General Tire and Rubber Company v. Watson

• Decision Date: 09 June 1960
• Docket Number: Civ. A. No. 1806-57.
• Parties: GENERAL TIRE AND RUBBER COMPANY, Emert S. Pfau, Gilbert H. Swart, Kermit V. Weinstock, Plaintiffs, v. Robert C. WATSON, Commissioner of Patents, Defendant.
• Court: U.S. District Court — District of Columbia

184 F. Supp. 344

GENERAL TIRE AND RUBBER COMPANY, Emert S. Pfau, Gilbert H. Swart, Kermit V. Weinstock, Plaintiffs, v. Robert C. WATSON, Commissioner of Patents, Defendant.

Civ. A. No. 1806-57.

United States District Court District of Columbia.

June 9, 1960.

Edward B. Beale and Clyde V. Erwin, Washington, D. C., Frank J. Earnheart, Akron, Ohio, and Frank S. Greene and William C. McCoy, Cleveland, Ohio, for plaintiffs.

Joseph Schimmel, Asst. Sol., Patent Office, and Haywood Brown, Dept. of Justice, Washington, D. C., for defendant.

HOLTZOFF, District Judge.

This is an action against the Commissioner of Patents under 35 U.S.C. § 145, to secure an adjudication that the plaintiffs are entitled to a patent on an application that had been rejected by him. The applicants for the patent are Emert S. Pfau, Gilbert W. Swart, and Kermit V. Weinstock. The application is numbered 196584 and was filed on November 20, 1950. It was assigned by mesne assignments to the corporate plaintiff, the General Tire and Rubber Company.

The invention lies in the field of synthetic rubber. The specific invention claimed is an article of manufacture. It is tough rubber to which a large amount of oil is added in the course of manufacture, with the result that the same amount of raw material produces a much larger amount of the finished product than theretofore, and also that the rubber so produced has superior qualities, especially for use as tire treads. It is known in the trade as "oil extended rubber". In their application for the patent, the inventors state:

"We have found that the tough rubbers which were considered unprocessible and not suitable for making extruded tire treads in production may be mixed with relatively large amounts of one or more compatible oils or plasticizers to provide compounds of exceptional quality."

The course of this application in the Patent Office was somewhat unusual and, therefore, it may be useful to make a brief reference to it. When it was originally filed, it was assigned to Division 45, which deals with tires, among other matters. The prosecution of the application ended with an allowance by the examiner on December 10, 1954. The applicants promptly paid their final fee. On December 28, 1954, however, another examiner assigned to Division 50, which, among other things, deals with synthetic rubber, requested that the application be withdrawn from issue for the purpose of rejecting claims in view of newly discovered references. Accordingly, the application was withdrawn from issue and transferred from Division 45 to Division 50, by the appropriate authorities of the Patent Office. The prosecution of the application was then resumed and ended in a rejection on the general ground that the claims were unpatentable over prior art and that whatever step was taken by the inventors was obvious in the light of the prior art. On appeal, this action of the examiner was affirmed by the Board of Appeals of the Patent Office. The significance of this history of the application in the Patent Office is that unlike the great majority of the cases from the Patent Office that come before this Court, there was no unanimity among the Patent Office tribunals but there was a difference of opinion as between two of the examiners and the action of one of them was ultimately affirmed by the Board of Appeals. Consequently, this matter does not come before this Court in a manner requiring the same weight to be attached to the action of Patent Office authorities as when they are all in accord.

The decision of the Board of Appeals of the Patent Office was followed by the institution of the present suit. The defenses of the Commissioner may, for the purposes of convenience, be divided into three categories. The first defense is based upon the record before the Patent Office, as is usually the fact in cases of this kind. Second, the Commissioner in this action advances and relies on an item of prior art, to wit, a British patent, which neither of the two examiners considered. Third, by an amendment to the answer filed on the very eve of trial, the defendant interposed the defense of prior use and prior knowledge, within the meaning of 35 U.S.C. § 102(a).

Before taking up these defenses, it seems helpful to place the plaintiffs' development in its appropriate setting. Synthetic rubber is a product of comparatively recent origin. The manufacture of synthetic rubber received a strong impetus and developed very rapidly after the Japanese attack on Pearl Harbor because the Japanese invasion of certain Far Eastern areas cut off the supply of natural rubber. Wartime conditions, on the other hand, greatly increased the need for rubber. The requirements of national defense were so urgent and so great that the Government took an active interest in developing the synthetic rubber industry and a governmental agency for that purpose was established, known as the Rubber Reserve, under the aegis and control of the Reconstruction Finance Corporation. Among the very important requirements of rubber was its use for tire treads. Because of the stress and strain to which tires are subjected, a superior type of rubber was needed for that purpose.

At this point it might be observed that rubber comes in various degrees of toughness. A process and machinery was developed for measuring the toughness or softness of any particular sample of rubber. An arbitrary scale was devised by a scientist by the name of Mooney, who also designed a machine for the purpose of measuring the toughness. Accordingly, the machine and the scale were given the name of their inventor and the arbitrary units of toughness became known as Mooney units. A tough rubber was known as a high Mooney rubber, a soft rubber as a low Mooney rubber.

The very tough types of synthetic rubber were regarded as practically useless as they could not be subjected to processing. In the ordinary processing of synthetic rubber, it became customary to use oil in small quantities, although oil was regarded as an enemy of rubber and as causing a deterioration in its qualities.

We now reach the history of the appellants' invention. The three individual inventors were research chemists or chemical engineers employed in the laboratory of the corporate plaintiff, the General Tire and Rubber Company. Late in 1949, when the industry was searching for additional means to increase the supply of rubber, the three inventors conceived the project of using tough rubber, which had been regarded as useless, for inferior purposes such as rubber mats for automobiles. In order to make this rubber usable for these purposes, they began to mix it with large quantities of oil. They discovered accidentally that instead of merely making it possible to employ for inferior purposes rubber of a type that had been regarded as not usable at all, they were producing a high quality of rubber suitable for tire treads. They found that mixing oil in large quantities of over 20 parts of oil to 100 parts of rubber with very tough rubber, or high Mooney rubber as it was known in the trade, increased the amount of the final product. They not only made it usable, but they improved its quality and found that it was excellent for tire treads.

Thus we have a development that was discovered accidentally by research scientists who were working with an entirely different objective in mind than the one which they finally achieved. This was not an invention, in other words, laboriously derived through trial and error or attained by a long process of experimentation. It was one of those unusual situations where a discovery is made or an invention designed accidentally while the inventor or discoverer was in the throes of a somewhat different development.

The present statute emphasizes the proposition that it makes no difference as to patentability by what manner an invention is made. 35 U.S.C. § 103. The fact, however, that the discovery was made accidentally by a person skilled in the art, while others had been working to find other ways and means to achieve the same general objective, namely, to increase the supply of usable rubber, would seem, to some extent at least, to negative the contention that the invention was obvious. This circumstance, of course, is not conclusive, but it is one of the many matters that are worthy of consideration in that connection.

The invention came into common use and the type of rubber devised by the three applicants for the patent was accepted by the industry within a few years following their discovery. That the inventors made a valuable commercial contribution to the industry was conceded by the examiner who finally disallowed the application. He rejected it, however, on the ground that in the light of the prior art the step taken by the applicants did not involve the use of the inventive faculty but would have been obvious to a person having ordinary skill in the art to which the subject matter of the invention pertains.

The prior art shows, and it is conceded by the plaintiffs, that the use of oil in the processing of rubber was well known at the time of the applicant's invention. It would prolong this opinion unduly to review each item of the prior art separately. This will be done in the findings of fact to be made by the Court. Suffice it to say that the prior art clearly indicates the use of oil in the processing of rubber for various purposes. However, oil was generally used in small quantities rather than large quantities as is done by the inventors here. Moreover, it was considered detrimental to the quality of the product and it was regarded that the more oil that was used in the course of the process the more the final product would...