Appeal from the District Court of the United States for the Southern District of New York.
Before L. HAND, AUGUSTUS N. HAND, and CHASE, Circuit Judges.
AUGUSTUS N. HAND, Circuit Judge.
The complainant was granted a preliminary injunction by Judge Coxe restraining defendant from infringing United States patent No. 1,526,982.The claim of the patent relied on is claim 18, which reads as follows:
"18. A stencil-sheet adapted for conversion into a stencil by the impact of type and the like thereon, the same comprising an open-texture base having a coating including a cellulose ester and a tempering agent."
The invention relates to stencil sheets, and calls for a base of Japanese paper, known as Yoshino, coated with a cellulose ester. In order to produce this coating, the paper is treated with a solution of the cellulose ester in a suitable solvent. The nitrocellulose material recommended in the specification is pyroxylin enamel, which is a solution of nitrated cellulose having the approximate consistency of ordinary molasses and to this is to be added a pigment such as zinc oxide. To a given quantity of pyroxylin "a suitable proportion (fifty per centum will give good results) of a tempering agent such as an oil," is added for the purpose of preventing "the pyroxylin enamel from drying too hard." The patentee says that for this tempering agent he prefers "to use castor oil or a similar oil having the power of forming with the cellulose ester and its solvent a homogeneous body." He also suggests the addition of "a suitable quantity of a material, for example, soya bean oil, of such character as to hasten the setting of the coating mixture when applied." He further says that he has "found it advantageous also to add to the mixture a limited proportion, say five to ten per centum, by weight, of some fatty or tallow-like ingredient of either animal or vegetable origin (lard, cottolene, Chinese vegetable tallow, etc.) to serve similarly as a setting agent, but more particularly as a preservative of the proper consistency of the finished coating and to aid also in retaining the composition in the desired state of softness, fluency and displaceability."
The inventor goes on to recommend "Zapon lacquer enamel No. 340" as the cellulose ester which may usefully be employed because it requires but little reducing by a solvent, and says: "If, because of the price of, or variation in, commercial pyroxylins, it is preferred to employ * * * the simple compound of cellulose nitrate in a solvent such as amylacetate, the cellulose content of the solution may be from five to seven or eight per cent. This may be increased or decreased as required by the character and proportions of the other ingredients added thereto."
It is evident from the foregoing that the patent is limited to no formula, but only teaches that a proper coating for dry stencil sheets should have a small percentage of nitrocellulose and a large percentage of soft materials of an oily character. Indeed the specification closes with the words:
"* * * The invention is not limited to the details above described but * * * comprehends broadly a stencil sheet * * * having as its essentials a base, such as Yoshino, provided with a coating which includes, or is derived from, a cellulose compound or its equivalent, this being so modified as to make it substantially stable for the purpose designed and responsive to pressure for the production of stencil openings of character suitable for the passage of ink therethrough."
Moreover, the setting agents and the pigment, when added to the pyroxylin solution, would be bound to vary substantially the proportions of the cellulose content of the coating.
Stencil sheets of the Broderick and Fuller types had long been in use, but all had serious drawbacks. The early wax-coated sheets of Broderick were fragile, and the gelatin-coated ones of Fuller had to be moistened before use. The Hill stencil sheet largely displaced the others, because he taught how to make a coating that would for a long time remain type-impressible without requiring any moistening. The special characteristic of nitrocellulose is that a small proportion is sufficient to impart the necessary strength, integrity and binding quality to a composition having the large percentage of permanently soft materials necessary to make a stencil sheet that will remain type-impressible without moistening.
The defendant's stencil sheets have a coating which contains (a) a small amount of nitrocellulose; (b) a large amount of oleic acid calculated to keep the mixture soft enough to be type-impressible; (c) a quantity of shellac claimed by the defendant to be the major binding ingredient of the coating and to be an element that makes a stronger sheet than one employing nitrocellulose without shellac.
The defendant contends that it does not infringe (1) because the dominant ingredient of its coating is shellac rather than nitrocellulose; (2) because oleic acid is not, like castor oil mentioned in the patent, a real oil which has the "power of forming with the cellulose ester and its solvent a homogeneous body"; and (3) because its particular coating departs too widely from the proportions of nitrocellulose suggested in the patent.
The patent was sustained by us in A. B. Dick Co. v. Simplicator Corporation (C.C.A.) 34 F.2d 935, in an opinion fully discussing the prior art. We there held that the invention was a meritorious one and that its prime feature was that it dispensed with ...