Binney & Smith Co. v. United Carbon Co.

• Decision Date: 06 January 1942
• Docket Number: No. 4837.,4837.
• Citation: 125 F.2d 255
• Parties: BINNEY & SMITH CO. v. UNITED CARBON CO. et al.
• Court: U.S. Court of Appeals — Fourth Circuit

125 F.2d 255 (1942)

BINNEY & SMITH CO. v. UNITED CARBON CO. et al.

No. 4837.

Circuit Court of Appeals, Fourth Circuit.

January 6, 1942.

Dean S. Edmonds, of New York City (Roger T. McLean, of New York City, Howard R. Klostermeyer and Price, Smith & Spilman, all of Charleston, W. Va., and Pennie, Davis, Marvin & Edmonds, of New York City, on the brief), for appellant.

George P. Dike, of Boston, Mass. (Arthur M. Smith, of Detroit, Mich., and Osman E. Swartz, of Charleston, W. Va., on the brief), for appellees.

Before PARKER, SOPER, and DOBIE, Circuit Judges.

PARKER, Circuit Judge.

This is a suit for infringement of Wiegand and Venuto Patent No. 1,889,429, covering carbon black pellets and a process for making them. It was instituted by Binney & Smith Company, assignee of the patent, against the United Carbon Company and the United Carbon Company, Inc. Only the product claims of the patent, claims 1 and 2, are in suit. The court below held these claims invalid as lacking novelty and invention and also because of indefiniteness in the description of the product. The court held further that, if broadly construed, the claims would be infringed by the product of defendants, but that, even if valid, they should be strictly construed and that, when so construed, they were not infringed. From an order dismissing the suit, the plaintiff has appealed.

We think that the evidence shows conclusively that the patentees under the patent in suit were the first to solve the problem presented by the dust nuisance arising from the use of carbon black in the manufacture of rubber tires for motor vehicles. Carbon black is produced by burning low quality gas and capturing the unconsumed carbon carried in the flames. As it comes from the burning house, this is a loose, light, fluffy product, weighing about three pounds to the cubic foot. Through agitation and compression, the air is driven out of it to as great extent as possible; but even after this is done, the product is a finely divided powder, weighing only about twelve pounds to the cubic foot and composed of particles a millionth of an inch in diameter, so small that they can be seen only with the aid of an electron microscope. By 1915 it was recognized that the use of carbon black as a filler in the manufacture of rubber for automobile tires greatly improved the quality of the tires; but the dust arising from the use of the extremely fine powder in the process of manufacture was all but an intolerable nuisance. Efforts to produce carbon black in a form which would eliminate the dust nuisance engaged the attention of a number of the best minds connected with the rubber industry, but until the issuance of the patent in suit these efforts were unavailing. A large number of patents were applied for and issued, but none covered a product which would meet the demands of the industry. Some attempted granulation of the powder by the use of binders such as oil or tar, but these failed because the industry objected to the binders which they contained. Others attempted wetting the carbon black with water or other volatile liquid and then drying it out, but these failed because the result was a dried "mud cake" the breaking up of which revived the dust nuisance, and the particles of which were "harsh" and did not disperse satisfactorily in the rubber. None succeeded in putting the carbon black in a form which the industry was willing to accept.

The invention of plaintiff's patent consisted in producing carbon black in the form of small rounded pellets, which were dustless and which would disintegrate into the original small particles of carbon black when subjected to the pressure involved in the rubber manufacturing process. These pellets could be easily handled and could be transported in tank cars or stored in bulk instead of being shipped in paper bags, as required in the case of the carbon black powder. They were made by wetting carbon black with water, introducing into the mass a liquid such as gasoline, and then subjecting the mass to violent churning or agitation, with the result that the carbon particles would agglomerate in the form of small rounded pellets, after which the gasoline would be evaporated, leaving the pellets in the pure carbon state. The process is thus described in the specification of the patent:

"The carbon black is first mixed with water so as to form a comparatively thin paste with most of the occluded gases driven out. After thorough mixing gasoline is added and the whole mass thoroughly agitated. As a result substantially all of the carbon black floats on top of the water in the form of pellets and may be readily removed by filtering, decanting or the like. These pellets may then be dried to remove the absorbed gasoline and such moisture as there may be contained therein. * * *

"On the first addition of gasoline to the black and water paste, with agitation, the mass seems to thicken like an emulsion; then on further shaking, it seems to flocculate into granules; as the agitation goes on, a slight creaming to the top of the pellets or a scum takes place, then gradually the pellets form and float to the top. The end point is reached when the water below is free of carbon-clear.

"The pellets are then screened off by any of the various methods, placed in an oven or a recovery apparatus and freed from solvent and water. * * *

"Merely as an example of the relative proportions which we have found to operate satisfactorily, we give the following by weight:

                                                Parts
                  Carbon ...................  5
                  Water ....................  40 to 80
                  Gasoline .................  7  to 9
                

"In carrying out our improved process with these proportions, the mass may be thoroughly shaken or otherwise agitated for about five minutes and the resulting pellets will be of about one-sixteenth of an inch in diameter and will be fairly uniform in size.

"The pellets are very porous, of substantially spherical or globular form, have a smooth somewhat lustrous outer surface which is not easily broken by handling, are more compact than untreated carbon, are fragile under light pressure, and may be easily reduced to soft minute particles which cannot be told from the original particles except that possibly they have a more unctuous feel. They somewhat resemble lead shot and may be rolled in the hand without dirtying or dusting. Apparently the outer surface portion or shell of each pellet is slightly more compact than the inner part, but still porous."

Claims one and two of the patent, being the product claims here relied on, are as follows:

"1. Substantially pure carbon black in the form of commercially uniform, comparatively small, rounded, smooth aggregates having a spongy porous interior.

"2. As an article of manufacture a pellet of approximately one-sixteenth of an inch in diameter and formed of a porous mass of substantially pure carbon black."

The evidence leaves no doubt but that the dust problem in the rubber industry was solved by the pellet produced by the patent. Rubber manufacturers were wary of accepting it at first; and its acceptance was further retarded by reason of a higher price being demanded for it than was charged for the carbon black powder, but the evidence leaves no doubt but that it was regarded from the beginning as a valuable improvement and was destined to have wide commercial success. Application for the patent was not filed until 1927. In 1928 sample lots were sent out to prospective customers. In 1929 there were commercial sales of 20,000 pounds, in 1930 of 164,000 pounds, in 1931 of 194,000 pounds and in 1932 of 281,000 pounds. In 1932 there was discovered an improvement in the process of manufacture which, by eliminating the use of expensive gasoline, cheapened the process and resulted, we think, in an improvement in the product. From then on the sales of plaintiff steadily mounted, being 800,000 pounds in 1933, 3,300,000 pounds in 1934, 30,000,000 pounds in 1936 and 97,000,000 pounds in 1939. Other companies in the meantime had entered into the production of the pelleted product, so that by 1939 this form of carbon black had virtually superseded the powdered form for use in the rubber industry.

With reference to improvements in the process and product, these have resulted from the use of only one liquid and, finally, no liquid at all in the formation of the pellets. It will be observed that the process of plaintiff's patent prescribes churning or agitation of the mass of carbon black and liquids. This churning or agitation is evidently the really important thing in the process, and, when properly carried on, is what causes the carbon black to agglomerate into pellets, and to do so whether any liquid is present or not. These one liquid and no liquid...