87 F.2d 699 | 2d Cir. | 1937
This is an appeal from a decree holding valid and infringed claims 1, 3, 4, 5, 8 and 11 of Patent No. 1,948,192, for a method of putting a blue finish upon razor blades as a substitute for blue lacquer. The plaintiff has spent four millions in advertising this color throughout the country and others apparently wished to trade upon the goodwill so created. The patent is primarily intended to fend them off, but the invention also avoids one step in manufacture— polishing--which during the course of a year in the plaintiff’s enormous business saves a not inconsiderable sum, though bright polished blades still sell alongside the blue. Stargardter, the inventor, an employee
As we have said, the art had long known the effect of oxygen upon heated steel. Steel is annealed at much lower temperatures than are necessary to harden it, but it will blacken none the less if air is admitted in the process, and as far back as 1862 Washburn, Patent No. 36,628, disclosed a method for annealing without oxidizing. This was to be done in an atmosphere of “carbonic oxide or nitrogen or any other substance or gas which shall not give up to the iron of which the wire is composed any or very little oxygen.” Already he had provided for bluing the metal: “When such wire is being annealed some atmospheric air may be introduced into the pot; but it must be in such regulated quantities as that it shall only ‘blue’ the metal, but not oxidize it.” The oxygen or air must be “only sufficient to blue without oxidizing the wire.” This was in substance repeated in Wells’patent, No. 382,447, of 1888, for coating iron and steel with rustless oxide by introducing into the chamber a mixture of steam and carbon monoxide, the steam being the oxidizer and the carbon monoxide the reducer. True, Wells was not after a blue color, and perhaps did not know that he could get it; he wished to cover the surface of the iron or steel with a coating of black or magnetic oxide. Nevertheless, he understood the balancing of the two agents which he introduced. At the end of 1924 Alexander & Imbery filed their applications in England and here which resulted in their patent, No. 1,626,713, issued on May 3, 1927. This was for a process of hardening and tempering a steel wire or strip like Salzman’s and Stargardter’s. Inside the hardening chamber there is to be “practically a neutral atmosphere, obtained by burning out the oxygen content of the air in the tube by the heat of the wire. This enables bright wire to be obtained. * * * Provision may be made for admitting inert gas such for example as hydrogen into the tube, C, to clean the wire when heated. * * * If it be desired to obtain black or coloured wire this
This was the equipment of the art when in July 1931, the plaintiff decided upon blue for some of its blades after experimenting with other colors. So far as appears, nobody had ever before wanted to color a razor blade blue; the need came into existence at that moment, and there is not, and o{f course could not be, a syllable that its satisfaction had called forth any earlier efforts from steel makers. The best that can be said for the patent is either that it took some invention to think of coloring blades blue at all, which nobody has the hardihood to assert; or that the delay of seven months while lacquer was being used shows that the art did not have the immediate answer. But, so far as appears, lacquer may have been better over a short experimental period; we are not told when it was found desirable to change; it by no means follows that had the patented method been at hand in July, it would have been at once used before the plaintiff could learn whether the new color would be successful. Moreover, there is testimony that the defendant itself devised the process independently; its witnesses said so. The district judge did not disbelieve them, although the plaintiff thinks that he did. The passage of his opinion relied upon is that in which he was discussing an assertion of Nadeau, the defendant’s secretary and treasurer, that the defendant had abandoned the use of gas in the heating chamber in September or October of 1935, and had never used it again. The judge did find for the plaintiff on that; but that is all. All these considerations make the feeblest of settings for the invention; not enough, it seems to us, to take it from among those step by step advances by which every art progresses without the aid’of outstanding ability. As soon as it became desired to color a razor blade blue, the knowledge and the method lay immediately at hand; all one needed was to inject into
We have disposed of the appeal without recourse to any of the new evidence presented upon the defendant’s motion for a new trial; we have no jurisdiction over the appeal from the order denying it. Fairmount Glass Works v. Cub Fork Coal Co., 287 U.S. 474, 53 S.Ct. 252, 77 L.Ed. 439; Goldstein v. U. S., 73 F.(2d) 804, 807 (C. C.A.9); Prudential Ins. Co. v. Murphy, 74 F. (2d) 544 (C.C.A.7); Maryland Casualty Co. v. Dawson, 75 F.(2d) 431,433 (C.C.A.5). The lesson, appears to be a hard one for the .bar to learn, perhaps because there has always hung about the rule an aura of not too certainly defined exceptions. Of course the judge may refuse to consider the motion at all, or his consideration may be on its face a mere fetch, a transparent pretence; then we may entertain the appeal. But when as here he has actually considered it, that is all that the beaten party can ask; he has had his day, and appeals are not always as of right.
Decree reversed; bill dismissed for invalidity.