Locklin v. Switzer Brothers, Inc., 16780.

• Decision Date: 23 April 1962
• Docket Number: No. 16780.,16780.
• Citation: 299 F.2d 160
• Parties: Harry P. LOCKLIN and Elmer J. Brant, general partners doing business under the firm name of Radiant Color Company, Appellants, v. SWITZER BROTHERS, INC., a corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

299 F.2d 160 (1962)

Harry P. LOCKLIN and Elmer J. Brant, general partners doing business under the firm name of Radiant Color Company, Appellants, v. SWITZER BROTHERS, INC., a corporation, Appellee.

No. 16780.

United States Court of Appeals Ninth Circuit.

November 16, 1961.

Rehearing Denied December 26, 1961.

Certiorari Denied April 23, 1962.

Carl Hoppe and James F. Mitchell, San Francisco, Cal., for appellants.

Flehr & Swain by John F. Swain, San Francisco, Cal., for appellee, Hill, Sherman, Meroni, Gross & Simpson, by Benjamin H. Sherman and Richard M. S. Manahan, Chicago, Ill., of counsel.

Before BARNES, JERTBERG and MERRILL, Circuit Judges.

Certiorari Denied April 23, 1962. See 82 S.Ct. 950.

MERRILL, Circuit Judge.

Appellants, doing business in California as Radiant Color Company, are manufacturers of fluorescent paints. They have taken this appeal from a judgment determining that they have infringed a patent held by appellee. The parties hereafter shall be referred to as "Radiant" (appellants) and "Switzer" (appellee).

Suit was originally brought by Radiant. It had been notified by Switzer that certain of its pigments infringed Switzer's resin patent number 2,808,954. This action was brought seeking declaratory relief: a determination that the patent in question was invalid and was not infringed. Switzer counterclaimed, charging Radiant with infringement and asking injunctive relief. The district court ruled that the patent was valid and infringed and granted Switzer relief in accordance with these determinations.

The patent in question was issued October 15, 1957, to Zenon Kazenas and subsequently was assigned to Switzer. It is for a resin useful in the manufacture of pigments and for the process of obtaining that resin. A preliminary consideration of the characteristics and chemical components of such resins is essential to any discussion of the issues presented by this appeal.

Such resins are classified industrially as "thermosetting" and "thermoplastic." A thermosetting resin is one which, upon heating in a mold, hardens to form an infusible "thermoset" resin that no longer can be softened or fused by heating. A thermoplastic resin, in contrast, can be softened or fused by heat repeatedly.

For resins satisfactorily to be incorporated into pigments, certain characteristics are important. The resin must be capable of being finely ground. Once ground, it must remain insoluble in common paint vehicles or solvents and in a state of free flowing suspension.

Thermosetting resins, being tough and hornlike, are generally difficult to grind. Thermoplastic resins generally are also difficult to grind due to their tendency to ball up or "agglomerate" at the temperatures encountered during grinding. Furthermore, they generally do not remain in a free flowing state of suspension in common paint vehicles, but again tend to agglomerate.

We are here concerned with three chemical components: melamines, sulfonamides and aldehydes. These components and their characteristics were discussed in some detail by Dr. David B. Hatcher, an expert witness called by Switzer.

Melamine and sulfonamide are basic resin ingredients. Aldehyde was described as "the linker, you might call it the glue, between the larger molecules" of melamine or sulfonamide. Where melamine alone is reacted with an aldehyde, the result is a "self-condensed" resin, the molecules of melamine condensing with each other through reaction with the aldehyde. Similarly, a sulfonamide-aldehyde resin is a self-condensation. "Co-condensation" occurs where two unlike molecules are reacted together.

Dr. Hatcher testified, "Normally, melamine is resistant to co-condensation. It has a tendency to condense with itself so that most efforts to co-condense it are unsuccessful. What results is not a single resin resulting from co-condensation * * * but a mixture of self-condensed resins." Further, melamine resins are normally thermoset with considerable strength and resistance to crumbling and breaking.

Sulfonamide resins, on the other hand, are normally thermoplastic and soluble in aromatic solvents.

The Kazenas patent is for a resin which is a co-condensation of all three of these chemical components and which is thermoplastic but still is capable of being finely ground and which remains insoluble without agglomeration in aromatic hydrocarbon solvents.¹

Upon this appeal Radiant attacks the validity of the Kazenas patent upon five separate grounds.

The first issue is presented by Radiant's contention that the Kazenas patent is lacking in patentable novelty. The prior art upon which Radiant mainly relies is a Japanese patent, the Matsuo and Nitta Patent No. 181,405, issued in 1950. This patent, Radiant asserts, discloses a thermoplastic resin made by co-condensing formaldehyde, sulfonamide and melamine.

The district court carefully considered the Japanese patent and, apparently relying on the testimony of Dr. Hatcher with respect to his experiments upon this patent, concluded:

"The Japanese resin, as described in the patent, thus has properties similar to those of the Kazenas resin in that it is thermoplastic and has a relatively high melting point, but it differs in at least one vital respect in that it is soluble in aromatic hydrocarbons, while the Kazenas resin is substantially insoluble."

The court then pointed out:

"Both the Japanese resin and the Kazenas resin are composed of a sulfonamide, an aldehyde, and melamine, but in critically different proportions. The most significant difference is in the amount of melamine. The Japanese patent specified a `small\' amount of melamine which, in the single example set forth in the patent, is 5% by weight of the paratoluol-sulfamide employed. The Kazenas patent teaches the use of a substantial amount of melamine or melamine derivative ranging in amount from 11 to 50% by weight of the sulfonamide. Kazenas also teaches the use of a greater amount of aldehyde in relation to the sulfonamide."

Radiant contends that a mere varying in proportions cannot constitute novelty and invention and that this is all that the Kazenas patent adds to the Japanese patent.

The general rule as stated in Smith v. Nichols, 1874, 21 Wall. 112, 88 U.S. 112, 119, 22 L.Ed. 566, is:

"* * * a mere carrying forward of new or more extended application of the original thought, a change only in form, proportions, or degree, the substitution of equivalents, doing substantially the same thing in the same way by substantially the same means with better results, is not such invention as will sustain a patent."

In Greene Process Metal Company v. Washington Iron Works, 9 Cir., 1936, 84 F.2d 892, 893, this court held unpatentable a discovery described as follows:

"Greene\'s alleged discovery was that the desired result — removal of sulfur and other impurities from iron or steel — might be accomplished more effectively and more economically by increasing the percentage of silica in the slag used for that purpose. * * *"

The test would seem to be whether the varying of proportions brings about a mere improvement in the already discovered result or, on the other hand, accomplishes a new and unexpected result. In Application of Aller, Court of Customs and Patent Appeals, 1955, 42 CCPA 824, 220 F.2d 454, 456, it is stated:

"Normally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification. Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. * * * Such ranges are termed `critical\' ranges, and the applicant has the burden of proving such criticality. * * * However, even though applicant\'s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. * * * More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. * * *"

With reference to Radiant's contention that the Kazenas patent lacked invention, the district court stated:

"Plaintiffs urge that it did not constitute invention for Kazenas to vary the proportion of melamine and aldehyde to achieve substantial insolubility in aromatic hydrocarbons. But the Japanese patent itself does not even suggest the possibility that a greater proportion of melamine and aldehyde might produce a resin substantially insoluble in aromatic hydrocarbons. Indeed, it would discourage experimentation along these lines. Since the patent states that, except for greater waterproofness and a higher melting point, the Japanese resin does not lose the characteristics of a conventional paratoluol-sulfamide resin, one could only conclude that the modification with melamine does not affect its solubility in aromatic hydrocarbons.

"It is possible that the mere fact that melamine-aldehyde resin were known to be insoluble in aromatic hydrocarbons might suggest to a skilled chemist that the modification of a sulfonamide-aldehyde resin with melamine might make the resin less soluble in aromatic hydrocarbons. But, it could not have been anticipated that sufficient melamine could be used to achieve substantial insolubility in aromatic hydrocarbons without simultaneously making the resin themosetting."

The testimony of Dr. Hatcher provides clear support. Emphasizing the overpowering nature of melamine and its tendency to thermoset, he concluded that the Japanese patent would not have led the ordinary chemist to greater experimentation in increasing the proportions of melamine. He discussed the many classes of melamine and sulfonamide compounds. He pointed out that a chemist faced with this multitude of possible components and with the...