Metallizing Engineering Co. v. KENYON B. & A. PARTS CO.

• Decision Date: 28 March 1945
• Docket Number: Civ. No. 1017.
• Citation: 62 F. Supp. 42
• Court: U.S. District Court — District of Connecticut
• Parties: METALLIZING ENGINEERING CO., Inc., v. KENYON BEARING & AUTO PARTS CO., Inc., et al.

62 F. Supp. 42

METALLIZING ENGINEERING CO., Inc., v. KENYON BEARING & AUTO PARTS CO., Inc., et al.

Civ. No. 1017.

District Court, D. Connecticut

March 28, 1945.

Burgess & Dinklage, Louis Burgess and Ralph Dinklage, all of New York City (Curtiss K. Thompson, of New Haven, Conn., of counsel), for plaintiff.

Morris Kirschstein, of New York City, for defendant.

HINCKS, District Judge.

This is a suit for infringement of reissue patent No. 22,397, issued to the plaintiff on November 30, 1943. The original patent, No. 2,320,327, had issued on May 25, 1943 upon an application filed August 6, 1942 by John F. Meduna, the plaintiff's assignor, and no claim is pressed of infirmity in the reissue not attaching to the original patent. It was conceded that the defense has been assumed by the defendants' manufacturer, the Metallizing Company of America, a copartnership, which sold the apparatus by which the alleged infringement of the patented process was accomplished.

The defenses are lack of patentable invention, noninfringement, public prior uses by Meduna, the inventor, and by others, abandonment, and ambiguity in the specifications.

Findings

1. The claimed invention is a method for procuring a satisfactory bond between a metallic surface (such as a worn machine part which it is desired to build up) and metal which is sprayed thereon in molten form. Although all eleven claims of the patent are in issue, neither on trial nor in brief have the parties made any substantial distinction between them. The gist of the invention of each claim is as follows: (1) the preparation of the metallic base by stroking its surface with a metal electrode in a low-voltage circuit, thereby fusing to the base metallic electrode-material which forms a surface of irregular roughness having a multitude of projections with overhanging edges and minute craters with overhanging edges and (2) thereafter spraying molten metal upon the base part as thus conditioned.

2. Metallizing is an art of comparatively recent origin. To be sure, it had long been known that a metal spray if projected far enough would cause the metal droplets to chill in the air forming a metallic powder. But apparently it was not until about the close of the nineteenth century that it was discovered that metal droplets from a spray, if impinging upon an object while somewhat plastic, would coalesce into the form of a metal mass comparatively porous. By 1910 it was known that a metal spray could be used for coating surfaces with a protective or decorative metal coating. And probably the greatest contribution to the development of the art came in 1913 when Morf evolved an automatic spray-gun competent to melt wire of metals having a high melting point. Following this invention the practice of the art made great strides in the industrial field, both in this country and abroad. It long had been known that to obtain a satisfactory bond between the applied coat and the base, the base must be clean, and sand blasting had been used to accomplish this objective. By the middle of the 1920 decade it had been discovered that to obtain a satisfactory bond, not only must the base be clean, it must be sufficiently rough as well.

3. This requirement caused no particular difficulty as long as the process was confined to parts of comparatively soft metal. But by the end of the decade the art had become particularly concerned with the task of rebuilding worn machine parts. For those that were of metal comparatively soft it was feasible to roughen, as well as to clean, the surface by sand-blasting. But sand-blasting was a cumbersome and expensive procedure that required the removal of the work from the lathe and its preparation in a special chamber. Consequently, there came into vogue a practice of roughening the metal part by screw threading, — a mechanical process whereby threads were cut into the surface by a tool so adjusted as to tear into minute fissures the metal side walls of the thread. But screw threading was a process difficult, if not impossible, to apply to interior surfaces and recesses and more particularly it was inapplicable to the surfaces of metals of extreme hardness. Nor was it practicable to soften the metal by heat, then roughen the surface and harden the metal again, for such treatment resulted in warping strains. As a result, the art of metallizing was incapable of rebuilding machine parts of hardened metal for a period of many years after the rebuilding of softer parts had become common practice. Such was the state of the art at the time of Meduna's discovery.

4. To be sure, at this time it was well known in the art of welding that a metallic electrode in a low-voltage circuit when brought into contact with a piece of metal introduced into the circuit would leave a deposit of electrode-material fused to the metal part. The McQuay-Norris machine was adapted to accomplish this very result. It is true that the deposit made by this machine was a porous, coral-like, metallic substance similar to that later applied by Meduna to roughen the metal base. But the porous character of the deposited metal was wholly adventitious and indeed undesired, for the McQuay-Norris machine was used principally to fill scores and cracks in cylinders, etc. To accomplish this result, it was necessary to lay on the porous metal deposit from the electrode layer by layer and subsequently by peening, grinding and chiseling to compact each layer, thus destroying rather than utilizing its porosity.

5. No prior patents have been shown which disclose a bonding method for sprayed metal obtained by a porous electrode-material electrically fused to a metal base by resistance heating. The Brewster patent, U.S. 1,327,267 (1920) covered a welding process "particularly adapted and intended for use in the filling of cavities which may occur in castings or other metal objects." Its process was essentially that accomplished by the McQuay-Norris machine described in Par. 4 above.

The Williams patent, No. 1,412,326 (1922) disclosed a method of treating a metal base, such as a tire rim, to improve its bond with rubber to be vulcanized thereon. The method consisted in fusing to the metal base a porous electrode-material by arc-welding, thus roughening the metallic surface.

Nagin, No. 1,657,466 (1928) discloses a process for restoring the anti-slip properties of metallic floor surfaces by allowing drops of metal melted by an acetylene flame to fall and fuse upon a metal floor or stair, thus roughening the treaded surface.

Schuman, No. 1,452,936 (1923) addressed himself to the problem of leaving a deposit of nickel electrode-material in the recess of iron machine parts without hardening the surrounding area of the base and thus destroying its grinding and machining properties. It contains no intimation that a porous electrode-material was obtained or even desired; on the contrary his objective was such as to imply a preference for a compact deposit. And both his objective and the method used for its attainment was wholly unrelated to the metallizing art.

Andrus (1934) was concerned with the problem of a protective coating for underground pipe which should not "creep" or "strip" from the pipe as it expanded and contracted. His solution was to sprinkle the surface of the pipe with non-contiguous metallic pellets or spheres welded thereon. He indicates a preference for pellets 1/16 to 1/8 inch in diameter welded on to the base pipe at 1/2 inch intervals. He contemplates a coating of cement to be applied cold or a "bituminous coating" to be applied "hot". Whether the bituminous coating was to be applied by casting, spray or otherwise is not indicated. Indeed, he says, "the manner of application of the protective coating is not a part of the present invention." And certainly he suggests no solution, and least of all Meduna's solution, of the problem of a bond between sprayed steel and hardened steel (or between other metals) which shall withstand mechanical strains and pressures in machine parts.

Robinson, No. 1,289,000 (1918) relates solely to the engraving art and discloses an electric "marking" pencil in an apparatus to prevent the roughening of the engraved surface by the pitting caused by arcing. For aught disclosed, Robinson was unconscious of any deposit of electrodematerial from his pencil (electrode): his attention was confined to the "cutting" of the surface by his pencil. He does not disclose the deposit of any electrode-material, — certainly none of porous structure suitable and useful as bond for sprayed metal.

Overlin, No. 1,350,734 (1920) is the converse of Robinson in that he seeks a method to cultivate and regulate pitting from arcing through the use of an "electric pen" useful to mark (for purposes of identification) metal tools and parts. But Overlin like Robinson is completely indifferent to the structural characteristics of the deposit (if any) left by his pen (electrode). The pitting which he seeks to accomplish is an end in itself; not a step or means in a process. Whether such pitting would be suitable for metallic bonding is not suggested or disclosed. The disclosure is outside the field of the metallizing art.

Prior Publications

6. The defendant introduced an article from a 1933 issue of Commercial Car Journal, as Exh. 00. This refers to a method for sealing cracks in cylinder water jackets by use of an electric arc. It states: "In some instances, the weld is porous and these welds have been sealed by coating them with metal from the gun." But the entire article, read in the light of the contemporary art, taught that the weld deposit should be sand-blasted before spraying, as defendants' expert conceded.

The defendant introduced excerpts from the "Automobile Engineer" for May, 1941. Exh. PP. This included text under the heading "Heavy Duty Bearings" and other text under the heading "Cladding by Spray". Both texts related to the rebuilding of bearings. The first described a...