates more to hanging pictures than taking them－the ubiquitous Fischer wall anchor. U.S. Pat. 3,174,387. The company formed around this patent remains a major supplier of fasteners to this day. You can find his fasteners in hardware stores everywhere. Sometimes it is the inventions of what we take for granted as an everyday object that makes the most impact.

In 1937, William Kroll of Luxemburg invented the process we use to make titanium metal. His U.S. Pat. 2,205,854 claimed the “Kroll process”—reacting a titanium halide (TiCl4) with an alkaline earth metal (Mg). The earlier Hunter process made a brittle oxygen-containing titanium metal. Kroll licensed his invention to a German firm Siemens & Halkse (S&H) (predecessor of Siemens AG) in 1934 for a royalty.

By the 1950s, his technology had become critical for producing jet aircraft used extensively by U.S. military. After Germany invaded Luxemburg in May 1940, the U.S. Government seized Kroll’s patent and his contract with S&H under the Trading with the Enemies Act. The government custodian authorized several U.S. companies to produce titanium thinking it had 100% right to do so.

While the U.S. government rights to the S&H contract were clear, Kroll’s rights were a different matter. The custodian had assumed because Kroll was a Luxemburg national, his patent rights vested in the U.S. when Germany invaded Luxemburg. But Kroll fled Luxemburg for the United States in February 1940 before Germany invaded. Because Kroll was not an “enemy alien” at the time war broke out in Luxemburg, a court decided that the government had to return his patent and pay back-royalties.

Glenn T. Seaborg discovered plutonium in 1940, ushering in the atomic age. He went on to win the Nobel prize, isolating several trans uranium elements, two of which he patented. He rearranged the periodic table of the elements, became the head of the Atomic Energy Commission, and negotiated the high-altitude and sub-ocean nuclear test ban treaties.

His patent application claiming Americium (Element 95) was rejected by the US Patent Office on the grounds that the element was likely an inherent product produced during nuclear fission reactions described in an earlier patent to Fermi et al. On appeal from the Patent Office, the Court of Customs and Patent Appeals acknowledged “the ‘inherency doctrine,’ … infers a lack of novelty in a product … if a comparable process for making the product is found to exist in the art.”

“I was a 28-year-old kid and I didn’t stop to ruminate about it … I didn’t think, My God, we’ve changed the history of the world!”

Glenn T. Seaborg

But the Court found “that the claimed product, if it was produced in the Fermi process, was produced in such minuscule amounts and under such conditions that its presence was undetectable.” The court held inherency does not apply under these circumstances. Having overcome the rejection on appeal, Seaborg was awarded U.S. Pat. 3,156,523 which concisely claims Americium as follows: － 1. Element 95. － 

The famous ventriloquist, and voice of Tigger on Winnie the Pooh, Paul Winchell is also known for his work on the artificial heart.

He became friends with surgeon Dr. Henry Heimlich, who invented the Heimlich maneuver, after meeting him at a casting party in New York. After observing Heimlich conducting surgery, Winchell got the idea that an artificial heart could keep blood circulating during open heart surgery. With Heimlich’s encouragement, Winchell made a prototype and filed a patent application in 1961 which issued as U.S. Pat. 3,097,366 in 1963.

“Odd as it may seem, the heart wasn’t that different from building a dummy; the valves and chambers were not unlike the moving eyes and closing mouth of a puppet.”

Paul Winchel

Dr. Robert Jarvik and Willem Kolff of the University of Utah were the first to develop a working artificial heart, the Jarvik-7. When Winchell’s patent was cited as prior art to their patent application, the University reached out to Winchell asking him to donate his patent, which he did. Winchell maintained that his patent was used to develop the Jarvik-7―a claim that Jarvik hotly disputes. 

Robert Burns Woodward invented the first ever process for synthesis of the medicinal compound quinine, used to treat malaria. He obtained several patents to methods and intermediate compounds used in the synthesis, including U.S. Pats. 2, 395, 526; 2,500,444; and 2,475,932. During WWII, Germany cut off quinine supplies after conquering the Netherlands, who controlled the Indonesian plantations that had monopolized production of cinchona bark—the natural source for quinine. Besides being used to treat malaria, quinine was also an essential component for light polarizers used extensively by the Allies in during the war, and in 3D glasses.

Quinine forms light polarizing crystals of herapathite when reacted with iodine. Just before famously inventing the instant camera, Polaroid’s Edwin Land hired Woodward to invent a synthetic substitute for quinine. Although the process Woodward invented was too tedious to be used commercially, it represented a major breakthrough in synthetic organic chemistry.

“The structure known, but not yet accessible by synthesis, is to the chemist what the unclimbed mountain, the uncharted sea, the untilled field, the unreached planet, are to other men.”

Robert Burns Woodward

Woodward went on to synthesize many naturally occurring compounds including cholesterol, cortisone, and chlorophyll. His work opened a new “Woodwardian era” in organic chemistry. He won the Nobel prize in 1965 for his work in organic chemistry, after being nominated 111 times. 

Controversy surrounds Alexander Graham Bell’s invention of the telephone. U.S. Pat. 174,465. The same day that Bell filed his U.S. patent application, Elisha Gray filed a patent caveat (similar to a provisional application) describing a telephone.

Gray claimed that his application arrived at the Patent Office a few hours before Bell’s application, but that Bell’s lawyer insisted his application be taken immediately to the examiner. The examiner suspended prosecution to allow Gray to file a full application. Gray, however, upon learning of Bell’s earlier-notarized application abandoned his. Some have commented that that because our patent system was a first to invent, that it did not matter who was first to arrive at the Patent Office.

“The most successful men in the end are those whose success is the result of steady accretion.”

Alexander Graham Bell

While true that it may not have mattered who was first to the Patent Office in this case, many interferences were won or lost over who was the first to file, or “senior party.” The second-filing “junior party” had the burden to prove prior invention, and often this burden was insurmountable. Regardless of who would have been the senior party, Gray’s attorney may have concluded that he would have lost in an interference due to Bell’s strong evidence of priority found in his notarized application filed in the previous month.