White v. EL Bruce Co., Civil Action No. 406.
| Citation | 66 F. Supp. 652 |
| Decision Date | 11 July 1946 |
| Docket Number | Civil Action No. 406. |
| Parties | WHITE et al. v. E. L. BRUCE CO. |
| Court | U.S. District Court — District of Delaware |
John J. Darby and C. Willard Hayes (of Cushman, Darby & Cushman), all of Washington, D. C., and Arthur G. Connolly, of Wilmington, Del., for plaintiffs.
Newton A. Burgess and John F. Ryan (of Burgess, Ryan & Hicks), both of New York City, John W. Maher, of Washington, D. C., and William H. Foulk, of Wilmington, Del., for defendant.
This suit for declaratory judgment puts in issue questions of validity and infringement of defendant's three patents, Partee & Gray 2,288,585, Partee & Gray 2,341,161, and Partee 2,276,253. Infringement of claims 1, 2 and 5 of '585 and claims 1, 2, 5, 6 and 7 of '161 are at issue. Claims 3 and 4 of '253 are in issue on validity, but the charge of infringement as to '253 has been withdrawn. '161 describes a finishing line. Raw oak, for example, is placed on a conveyor belt and is a finished hardwood floor strip when it leaves the production line twelve minutes later. During its journey the floor strip is subjected to five steps. Claim 1:
1. '161 is a method patent and most of the evidence at trial was devoted to it. It describes a method of applying to wood flooring strips a thin varnish coating composition and a wax coating in the factory or mill before the flooring is laid on the job. The disclosures of '585 and '161 are similar. '585 claims an apparatus for finishing wooden flooring and '161 the method performed by the apparatus. '253 describes and claims an earlier apparatus and method for finishing flooring. In all the patents in suit a coating composition is applied by a spray or a flow device, is brushed and rubbed and some of the excess is removed.
2. Prior to the patents in suit the product was known, i.e., to apply coating compositions to wood flooring at the mill would produce prefinished or factory-finished flooring.1
3. Under the patents in suit a seal finish is applied to the surface which penetrates as the wooden floor boards move along a conveyor belt.
4. The finish is dried, wax is applied and polished. Penetrating seal finishes were not new.2 They differ from ordinary varnish only in viscosity which is controlled by the amounts of volatile solvents added to varnish, e.g., drying oils and resins. Qualities of penetration depend upon porosity of the wood flooring and viscosity of the sealer composition.
5. '585 and '161 state, in their specifications, addition of a filler to the penetrating seal finish described in '253. The addition of a filler to a penetrating seal finish was not new.3
6. In '161 and '585 the floor strips are dried by infra-red lamps; brushed and rubbed; again dried by a second series of infra-red lamps; brushed by a series of three flat bristle brushes, a cylindrical brush and a flat bristle brush; and finally rubbed by steel wool buffers. In '253 the floor strips were racked and air-dried instead of infra-red lamp dried. In '585 and '161 the floor strips were subjected to an air blast to remove foreign matter and wax was then applied and polished. In '253, after air drying the floor strips were rubbed with a steel wool buffer and then polished with wax. All of this occurs as the floor strips pass along a conveyor belt.
7. The substantial differences between disclosure of '585 and '161 and the prior art patent '253 are (1) infra-red lamp drying is substituted for racking and air drying and (2) a filler is added to the sealer, in place of being applied in a separate operation.
8. '585 and '161 teach that the temperature of the wood and the composition is raised to 172° F. during the movement of the floor strips under the second infra-red heating section. The patents are silent about temperatures of the order of 360° in the surface of the wood and the applied composition. The heat applied by the infra-red lamps in '585 and '161 assists the evaporation of the solvents in the composition and it may be said to dry the floor strips. In accordance with the teaching of these two patents the heat of the infrared lamps does not completely polymerize the oils in the coating composition. Complete polymerization under '585 and '161 cannot occur as a result of subjecting the composition on the floor strips to the infra-red lamps at radiations of the intensities and for the times specified in both patents. Any polymerization which does occur is the result expected upon the application of heat.4
9. The patents in suit do not speak of reflectors behind the infra-red lamps. Infra-red lamps without such reflectors are approximately one-half of the intensities and the temperature rise produced by lamps having reflectors. Defendant's ex parte tests were conducted with infra-red lamps with reflectors.
10. '585 and '161 describe infra-red lamps but are not limited to radiant heat. The specifications speak of other means of heating. On the date of the alleged inventions it was known to dry coating on wood by convection (hot air)5 or by radiant (infra-red) heat.6 One of the advantages of infra-red radiations long known was acceleration of the drying operation and the consequent saving of time.
Comment.
Prior to the patents in suit, prefinished flooring was made and sold. I fail to see how the six steps of operation for production as described in defendant's patents can constitute invention. Penetrating seals were no novelty. The substitution of infra-red for force drying did not amount to invention. The use of such radiation was well known for many coating compositions on many articles of manufacture; and while the patent speaks of brushing and rubbing the heated surface to remove surplus coating composition and to effect uniform distribution of the coating composition into the surface pores of the wood, the evidence is clear that it is immaterial whether the composition is brushed and rubbed while heated or while cold. No-one at trial could distinguish one sample of wood which had been heated and one which had been brushed and rubbed while cold. The application of wax and brushing of a waxed surface was conventional.
Defendant's invention, then, is, as I see it, that the use of infra-red radiations of a sufficient intensity to raise the temperatures on the surface of the floor strips and the coating composition, so that the drying oils in the composition, linseed or chinawood oils, will be completely polymerized; the finished composition will have "a complete and final set," i.e., the finished product will be more durable. In short, invention consists of the use of radiant heat of an intensity to produce a high temperature on the surface of the wood so as to completely polymerize drying oils of the coating composition and in the surface pores of the wood in 1.75 minutes.
The experts differed as to whether the drying oils were polymerized within the time stated and at the temperatures cited. But it would appear from the testimony of one of defendant's experts that everyone skilled in the art knew that a baking in place of an air dried process made the finish more durable. Thus, if defendant has advanced proof that the heating for the short period specified in the patent results in complete polymerization of the drying oils in the coating composition, this result proximately comes about by using a procedure — infra-red radiation or convection —known in the art before the patents in suit. There is no invention in discovering latent qualities of previously unknown advantages in old procedures. General Electric Co. v. Jewell Incandescent Lamp Co., 66 S.Ct. 81. Moreover, the patents are not limited to infra-red radiation. Only claim 2 is directed to such heating. In fact, one of the joint patentees thought that "hot air" would carry out the rule of his patent. In the apparatus companion patent '585 claim 1 provides for "means for heating the coated surface of the wood." It thus appears that both the method and the apparatus patents are drawn broadly to cover all types of heating methods.
11. Dittmarr knew of applying fillers and varnishes to prefinished floor strips in a production line and to brush and rub in the filler composition as the strips moved along a conveyor belt. Edgecumbe, too, discloses brushing and working-in a stain on shingles carried by a conveyor and heating the shingles to dry, set in the coating composition, and to oxidize the linseed oil in the composition.
12. '585, the apparatus patent, broadly covers a four-element combination (1) means for applying the coating composition to the surface of the strips, (2) means for heating the same, (3) means for polishing the heated surface, and (4) means for conveying the flooring past the aforesaid means in the order stated. There is no invention in these combinations of elements in view of the Derr publication, the Dittmarr and Edgecumbe patents.
13. Claims 3 and 4 of '253, another apparatus patent,...
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