Montgomery v. Marzall
| Decision Date | 29 March 1951 |
| Docket Number | No. 10655.,10655. |
| Citation | 189 F.2d 640,88 US App. DC 281 |
| Parties | MONTGOMERY et al. v. MARZALL. |
| Court | U.S. Court of Appeals — District of Columbia Circuit |
W. Brown Morton, New York City, with whom Clarence M. Fisher, Washington, D. C., was on the brief, for appellants.
H. S. Miller, United States Patent Office, Washington, D. C., with whom E. L. Reynolds, Solicitor, United States Patent Office, Washington, D. C., was on the brief, for appellee.
Before WILBUR K. MILLER, FAHY and WASHINGTON, Circuit Judges.
This is a patent case. A complaint filed under R.S. § 4915, 35 U.S.C.A. § 63, by William J. Montgomery, the inventor, and The Champion Paper and Fibre Company, his assignee, was dismissed by the United States District Court for the District of Columbia. The court held the claims in issue, which have to do with an improvement in the manufacture of "cast coated" paper, are vague and indefinite at the precise point of novelty, and fail to point out the invention with the distinctness contemplated by R.S. § 4888, 35 U.S.C.A. § 33. We are asked to reverse that ruling.
Coated paper is that which has on one or both surfaces a layer of material other than paper which improves its appearance and makes it more suitable for printing. In the manufacture of such paper prior to the invention here involved, the coating composition was applied to the surface of the paper and was then air dried, after which the surface was calendered by running the coated paper between rollers which polished the surface to the extent desired.
Some years ago The Champion Paper and Fibre Company developed a new process which it called "cast coating." It placed the surface of the paper, wet with the coating material, against the surface of a large heated chromium-plated drum to which the wet paper adhered. As the drum revolved, the water in the coating material evaporated and, when the material was sufficiently dry, the paper no longer adhered to the drum and could be led away to the winding rolls. It is not necessary to calender cast coated paper because it remains in contact with the polished surface of the drum until the coating material is dry, as a result of which the coated paper has the luster of the drum surface.
There was one weakness in the new process: when the coating composition had dried, the coated paper did not always immediately disengage itself from the casting surface. When it did not, particles of coating gradually began to stick to the drum surface, damaging the quality of the paper and roughening the surface of the drum so that it was necessary to shut down the machine and thoroughly clean the drum surface before operation could be resumed.
Montgomery found by experimentation that if the drum surface carried a film of oil so thin that it could not be detected even by rubbing the surface with a clean cloth, the dry coating would not stick to the drum but the wet coating would adhere long enough to give the proper finish to the coated paper. The film of oil requisite for this result was obtained by adding to the coating composition itself a small quantity of oil. The quantity of oil required to be added to the coating composition in order to form an infinitesimal film on the drum is necessarily small, and the exact quantity is determined by the skilled operator who watches the point at which the paper leaves the drum surface, and increases or decreases the percentage of oil in order to maintain the "cracking-off" point at the proper place, so that adherence to the drum will continue long enough but not too long.
By the practice of this method, The Champion Paper and Fibre Company has been able to maintain its cast coated process in continuous operation without stopping to clean the drum surface as had been necessary under the old method.
In his specification Montgomery said:
In other words, Montgomery claims invention because he adds the step of putting a small quantity of oil in the coating composition just before it is applied to the paper. He says the percentage varies for many reasons. One of them is the difference in oils; some oils are effective and some are relatively ineffective. Another is the type of casting surface, as different metals require different amounts of oil to insure satisfactory operation. The temperature of the drum and its speed of rotation are important variables. The type, condition and moisture content of the paper used are significant factors. It is, therefore, necessary to have an expert observe the "cracking-off" point. If the coated paper loosens from the casting surface before the coating has dried adequately, the proportion of oil is too high. If the coated paper tends to stick to the casting surface after the drying is complete, the proportion of oil in the coating material is too low. So, when the cracking-off point moves one way or the other, the operator must increase or reduce the percentage of oil in the coating composition.
As we have said, many varying factors and conditions cause variation in the exact proportion of oil necessary to successful operation, some of which may change while the process is in progress, so requiring adjustment by the alert operator.
But, the Patent Office and the District Court rejected Claims 31, 32 and 33, which describe the process but do not expressly say what percentage of oil should be used; thus Claim 31 describes it this way:
"* * * the improvement which comprises incorporating in the coating composition prior to its application to the paper a film-forming oil, and so adjusting the proportion of said film-forming oil in the coating composition that, in continued operation, the coating adheres to the casting surface until non-plastic and thereafter upon further drying becomes non-adherent."
The District Court's conclusion of law that the claims in issue are vague and indefinite at the precise point of novelty and fail to point out the invention with the required distinctness was based on the fact that the claims do not specify the proportion of oil to be added but leave that to be adjusted by the skilled operator.
Claim 26, which was allowed, specifies that there shall be added to the coating composition "oil in an amount in the order of one-tenth to one percent of the weight of the coating composition." But, even under the allowed Claim 26, the exact proportion of oil is not specified but must be regulated by the skilled man who observes the operation, since Claim 26 says the amount of oil must be "such as to maintain on said casting surface, by adsorption thereon, a film of oil of a thickness insufficient to prevent adhesion of the coating composition to the...
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