United Chromium v. International Silver Co.

• Decision Date: 29 July 1932
• Docket Number: No. 453.,453.
• Citation: 60 F.2d 913
• Parties: UNITED CHROMIUM, Inc., v. INTERNATIONAL SILVER CO.
• Court: U.S. Court of Appeals — Second Circuit

60 F.2d 913 (1932)

UNITED CHROMIUM, Inc., v. INTERNATIONAL SILVER CO.

No. 453.

Circuit Court of Appeals, Second Circuit.

July 29, 1932.

W. Brown Morton and E. H. Merchant, both of New York City, for appellant.

Newton A. Burgess, Livingston Gifford, and Gustave R. Thompson, all of New York City, for appellee.

Before L. HAND, AUGUSTUS N. HAND, and CHASE, Circuit Judges.

L. HAND, Circuit Judge.

This is a suit in equity upon a patent for a process of plating metals with chromium. Infringement being established, the issues turn upon the validity of the patent, and that in turn upon whether it disclosed an invention. The judge held that it did, and gave a decree upon all the claims in suit; it is not necessary to consider the verbal variations between them, except, as appears hereafter, in regard to claim sixteen. Before describing the disclosure it is necessary to say something about the art at large. All electroplating involves the immersion, in a bath of proper solution, of the two poles — the anode and the cathode — of an electric circuit. The current passes through the solution to complete the circuit, and as a result the metal in the solution is deposited upon the cathode — plates it. Thus the object to be plated must be the cathode. All this was a commonplace in other kinds of electroplating, silver, copper, nickel and the like; but the difficulties in regard to chromium were many, the most troublesome of which, at least in 1925, was the composition of the solution or bath; and it is about this that the suit principally turns. Chromic acid in solution had been found to be the most available form of the metal more than twenty years before Fink's application was filed at the very end of the year 1925. It is soluble in water and in anhydrous form consists of a molecule of chromium and oxygen in the relation of one atom of the first, to three of the second (Cr. O3); the current breaks down the molecule and sets free the chromium near the cathode. The art had added other substances to the solution, as for example sulphuric acid, but after 1920 had come chiefly to rely upon chromic sulphate, which is made up of chromium and a sulphate radical in the form indicated by the chemical symbol Cr2 (S O4)3, two atoms of chromium to three molecules of the composite radical. It is not clear whether the art had recognized that the function of this substance was catalytic, that is, to assist the chemical reactions at which it was present, but not itself to enter into combination. However, Fink stood upon some ground already gained; he was not the first person who succeeded in electroplating chromium; nor did he claim to be. He did claim to be the discoverer of "a practical and commercially available process"; the question is whether he was justified.

The disclosure is unusually clear; it prescribes the usual detail of electroplating with "a chromium-carrying electrolytic solution, in the presence of a catalyst." The solution is of chromic acid of from one hundred and fifty grams to a litre to saturation, an entirely adequate description. The catalyst must contain an acid radical, stable in the bath, among which are suggested acids and salts having a sulphate, fluoride, phosphate, or borate radical. Apparently the art has in practice only used the first, and to it many of the claims are confined. The catalyst is to be calculated from all sources, both the radical in the chromic acid — which comes in as an impurity — and in the substance added as catalyst, properly speaking. It is never safe to assume that commercial chromic acid is pure; the safest way is to test the solution of chromic acid and correct by adding or subtracting substances which will supplement or decrease the catalytic agent already there. Sometimes instable radicals are in the chromic acid; they will disappear with use, and thus, though initially calculated correctly, they must be replaced by stable radicals so as always to keep the proper ratio. That ratio is between four-tenths of one per cent. and two per cent. with an optimum of one per cent., which is what the defendant and the art generally has come to use with entire success. It has displaced generally, if not altogether, earlier processes of chromium plating.

The disclosure also contained a description of the creation of a hydrogen film about the cathode, designed to protect the chromium cation; that is, the chromium atom positively charged which seeks the cathode. As this is highly sensitive to oxygen, it will readily oxidize unless at the moment of its separation out of the chromic acid it is surrounded by a protecting hydrogen film. On the other hand the film must not be too thick to prevent access of the ion to the cathode. The proper thickness of the film is secured by regulation of the current density which varies with the temperature. As all this plays no part in the case, it will not be necessary to consider it further.

Having obtained his claims on April 20, 1926, Fink apparently became fearful that he might have occupied more of the field than was properly his; and about two years later (June 20, 1928), he filed a disclaimer by which he narrowed all the claims in suit but 3, 16 and 18, adding as an element that the radical must be "regulated * * * in maintaining the efficiency of the bath." With the defendant we read this as meaning that the claims will cover nothing but a process in which the bath is watched as the work goes on, and the proper proportion of the "radical" is always maintained. There is no dispute that the defendant does just this, and perhaps it is necessary to any economic use of the process. At any rate the result of the disclaimer is that an electroplater might prepare a bath after the recipe of the specifications and electroplate the cathode without infringing the claims to which the disclaimer applied; he would infringe only in case he in addition kept an eye on the radicals in the solution.

Much of the defendant's argument depends upon an illegitimate inference from the disclaimer; that is, that it conclusively concedes all the disclosure to have been in prior art except the regulation of the bath after it was formed. From this with much plausibility it continues that there was no invention in regulating any electroplating bath once it had been made; this was the commonest practice in the art generally. This we need not dispute; it would indeed seem a very plain thing, when success depends upon the proper proportions of the ingredients and the bath is used repeatedly, to take periodic samples of the solution and correct any variations which occurred. We do not however agree that a disclaimer has the effect asserted. It does indeed presuppose that the patentee fears he has claimed more than he is entitled to. In the case at bar Fink said that "he had reason to believe that * * * the specification and claims * * * are too broad, including that of which said Fink was not the first inventor," though the statute (section 65, title 35, U. S. C. 35 USCA § 65), speaks only of "claims," of disclaiming "such parts of the thing patented as he shall not choose to claim." It has never been held that the office of a disclaimer is more than to narrow the claim by the added element. The language in Dunbar v. Meyers, 94 U. S. 187, 193, 194, 24 L. Ed. 34, is indeed somewhat equivocal; part of it means that the claims alone are limited; another part seems to intimate that what is disclaimed is finally conceded to be in the prior art. But this part was in no sense necessary to the decision, and is not, we think, to be taken literally. In the only cases we have found in which the point was decided, it was held that a disclaimer had no such effect. Permutit Co. v. Wadham, 13 F.(2d) 454, 457 (C. C. A. 6);¹ Manhattan Co. v. Helios Co. (C. C.) 135 F. 785, 801, 802.

It seems to us that these decisions are right; the patentee has indeed abandoned a part of his original monopoly, and this because he fears that he has gone too far; his fears may not be justified. There is no reason to impute to his caution a declaration about what the prior art actually contains. And even if there were, why should it be more than an admission? It was not a means of procuring his patent; that had already issued; it stood or fell upon the facts as they were. His reasons for voluntarily yielding a part of what he got, cannot stop his mouth, unless it is unjust to speak. But there is no injustice so long as his monopoly is held straitly to the narrowed claims. It is never for instance a good defense to a claim that it might have been broader; the patentee need not at his peril claim all that he might; he does not concede that each element is necessary to avoid anticipation. He may prove an invention broader than he claimed; the unnecessary elements introduced need not be themselves an invention. Else it would be possible to invalidate any claim by showing that the patentee had yielded too much to the Examiner. The function of a disclaimer ends with the retrocession introduced; the patentee is still free to show that the claim covers only a part of what it might. In the case at bar the regulation of the bath was not the invention; it was a trivial part of the claims. What Fink really did was to single out the acid radical as the catalyst, disregarding the substance which happened to contain it. As we shall show, nobody had thought of this before, and for that reason nobody had found a dependable process. As is generally the case in chemical processes, the important thing was to eliminate the inessentials; until this is done practice must be hit or miss.

We may start with the disclosure of Carveth & Curry which appeared in 1905, more than twenty years before Fink filed his application, and almost as long before he claims to have discovered it. The date alone is...