Carbide & Carbon Chemicals Corporation v. Coe

• Decision Date: 29 December 1938
• Docket Number: No. 7029.,7029.
• Citation: 102 F.2d 236,69 App. DC 372
• Parties: CARBIDE & CARBON CHEMICALS CORPORATION et al. v. COE, Commissioner of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

69 App. DC 372, 102 F.2d 236 (1938)

CARBIDE & CARBON CHEMICALS CORPORATION et al. v. COE, Commissioner of Patents.

No. 7029.

United States Court of Appeals for the District of Columbia.

Decided December 29, 1938.

Charles H. Potter, of Washington, D. C., and Emory P. Boynton, of New York City, for appellants.

R. F. Whitehead, Solicitor, United States Patent Office, of Washington, D. C., for appellee.

Before GRONER, Chief Justice, and STEPHENS and EDGERTON, Associate Justices.

STEPHENS, Associate Justice.

This is an appeal from a decree of the District Court of the United States for the District of Columbia dismissing, after a hearing on the merits, a bill of complaint filed by the appellants under Rev.Stat. § 4915, as amended, 35 U.S.C.A. § 63. The bill sought to require the appellee United States Commissioner of Patents, hereafter referred to as the Commissioner, to issue a patent upon the application of Ralph B. Frazier, Serial No. 605,129, for certain new and useful improvements in food packages. The application will be referred to hereafter as the Frazier application. The application, the rights under which had been assigned to the appellant Carbide and Carbon Chemicals Corporation, was duly prosecuted in the Patent Office, and the primary examiner finally rejected claims 4, 5, 6, 7, 8, 11, 13, 14 and 22. This rejection was affirmed by the Board of Appeals. In the hearing in the trial court the record in the Patent Office was as usual introduced in evidence; and there was also heard testimony by Frazier, Frank R. Stoner, Jr., and Arthur K. Doolittle, as experts. At the conclusion of the hearing, the trial judge ruled that no invention was disclosed by the application. The sole question in this appeal is as to the correctness of this ruling in respect of the claims mentioned.

From Frazier's application and the testimony in the trial court, the following appears: The principal object of the claimed invention is "to provide improved composite materials for use particularly in packaging foodstuffs." Metal foil and metal cans, commonly used in such packaging to prevent desiccation and spoilage, are often corroded by contact with the foodstuff with resultant contamination and deterioration of the foodstuff itself. This occurs, for example, in the packaging of cheese in metal foil and of orange juice and beer in metal cans. The problem in the art was to discover a coating which would render metal packaging material, whether foil or cans, resistant to chemical action by elements contained in foodstuffs to be packaged, and also render metal foil packaging material impervious to exterior gases, moisture, grease and oils; it was also essential that the coating in contact with the foodstuff should be free from volatile or soluble constituents which might impart an odor or taste thereto.

Frazier testified that while employed by the Carbide and Carbon Chemicals Corporation upon a fellowship in the Mellon Institute, where his duties comprised working with solvents, experimenting with nitrocellulose lacquers with which the solvents were used, and developing uses for new products such as vinyl resins, an inquiry was received from a European country asking for a coating to protect tinfoil for food packaging. An inquiry had also been received from an American company for a coating for foil to be used in packaging cheese. In this the problem was to prevent corrosion of the foil which gave rise to darkening of the cheese and to gas formation. Knowing that in the nitrocellulose lacquers tough films adhering to metal foils were available, Frazier thought first of the use of such a lacquer. Foil was coated at the laboratory by a spray application, two nitrocellulose lacquers of the best formula which could be developed being used; and one application was made with vinyl resin in it. The nitrocellulose lacquer samples were not successful — they produced an odor; and no more tests were made with them. But the foil coated with vinyl resin showed promise. Similar problems were investigated for can manufacturing companies in respect of coating tin cans for the packaging of vegetables, orange juice and the like. The results of the tests of vinyl resins in metallic food containers showed definitely that the coating would not impart odor or taste to the product and the tests were successful. They were however not entirely as expected; although Frazier had been working for a considerable period of time before this with vinyl resin coating compositions, they turned out in these tests to be better than he had reason to expect.

Frazier stated in his specification that he had:

". . . discovered by test that the object of the invention may be attained, and new composite materials may be produced by providing metallic materials used for packaging purposes, particularly for foodstuffs, with a surface or surfaces which contain vinyl resins, that is, resinous products resulting from the polymerization¹ of certain vinyl compounds. . . .

"Vinyl resins suitable for use in forming the materials of my inventions may be formed from vinyl esters by known polymerization processes. The polymerization products of inorganic vinyl esters, such as vinyl halides, or those of organic vinyl esters, such as vinyl esters of aliphatic acids may be used. I prefer to use vinyl resins resulting from the conjoint polymerization (by which is meant polymerization of a plurality of compounds while in mutual contact) of two or more vinyl esters. For example, vinyl resins having desirable properties may be prepared by the conjoint polymerization of a vinyl halide and a vinyl ester of an aliphatic acid. Products of the conjoint polymerization of vinyl chloride and vinyl acetate in proportions ranging from about 10% to 90% by weight of the chloride are particularly desirable. Such resins are substantially water-white and transparent and they are exceptionally resistant to acids, alkalies and salts in the presence of moisture and may be used to form tough, flexible films which adhere well to metals, and which are odorless and tasteless. In addition, I have found that the characteristics of the preferred vinyl resins are retained to a very great extent when the vinyl resin is modified by the addition of a second resin or gum, a cellulose ester or a high-boiling solvent having plasticizing or softening action on the resin. Due to this property the vinyl resins may be greatly modified to meet specific requirements without materially altering the chemical properties of the resins which are necessary to the materials of this invention.

"The material of my invention may be prepared by coating the metallic packaging material, at least on the surface thereof which is to be contacted with the packaged product, with a vinyl resin or vinyl resin composition. This may be done conveniently by forming a solution of the resin with or without modifying materials, applying the solution to the metal, and eliminating the solvent."

The specification gives several examples of proportions which may be used to accomplish the result of the invention. It is explained in the testimony that after the elimination of the solvent the film thus dried may be baked to insure adhesion to the metal or foil.

The claims: Claim 4 is typical of claims 4, 5, and 6, and reads as follows:

"4. A food package comprising a metallic material having at least the surface thereof which is in contact with the food product to be packaged composed of a composition which contains a substantial proportion of a vinyl resin of the group including polymerization products of vinyl esters and mixtures of vinyl esters."

The remaining claims are as follows:

"7. A food package which comprises a food product and a metallic packaging material having at least the surface thereof which contacts the packaged product composed of a composition which contains a vinyl resin substantially identical with a product resulting from the conjoint polymerization of vinyl chloride and vinyl acetate in the proportions of about 60% to 90% by weight vinyl chloride.

"8. A food package which comprises a food product and a metallic packaging material having at least the surface thereof which contacts the packaged product composed of a composition which contains a vinyl resin substantially identical with a product resulting from the conjoint polymerization of vinyl chloride and vinyl acetate in the proportions of less than about 65% by weight vinyl chloride, together with nitrocellulose.

"11. Process of protectively packaging food products which comprises enclosing the food product in a metallic packaging material which has at least the surface thereof which is in contact with said food product composed of a composition which contains a substantial proportion of a vinyl resin of the group including polymerization products of vinyl esters and mixtures of vinyl esters.

"13. As a new product, a package comprising cheese enclosed by and substantially sealed in a wrapping consisting essentially of metal foil which has at least the surface thereof in contact with said cheese composed of a composition which contains a substantial proportion of vinyl resin of the group including polymerization products of vinyl esters and mixtures of vinyl esters.

"14. As a new product, a package comprising cheese enclosed by and substantially sealed in a wrapping consisting essentially of metal foil which has at least the surface thereof in contact with said cheese composed of a composition which contains a vinyl resin substantially identical with a product resulting from the conjoint polymerization of vinyl acetate and vinyl chloride in the proportions of about 60% to 90% by weight vinyl chloride.

"22. Process of protectively packaging cheese, which comprises pouring heated molten cheese into molds lined with a metallic packaging material which has at least the surface thereof which is in contact with the said cheese composed of a composition containing a...