225 F. 789 | W.D.N.Y. | 1915
Bill for injunction and accounting, alleging infringement of patent No. 635,141, dated October 17, 1899, to Arthur H. Marks, complainant’s assignor, for a process for reclaiming rubber from vulcanized rubber waste. The patent plainly states as an essential of the process a dilute alkaline solution, preferably a 3 per cent, solution of caustic soda, sufficient to completely submerge the finely ground rubber in a sealed vessel, which, when subjected to- great heat, say “from 344° to 370° Fahrenheit, more or less,” for 20 hours, more or less, will devulcanize vulcanized rubber waste and remove therefrom any fibrous substance. The object of the invention was to reclaim rubber in vulcanized rubber waste for re-use, by imparting to it the substantial characteristics of fresh or new rubber. The single claim of the patent reads as follows:
“The described process for devnlcanizing rubber waste, which consists in submerging the finely ground rubber waste in a dilute alkaline solution in a sealed vessel, in heating the contents of the vessel to- a temperature of 344° Fahrenheit, more or less, substantially as specified, and in maintaining said temperature for twenty hours, more or less, substantially as specified.”
The patentee states therein-that in the best method known to him for carrying out the process the finely ground rubber- waste is put in a sealed vessel, contained in a tightly closed larger vessel, and submerged in an alkaline solution, for example, a 3 per cent, solution of caustic soda, and subjected to great heat, say a temperature of be
According to the proofs, crude rubber in its original state is dense, and, though capable of being stretched, it is nevertheless inelastic; the property of elasticity being imparted to it by the well-known Goodyear process, which combines with the rubber, while in a plastic state, a small proportion of sulphur, which vulcanizes or hardens it, so that it is able to retain its form regardless of variations in temperature. It was testified that in practice, only a portion of the sulphur added to the rubber chemically combines with it during vulcanization, the remainder being classed as free sulphur, and that when rubber articles are depreciated by wear or use the rubber contained therein is reclaimed and restored to a plastic state for revulcanization by the process of devulcanization. Devulcanization removes the free sulphur, or a portion thereof, from the vulcanized rubber, and is attended by a distinct depolymerization, or breaking into smaller aggregations the rubber molecules, which consist of hydrogen and carbon in the proportion of C:> Hs, thus rendering the waste rubber plastic.
Defendant’s counsel questioned the practicability of the depolymerizatiou of the waste rubber, contending that the problem was merely theoretical and had originated in the minds of complainant’s expert witnesses; but their testimony on this point is uucontroverted and indicates that durhig vulcanization there is not only a chemical combination of the rubber and sulphur, but that the reaction of the composi
There are a number of patents in the record which clearly describe means for devulcanizing rubber articles, such as boots and shoes, in order to reclaim the rubber for re-use, and in all such patents high temperature was applied to the rubber, both water and steam being used. In the Mitchell patent, No. 395,987, a caustic solution was used as a reclaiming agent, but .the caustic solution was washed out before the rubber was subjected to great heat. Had it been allowed to remain in until after the heat was applied, devulcanization within the provisions of complainant’s patent would probably have resulted. The alkaline solution in prior patents for reclaiming waste rubber was simply used to remove the free sulphur or fabric, and not to effect -devulcanization. It was not suggested in the Mitchell patent, to which further reference will hereinafter be made, that old rubber tires or hose could be efficiently devulcanized and the free sulphur and fabric removed therefrom b'y a single step. If Mitchell had devised such a process, then obviously he would have succeeded in accomplishing what the- patentee herein has accomplished. His process defiberized rubber waste by the use of acid and pressure, and then devulcanized it by an additional step, after washing out the caustic soda, which he believed to be harmful during the period of devulcanization.
The evidence preponderatingly shows that vulcanized rubber tires could not be rendered completely plastic by merely removing the free sulphur and fabric, and that such condition was attainable only by depolymerizing the waste or breaking down the rubber molecules formed during vulcanization. Prior to the Marks process under consideration, so-called mechanical scrap rubber which had necessarily been highly vulcanized was not efficiently devulcanized or reclaimed by the acid process familiar to the art. Indeed, the .witness Bowman swore that the shoddy made from mechanical scrap by the acid process was of a lower grade than rubber reclaimed from boot and shoe scrap. The experiments by the witness Weber showed that caustic soda aided devulcanization and increased the tensile strength of reclaimed rubber. It is not claimed that the invention in suit restores to waste rubber the superior characteristics of fresh rubber; but it is maintained, and I think has been proven, that after the waste rubber has been treated by the specified process it is capable of extensive use for mercantile purposes.
The patent in suit is not anticipated by anything shown in the prior art. In the Beer patent, No. 12,983, to which importance is attached,
The Mitchell patent, No. 395,987, to which reference has herein-before been made, comes nearer than any other to suggesting the process in controversy, but the method therein described was not sufficiently extended to include what Marks accomplished. By Mitchell’s process waste rubber was reclaimed by immersing it in an acid solution in a sealed vessel and subjecting it to pressure above the boiling point, in fact, 2409 Fahrenheit, until the material is corroded and removable by washing, after which the waste is steamed at high pressure to effect devulcanization. Marks, on the other hand, defiberized, desulphurized, and devulcanized waste rubber by a single operation, and in so doing achieved a different result from Mitchell, a result that was beneficial and useful.
Ii is shown that the mere presence of caustic soda in rubber waste acts as a catalyzer, and will not only operate to stiffen rubber, but, if heated to a high temperature, will produce greater plasticity in the warie. I think the patentee made a patentable discovery, and that its usefulness may be clearly inferred from defendant’s adaptation thereof. Ollier alleged anticipations need not be examined, as those herein specified are the ones principally relied upon.
It was next contended that Marks was not in fact the inventor of the process in question, and that it was invented by one Price. It appears, however, that the patentee, Sweet, and Price, who were employes of tiie Boston Woven Hose Company, together made laboratory experiments from which it was seen that a caustic soda solution at great heat had a tendency to soften rubber; but it is not proven that Marks did not alone afterwards develope and complete tiie process when experiments liad been abandoned by Sweet and Price. Certainly the record does not disclose that either Price or Sweet conceived that the entire process of reclamation could be performed at one time, by putting tiie waste.in dilute alkaline solution and subjecting it to the high temperature specified in the patent, thus devulcanizing the waste and incidentally removing the fabric therefrom. Marks completed the laboratory experiments, and is therefore entitled to. the patent, even though others may have liad the same idea and made some experiments along the same line. Agawam v. Jordan, 7 Wall. 583, 19 L. Ed. 177.
As to infringement: It is fairly shown that defendant, in its adaptation for reclaiming rubber waste, uses caustic soda of varying strength, from 5 per cent, to 9 per cent., placing it in a sealed vessel, an iron cylinder, in which the waste, cut into small pieces capable of passing through a sieve of %-inch mesh, is immersed. Steam is then injected into the outer vessel in the space surrounding the vulcanizer at a
“A court might not compel them to divulge it, but they could at least show by affirmative proof that some one or more steps (or all the steps) of the processes set forth in the patent had not been followed in the manufacture of the product.”
Since the hearing my attention has been directed to a decision rendered by Judge Clarke in the Northern District of Ohio, Eastern Division, wherein he held the patent in suit invalid for want of novelty and invention; but, though I have carefully considered the subject-matter of the patent in connection with the opinion of the learned court, -I am persuaded on the record before me to a different conclusion. The patent in suit in my opinion was a step forward in the art, not a great step, it is true, but nevertheless an advance, which has the merit of accomplishing a new result by the application of a new process to the reclamation of rubber waste; and as the defendant appropriated the essential elements thereof, thereby achieving the same result, it must be held to have unlawfully appropriated the same.
Decree for complainant, with costs.