Appeal from the District Court of the United States for the Western District of Pennsylvania; Frederic P. Schoonmaker, Judge.
Before BUFFINGTON and DAVIS, Circuit Judges, and JOHNSON, District Judge.
BUFFINGTON, Circuit Judge.
This case concerns a glass which is nonshatterable, in that, while it may be broken, the broken pieces stay in place and will not splinter. It is largely used in automobiles, and since, as stated by the court below, 60 per cent. of automobile personal injuries are caused by flying splinters, not only its commercial value will be seen, but if protected by a patent, such patent partakes of the humane. See J. L. Mott Iron Works v. Standard Sanitary Mfg. Co. (C.C.A.) 159 F. 135, 138, where this court in an analogous situation said: "He contributed to an important industry a device, * * * which * * * rose to the plane of the humane." Fragility is inseparable in the mind with glass and to apply to it the word and quality, nonshatterable, is to suggest at once novelty, originality, pioneership. And such is the case. On January 11, 1910, Benedictus, a French artistic painter, applied for and was granted patent No. 1,098,342 for "reinforced glass and process of manufacturing the same." In his specification he states:
"This invention relates to the application of sheet celluloid for strengthening or backing glass and it has reference more particularly to a product formed of two sheets of glass united by the interposition and sticking or pasting between them of a sheet of celluloid."
He aptly summarizes the distinctive features of his glass in his first claim, which reads as follows:
"As a new article of manufacture laminated, adherent sheets of glass and flexible celluloid, the surface of the celluloid firmly adhering to the glass whereby a composite is provided having substantially the transparency of glass, the adhesion and strength of the celluloid being such as to reinforce the structure, resist rupture and prevent the scattering of glass fragments on the breakage of the glass."
Benedictus' glass was called to the attention of some people in London, who were led to form a company, buy his patent, and begin making Benedictus glass. The company also bought a later Benedictus patent, to which reference will be hereafter made, and which is the patent in suit. The English company made glass under the two patents and sold them to the Triplex Safety Glass Company of North America, the plaintiff in the present case. The proof is that while Benedictus' first patent was practical and produced a nonshatterable glass, it was not wholly satisfactory because "we did not get adhesion to any measurable degree." The company experimented to get better adhesion. "We endeavored to use Canada Balsam as an adhesive, but the results were not satisfactory. We attempted to use castor oil, with unsatisfactory results." Attempts were made to soften the faces of the celluloid before applying heat and pressure -- many plastic solvents of celluloid were tried but without success.
In this state of the art Benedictus, in his patent No. 1,182,739, applied for June 14, 1911, and granted May 9, 1916, disclosed a solution of the difficulty, in the new article of manufacture, which is the bone of contention in this case. Such new article of manufacture is aptly described in his twelfth claim, which is hereafter stated and which alone is in issue in this case. His other eleven claims, with which we are not here concerned, show methods he disclosed of making his new glass. Briefly stated, Benedictus' disclosure was the use of gelatin substantially free from contained moisture. Coupling his later with his earlier efforts, Benedictus says in his specification:
"This invention relates to a new process for the manufacture of the strengthened glass which forms the subject of my application for Letters Patent filed January 11th, 1910, Serial No. 537,557, and my application for Letters Patent filed June 13, 1911, Serial No. 632,850."
Describing gelatin as being effective as an adhesive but objectionable on account of its hygroscopic or moisture retaining characteristic, his specification says:
"This process relates more particularly to the case of a strengthening layer composed wholly or in part of gelatin. Gelatin, which liquefies at a comparatively low temperature, presents the advantage of being readily attachable to glass or celluloid under the action of moderate heat completed if necessary by the application of pressure and without requiring the use of a solvent to soften the surfaces which are to be stuck together. Nevertheless gelatin is a hygroscopic substance which in spite of attempted drying may easily retain moisture which prejudicially affects the solidity and the transparency of the finished strengthened glass."
The specification then discloses details of means by which Benedictus showed, in accordance with the statute requirement, how the objectionable moisture of gelatin could be removed and which suggested processes are embodied in his first eleven claims. On this specification he ...