Minnesota Mining & Mfg. Co. v. Coe

• Decision Date: 30 June 1938
• Docket Number: No. 6944.,6944.
• Parties: MINNESOTA MINING & MFG. CO. v. COE, Commissioner of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

69 App. DC 217, 99 F.2d 986 (1938)

MINNESOTA MINING & MFG. CO. v. COE, Commissioner of Patents.

No. 6944.

United States Court of Appeals for the District of Columbia.

Decided June 30, 1938.

H. H. Benjamin, of Washington, D. C., and Robert Coulter and William H. Abbott, both of Chicago, Ill., for appellant.

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

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

MILLER, Associate Justice.

On May 24, 1930, Richard Gurley Drew applied for a patent on improvements in adhesive tape composition. Subsequently he assigned his rights to appellant. In November, 1932, the claims were rejected by the Primary Examiner, whose decision was affirmed by the Board of Appeals. Thereupon suit was commenced by appellant in the lower court under § 4915, R.S. (35 U.S. C.A. § 63). This appeal is from a decree dismissing appellant's bill.

Fourteen claims were set out in the application, all of which are involved on this appeal. Claims 1, 10, 11 and 14 are sufficiently illustrative, and are set out in the margin.¹

The component parts of the composition constituting the subject-matter of the Drew application are rubber, a filler, a solvent and in some claims a resin, depending upon the type of rubber used. The composition of two examples set forth in his specification is as follows: (1) ten pounds of rubber, two pounds of cumaron gum or resin, one-half pound of zinc oxide; (2) two pounds of plantation rubber, five pounds of Mexican or wild rubber (high in resin content) and one pound of zinc oxide. The particular kind of rubber or resin is not relied upon as novelty. The proportions of solvents and resinous component may be varied to obtain the desired adhesive quality. This composition when used with a backer as a tape is characterized in the application as "normally pressure sensitive" and "unified". The former denotes the ability to adhere to a surface without the necessity of wetting. The term "unified" is used by the applicant to signify greater cohesion of the adhesive to the backing and inter se than adhesion to an outside surface to which it is applied. In other words, a unified adhesive tape, as that term is used in the application, is a tape capable of being applied by pressure alone and easily removed without damaging the surface or leaving a residue. It is this physical property of being "unified" and at the same time "pressure sensitive" which appellant contends makes its composition a new and useful product, differing in kind from that which went before.

In holding appellant's composition devoid of invention because revealed by the prior art, the Examiner relied particularly upon two references: patents to Teague, No. 1,719,948, July 9, 1929, and Healy, No. 1,752,557, April 1, 1930. His findings, so far as pertinent, are set out in the margin.²

The Healy patent relates to a cement for temporarily mounting sheets of material upon a common backing sheet, which cement will not stain or otherwise damage the surface and which will retain its tacky or adhesive character. A cement of this nature may be made of heat-treated crude rubber dissolved in any rubber solvent, such as 70° Baumé gasoline. A resin is not necessary but may be added to increase tackiness. One example of the proportions which may be used in the composition is: 12% degraded crepe rubber, 87½% solvent and .5% colophony, a resin. Healy states that the exact proportions may be varied over substantial limits.

The patent to Teague is for an "Adhesive Rubber Composition" and discloses an intermixture of rubber, cumaron resin, and mineral filler. In its preferred state it is viscous, stringy, smooth, and tacky. It remains tacky when dried. One example of the proportions used in the composition is: 250 parts of water, 20 parts of cumaron resin, 14 parts of spindle oil, 100 parts of rubber, and .5 parts of water soluble soap. In his specification he states that the proportions may be widely varied to meet the requirements of the use to which the adhesive is to be put.

The principal, although not the only, utility for appellant's product is as a masking tape for automobiles in the process of being painted. The universal adoption of spray-painting of automobiles created a need for a satisfactory method of controlling the application of the paint so that parts of the body surface, the glass, fittings and hardware could, when desired, be protected from the spray. Prior to the introduction of appellant's tape, three methods of masking automobiles were in use. By the first method, the surface to be protected was coated with a starch or dextrin paste and paper was then applied, much in the same manner as wall paper is applied to a wall. This, however, required a costly and laborious process of cleaning the surface upon removal of the paper. The second method employed was to mask the surface with gummed paper — ordinarily a sheet of paper with a dry, hard tack coating consisting principally of glue or gelatin on one side. To render this tape adhesive it was necessary to apply water to the coating. This method proved unsatisfactory because of the tendency of the tape to lift when the water dried out, and because when it did stick, it was very difficult to remove. In many cases it was necessary to disintegrate the paper as by scrubbing with a brush or damp cloth. The third method of masking was to apply a cloth-backed pressure sensitive tape, very similar to the kind of rubber base adhesive tape used by surgeons. The evidence showed that some of the adhesive tapes so used by the trade as masking tapes are properly described as "pressure sensitive" as that term is used in Drew's application, but are not "unified" in the sense that he used that word because they have a tendency to leave a deposit of adhesive on the surface when removed therefrom.

The need for an adhesive which would correct the faults of such masking tapes prompted Drew "to do considerable research work in an effort to have such an adhesive available, recognizing that a tape carrying an adhesive of an improved nature would be superior to that available and therefore would be in demand." There can be no question that several tapes known to the art have the combined properties of adhesiveness and cohesiveness. The term "pressure sensitive" describes nothing new and the word "unified" as used by appellant describes a new concept — if at all — only in degree. And it is in this degree of difference — effected by its composition — that the novelty and utility of appellant's claimed invention lies.

Briefly summarized, the situation was as follows: (1) masking tapes were needed and were used in automobile and other types of painting; (2) the tapes in use were less effective than needed because in some instances they were not sufficiently adhesive, in others because they were not sufficiently cohesive; (3) the next step in the development of this particular field of industry and manufacture called for a tape which would be "pressure sensitive", i. e., sufficiently adhesive upon direct application and "unified", i. e., sufficiently cohesive to be easily removable without leaving a residue after it had served its purpose; (4) Drew experimented with ingredients, the characteristics of which were generally known and used,³ because of their adhesive and cohesive properties, and produced a tape having the comparative adhesive and cohesive properties desired; (5) his tape was accepted by the industry and was commercially successful. Was this sufficient to show invention? The Patent Office and the lower court answered the question in the negative and in our opinion that answer is correct.

The use of mere skill to produce a desired improvement does not constitute invention.⁴ Nor is invention found in every slight advance which is made through the skill of those who, by reason of their employment, are aware of the constant demand of industry for new and improved appliances.⁵ The word skill, as used in the cases, is equally applicable to a chemist as to a mechanic, and to a laboratory as to a work-bench.⁶

Invention may appear when a result is produced which had never before been produced; when its need had been long realized, and "Thousands of dollars had been spent and countless experiments had been performed in fruitless endeavors to accomplish it ...."⁷ But a showing of great industry in experimental research is not in itself sufficient to constitute invention,⁸ when the product thereof differs from those of the prior art only in degree and the result — no matter how useful it may be — is merely one step forward in a gradual process of experimentation.⁹

There was no new idea involved in the claimed invention in this case; nor even a new use made of an old idea.¹⁰ It was no more than a carrying forward of the original idea of using an adhesive tape as a mask for spray-painting, which was well known in the industry. While the Drew composition constituted a more effective combination of familiar ingredients than those previously used, the result was not new within the meaning of patent law, and did not rise to the dignity of invention.¹¹ The use of his composition accomplished the same thing in the same way, by substantially the same means, with better results. This did not constitute such an invention as to sustain a patent.¹²

The general characteristics of rubber for adhesiveness and cohesiveness when combined with resin, fillers — such as zinc oxide — and solvents, as specified in appellant's claims, were known. Years of experimentation had been devoted to the subject of rubber adhesives, resulting in the production of many varieties of tapes, cements and other products well known to laymen as well as to those trained in the art. The final product, upon which a patent is claimed here, came as a result of this long and gradual process of experimentation and differs from those of the prior art only...