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July 14, 1947


The opinion of the court was delivered by: BYERS

Decision is required concerning the validity of defendant's U.S. Patent No. 2,168,756 to Donald B. Alnutt, assignor to defendant, granted August 8, 1939, on Application of May 9, 1938, for 'Acid Resist Powder for Use in Etching', and whether plaintiff's unpatented products infringe.

The plaintiff seeks declaratory judgment of invalidity and non-infringement; and defendant counterclaims, seeking an injunction and damages.


 In the art of photo-engraving, a picture or design is etched upon a metal plate from which reproduction is possible. The etching is accomplished by the action of acid on the plate upon which the picture or design has been printed from a photographic negative in much the manner that a photographic print is made upon sensitized paper. The acid eats into the plate as outlined by the transferred pattern; and in order to carry the etching process to completion so that the final reproduction shall present a picture having substance and depth, the acid treatment has to be repeated three times; between each of the treatments, however, the side walls of the channels which have been cut by the first have to be protected against the subsequent action of the acid. That is, the acid treatments subsequent to the first are confined to etching or cutting deeper channels in the surface of the plate as may be required, but lateral reaction in the channels must be prevented to avoid under-cutting, so to speak. That result is accomplished by building a protective side wall in each channel, capable of resisting the acid of the later treatments.

 The building material is known as acid resist powder, which falls into the channels as the result of being brushed across the surface of the plate after each application of acid. The brushing is in four directions to insure complete distribution of the powder along the sides of each channel. Following the brushing, the plate is heated sufficiently to cause the powder to fuse, and on cooling it solidifies so as to form the desired wall. The plate is then ready for another acid application, since the etching action will now be confined to the bed of the channel already cut. The operation can be repeated according to the desired number of acid treatments.

 It will be realized that such a powder, to function successfully, must be so constituted as to possess several characteristics or physical properties the presence of which is requisitioned by the peculiar requirements of the office which it serves.

 The Patent explains these matters in the specifications so that the claims are rendered understandable; those in issue are 1 to 5, inclusive, and 9.

 The Patent Teaching:

 The specifications assume an understanding of the office of such powders which has been stated above, and recites the prior use of a powder containing a natural resin, dragon's blood, which is the exudation of trees which grow in the Far East. As it came upon the market in the United States, the resin content was combined with foreign matter, sand, earth, vegetable matter, etc., fortuitously or otherwise acquired, which had to be removed. Since it could not be used alone, even in this cleansed condition, the addition of a filler or mineral content was necessary if a workable agent were to be produced. The final outcome was a powder commercially known as dragon's blood.

 The Patent is for an improved powder, said to be an artificial substitute embodying the physical properties of the naturally produced article.

 The patentee says: 'Its chemical composition, on the other hand, is not in any way related to dragon's blood. Each component is selected with respect to its adaptability to produce a desired physical effect in the properties of the powder without regard to the chemical composition of such component.' It is stated that uniformity of product is thereby secured. Thus: 'A product of this nature offers great advantages over natural dragon's blood by reason of the fact that, being made from substances of known composition (italics supplied), succeeding batches can be compounded with the utmost uniformity.' Slight variances in the proportions are commended with reference to specific requirements.

 The emphasized words will bear watching.

 The composition is made up of 'resinanceous material', and 'filler material', which are the prime ingredients; also adhesion and lubricant powders and coloring material which can be thought of as of secondary importance.

 The patentee's definition of resinaceous material is: 'The term resinaceous material wherever used is intended to refer to such a resin or wax (i.e. a single resin or wax, of either natural or synthetic origin, or it may be a mixture of two or more such natural or synthetic products), or, to a mixture of such resins or waxes.'

 Eight desirable physical characteristics of such a resinaceous material are listed and it is said that they should be present in reproducible fashion.

 It is observed that while natural dragon's blood 'may fulfill (possess?) all of the foregoing characteristics', because it occurs in nature it is not of reliably uniform composition 'so that it cannot be used as the resinaceous material of the present invention without sacrificing the desirable advantage without sacrificing the desirable advantage of uniformity of characteristics'.

 Apparently the patentee asserts that his definition of 'resinaceous material' is broad enough to include dragon's blood as a natural resin, while at the same time he warns against using it; he cannot be permitted both options, and for the purpose of this decision his claims will be interpreted as excluding dragon's blood as a natural resin within the disclosure of his asserted invention.

 He then proceeds to explain how he makes one approved synthetic resin by combining 1 part of carnauba wax with approximately 4 to 5 parts of a synthetic phenolic base resin product made by placing 1200 grams p-tertiary amyl phenol and 500 grams aqueous formaldehyde (37 1/2% CH2O) in a round bottom flask having a reflux condenser; the mixture is heated, hydrochloric acid is added, the mixture is refluxed for three hours 'during which time most of the formaldehyde combines and a resin is formed'. Condensation for distillation is effected, the water and hydrogen chloride being distilled off by heat; further heating, and removal of the unreacted p-tertiary amyl phenol is accomplished by applying 26 inch vacuum to the flask. The molten resin is then removed and cooled, and pulverized as required, and has a softening point of about 83 1/2 degrees C. The resin so synthesized is not stated in the terms of a chemical formula. The mixture with carnauba wax, in the stated proportion, constitutes a suitable resinaceous material for the purposes of this invention.

 The foregoing has been set forth because it is the feature of this patent which distinguishes it from the earlier Application (Serial No. 72,061, filed April 1, 1936) which was rejected for insufficiency of disclosure, and of which this patent is stated to be a continuation.

 The continuation feature is of moment in this controversy.

 The synthetic resin so formed can be economically substituted by one bearing the trade-name 'Durez S-5758', which the patentee is informed is a phenol-formaldehyde resin of the thermoplastic type modified with a resin plasticizer sold under the trade-name 'Santicizer B-16', which is 'the substance butyl phthalyl butyl glycollate' which is described at length, together with the manner in which it is used to plasticize resins, in an article by etc. 'Sufficient plasticizer is added to and worked into the thermoplastic Henol-formaldehyde resin to bring the melting point of the resin to the proper value.'

 The use of the alternative synthetic resin is not seen to add scope to the disclosure of this patent. The earlier Application was rejected because the designation of 'Durez S-5758', as a phenol-formaldehyde resin plasticized as stated, failed to designate the resin 'with that particularity required for its reproduction'. See Office Action of November 27, 1937, in Exhibit 3.

 The instant specification then passes to the second primary ingredient, namely, the filler which adds 'body to the finished product', so that heating on the plate carrying the etching does not cause the powder to spread or flow. The necessary properties are such as to enable the powder to be water-repellent and acid-resistant, when the filler material has been finely pulverized. Suitable fillers are soapstone (which, being pulverized, has a 'somewhat micaceous structure'), the natural mineral natine, and thoroughly cured synthetic resins of the phenol aldehyde type. (See bottle caps and the like.)

 As to this kind of filler it is said: 'In some instances, however, such a resinaceous filler will act in use somewhat as a combined resinaceous material and filler material, particularly if the operator uses high enough temperatures in 'burning in' the powder.' Surely this is a cryptic statement. When the resinaceous filler acts as though it were resinaceous material, one is left to speculate where the one desirable property begins and the other leaves off.

 The secondary ingredients are adhesion powder, the office of which is obvious, and lubricant powder apparently to insure clean brushing and coloring material to promote recognition of the wall during formation by contrast with the etching plate itself. Examples of the first are aluminum stearate and thymol iodide. Powdered talc is an example of the second, and ferric oxide and dyes of the third.

 The proportions of the ingredients found to be acceptable according to the patentee and the order of compounding are set forth. The preferred method of mixing the filler material into the melted resin is explained and the specification concludes: 'As many changes could be made in carrying out the above compositions without departing from the scope of the invention, it is intended that all matter contained in the above description shall be interpreted as illustrative and not in a limiting sense.'

 This sweeping assertion is forecast in his solicitor's letter of December 4, 1936, to the Commissioner in connection with the earlier Application: 'Applicant is under no obligation to define the ingredients of his etching powder composition so narrowly as to prevent the use of their substantial equivalents.'

 For accuracy the claims in suit will be quoted: '1. An acid resist powder comprising the following ingredients in approximately the stated proportions: Per cent Resinaceous material 24-32 Lubricant powder 4-7 Adhesion powder 2-4 Coloring material 1/2-1 1/2 Filler material Balance"

 '2. A composition of matter as set forth in claim 1 in which the resinaceous material includes a thermoplastic phenol-formaldehyde synthetic resin.'

 '3. A composition of matter as set forth in claim 1 in which the resinaceous material includes thermoplastic phenol-formaldehyde synthetic resin, and a wax substantially of the characteristics of carnauba wax.'

 '4. A composition of matter as set forth in claim 1 in which the resinaceous material includes a thermoplastic phenol-formaldehyde synthetic resin, and a wax substantially of the characteristics of carnauba wax, and the filler material comprises a finely pulverized micaceous mineral.'

 '5. An acid resist powder as set forth in claim 1, in which the lubricant powder consists of talc.' '9. An acid resist powder comprising of the order of one-fourth to one-third resinaceous material, one-half to three-fourths filler material, and one or more of the following secondary ingredients in the proportion stated: Per cent Lubricant powder 4-7 Adhesion powder 2-4 Coloring material 1/2-1 1/2"

 It should be understood quite clearly that the defendant's position is as stated in its closing argument, that this is not a chemical Patent; it is said to be a patentable combination of several substances having certain physical characteristics (namely, functional aptitudes) which cooperate when properly assembled in a new way to accomplish a new result. If understood, the argument is that resemblance is urged to a purely mechanical Patent for a new combination of old components, which accomplishes a result not previously known. So much is consistent with the language quoted above (page 1, column 2, line 15).

 Probably the defendant is making virtue of necessity in so contending, since it asserts not only the right to exclude others from making use in combination of the substances which it has disclosed, but all others which may be regarded as their equivalents.

 The Plaintiff's Products:

 The plaintiff manufactures and sells acid resist powders made according to secret formulae which were disclosed in camera, and the seal is not required to be broken for the purposes of this decision.

 Prior Use:

 The defendant's product was marketed more than two years prior to the Application date of the Patent in suit; if the latter, however, is entitled to the Application date of the prior abandoned Application date, on the theory that this is a continuation thereof in part, the question disappears from the case.

 The plaintiff's product known as 160, a dragon's blood etching powder, was made and sold more than two years prior to the earliest filing date of Alnutt, the patentee, and whether that is such a prior use as ...

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