39 App. D.C. 555 | D.C. Cir. | 1913
delivered the opinion of the Court:
This is an appeal from the Commissioner of Patents refusing a patent to appellant Jervis B. Harbeck, for a device consisting of a paper vessel, the walls of which are formed by layers of paper held together by a fused cement. The claims are as follows:
“1. The vessel having walls made of layers of paper united to each other by a fused cement.
“2. The can body composed of oblong layers of paper cemented to each other step fashion by a fused cement, and having its stepped ends cemented together by the fusible cement, and caused to adhere to each other by the application of heat.
“3. The can body composed of layers of paper cemented together by fused cement and creased with three creases to facilitate bending at the corners into a square form and to flatten for shipment.
“5. The combination of the can body made of layers of paper cemented together by fused cement and made to adhere by the application of heat, and having sheet-metal heads applied thereto.
“0. The combination of the can body made of layers of paper cemented together by fused cement and having sheet-metal heads applied thereto, said can body being made square with creased rounded corners, and said heads being rounded at the corners to correspond.”
Appellant describes the invention in his specification as follows: “The vessels made in this manner, wherein the layers are cemented by a cement consisting of a fusible compound united by application of heat, as contradistinguished from the ordinary cements employed in similar relation, are much more thoroughly water and grease proof than such paper vessels seamed or built up by the employment of such solvent softened pastes or cements. Because, in order to harden solvent softened cement, the solvent must be dried out, which it can only do by passing through the layers of paper between which it is placed, and which escape of the solvent through the paper tends to leave both the paper and the cement in a state where they are pervious to water and grease, especially the latter. And this impervious character of the can body built up of layers of paper united by fusible cement is specially valuable where the can or vessel is to be used for containing aromatic foods, such as coffee, tea, etc., as will be readily understood.”
The principal feature of the invention consists in the use of fused cement, instead of a soluble adhesive. It is claimed that all former efforts in this direction, and numerous patents are cited, have proved defective, in that soluble adhesive or cement was used, and, when the solvent evaporated or dried out, it left the walls of the vessel porous, and not impervious to gases
In all the references cited, the pastes, glúés, or cements used in adhering or cementing the layers of paper or other material together are softened by solvents, which require a drying out or evaporating process. Appellant’s discovery, as suggested, in cementing together the layers of paper by a fusing process, consists of rolling the cemented layers of paper between heated rolls, thus eliminating the drying out or evaporating process.
No evidence was taken nor were affidavits called for in the Patent Office. The statement of appellant in his application must be accepted as true. The facts of discovery and of utility are admitted. It is not contended that impervious sheets made of layers of paper united by fused cement capable of being converted into air-tight and water-proof vessels were in prior use. The application was rejected by the Patent Office for the reason that the change from the prior art, where the sheets were made of layers of paper united by the use of soluble cement, to the use of fused cement, which, according to the specification, marked the transition from failure to success in this art, was a mere mechanical step, capable of being taken by any one skilled in the art. The references cited indicate the antiquity of the art. Numerous attempts have been made to solve the problem, but the step applicant took seems not to have suggested itself to any of them.
The most ancient reference given is the patent granted to one Jaloureau, February 10, 1863. It consisted in an “improved process of manufacturing waterproof cement pipes” for “conveying and holding liquids or gases, and for other purposes, from sheets or rolls of paper, or other tissue.” He saturated the sheets of paper with an adhesive, and rolled them upon a mandrel. The adhesive was composed of “liquid, bituminous,. or other equivalent mastic. * * * Bituminouus or equivalent mastic or cement may be used, but bituminous mastic, made in the usual manner of asphalt or coal tar, in admixture with
The nearest approach to appellant’s discovery is found in the patent to Johnson referred to in the Commissioner’s decision. Johnson secured a patent for what he called an “impervious wrapping paper.” He described it as “a thin, adhesive, flexible paste, impervious to air and water, which is in-odorous and will not decompose, can be made of a compound of caoutchouc and paraffin or caoutchouc and Japan wax; and two sheets of Manila paper, attached together by this paste, spread only on the inner or contactual sides, make a combined sheet that is soft, pliable, tough, and cheap, impervious to air and water, and efficient for an impervious wrapping paper.” Johnson does not explain the manner of dissolving the substances used, but he does describe it as “a paste, spread only on the inner or contactual sides” of the paper. Nowhere does he refer to a fusing process. It is doubtful if a paste composed in part of caoutchouc (India rubber) would fuse, and, in view of
The Commissioner summarily disposes of the case as follows : “It is argued by the applicant that the adhesive used by Johnson is not a fused cement. It is not stated in the Johnson patent that the layers of the paper are caused to adhere to each other by the application of heat, but even if the adhesive used by Johnson is not a fusible cement, it would certainly not require invention to use such a cement in view of the other references cited by the Examiner against claim 1. The patents to Conley and Jones show a can body made of layers of paper cemented together. It would obviously require no invention to use the particular kind of paper shown in the patent to Johnson for this purpose.”
The Jones patent, cited as a controlling reference, is for a can or vessel with its walls constructed of two thicknesses of pasteboard and an intercalated sheet of tinfoil. Jones placed the tinfoil between the layers of paper to make the paper wall impervious.
The Conley patent has even less bearing on the present issue than the Jones device. It consisted of a wrapper for tobacco, and is described by the patentee as belonging “to that class of wrappers known as foil wrappers, which are extensively used in packing tobacco and other articles.” In his specification he describes the construction and utility of the wrappers as follows: “I take a sheet of oil and a sheet of paper and secure them together, face to face, in any suitable manner, as, for instance, by means of thin zones of adhesive material, leaving at one end of the wrapper a tongue or strip of foil projecting from the edge of the paper and a tongue or strip of paper projecting from the edge of the foil. It will be observed that when the wrapper is used to envelop a package, the projecting tongue or strip of foil may be brought against a foil surface, so as to form an air-tight joint. * * * The value of foil as a wrapper lies chiefly in its preserving, as nearly as possible, the original qualities of the contents of the package which it envelops by prevent
With constructive notice, at least, of Johnson’s patent, which was issued twelve years before the patent to Conley and twenty years before Jones entered the field in 1903, it does not seem to have been apparent to either of these inventors, whom it must be assumed knew the state of the art, that the problem could be solved by using a fused cement. While neither of these patents, we think, anticipates appellant’s invention, since the devices are entirely different in structure from appellant’s device, it is inconceivable that, if they had possessed knowledge of the fusing process, they would have adopted the more expensive and cumbersome method of attaching to the layers of paper a -metallic substance to secure imperviousness, which was the chief object sought by both inventors.
It is easy to dispose of a ease, where the issue of invention is close, by holding that the advance over the prior art constitutes a mere mechanical change apparent to those skilled in the art. But, in the absence of proof to support this conclusion, and where the question of patentability is close, the doubt should be resolved in favor of the applicant. Re Eastwood, 33 App. D. C. 291. In Smith v. Goodyear Dental Vulcanite Co. 93 U. S. 486, 23 L. ed. 952, the court was considering the patentability of a method of making artificial teeth. It was urged that it was not a patentable invention, but that it consisted of a mere mechanical substitution of vulcanite for other materials which had long been used as a base for artificial teeth,—the use of one material for another in the formation of a product. But in disposing of this contention the court said: “It is evident this is much more than employing hard rubber to perform the functions that had been performed by other materials, such as gold, silver, tin, platinum, or giitta-percha. A new product was the result, differing from all that had preceded it, not merely in degree of usefulness and excellence, but differing in kind, having new uses and properties.” In the same case the court quoted with approval from Webster on Patents, as follows: “The utility
This, we think, conclusively confirms appellant’s right to a, patent. While the use of new materials to produce a known result, or of known materials to produce a new bnt obvious result,, may not always constitute invention, if the new idea, when applied, brings success out of failure, produces a new and useful result and saving in operation or production, or efficiency instead of inefficiency, gives to the device new functions and useful properties, it is invention, and may be patented. Appellant has met these requirements. Ilis situation, as disclosed -by this record, is most aptly stated in Webster Loom Co. v. Higgins, 105 U. S. 580, 26 L. ed. 1177, as follows: “It is further argued, however, that, supposing the devices to be sufficiently described, they do not show any invention; and that the combination set forth in the fifth claim is a mere aggregation of old devices, already well known; and therefore it is not patentable. This argument would be sound if the combination claimed by Webster was an obvious one for attaining the advantages proposed,—one which would occur to any mechanic skilled in the art. But it is plain from the evidence, and from the very fact that it was not sooner adopted and used, that it did not, for years, occur in this light to even the most skilful persons. It may have been under their very eyes, they may almost be said to have stumbled over it; but they certainly failed to see it, or to estimate its value, and to bring it into notice. * * * Now that, if has sw.e&dM, it may seem, very plain, to anyone that, he could have done it as well. This is often the ease with inventions of the greatest merit. It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”
We are of opinion that appellant has discovered something new and useful, and has demonstrated its utility. These are the elements which enter into patentable invention. As the
As to appellant’s claims, the first and second are the only ones which have any direct relation to the use of a fused cement, instead of a solvent, in making impervious paper walls for use in the construction of vessels. These claims will be allowed. Claims 3, 4, 5, and 6 are disallowed for the reason that they disclose nothing new over the prior art, as shown in a number of the references cited. The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required. Reversed.