Appeal from the District Court of the United States for the Southern District of New York.
Before SWAN, AUGUSTUS N. HAND, and CLARK, Circuit Judges.
AUGUSTUS N. HAND, Circuit Judge.
This is a patent suit brought by the Interchemical Corporation, assignee of U.S. Patent No. 2,087,190 to Gessler, against Sinclair & Carroll Company, Inc. Claims 3, 10, 11, 12 and 13 are in issue. The District Court held the patent invalid and not infringed as to those claims. The plaintiff, Interchemical Corporation, appeals. We think that the claims are valid and infringed and that the decree should, therefore, be reversed.
The Gessler patent is for a printing ink and is directed to the composition of the ink and not to any method of printing. The great advantage of the Gessler ink is that it enables printing to be done on high grade non-absorbent paper with a smooth surface very rapidly and without smudging. The ink used is a volatilizable ink and differs from the inks which were in general use for printing formerly and are still widely employed, the liquid part of which is linseed oil. Linseed oil cannot be volatilized and will only harden after a considerable time by absorbing oxygen from the air - a slow process requiring many hours for completion. In printing newspapers the drying of a linseed oil ink was not difficult because the soft paper used absorbed the ink when one side of the paper was printed and held it in position until after the back side of the sheet was printed in spite of the fact that the ink on the front side had not dried.
A different problem arose in printing on the smooth non-absorbent papers which are used for magazines. Such papers will not take up and hold the ink and the wet ink printed on one side is likely to be smudged by the ink on the other side. It was at first sought to correct this difficulty by running a separate web of "treated manila" through the press underneath the web of the paper that had been printed for the purpose of protecting the wet ink on the first side at the time when the second impression was being made. There were various other attempts to prevent smudging when linseed oil was used in the ink and at the same time to maintain a high speed in printing, but it remained impossible to print on smooth paper in a high speed press until an ink was discovered that would dry instantly when the proper time arrived. We think this discovery was made by Gessler. He discontinued the use of linseed oil in his ink and demonstrated the advantages of an ink that would volatilize rapidly instead of slowly oxidizing and would also retain its original consistency unchanged during its travel over a long series of ink rollers.
Volatilizable inks had before been used in rotogravure printing in which the ink was deposited on the paper from engraved recesses in the printing cylinder. But it was unnecessary in that process to maintain the original consistency of the ink unchanged while it was passing over a long series of rollers. The rotogravure cylinder rotates through a trough of ink, a steel doctor blade scrapes the excess ink off and the balance that is in the pockets below the surface is transferred onto the paper. As the witness Cray said there is "no question of rollers at all" (Record, p. 97). Metallic inks which were dried by evaporation had likewise been used for stamping letters on book bindings. These inks, like those used in the rotogravure process, contained no linseed oil but had a solution consisting of a solid binder such as resin dissolved in a liquid solvent which boiled off at the temperature to which the printing die was heated.
We think the record clearly establishes that the trade had long striven to secure an ink that would maintain its consistency on the rollers until the web was imprinted and would then instantly dry on application of a sufficient amount of heat but had never succeeded in obtaining such an ink until Gessler made his invention. As a result his ink has been widely used on high speed printing presses and is regularly employed in printing such magazines as the "Saturday Evening Post," "Life," the "New Yorker" and "Colliers."
The specification of the Gessler patent refers to the delay in drying the ink and the difficulty in avoiding smudging where inks had been made with oils. It then refers to the use of cellulose lacquers having such a high degree of volatility that they hardened on the rollers of the press and failed to make a "satisfactory impression * * * on the material to be printed." Gessler describes his invention thus:
"I have discovered * * * that if * * * cellulose compounds, particularly nitrocellulose, are dissolved in solvents with high boiling points, this difficulty may be avoided. * * *
"The referred to solutions, * * * are characterized by their very low rate of evaporation at temperatures approximating room temperature and by their ability to manifest a relatively high degree of volatility when subjected to temperatures higher than room temperature. The solvents or solvent mixtures utilized in the formation of these solutions may be described as solvents having a high boiling point combined with a low vapor pressure at room temperature, but yet further characterized by a rapid rise in their vapor pressure curves upon elevation of the temperature, - that is, by their property of evaporating quickly from a thin layer, as in a print, when the temperature is sufficiently raised.Among this peculiar class of solvents I have found as an example diethylene glycol monobutyl ether to be a solvent for nitro-cellulose and many natural and artificial gums, very well adapted to the purposes of this invention. This solvent at room temperatures remains fluid and moist for a long period of time. When heated to about 100 degrees C. or above, the rate of vaporization is greatly accelerated and, when used in the ink of this invention, produces a print which dries almost instantaneously when subjected to such a heat treatment.
"With ink prepared as above, the printing operation may be carried out in the ordinary manner and at ordinary temperatures. At the conclusion of the printing operation, the printed materials may be subjected, in known manner to sufficient heat to dry the thin film of the print very rapidly. Thus a finished print is obtained immediately at the end of the printing and heating operation and no time, labor, nor material is wasted in delays incident to the prolonged drying of the printed goods under the processes at present in use."
The third claim which contains the important elements of the others in suit reads as follows:
"3. A printing ink which is substantially non-drying at ordinary temperatures and dries instantly on heating of the printed matter, consisting of coloring matter dispersed in an organic viscous vehicle consisting of a liquid component and a solid component completely dissolved in the liquid component in sufficient quantity to give the ink the consistency of an ordinary oil-varnish printing ink - the solid component being a member of the group consisting of natural and synthetic resins and cellulose compounds, substantially all of the liquid component having a vapor pressure at 20 degrees C. as low that of diethylene glycol part of the liquid ...