White v. EL Bruce Co., 9264.

• Decision Date: 29 May 1947
• Docket Number: No. 9264.,9264.
• Citation: 162 F.2d 304
• Parties: WHITE et al. v. E. L. BRUCE CO.
• Court: U.S. Court of Appeals — Third Circuit

162 F.2d 304 (1947)

WHITE et al. v. E. L. BRUCE CO.

No. 9264.

Circuit Court of Appeals, Third Circuit.

Argued May 9, 1947.

Decided May 29, 1947.

Newton A. Burgess, of New York City (William H. Foulk, of Wilmington, Del., John F. Ryan, of New York City, and John W. Maher, of Washington, D. C., on the brief), for appellant.

John J. Darby, of Washington, D. C. (Arthur G. Connolly, of Wilmington, Del., and C. Willard Hayes (of Cushman, Darby & Cushman), of Washington, D. C., on the brief), for appellee.

Before GOODRICH, McLAUGHLIN, and O'CONNELL, Circuit Judges.

GOODRICH, Circuit Judge.

In the District Court the plaintiffs (hereinafter referred to as White) brought a declaratory judgment suit against defendant (hereinafter referred to as Bruce or patent owner). The object of the suit was to get a declaration of invalidity and noninfringement of three patents owned by Bruce. The three patents are: Partee-Gray Patent 2,288,585, Partee-Gray Patent 2,341,161 (referred to hereafter as '161), and Partee Patent 2,276,253. White won in the District Court on his contention that the patents were invalid. He lost on the question of infringement, but, of course, that becomes unimportant if the conclusion of the District Court is sustained on the matter of validity.

The District Judge made full findings of fact and gave a helpful explanatory discussion of the points of the case which he considered critical. Bruce's appeal in this Court is limited to the correctness of the decision of the Court below upon '161. Patents '253 and '585 are apparatus patents, '585 representing a claimed improvement over '253. All are owned by Bruce.

Patent '161 is a method patent for operating the apparatus described in '585. The description used by the applicant is the same in both instances up to the point where he separates his apparatus and method claims.¹ We have before us on this appeal only the question of the correctness of the judgment of the District Court declaring invalid for want of invention Bruce's patent ('161).

This Circuit has pointed out in several instances recently that the question of invention is uniformly said to be one of fact. It is sufficient to cite our recent holdings on the subject without repeating the discussion of the point therein. Hazeltine Corporation v. General Motors Corporation, 3 Cir., 1942, 131 F.2d 34; Cusano v. Kotler, 3 Cir., 1947, 159 F.2d 159 and authorities cited. To these should be added the most recent pronouncement in the First Circuit where the Court says: "Whether the question of invention is one of fact or of law is not too clear on the authorities; this uncertainty is indeed not entirely dispelled by consideration of decisions of the Supreme Court. * * * Until advised to the contrary by the Supreme Court, we shall * * * regard it as a question of fact."² As a decision on a question of fact the Trial Judge's conclusion, as we have pointed out in the cases cited, is entitled to the consideration provided for in Rule 52, Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c. Our conclusion in this case is that this is certainly not an instance in which we can say that the result reached by the learned District Judge was clearly erroneous as we shall now endeavor to explain.

The subject-matter of the patent is a method for factory finishing hardwood flooring. By the patent owner's method the flooring is run on a conveyor belt where the finish is applied, heated, dried, rubbed, waxed, and polished. By this process it comes out in finished form, fit to be bundled, shipped or used at the end of 12 minutes.³ The result is claimed to be a better finish on the material than given by other methods. The saving in expense through concentration of the finishing process to 12 minutes is obvious. One may grant ingenuity to those who contrived the method.

A rather considerable commercial success appears on the part of patent owner in marketing flooring finished according to the method described in the patent. White counters this by pointing to Bruce's strong position in the hardwood flooring trade and the vigorous advertising efforts made on behalf of the factory finished flooring. We need not enter into an analysis of the reason for the commercial success. It is true that it has many times been said to be relevant on the matter of invention and to become important where the point is doubtful.⁴ We do not think this is a case where we need weigh the effect of this element for we think that the District Judge was right in finding that the prior art contained all the elements of discovery necessary to practice this process.

The patent owner does not claim anything novel about the type of finish used in treating the surface of the flooring. Combinations of an oil drying base, resin and solvent are well known and the addition of a "filler" to that combination is also nothing new.⁵ The patentee, himself, says that he uses a finish patented by an earlier inventor.⁶ Factory finishing of flooring is not new⁷ and, indeed, was the object of Patent '253 which Bruce has abandoned after an adverse decision on its validity in this very lawsuit. It taught the conveyor belt method of applying finish to flooring and sending it out, at the end of the process, in a condition ready to use. The difficulty about that method was the fact that it took several hours and necessitated the handling of the material more than once in the process of putting it on racks to dry at one stage of its journey through the finishing plant.

The aiding of this finishing process by raising the temperature of the wood to be finished is also not new. Heat was earlier used to volatilize the solvent in the material applied to the wood. At a later date, but before the application for this patent, temperatures ranging from 350° to 400°⁸ were applied to shingles because it was found that the impregnation was more perfect and there resulted a deeper penetration and more even distribution of the finishing material. The inventor believed that the heat "oxidized linseed oil".⁹ The effect of heat on the drying of finishes has been scientifically studied. In 1919 Wolff investigated the influence of different wave lengths on the drying of varnishes and concluded that light of short-wave lengths induced a rapid oxidation on the surface and also polymerization in the inner layers.¹⁰ Morton also pointed out that heat will aid polymerization.¹¹

It is to be noted that the '161 patent, while in the description speaking of the use of infra-red lights as a source of heat, says specifically that "Other means for heating the flooring than by infra-red lamps could be used, but infra-red lamps have been found satisfactory in use." We think that the part of Bruce's argument in this Court which endeavors to point out to us the difference between "penetrating" and "convection" type of heat¹² loses much of its force when this quoted phrase is kept in mind. It is only in Claim 2 that the '161 application claims the method of doing what is described in Claim 1 by radiation which is infra-red in wave length.

Suppose, however, that we treat the patentee as claiming a process in which infrared globes, or other infra-red instrumentalities, are used as a source of the heat to be applied to the wood. The District Judge said: "The substitution of infra-red for forced drying did not amount to invention." We think that a sound fact conclusion. Bruce asserts that only '161 teaches that radiant penetrating heat of sufficient intensity will complete the final set of an oleoresinous finish in a short time.¹³ The use of infra-red rays and the effects of its penetration, however, were known a number of years prior to the application for this patent....