Mayer v. A. & H.G. Mutschler
| Decision Date | 14 February 1918 |
| Docket Number | 132. |
| Citation | 248 F. 911 |
| Parties | MAYER v. A. & H. G. MUTSCHLER et al. |
| Court | U.S. Court of Appeals — Second Circuit |
The action is on claims 1 to 4, 7, 8, 14, 15, and 47 to 49, of patent to plaintiff, No. 1,043,021, applied for November 24 1911, and issued October 29, 1912, for a 'coating machine.' The specification covers, as do the very numerous claims, all the parts of a cumbrous and extended, rather than complicated, mechanism for surfacing paper with materials applied in fluid condition, so as to produce what is called 'carbon,' or 'waxed,' or 'photographic,' papers. In a general, but wholly true, sense, this art, which was far from new in 1911 consists in unwinding paper from a roll, leading it over guides and under suitable tension to a roller, whose periphery is partly immersed in whatever is to be applied to the paper, and thence past and over other guides, scrapers and rollers hot or cold, as desired, until the finished product is rewound on the last roll. What is applied to the paper is 'dope,' and scrapers are also called equalizers, as they not only remove superfluous 'dope,' but (in some forms at all events) produce a more equal or even distribution of the proper quantum thereof. Paper may be thus coated on one or both sides; the latter process requiring two 'dope' or 'coating' rollers and other duplications of process.
The machine of the patent and that of defendants are of the above general type, which is old and open to the public. After the paper is coated, there is an obviously natural tendency to crease or rumple; and smoothing rolls have long been used to counteract that inclination. The appearance and perhaps nature of the coating is affected by the application of heat or cold, or (perhaps) mere exposure to the air at workroom temperature. Thus, if the hot fluid that stuck to the paper as it passed through the 'dope' is speedily chilled, it will not soak in as much as if kept warm, and will have a 'gloss,' instead of a 'dead finish,' and the quality or appearance of finish may be changed by differing forms of scrapers or equalizers; e.g., a striated circular revolving equalizer will remove superfluities, so will a knife edge, but the appearance of the coated papers will not be the same.
Overruling, not only the usual defenses of anticipation and lack of patentable invention, but several alleged prior uses as to which the testimony was largely taken by deposition, the trial court found infringement of all the claims in suit.
G. Willard Rich, of Rochester, N.Y., for appellants.
Eugene L. Dominick, of Buffalo, N.Y., for appellee.
Before WARD, ROGERS, and HOUGH, Circuit Judges.
HOUGH Circuit Judge (after stating the facts as above).
Claims 47-49 seem to us to have been recognized as valid by inadvertence, for as to them we agree with plaintiff's very distinguished expert, who frankly said that, since the relative positioning of rolls and equalizer was not made a positive element in these claims, 'some of the references of the prior art read directly on' them, unless the court could 'read into' them the relative positioning aforesaid as 'producing a definite result.' We know no method by which one claim or set of claims can be helped out, by judicial incorporation therein of other claims or any part thereof; nor in this instance is it doubtful that the subject-matter of 47-49 is quite different from that of the others in suit. Since they are proved as anticipated by plaintiff's own evidence, we need pursue the matter no further.
As to the other claims, we cannot doubt, nor is it denied, that whatever inventive thought is in them lies in bringing nearer together the coating and smoothing rolls, and interposing a scraper into that minimized space. How much nearer these old tools of many prior art machines were brought by Mayer we cannot know from the specification; and this implied criticism on the sufficiency of the disclosure is sought to be avoided by saying (as do plaintiff's expert and counsel) that what the patentee did was to abolish the 'cold zone'-- i.e., the distance between edge of dope pan and axis of smoothing roll-- by reducing said distance to about 11 inches, thereby ironing out (so to speak) the coated paper before, either by atmospheric exposure or contact with other rollers, any substantial change could take place in the physical or chemical condition of what had been applied to the paper. 'Cold zone' is one of those advertising phrases, unknown to the patent, and invented to aid it, of which we have spoken before. Sundh, etc., Co. v. General Electric Co., 244 F. 169, 156 C.C.A. 591. What is patented here is not a condition or result, nor even a method or process, but a machine; i.e., the means of making something. And the question of invention is just this-- was it of patentable novelty to reposition the old parts of a well-known machine, if the change produced either a new or an improved result? The answer to this query depends on whether the result is new or merely an improvement, whether the difference obtained is one of kind or of degree. Seymour v. Osborne, 11 Wall. 516, 20 L.Ed. 33; Railroad, etc., Co. v. Elyria Iron, etc., Co., 244 U.S. 285, 37 Sup.Ct. 502, 61 L.Ed. 1136. This question of fact we shall not attempt to resolve, and have stated it only to emphasize the definition of whatever invention can be claimed.
There are two points on which we feel constrained to differ with the court below, each of them dispositive of this case:
1. Mayer has long made coating...
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