Wenborne-Karpen Dryer Co. v. Cutler Dry Kiln Co., Inc., 295B.

• Decision Date: 02 November 1922
• Docket Number: 295B.
• Citation: 285 F. 73
• Parties: WENBORNE-KARPEN DRYER CO. v. CUTLER DRY KILN CO., Inc., et al.
• Court: U.S. District Court — Western District of New York

285 F. 73

WENBORNE-KARPEN DRYER CO. v. CUTLER DRY KILN CO., Inc., et al.

No. 295B.

United States District Court, W.D. New York.

November 2, 1922

On Application for Rehearing, December 4, 1922.

This action in equity is based on the alleged joint and several infringements by defendant companies of the William M Grosvenor patent,, No. 1,186,477, granted June 6, 1916 (application filed November 20, 1908), for process of drying or hardening siccative coating, varnish, oil paints, mainly used on furniture, automobiles, pianos, phonographs, etc. The object of the invention, as shown by the specification, was to dry, harden, or oxidize such coating very rapidly after freshly applying it, and also to produce coatings superior to those known to the art and produced by different processes. Claims 2 and 4 are involved, and they read as follows:

'(2) In an improved process for drying and hardening siccative coatings, simultaneously subjecting the coatings to the action of the moisture in excess of the natural humidity and heat.'

'(4) In an improved process for drying and hardening siccative coatings, simultaneously subjecting the coatings to the action of moisture in excess of the natural humidity and heat and causing forced circulation of the moisture about the coatings.'

The defendant Cutler Dry Kiln Company, Inc., in its brief practically admits infringement of these claims, while the defendant Cutler Desk Company denied doing so. Both claims herein considered have heretofore been judicially sustained in an action brought by plaintiff against the Rockford Bookcase Co., 269 F. 144, and, though this court is not bound by said decision, which was rendered by Judge Carpenter, yet in a case where the facts are the same the rule of comity would be very helpful, if not wholly persuasive, in the decision of the present controversy. But the defendants contend that the evidence is different from that in the prior case; that two prior uses are here fully established about which no evidence was heretofore given, to wit, the asserted prior use of the Indianapolis Chair & Furniture Company and the Starr Piano Company, and various additional prior publications and patents are urged as anticipatory. The record establishes that the process of drying lumber, for example, which comprised a substantial embodiment of the claims in issue was not unknown at the date of the invention.

The accomplishment of the patentee was due to the simultaneous addition of heat and moisture to the air surrounding siccative coatings in excess of the natural humidity and heat. The process for drying lumber in my opinion was not anticipatory of plaintiff's patent. Although the plaintiff's process was extremely simple in view of its application in other arts, it nevertheless was new and novel in its application for drying and hardening siccative coatings. The prior patents of Schultz, Gathmann, and Victorson do not disclose the particular process with which we are herein concerned. The Smith patent, No. 303,276, of August 12, 1884, to which importance is attached-- a patent that was not considered by Judge Carpenter in the Rockford Case-- described a method by which the material operated upon is subjected to the action of heat and atmospheric air to which moisture has been imparted, but there is no mention of siccative coatings, and it relates simply to a method of penetrating printed, painted, or dipped surfaces of marble wood, ivory, or other material. It does not make clear to the art that by the addition of moisture in a dry kiln the drying and hardening of varnishes or other siccative coatings will rapidly occur, and therefore it is not thought anticipatory. Nor, in my opinion, was the process described in the Grosvenor specification obvious at the date of the application for patent, since it appears by the evidence that the trade quickly appreciated its significance, and, abandoning other processes for accomplishing the result, began using the patented process.

I discover no indefiniteness of description as to the various elements involved in the method or in the claims, and the term 'siccative coatings,' though not specifically defined in the patent, was nevertheless understood by the skilled in the art to mean coatings of different classes that are converted from a liquid condition to a solid or semisolid condition by the absorption of oxygen. The process of claim 2 plainly requires subjecting the coating to the action of moisture in excess of the natural humidity, and, though nowhere in the specification or claims is the required amount of moisture and heat given, yet to hold the claim or claims in controversy invalid on that ground would be unsubstantial, since the skilled workmen were, I think, readily enabled to make tests and experiments as to the proper amounts to be applied in each specific instance. Those practicing processes are presumed in doing so to depend somewhat on their knowledge and experience. The information contained in the patent is in my judgment sufficiently definite to lead to the use of adequate quantities or amounts of moisture and heat. The patent was not rendered indefinite or inoperative simply because it involved trying out to ascertain the proper amounts of moisture and heat that were required to be applied to different coatings. It sufficed that the specification informed users to use oxidizers stronger than air, to point out distinctions between chemical and physical evaporation, the action of catalytic agencies in prior drying processes, the removal of such difficulties, the combination of increasing heat with fresh air, the presence of moisture to increase the drying as to usefulness, and differences in drying shellac, including the various temperatures and moistures to be used for different varnishes. Such descriptive information, even though the exact humidity or oxygen is not embodied, is nevertheless sufficiently indicative to the skilled engineer or chemist how the process may be used successfully. Philadelphia Rubber Works Co. v. U.S. Rubber Reclaiming Works, 229 F. 150, 143 C.C.A. 426; Mowry v. Whitney, 14 Wall. 623, 20 L.Ed. 860; Minerals Separation v. Hyde, 242 U.S. 261, 37 Sup.Ct. 82, 61 L.Ed. 286.

As to prior use: Several witnesses, employees and officers of the Starr Piano Company, testified that the process of claims 2 and 4 was in practical use by it for drying varnish many years prior to the grant of the patent in suit. Indeed, the contention is that moistening means were first used in its kilns in the year 1892 and continuously thereafter in one form or another until the present time. It appears that a kiln was built for drying varnish in the manner specified in the Victorson patent, No. 507,512, wherein the heat and air method of circulation was employed, but without moisture, and that later on water pans were put around the kiln in the Iron Clad building and varnish dried and hardened. Both witnesses Sauer and Peiffer swore that the kiln was used for about two years to 1894 or...