Solva Waterproof Glue Co. v. Perkins Glue Co.

• Decision Date: 02 January 1918
• Docket Number: 2327.
• Citation: 251 F. 64
• Parties: SOLVA WATERPROOF GLUE CO. et al. v. PERKINS GLUE CO.
• Court: U.S. Court of Appeals — Seventh Circuit

251 F. 64

SOLVA WATERPROOF GLUE CO. et al. v. PERKINS GLUE CO.

No. 2327.

United States Court of Appeals, Seventh Circuit.

January 2, 1918

Rehearing Denied March 11, 1918.

Livingston Gifford, of New York City, and John B. Macauley, of Chicago Ill., for appellants.

Wm Houston Kenyon and Gorham Crosby, both of New York City, for appellee.

Before KOHLSAAT, ALSCHULER, and EVANS, Circuit Judges.

KOHLSAAT Circuit Judge.

Appellants seek to reverse the decree of the District Court enjoining them from infringing any one of claims 13, 16, 19, 24, 28 and 38 of reissue patent No. 13,436 of patent No. 1,020,655, termed the acid patent, and also of claims 2, 6, 7, and 9 of patent No. 1,020,656, known as the alkali patent, and for other relief; the patent last named and said patent No. 1,020,655 having both been granted March 19, 1912, upon applications filed respectively November 2, 1908, and said reissue having been granted July 2, 1912, upon application filed May 17, 1912, subsequent to the death of the original patentee, Frank G. Perkins, who died in September, 1910, testate, leaving his widow, Gertrude S. Perkins, as his executrix, who duly qualified as such and assigned said inventions to appellee on March 31, 1911.

All of said claims pertain to starch glue and the manufacture thereof. It will be sufficient for our purposes to set out claims 7 and 9 of patent 1,020,656, which are typical of the subject-matter of this suit. Said claims read as follows:

7. The process of making a wood glue which consists in agitating a starchy carbohydrate or its equivalent with a solution of sodium peroxid and caustic soda to decrease the water absorptive properties of the carbohydrate without rendering the carbohydrate materially soluble in water to properly proportion the viscosity, adhesiveness and cohesiveness resulting when the carbohydrate is dissolved to form glue and dissolving the product thus produced with caustic soda or its equivalent and about three parts of water or less to produce a glue for application.

9. The process of making glue which consists in treating a suitable amylaceous material in two stages, in the first stage treating it with sodium peroxid or its equivalent and caustic soda or its alkali equivalent, and in the second stage treating with caustic soda or its equivalent to form an alkaline wood glue.

The gist of appellee's contention, as stated by counsel, is that Perkins discovered that there is a point of degeneration of starch at which, when degenerated to that degree, the starch is treated to not to exceed three parts of water and a solvent there is produced veneering glue as good as or better than animal glue, and that appellants have appropriated that discovery and the application of it.

Some of the claims in suit cover the process and product of the so-called first step, or glue base of the patent. Others cover the process of the so-called second step of the patent, while others cover the process and product of the complete processes and product of the patent.

The defenses are: (1) That both patents are invalid in view of the prior art; (2) that both patents are invalid by reason of prior use more than two years before the applications were filed; (3) that infringement is not shown.

Owing to the facts that the inventor died in 1910, before the amendments were made which enter into the claims in suit, and that such amendments were made by his executrix without their being sworn to as required by statute, appellants insist that the same are invalid, as new matter. For appellee it is insisted that said amendments are not new matter but merely elaborations of the process and product claims of the original patents in suit.

While the added matters may in a sense be new, we do not regard them of so important a character as to constitute that class of new matter which would be invalid for want of an oath under the circumstances. They are related to the original purposes and objects set out in the original specification and claims, though some of them approach the border line.

For some time prior to Perkins' alleged invention, it was old to form adhesives by dissolving starch in different degrees of fluidity and strength, according to the sue it was sought to put them to, as substitutes for animal glue. The increasing scarcity of animal substances which had theretofore been adequate and the consequent growing cost thereof stimulated this development in the art, and the result was a number of patents purporting to cover adhesives of every degree of strength and for every purpose, made from starch or starchy substances. It was also an established and well-known fact years prior to the patents in suit that raw, undertreated starch was not suitable for the manufacture of the better grades of adhesives, such as glue; and also that all grades of adhesives could be obtained from starch somewhere between raw starch and overtreated starch, just as they could be obtained from animal matter. It is the theory of the patent that the starch grain and its enveloping pellicle are rendered less amenable to water absorptiveness by degeneration or treatment under the patent process, so that the fluent glue may result from the addition of a minimum of water, since the water must eventually be eliminated.

The two patents in suit differ mainly in the chemicals used in securing the desired degree of degeneration, the reissue patent calling for sulphuric acid treatment among other chemicals, and patent No. 1,020,656 calling for treatment with an alkali-- leading the District Court to the use of the term 'acid patent' with regard to the reissue patent, and 'alkali patent' with regard to the other patent, designations which we find it convenient to follow. The same degenerated condition of the starch is obtained in each patent, it being claimed by the patentee that there is less danger of over degeneration in the use of an alkali. Resultants from treated starch and similar carbohydrates supply the whole gamut of adhesives from the strongest glue to dextrine and glucose according to the treatment applied and result desired. This was clearly set out in the prior art, though the record does not show that the Perkins article was ever exactly produced prior to the glue in suit. Perkins experimented in the glue production from starch extensively. His present claims, as above stated, are for a veneer glue as good or better than animal glue. For a long time prior to filing the applications for his patent he furnished an article for the manufacture of veneered barrel heads, at Poplar Bluff, Mo., and other places. This glue is not fully described in the record, but it seems clear that such as it was it proved fairly satisfactory, supplanting other articles and holding its place to the present time. It can hardly, under such circumstances, be said to have been experimental, having been supplied in vast quantities. It does not, however, yield to less than three or less parts of water and a solvent, requiring four parts of water. It appears from the evidence that it was not suitable for fine work on furniture, and the like.

Counsel for appellants thus sums up the prior art situation at the time the alleged invention was discovered, from the appellants' point of view:

'At the time Perkins entered this field, it had long been old to form adhesives by dissolving starch in a suitable aqueous solution in different proportions of starch to solution, according to the use to which the adhesive was to be put. The starch solutions so formed were used in various relations as substitutes for animal glue, as in sizings and coatings of various relations well as in the gluing together of bodies of wood, and the like. The solvents more commonly employed were hot water and cold dilute aqueous solutions of caustic soda, the former being used where it was desirable to avoid staining or other injury by the caustic and the latter to dispense with heat. The caustic solvents were also sometimes heated.

'Starches as found upon the market, then, as now, had different degrees of solubility, depending on the sources from which they were derived, the processes by which they had been separated from the plant and their subsequent treatment. Consequently, when dissolved under the same conditions, they would yield adhesives of different degrees of fluidity, dependent upon the solubility of the starch. It was established commercial practice to treat the less soluble raw starches, which would not, without excessive water, yield sufficiently fluid solutions for the various purposes for which they were designed, with reagents to increase their solubility, after which they were dried and placed upon the market. The degree of solubility of the starch depended on its original condition and the extent to which the treatment was carried, and varied from the substantial insolubility of raw starch to the ready solubility of soluble dextrin or glucose. For some uses of such adhesives one degree of solubility was desirable, and for other uses, another. Thus, where a very thin, penetrating, easily absorbed coating, readily soluble in cold water, was desired, as, for example, for envelopes, postage stamps and the like, glucose or soluble dextrin was best. For starches for certain laundry purposes and sizings, a material less soluble in cold water was advantageous. Different sizings demanded different degrees of solubility. By stopping the process of degeneration or modification of the starch at the proper point any required degree of fluidity within wide limits could be attained. The process is a progressive one, as before pointed out, and since some of the starch grains are more readily affected by the reagent than others, at any particular stage of the treatment a

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