Craftint Mfg. Co. v. Baker, 8371.

• Citation: 94 F.2d 369
• Decision Date: 10 January 1938
• Docket Number: No. 8371.,8371.
• Parties: CRAFTINT MFG. CO. v. BAKER et al.
• Court: U.S. Court of Appeals — Ninth Circuit

94 F.2d 369 (1938)

CRAFTINT MFG. CO. v. BAKER et al.

No. 8371.

Circuit Court of Appeals, Ninth Circuit.

January 10, 1938.

Charles M. Fryer, of San Francisco, Cal., and Fay, Overlin & Fay, of Cleveland, Ohio, for appellant.

Arlington C. White, of San Francisco, Cal., for appellee.

Before WILBUR, STEPHENS, and HEALY, Circuit Judges.

WILBUR, Circuit Judge.

This is an appeal from an interlocutory decree of the District Court of April 24, 1936, holding claims 1, 2, 3, 4, 5, 6, 7, and 8 of letters patent No. 1,709,600, issued April 16, 1929, to appellee Baker, valid and infringed by the appellant.

The invention disclosed by the Baker patent relates to a process for preparing so-called "camera copy" to be used for lithography, photoengraving, rotogravure offset press, and like work. The process involves, first, photographing lines, screen, stippling, dots or the like, referred to in the briefs as "Ben Day" effects, and making a positive print from the negative on "silver print paper" which is fixed in a bath of hyposulphate of soda. The print is then "blanched" out, that is, made invisible to the eye or to the camera, by the application of a saturated solution of bichloride of mercury. The paper thus prepared is to be used for a drawing by an artist. After the drawing is made such portion or portions of the blanched print of Ben Day effects as are desired to be shown in the finished drawing are redeveloped by the application of a pure caustic solution. The drawing with the Ben Day effects thus added is then complete and ready for photographic reproduction.

Claims 1, 2, 6, and 8 of the patent in suit cover methods or processes of making the "camera copy" described above. Claims 3 and 4 cover the product "camera copy." Claim 5 covers the product called a "medium," which is the photographic print of the Ben Day effects after the print has been blanched and made invisible but before the artist's drawing has been made thereon. Claim 7 covers the method of making the "medium" described in claim 5.

Appellant contends that the District Court erred in finding that the patent was valid. It is contended that appellee Baker was not the original inventor of the process, or product, claimed in his patent; that the process was previously known and used by others in this country and was in public use and on sale for more than two years prior to the date of application for the Baker patent in suit. Rev.Stat. § 4886, as amended by Act March 3, 1897, § 1, 35 U. S.C.A. § 31. The prior discovery relied upon by appellant was that by Olin M. Root and Roland J. Scott who used a method as early as 1924 for producing photographic copy similar to appellant's. Application for the Baker patent was filed August 25, 1927. It also appears that there was a sale of paper or "medium" embodying the Root and Scott process before the filing of such application. It is claimed by appellees that there must be a public use or knowledge of the invention before there can be anticipation, and that there was not sufficient evidence of such a use or knowledge in regard to the Scott-Root application. In view of the use of the Scott-Root process by the inventors thereof, and in view of the evidence of sales of their product, the Scott-Root process would anticipate the Baker invention if it involved identical or equivalent steps. Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L. Ed. 651; see Walker on Patents, 6th Ed., pp. 122, 123, §§ 97, 98, p. 137, § 110; Smith v. Hall, 301 U.S. 216, 57 S.Ct. 711, 81 L. Ed. 1049.

Did the Scott-Root invention¹ involve the same process as is set out in the Baker patent? In the Scott-Root process a print was made of Ben Day effects by first photographing such effects and printing the same on "developing-out" paper by the usual photographic process. The image developed on the print was then "practically bleached out" as follows: The print was dipped in a solution of three parts of potassium iodide to one part of resublimated iodine until the paper assumed a dark brown color. It was then immersed in a bath containing sodium bisulphite until the brown "stain" left the paper. After washing and drying it was ready as a "medium" for the artist's drawing. After the drawing was made the Ben Day effects were redeveloped in areas where wanted by a developing solution such as sodium sulphide or barium sulphide. After this, it was necessary to treat the print to a bath composed of sodium hyposulphite, acidulated with acetic acid, known as the acid hypo bath, and to rinse and to dry it, because the bleaching agents used in the process did not render the undeveloped Ben Day effects invisible to a wet plate which is used by almost all photo engravers to photograph the prints for commercial use. By the use of the acid hypo bath the undeveloped portion of the Ben Day pattern was dissolved out of the paper.

In the Baker patented process by using a solution of bichloride of mercury as a bleaching agent on "silver print paper" the photographic pattern of Ben Day effects is rendered invisible not only to the eye, but to a wet plate. Thus the last step in the Scott-Root process, that is, the fixing by means of an acid hypo bath, is unnecessary and is omitted in the Baker process.

There is evidence to the effect that the necessity of fixing the print in the acid hypo bath after the artist's drawing had been made thereon rendered the Scott-Root process commercially impractical. The evidence indicates that the elimination of this step by the Baker process made it a commercial success. Arnold Seymour, artist, employed by the Emporium in San Francisco, who in his work had occasion to use both appellees' and appellant's medium or products, testified as to the practicableness of a medium paper containing a blanched out pattern which, after the artist's drawing had been made thereon and after the developing out of the pattern, would have to be dipped in an acid hypo bath, as follows: "I cannot imagine of what value a drawing medium of the character as exemplified by plaintiffs' Exhibit No. 29 camera copy made from Scott-Root paper * * * could be to the artist in making copy for reproduction. Your drawing would be lost in the background. I would absolutely not be interested in using that type of drawing medium at all."

Upon being asked whether or not the invention would be practical if he were told that by immersing the sheet in an acid hypo bath and then rinsing it in water and drying it the reproduction of the whole pattern would be prevented, he answered:

"There are several reasons why it would not be practical. In the first place, the modern commercial artist who is working under high pressure 90 per cent of the time, the time element would be very badly against him in a case like that. Another thing is this: If I put in a lot of work on a drawing, using India inks and possibly some whites, which we nearly all have to use in a drawing, I would hate to have to dip it in emulsion of any sort and take a chance on the drawing being ruined, to develop a little background. * * *

"There is no artist who is absolutely perfect in his work; India ink is indelible; the only way you have for correcting mistakes in drawing is to use white to cover them up. The white is a water color which is soluble in any liquid that I know of, and it would run all over your drawing upon dipping it in a hypo bath. In spots where your ink was heavy probably part of the ink would run off too. I would hate to think of what the production of a copy would look like after it had been passed through an acid hypo bath; I have never seen one."

Scott also testified as follows: "It is true that probably the major feature in the success of those drawing mediums Craftint and Mistograph, appellant's and appellees' products is the absence of having to use the acid hypo fixing bath and the rinsing in water."

We think it clear that the appellees' invention was not anticipated by the Scott-Root process.

It is contended by appellant that the evidence showed that the use of a mercuric chloride as a bleaching agent was old in the art and the substitution of it in the place of the iodine solution and the sodium bisulphite solution used in the Scott-Root process did not constitute invention. There is no merit in this contention. The use of bichloride of mercury is but one step in the Baker patented process. The fact that steps in a process are old does not negative invention. See Vol. 1, Walker on Patents, 6th Ed., p. 96, § 75.

Appellant contends that two British provisional specifications filed by Wilhelm Grune in 1866 anticipate the Baker process. These specifications cannot be used to show anticipation. Until a foreign invention has been patented or described in a prior printed publication it cannot be used to negative novelty. Ireson v. Pierce, C.C., 39...