Slayter & Co. v. Stebbins-Anderson Co.

• Decision Date: 08 February 1941
• Docket Number: No. 4726.,4726.
• Citation: 117 F.2d 848
• Parties: SLAYTER & CO. v. STEBBINS-ANDERSON CO., Inc., et al.
• Court: U.S. Court of Appeals — Fourth Circuit

117 F.2d 848 (1941)

SLAYTER & CO. v. STEBBINS-ANDERSON CO., Inc., et al.

No. 4726.

Circuit Court of Appeals, Fourth Circuit.

February 8, 1941.

Newton A. Burgess, of New York City, and Edward R. Johnston, of Chicago, Ill. (Bartlett, Poe & Claggett, of Baltimore, Md., Lee J. Gary, of Chicago, Ill., and J. Kemp Bartlett, Jr., of Baltimore, Md., on the brief), for appellant.

Theodore S. Kenyon, of New York City (Marbury, Gosnell & Williams, of Baltimore, Md., Frederick Bachman, of New York City, and William L. Marbury, Jr., of Baltimore, Md., on the brief), and Charles Markell, of Baltimore, Md. (Charles Markell, Jr., of Baltimore, Md., on the brief), for appellees.

Before PARKER, SOPER, and DOBIE, Circuit Judges.

SOPER, Circuit Judge.

This suit was brought to enjoin the alleged infringement of the Slayter Reissued Patent No. 19,929 entitled "Method of Heat Insulating". The specification of the patent describes a method for the insulation of buildings which consists of forcibly blowing into the dead air space between the outer sheathing and the inner laths of the walls an insulating material composed of comminuted corn cobs and paper in a ratio of 9 pounds of corn cobs to .9 pounds of paper, mixed with 9 pounds of plaster of Paris and 2 ounces zinc chloride, lime or other suitable fungicide. While the specification describes one material and one method of applying it, the patentee expressed a wish not to limit the method to the particular materials mentioned.

The original patent contained a single claim as follows: "The method of building a wall whereby to increase the insulating and fire resisting properties thereof without undue added weight, which comprises utilizing spaced apart walls of a building previously constructed as a form for receiving heat insulating material, providing openings to afford access to the air spaces between said spaced apart walls, inserting the outlet end of a conduit through said openings, and forcing through the said conduit a comminuted heat insulating material, said material being of sufficiently light weight and devoid of free moisture content of sufficient amount to cause bulging or other injurious effects upon the exposed surfaces of said walls."

This patent was held invalid in Therm-O-Proof Insulation Co. v. Slayter & Co., 7 Cir., 80 F.2d 557. Judge Evans said that the claim described both a process and a product, and concluded that the claim should be considered a process claim, restricted to the use of the particular material described therein. He then showed that there was no invention, in view of the prior art, in providing an opening in a wall and blowing a filling material through a conduit into the open space beyond; and thus finding that the only novelty in the claim resided in the application of the method to the material described, he examined the description and found it so indefinite and vague, especially in view of the prior art dealing with materials similarly employed, that the patent did not warrant the protection of the courts.

A month after this decision was rendered, Slayter applied for a reissue, and the reissued patent in suit was granted, in which the single claim was modified as to the description of the material so as to read as follows: "The method of building a wall whereby to increase the insulating and fire-resisting properties thereof without undue added weight, which method comprises utilizing spaced apart walls of a building previously constructed as a form for receiving heat insulating material, providing openings to afford access to the air spaces between said spaced apart walls, inserting the outlet end of a conduit through said openings, and pneumatically forcing through the said conduit a finely divided but not powdered heat insulating and fire-resisting material, said material being substantially free from dust and of low specific gravity and of a size to provide a large body for the amount of weight and substantially devoid of free moisture content whereby said wall is heat insulated and rendered fire resistant without bulging or damage to the surface thereof or to decorations thereon."

In this form, the patent came before the District Court of the Southern District of New York in Slayter & Co. v. United States Insulation Corp., 20 F.Supp. 376. Judge Woolsey held that the claim was no longer subject to the defect of vagueness, and proceeded to inquire whether any invention was involved in Slayter's method of building a wall, using as an integral part of the method the particular kind of material described in the claim. The judge concluded, in harmony with the decision of the Circuit Court of Appeals for the Seventh Circuit, that if the patent involved any new element or any new result, it resided in the synthetic insulating material; and he found, upon consideration of the prior art, that the material which Slayter devised possessed the necessary qualities for successful operation, and was not anticipated by the prior art.

This conclusion was based upon the following findings of fact that seemed to the court to be tenable upon the record before it; (1) When Slayter started his quest for an insulating material in 1925, he could not find anything in the art that would serve his purpose; but in December, 1926, after two years of effort and the expenditure of more than $100,000, he found what he needed in the material described in the specification. After this material is blown into place, it becomes an interior wall consisting of a hard, caked fire resisting body of light weight and substantially free from dust — "a most ingenious collocation of characteristics, which eliminates risk of damage to the plaster or wall paper or decorations of the house, into the intramural spaces of which it is blown." The success of this material led to the contrivance through "commercial evolution" of equivalent insulating material,...