274 F.2d 224 (6th Cir. 1959), 13568, National Latex Products Co. v. Sun Rubber Co.

Docket Nº:13568, 13569.
Citation:274 F.2d 224, 123 U.S.P.Q. 279
Case Date:October 28, 1959
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

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274 F.2d 224 (6th Cir. 1959)

123 U.S.P.Q. 279




Nos. 13568, 13569.

United States Court of Appeals, Sixth Circuit.

October 28, 1959

Rehearing Denied Jan. 13, 1960.

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facts. Fed.Rules Civ.Proc rule 52(a), 28 U.S.C.A.

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Walter J. Blenko, of Blenko, Hoopes, Leonard & Buell, Pittsburgh, Pa. (McCoy, Greene & TeGrotenhuis, Cleveland, Ohio, Oldham & Oldham, Akron, Ohio, on the brief), for appellants.

Everett R. Hamilton, of Ely, Frye & Hamilton, Akron, Ohio (Albert L. Ely, Akron, Ohio, on the brief), for appellee.

Before ALLEN and McALLISTER, Circuit Judges, and MATHES, District judge.

ALLEN, Circuit Judge.

This is an appeal from a judgment of the District Court holding Molitor Patent No. 2, 629, 134 'Method of Manufacturing Articles from Vinyl Resins' and Martin and Rekettye Patent No. 2, 629, 131 for 'Apparatus for the Manufacture of Hollow Cast Articles, ' valid and infringed.

All four claims of the Molitor patent are in suit. The patent is for a process of making hollow articles from vinyl plastisols. The Martin patent is for a machine designed automatically to carry out the Molitor process. Appellee, The Sun Rubber Company, of Barberton, Ohio, hereinafter called Sun Rubber, owns both patents. Appellant, National Latex Products Company, of Ashland, Ohio, hereinafter called National, practices the process described in Molitor. Sun Rubber and National compete in manufacture of the articles produced by the Molitor process, such as balls and toys. Co-appellant, The Akron Presform Mold Company, hereinafter called Presform, was joined as alleged co-infringer. Individual officers of National and Presform were joined below as co-defendants. As to them the complaint was dismissed and no appeal was taken.

Molitor Patent No. 2, 629, 134.

This patent was issued February 24, 1953, on an application filed June 27, 1950.

The process is called rotational casting and may be briefly described as follows: A hollow sectional mold is charged with a measured amount of fluid plastisol mixed with vinyl resin and then closed. The mold is rotated in a compound manner about two axes and at the same time is heated. The mixture is forced against the interior surface of the mold and as the temperature of the material rises the mixture gels and a film is uniformly distributed on the interior surface of the mold. Heating is continued until the

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mixture reaches the fusion temperature, usually around 350 degrees F. At this temperature the liquid plasticizer is fused with the divided particles of the vinyl resin. The mold is then cooled and the cooling process gives the mixture tensile strength. The mold is opened and the finished article is removed.

Many advantages are asserted for the method. Since a precise quantity of material less than the volume of the mold is measured into the mold, accurate control of the weight of the product is secured. The time of manufacture, formerly consuming a day or more, is reduced to a fraction of an hour. Shrinkage of the article produced is greatly lowered. Distortion or tearing is largely eliminated; scrap is minimized.

The District Court held both patents valid and concluded that National infringed the Molitor patent and that Presform infringed because of building and selling the accused Miller machine. National concedes that, if the Molitor process is patentable, National infringes. It contends that the Molitor patent is invalid because (1) Molitor failed in his application to comply with the requirements of 35 U.S.C. §§ 112 and 115, (2) because of anticipation in the prior art and (3) the Molitor process subjects an old material to an old treatment producing no new result and presenting no patentable invention.

The Molitor patent had an arduous passage through the Patent Office. It was rejected four times on prior patents including Rempel, No. 2, 469, 892, Johnson British Patent No. 500, 298, and Kay, No. 1, 998, 897.

The assertion of noncompliance by Molitor with 35 U.S.C. §§ 112 and 115, arises out of certain amendments to his claims. The original claims did not state what material should be used in constructing the mold nor expressly describe its qualities. In final form each of Molitor's four claims specifies that the mixture shall be rotated in a hollow sectional mold whose inner surface is 'nonporous'. Claim 4, which is typical, is printed in the margin. 1

The original claims not only did not describe the material of the mold as nonporous but also failed to teach that the molds should be made of metal or any other impervious material. National urges that by the addition of the term 'non-porous' Molitor violated the provisions of 35 U.S.C. §§ 112 and 115. These sections read in part as follows:

'§ 112. The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

'The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

'§ 115. The applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits

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a patent; and shall state of what country he is a citizen. * * *.'

National relies upon Schriber-Schroth Company v. Cleveland Trust Company, 305 U.S. 47, 57, 573, 59 S.Ct. 8, 12, 83 L.Ed. 34, which holds that the statutes require a description from which others may know 'which features may be safely used of manufactured without a license and which may not. Permutit Company v. Graver Corporation, 284 U.S. 52, 60, 52 S.Ct. 53, 55, 76 L.Ed. 163.' It also relies upon Muncie Gear Works, Inc., v. Outboard Marine & Manufacturing Company, 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171, which holds in effect that the application for a patent cannot be enlarged by amendment to embrace an invention not disclosed in the application as filed, when adverse rights of the public have intervened. Cf. Coats Loaders & Stackers, Inc., v. Henderson, 6 Cir., 233 F.2d 915, 922.

In his arguments before the Patent Office touching the amendment of the claims Molitor asserted that the nonporous mold was essential to his invention and differentiated the Rempel patent No. 2, 469, 892 on that precise ground. Rempel discloses a porous mold essential for absorbing the watery constituent of latex. The Molitor process does not use latex. National contends that, as the Molitor application and specification did not require the mold to be nonporous on its interior surface, the belated inclusion of that provision in the claims constitutes a material change in the invention described. If Molitor failed to comply with 35 U.S.C. §§ 112 and 115 the patent is void. Permutit Company v. Graver Corporation, supra.

Molitor also failed to execute a new oath in connection with the amendments and if the amended claims went beyond the scope of the application National contends the patent is void for lack of proper attestation. Cf. Steward v. American Lava Company, 215 U.S. 161, 168, 30 S.Ct. 46, 54 L.Ed. 139; Wagenhorst v. Hydraulic Steel Company, 6 Cir., 27 F.2d 27.

The objection as to the violation of Sections 112 and 115 must be overruled. The Molitor patent drawing No. 1 is cross-hatched. This means that the contemplated material of the mold is metal, for under the rules of the Patent Office cross-hatching signifies material of metal. Fairly construed, a mold of metal not otherwise described is impervious and nonporous. To add the word 'nonporous' to a description of metal would usually be a redundancy. Moreover, the application expressly refers to the Martin patent, also involved herein, which provides that the matrices or molds are usually made of metal, preferably copper or steel, copper or bronze plated on the inner surfaces and exteriorly coated with a dark, heat-absorbing coating. Thus by specific reference the Molitor application supplies the necessary disclosure as to the material to be used in constructing the mold. The disclosure of a patent application may be supplemented by reference to another patent. Application of Heritage, 182 F.2d 639, 643, 37 CCPA 1109. The reference to the Martin patent in the Molitor specification constituted such a supplement. The phrase 'nonporous' involved only a minor change necessary to secure complete protection for what, as shown by the drawing, the applicant originally intended to reserve to himself. Engineering Development Laboratories v. Radio Corporation of America, 2 Cir., 153 F.2d 523, 526; General Electric Company v. Cooper Hewitt Electric Company, 6 Cir., 249 F. 61, 64. In the Muncie Gear Works case, supra, the original claims had been limited and claims not containing the limitations of the specifications were allowed. The Supreme Court held that the original application and some later amendments wholly failed to disclose the invention finally described and asserted. In the instant case the nonporous character of mold was clearly shown by the drawing filed with the original specification and the reference to the Martin patent. The amended claims were equivalents of the original claims. As...

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