Nichols v. Minnesota Mining & Manufacturing Co.

• Decision Date: 09 January 1940
• Docket Number: No. 4554.,4554.
• Citation: 109 F.2d 162
• Parties: NICHOLS v. MINNESOTA MINING & MANUFACTURING CO.
• Court: U.S. Court of Appeals — Fourth Circuit

109 F.2d 162 (1940)

NICHOLS v. MINNESOTA MINING & MANUFACTURING CO.

No. 4554.

Circuit Court of Appeals, Fourth Circuit.

January 9, 1940.

Before PARKER and SOPER, Circuit Judges, and DOBIE, District Judge.

Ralph Burch, of Washington, D. C. (Horace C. Chandlee, of Washington, D. C., and Omer T. Kaylor, of Hagerstown, Md., on the brief), for appellant.

Jacob T. Basseches, of New York City, and William H. Abbott, of Chicago, Ill. (Raymond S. Williams, of Baltimore, Md., and Paul Carpenter, of Washington, D. C., on the brief), for appellee.

PARKER, Circuit Judge.

This is an appeal in a case instituted under R.S. § 4915, 35 U.S.C.A. § 63, by the Minnesota Mining and Manufacturing Company, assignee of one Swenson, to establish priority of right with respect to the invention embodied in patent No. 1,954,778, issued to Ernest H. Nichols, and to have patent issued to plaintiff embodying eight of the claims of that patent. In interference proceedings instituted in the Patent Office, priority was accorded Nichols, and patent was issued to him on application filed Nov. 1, 1932. Plaintiff relies upon the production by Swenson, several months prior to this application, of the product covered by the patent and manufactured in accordance with its process claims.

The Patent Office record was before the judge below and was considered by him in connection with further testimony of Swenson, additional expert testimony and evidence of experiments conducted under the court's direction. He properly applied the rule of Morgan v. Daniels, 153 U.S. 120, 14 S.Ct. 772, 38 L. Ed. 657, to the effect that the testimony must carry thorough conviction before the court would be justified in setting aside the decision of the Patent Office, but found that the additional evidence brought out the issues much more clearly than had theretofore been done, and held that in the light thereof Swenson was clearly shown to have priority. Minnesota Mining & Manufacturing Co. v. Nichols, D. C., 28 F. Supp. 105. We review such findings of the District Judge, just as in other cases, under the rule that they must be accepted by us unless clearly erroneous. Rule 52(a) of the Rules of Civil Procedure, 28 U.S.C. A. following section 723c; United States v. United States Shoe Machinery Co., 247 U. S. 32, 41, 38 S.Ct. 473, 62 L.Ed. 968; Adamson v. Gilliland, 242 U.S. 350, 37 S.Ct. 169, 61 L.Ed. 356; Wolf Mineral Process Corp. v. Minerals Separation N. A. Corp., 4 Cir., 18 F.2d 483, 486.

The invention in issue relates to glazed granules for use in the manufacture of composition roofing and the process of making these granules. The granules are obtained by crushing silica quartz and selecting those which will pass a relatively coarse screen and will be retained by a finer screen. Finer particles of the quartz are mixed with a flux and coloring matter, and water is added to form a paste by which the granules are coated. The coated granules are then fed into a rotary furnace, where they are subjected to such a temperature and for such a time as will cause the finer particles of silica or quartz in the paste to fuse completely and the larger particles to fuse only in part. There is thus formed on the granules a glazed coating in which the larger or partly fused quartz particles are embedded, giving a rough surface to the granules and causing them to adhere more securely to the asphalt base into which they are impressed. The eight claims of the patent to which the controversy as to priority relates are as follows:

"1. Roofing granules, each granule of which has a surface coating composed of partly fused granule particles and completely fused granule particles.

"2. Granular material, each particle of which is provided with a coating including relatively much smaller particles of the same material, a portion of said smaller particles being completely fused and a portion of said smaller particles being partly fused.

"3. Granular material, each particle of which consists of a central unitary and homogenous nucleus of quartzitic material and a coating of particles of fusible material of relatively small size fused together and to the surface of the nucleus, the nucleus and coating particles being of the same material.

"4. A roofing material comprising a base the surface of which is mineralized with glazed granules as set forth in claim 3.

"5. A roofing material comprising a base the surface of which is mineralized with glazed granules as set forth in claim 1.

"6. A roofing material comprising a base the surface of which is mineralized with glazed granules as set forth in claim 2.

"7. A method of making granular material which consists of producing granules from vitreous material, applying thereto a coating including a flux and relatively much smaller particles of the same material in differing sizes, and then firing the coated granules at such a temperature and for such a time as to fuse the surfaces only of the granules, as to completely fuse the smaller of the coating particles, and as to partly fuse the larger of the coating particles.

"8. A method of making granular material which consists of producing granules from vitreous material, applying thereto a liquid coating including a flux and relatively much smaller particles of the same vitreous material in differing sizes, drying the coating, and then firing the coated granules at such a temperature and for such a time as to fuse the surfaces only of the granules, as to completely fuse the smaller particles of the coating, and as to partly fuse the larger particles of the coating."

As heretofore stated, Nichols' application was filed November 1, 1932, and no effort was made to show invention by him prior to that date. Swenson was a chemist employed by plaintiff, and as early as 1931 he was engaged in experiments for producing glazed granules for use in the manufacture of roofing. The record contains evidence of a number of experiments which he conducted resulting in the production of glazed granules; but we need not go into these, as it is admitted that in the Summer of 1932 plaintiff manufactured glazed granules under the formula developed by Swenson as a result of his experiments, and sold and delivered them to Bird & Son of Chicago, and we think that these granules themselves and the process of their manufacture conform substantially to the claims of the patent as above set forth. It is shown beyond question, we think, that the nucleus granules of the Bird & Son shipment were of silica quartz; that they were covered with a coating including a flux and relatively much smaller particles of the silica quartz; that they were fired at such a temperature and for such a time as to fuse completely the smaller of the coating particles and to fuse partly the larger particles; and that the result was a quartz granule with a glazed coating in which small particles of quartz were embedded. Not only does this appear from tests made with respect to granules taken from the Bird & Son shipment, but it also appears from an examination of granules made during the hearing below in accordance with the Swenson formula.

With respect to the granules made during the hearing below, it is objected that the formula was supplemented by the oral testimony of Swenson and that this was not corroborated. It appears, however, that this oral testimony related merely to the source of the silica or quartz fines used in the coating and as to the time of firing; and, when the nature of the process is considered, we think that the oral testimony was sufficiently corroborated. Swenson testified that the silica fines contained in the coating were obtained from a Sly dust collector used in...