Kalle & Co. v. Multazo Co.

• Decision Date: 08 April 1940
• Docket Number: No. 7996.,7996.
• Citation: 109 F.2d 321
• Parties: KALLE & CO. et al. v. MULTAZO CO., Inc.
• Court: U.S. Court of Appeals — Sixth Circuit

109 F.2d 321 (1940)

KALLE & CO. et al. v. MULTAZO CO., Inc.

No. 7996.

Circuit Court of Appeals, Sixth Circuit.

January 10, 1940.

Rehearing Denied April 8, 1940.

Arthur C. Denison, of Cleveland, Ohio, and Arthur W. Dickey, of Detroit, Mich. (Harness, Dickey & Pierce and Arthur W. Dickey, all of Detroit, Mich., Arthur C. Denison, of Cleveland, Ohio, and Werner H. Hutz and Leslie G. Noller, both of New York City, on the brief), for appellants.

Ralph L. Chappell, of Kalamazoo, Mich. (Ralph L. Chappell and Earl & Chappell, all of Kalamazoo, Mich., on the brief), for appellee.

Before SIMONS, ALLEN, and HAMILTON, Circuit Judges.

Rehearing Denied April 8, 1940. See 110 F.2d 814.

SIMONS, Circuit Judge.

In this patent infringement suit are involved alleged advances in the art of producing copy paper upon which positive copies of engineering drawings and the like can be reproduced by light directly from the originals. The patents alleged to be infringed are No. 1,628,279 granted May 10, 1927, to Schmidt and Krieger, and patent No. 1,803,906 granted May 5, 1931, to Krieger and Zahn. Since the patents in suit are identified in the briefs and record by the first two digits of their numbers, they will be referred to herein as the "16" and "18" patents. The "16" patent being for an alleged improvement in the process and product of patent No. 1,444,469 issued February 6, 1923, to Kogel and Neuenhaus, which is of great importance in delineating prior art, the latter will be referred to as the "14" patent.

The art to which all three patents relate makes use of azo dyes in reproducing copies by a process through which positive reproductions are made directly, rather than through the instrumentality of an intermediate negative, as in photography. A positive copy is one in which the lines are the same as in the original with respect to their contrast with the background, and so is distinguished from a blueprint or a Van Dyke print.

The copy papers which are the subject matter of the patents are known as diazo-types, and the method of producing prints thereon is well described in the opinion of the court below, 31 F.Supp. 109, and in van der Grinten et al. v. Dieterich-Post Co., 9 Cir., 85 F.2d 637. It is sufficient here to say that the lines and figures of the original are reproduced positively in the copy through the reaction of two chemical compounds, — one a diazo compound and the other the azo dye already mentioned. The reaction is called "coupling." Two kinds of diazo-type papers were known to the art, namely, the single component paper and the two component paper. In respect to coupling, however, the chemical reaction is much the same in each. In the two component papers with which we are here concerned, the diazo compound and the azo coupling component are coated together upon one side of the copy paper and are caused to react to form a colored dye which reproduces the original drawing. This is made possible by the fact that the diazo compound is sensitive to light and is decomposed when subjected to it. When the diazo-type copy paper is exposed, as in making blueprints, so much of the diazo compound as is protected by the lines of the tracing will remain undecomposed. It is then permitted to couple with the azo dyestuff by neutralizing the acid used to retard coupling and the azo dye reproduces the lines of the tracing. The acid is neutralized usually by an ammonia gas. In single component papers, the diazo compound alone is coated upon the paper before printing. Thereafter it must be subjected to a liquid developing bath containing the dyestuff. This causes a distortion and shrinking of the paper when it is dry and produces a less accurate copy than paper not requiring development in a liquid bath. The advantages of the two component papers over the single component papers are, therefore, obvious, and were understood in the art.

The "14" patent taught reproduction of positive copies by the use of chemical compounds known as diazo anhydrides and azo coupling components for two component papers. The "16" patent, it is asserted, teaches the use of chemical compounds other than those described in the "14" patent. These are known as amino diazo compounds, but they are likewise used with azo coupling components. Of the claims of the "16" patent allowed to the inventors, process claims 1 and 2 and product claims 4 and 7 are in suit. They are:

"1. Process for producing sensitive layers on a suitable base, consisting in covering the base with a diazo compound being formed from amino compounds containing at least one other amino group and an azo dyestuff component.

"2. Process for producing sensitive layers on a suitable base, consisting in covering the base with a diazo compound being formed from amino compounds containing at least one other amino group, an azo dyestuff component and a metal salt."

"4. As new products, sensitive layers on a suitable base, consisting of diazo compounds being formed from amino compounds containing at least one other amino group, and an azo dyestuff component."

"7. As new products, sensitive layers on a suitable base, consisting of diazo compounds being formed from amino compounds containing at least one other amino group, an azo dyestuff component and a metal salt."

The District Court held the claims of the "16" patent in suit to be invalid. Decision was based apparently on a number of grounds. It was thought that the specification led unmistakably to an inference that the fundamental object of the "16" patent was to teach a process for production of and to produce a paper equally or nearly as durable and as capable of being stored as that described in the "14" patent, without having to add a considerable quantity of acid, and that this could be accomplished by using as diazo components compounds which might be regarded as diazo-anhydrides, but which were diazo compounds formed from amino compounds and containing at least one other amino group. The court was led to its conclusion by a reference in the patent to the effect of sulphuric acid in impairing the durability of the paper fibre, and an assertion that less acid was needed to prevent coupling if the amino-diazo compounds disclosed in the patent were used. Since the record discloses that sulphuric acid may not commercially be used, and that of the weaker acids considerable quantities are required to prevent premature coupling, it was evidently considered that the claims in suit were inoperative.

It was also thought, though not categorically so stated, that the claims lacked invention since the "14" patent taught the use of the diazo-anhydrides and an article by Ruff and Stein showed the necessity of an alkalizing medium for coupling, and the excellent light-sensitiveness of the diazo of aminocarbazol. Even though there was evidence that an organic chemist would not have been led immediately to the idea that he could replace the diazo-anhydride of the "14" patent with an amino diazo anhydride, the court thought it altogether likely that a chemist skilled in the art of producing diazo-type papers and familiar with the teaching of the "14" patent and the Ruff and Stein article, would encounter no substantial difficulty in making the replacement and could have foretold that the amino diazo compounds would possess not only the desired light-sensitiveness, stability and bleaching property, but the variety of colors thought by the inventors to be of such great advantage.

Finally the patent was thought invalid for lack of sufficient disclosure to comply with the requirements of R.S. Sec. 4888, 35 U.S.C. § 33, 35 U.S.C.A. § 33. The record fairly discloses that unless a diazo compound formed from an amino compound containing at least one other amino group has also the quinonoid or anhydride structure, it is not suitable for use in diazo type papers. Since the claims as written are broad enough to include compounds which do not have the anhydride or quinonoid structure, and the court was not persuaded by the argument of the appellants that the claims must be limited, in the light of the specification, to amino compounds having the quinonoid or anhydride structure, it concluded that there was failure to disclose the precise scope of the invention.

The inference drawn below that the fundamental object of the "16" patent is to eliminate or reduce the use of acid, is attacked as erroneous in view of the rule that the patent is addressed to those skilled in the art and upon the contention that no one skilled in the art would have thought that premature coupling with amino diazo compounds could be prevented without the use of acid. Since decision in Schriber-Schroth Company v. Cleveland Trust Company, 305 U.S. 47, 573, 59 S.Ct. 8, 83 L.Ed. 34, reversing Cleveland Trust Company v. Schriber-Schroth Company, 6 Cir., 92 F. 2d 330, perhaps great reliance may not safely be placed upon the knowledge of those skilled in the art to supply deficiencies or clarify obscurities in the description and claims of a patent, in respect to an element or the...