Celluloid Manuf'g Co. v. American Zylonite Co.

31 F. 904 | U.S. Circuit Court for the District of Massachusetts | 1887

Gray, Justice.

Pyroxyline, otherwise called nitro-cellulose, or gun-cotton, is made by subjecting a. fibrous material, such as paper or cotton ¡rags, to the action of nitric and sulphuric acids. Celluloid, or zylonite, is made by combining pyroxyline with a solvent of camphor and alcohol, and passing the compound through heated rollers into the form of rough sheets or slabs. The evidence clearly establishes that, in the state of .■science and knowledge before the experiments and discovery of Hyatt, no one had been able to form a massive rectangular slab or block of celluloid; and that the attempt to form such a slab or block was attended with very great danger, on account of the explosive character of the material. >

The improvement of Hyatt, as described in his specification, consists in piling a number of rough sheets of celluloid upon a grooved plate in a chase or mould; subjecting the celluloid to heat and great pressure, by which it is solidified into a single, compact, rectangular slab, and' portions of it are forced into the grooves; then cooling it, so that it shrinks, and those portions operate as clutches to hold the slab firmly in place; then planing the slabs into sheets; and finally stretching these sheets upon-a frame to prevent their wrinkling or warping while drying.

Notwithstanding some phrases, which, taken by themselves, might admit of .a broader construction, it is quite clear, upon a view of the whole specifiqation, that the apparatus and process patented are limited to the manufacture of celluloid and those kindred compositions, the base of which is pyroxyline; which under the influence of heat become plastic, and can bo pressed into now shapes, without being reduced to a liquid; which shrink in cooling: and which can he planed into sheets, hut which arc with difficulty held in place to be planed. A few quotations from the specification will put this beyond doubt. The specification begins with the statement that “the invention relates to an improved apparatus and process for the manufacture of sheets of plastic composition, and in the present instance is applied to the material known as celluloid.” It presently afterwards declares that “ the objects of the invention are accomplished by causing the union in a single slab of a number of sheets or pieces of celluloid.” It emphasizes the fact that “unseasoned celluloid, when heated above 150 cleg. Fahrenheit, becomes plastic, and can easily be manipulated so long as it is warm, but becoming cool it hardens, and, while losing its caloric, has a slight tendency to shrink.” In describing the operation, the specification states that, in the first place, “the requisite number of sheets of celluloid are superposed, one above the other;” that, on applying the heat from below, “the lower stratum of the celluloid ” is first heated and solidified, and “ the lower surface of the celluloid” becomes plastic; that “the celluloid,” upon after-wards applying the heat from above,' “becomes plastic; and under tile pressure is solidified into a single compact slab; ” that the subsequent cooling “chills the celluloid, whereupon it hardens in place;” and that on being exposed to the air, “the celluloid shrinks somewhat.” It further states that the operation of planing is effected by securing “the plate carrying the slab of celluloid” upon the bed-plate, and causing the latter to move so as to bring “ the material secured upon the plate” against the edge of the plane; and, lastly, that “the sheet of celluloid” is placed upon the drying-frame. And each of the claims, although it does not mention celluloid by name, but uses the general term “material” or “plastic composition,” yet, by the words “substantially as set forth,” or “for the purpose specified,” refers to the description in the specification, and is limited accordingly.

It is equally clear that the specification and claims are limited to an apparatus and process in which the plate, on which the slab of celluloid rests, has grooves or depressions into which portions of the celluloid may be forced, and which may thereby aid in holding down the slab as it shrinks in cooling, and while it is subjected to the action of the plane. The specification, at the outset, states that a principal object of the invention is “to hold the slab of material firmly upon the surface sustaining it, pending the operation of shaving or planing it into strips;” and that this object is accomplished “by causing the union in a single slab of a number of sheets or pieces of celluloid, this being effected by means of pressure and beat, which contemporaneously amalgamate the sheets into a slab, and also force portions of the under side thereof into channels or inclined grooves, in the surface upon which the slab rests, which grooves are so arranged that, upon the hardening and shrinking of the material, the portions thereof in the grooves operate as a series of hooks or crutches to retain the slab in place.” It first describes an apparatus for doing this, in which the middle of the upper surface of the plate is a slightly raised boss, wholly covered with grooves and intermediate; ridges or elevations, and the grooves on either side of the central, vertical, longitudinal plane of which incline inward and downward towards that plane; and it afterwards, near the end of the descriptive part, adds 'that “the purpose of retaining the slab in position may be effected, also, by- vertical apertures in the plate, or, in fact, apertures or elevations of any order, in or upon or about which the plastic composition can be forced, and there permitted to harden, the essence of this element of the invention being to affix a plate [slab?] of plastic composition upon a plate immovably, by combined heat and pressure and subsequent cooling.” The claims are equally limited, either by express mention of the grooves, depressions, or apertures in the plate, or by reference to the previous description.

The patent, so construed, sets forth a new and useful invention. It describes a process by which a mass of crude celluloid may be held down firmly upon a plate, taking advantage of the tendency of the mass to shrink, while cooling, to assist in holding it down; then heated gradually and under great pressure, so as to expel all air and gas, and after-wards cooled, and, before it has become quite cold and hard, planéd or cut into sheets; and those sheets then stretched upon a frame so that 'they may dry smoothly. All processes previously known were not only attended with great danger, but left the material more or less spongy and porous, and therefore not fit to be used for so many purposes. Hyatt, by the process described in his patent, was the first to produce a large, hard, tough, compact, homogeneous slab, more durable, susceptible of a better polish, and capable of a greater variety of uses. The result is a new product, differing from any known before, not merely in degree of usefulness and excellence, but in kind, having new properties and uses; and, according to all the authorities, a process producing such a result is the proper subject of a patent, although some or even all of the parts of the machinery or apparatus used are not new. Corning v. Burden, 15 How. 252, 267; Smith v. Dental Vulcanite Co., 93 U. S. 486, 494; Cochrane v. Deener, 94 U. S. 780, 788; Tilghman v. Proctor, 102 U. S. 707, 722-726; Railroad v. Truck Co., 110 U. S. 490, 494, 495, 4 Sup. Ct. Rep. 220; Fermentation Co. v. Maus, 122 U. S. 413, 428, 7 Sup. Ct. Rep. 1304; Cannington v. Nuttall, L. R. 5 H. L. 205; Smith v. Goldie, 9 Can. Sup. Ct. 46.

The holding the crude mass of celluloid down firmly upon a grooved, indented, or perforated plate, the heating and cooling it under pressure, the cutting it, while still warm and plastic, into sheets, and the stretching of those sheets on a frame so as to dry smoothly, are successive steps in one process, the purpose and effect of which are to produce sheets of celluloid of a size and quality not before obtainable. The case is thus distinguished from Manufacturing Co. v. Manufacturing Co., 114 U. S. 523, 5 Sup. Ct. Rep. 1007, cited for the defendants, and the cases there referred to.

Hyatt’s patent being for a process, the modifications in some particulars of the apparatus used by the defendants are unimportant. Although the defendants have not made such grooves in the iron plate on which the slab of celluloid rests, as are specifically described in the patent of Hyatt, they have used an iron plate perforated by holes with screw threads, with plugs of zylonite screwed into those holes, and depressions left around the heads of those plugs, into which portions of the slab of celluloid are pressed. The pressure not only welds the slab of celluloid to the celluloid plugs, but it forces portions of it into the apertures around the heads of the plugs. The evidence leaves no doubt but that the defendants intended and expected by this contrivance to take advantage of the tension of the celluloid while cooling and shrinking, and that they accomplished that result.

The facts that the defendants apply the heat first from above and afterwards from below, while the plaintiff applies the heat first from below and afterwards from above, and that the sities of the defendants’ chase or mould are not, like those of the plaintiff’s, made hollow for the purpose of containing steam, do not constitute any substantial difference in the process used by both parties. The ease in this respect falls within the principle of the decisions of the supreme court in Tilghman v. Proctor, 102 U. S. 707, 780, and of this court in Machine Co. v. Teague, 15 Fed. Rep. 890.

Decree for the plaintiff.