Appeal from the District Court of the United States for the District of Connecticut.
Before MANTON, L. HAND, and AUGUSTUS N. HAND, Circuit Judges.
AUGUSTUS N. HAND, Circuit Judge.
The three patents in suit relate (1) Gibbons to the process of manufacturing vulcanized rubber compositions, (2) Hopkinson to the coating of various fibrous materials with latex compositions, and (3) Foster & Cook to the application to needled pile fabric of latex compositions such as those described by Gibbons and Hopkinson.
Gibbons Patent No. 1,654,167.
The patent to Gibbons is particularly for a process of vulcanization where the vulcanizing ingredient or agent is combined with Latex. Gibbons' only claim reads as follows: "Process of manufacturing vulcanized rubber compositions which comprises the drying and vulcanization of substantially uncoagulated rubber latex containing an organic accelerator capable of effecting vulcanization at temperatures below those ordinarily employed in hot vulcanization methods."
Although Judge Hincks who tried the case in the District Court simply held that the Gibbons Patent was not infringed, we think it unnecessary to deal with the difficult and controversial matters involved in that conclusion because we have no doubt that the patent is invalid for lack of invention.
The Italian Patents to Bruni granted in 1919 set forth a "process for the vulcanization of rubber or of objects made of natural or synthetic gum elastic (rubber), or of any nature whatsoever". The pertinency of the reference is criticized because Bruni specifies only rubber and not latex in his patents and mentions only one class of accelerators, the dithiocarbomates, referred to by Gibbons. But latex is defined in the Hopkinson Patent in suit as "the natural salt water emulsion of rubber obtained from the rubber trees" and is described as "rubber in the form of latex" in all four examples of the Gibbons process given by him in his specification. Bruni's Patents employ one of the classes of accelerators described by Gibbons and it is stated in the Bruni Patent No. 173,364 that one of the advantages of the Bruni process is "vulcanization at temperatures which are much lower than those customarily employed for the vulcanization in the hot, for instance, at temperatures below 100 degrees." The temperature mentioned is according to the Centigrade scale and equals 212 degrees Fahrenheit referred to as a desirable low temperature in Examples 1 and 4 of the Gibbons Patent. Bruni says nothing about drying, but about vulcanizing at a suitabler temperature which would produce drying. Thus he does not disclose the two separate steps of first drying and then vulcanizing which complainant argues with much difficulty are the features of the Gibbons process and which the court below found were not separate but concurrent.
Judge Brewster truly said in Vultex Corporation v. Heveatex Corporation, D.C., 19 F.Supp. 327, 330: "It would seem to be obvious to any chemist, endowed with a reasonable knowledge of the art of vulcanizing rubber, that the cold vulcanizing process, well-known in its application to dry rubber, could likewise be applied in a process of vulcanizing the latex. This, in my opinion, would not amount to a patentable discovery."
We can see no room for Gibbons' process as a new invention after Bruni.
If, however, complainant is right and there is a distinction between Bruni and Gibbons due to its construction of the latter's claim that drying must precede and not be concurrent with vulcanization, this process was disclosed in U.S. Patent No. 1,605,649 to Curtis. That patent clearly anticipates Gibbons unless the latter carried back his invention to an earlier date than Curtis. Curtis describes a process of drying and then vulcanizing. He says: "An an example a piece of haircloth may be immersed in rubber latex of 25% rubber solids and containing curing ingredients embodying low temperature curing accelerators. After drying the cloth may be allowed to cure at ordinary temperatures, or the cure may be hastened by heat, but the temperature should not be raised to such a point as to injure the hair, and it has been found that temperatures from 150 degrees to 200 degrees F. are suitable. One means of carrying out the above is to employ latex which contains 1 part of zinc dimethyl-dithiocarbamate, 1 part of zinc oxide and 3 parts of sulphur on 100 parts of rubber. Haircloth impregnated with this mixture and dried will vulcanize satisfactorily overnight at 150 degree F. or in 2 hours at 200 degree F."
The failure of Curtis to claim Gibbons' invention can make no difference if he disclosed the invention in his application as he did. Milburn Co. v. Davis, etc., Co., 270 U.S. 390, 46 S. Ct. 324, 70 L. Ed. 651. We are satisfied that Gibbons date of invention was not carried back of his filing date which was six months later than that of the Curtis application. This is in accordance with the express finding of the court below. Gibbons testified that the best description of his process in his note book is on page 45. It indicates that September 9, 1919, he impregnated cotton fiber with latex, that the fabric was dried overnight and then vacuum dried one-half hour at 40 pounds steam pressure, i.e., at 287 degrees. This temperature was far above 240 degrees which was shown by complainant's expert to be the low limit of hot vulcanization. In another test the same day Gibbons vulcanized at a temperature of 286 degrees F. On September 19 the notebook refers to a temperature of 230 degrees F., and on November 11 of 220 degrees. On the earlier date the entry states that the mix "did not cure well" and, on November 20, that paper dipped in latex and cured in hot air "did not appear very interesting". Moreover, on September 16, the notebook reads: "On account of the property of curing at low temps possessed by above it was decided to use a different latex mix which would not vulcanize at say 212 - thus enabling us to dry at 212 degrees". It is evident from the foregoing that Gibbons regarded curing at low temperatures as unsuccessful and that he never produced a useful article cured at such temperatures - in other words, that his experiments along that line were failures and for an indefinite period were abandoned. Indeed, his main effort seems to have been satisfactorily to impregnate the fibers of his textibles with latex rather than to vulcanize at low temperatures. There is no satisfactory proof that he ever reduced his invention to practice before the date of the application for his patent. Moreover, the fact that for more than four years after September, 199, when he claims to have made his invention, he filed no application to obtain a patent for his process convinces us that he did not make the invention in 1919 and is entitled to no date earlier than that of his application. It is quite impossible to carry back an invention by any such inconclusive proof as Gibbons has furnished when the burden of antedating an application is so heavy. We hold that in view of the Curtis Patent the Gibbons Patent is void for lack of invention.
Hopkinson Patent No. 1,784,523.
Various claims of the Hopkinson Patent are in issue, but Claim 2 is sufficiently illustrative, which reads as follows: "The method of making rubberized articles of fibrous material which comprises superficially coating normally penetrable fibrous material with a thickened and compounded water emulsion of rubber without substantial ...