Appeal from the District Court of the United States for the Western District of Pennsylvania; F. P. Schoonmaker, Judge.
Before THOMPSON and BIGGS, Circuit Judges, and DICKINSON, District Judge.
In this case certain specified claims of four patents are at issue. The District Court held these claims invalid and failed to hold them infringed. All four patents relate to the manufacture of paper.
Briefly, the appellant contends as follows: That Harold R. Rafton, its assignor, invented processes or methods whereby (1) a carbonate filler can be used in the commercial manufacture of paper, the mix for which had been sized previously by ordinary types of rosin sizing precipitated by alum; (2) as an alternate or supplement to the process just referred to, the use of paraffin in emulsified form, in lieu of rosin as a sizing agent in the paper made with a carbonate filler; (3) a modification of the process referred to in (2), supra, wherein a "breakable" paraffin emulsion can be used with rosin as the emulsifying agent therefor, plus a changed order of addition of materials to manufacture carbonate filled paper; and (4) the use of starch to prevent excessive foaming in connection with certain paper stocks to manufacture paper with a carbonate filler.
It will be observed in each instance the processes or methods described by the patents purport to deal with problems which arise by the use of a carbonate filler for the manufacture of paper.
As to the Minimizing Patent, no. 1,803,642.
This patent is referred to by the parties as the "minimizing" patent, and for convenience we will so refer to it. Rafton states: "The principal object of this invention is to provide a sized paper made with a carbonate filler in such manner that deterioration by the carbonate filler of the sizing agent or agents employed is substantially avoided." The deterioration here referred to results from the fact that rosin sizing, precipitated by alum, is acid and the carbonate filler, usually calcium carbonate, is alkali. Therefore, the two act upon each other to their mutual disintergration and with damage to the paper. Rafton's process consists of "minimizing" the time of contact between acid and alkali; or introducing the alkali, the carbonate filler, into the paper making system in such wise that it comes into less intimate contact with the acid paper mix, because introduced while the latter is in dilute form. In the patent specification Rafton states that his preferred procedure consists of a method whereby both time of contact between the antagonistic materials and the intimacy of their contact is minimized. He states: " * * * the preferred procedure is to add the carbonate filler at or subsequent to the point where the mix is diluted for delivery to the web-forming end of the paper machine. From this point to the point of web formation the time of contact is extremely short and the intimacy of contact is practically at a minimum owing to the high dilution."
Only two claims of the "minimizing" patent are alleged to be infringed by the appellee's process, viz., 1 and 8.*fn1
It will be obvious that claim 1 of the patent refers to the "minimizing" of "time of contact between the carbonate filler and the previously sized fiber," and that claim 8 provides a method for filling a sized paper with carbonate filler "when such fiber is in condition to be passed onto a web-forming device of a paper machine."
In order to make plain the respective contentions of the parties, both in regard to the "minimizing" patent and the other patents in suit in the case at bar, a brief description of the usual method or system employed in manufacturing paper is necessary. Accordingly, we state that wood pulp, with filler, sizing, and other materials, is placed in a beater or Hollander wherein these materials with water are beaten by knives and bars into a homogeneous mass. From the beater the stock is drawn off into a beater chest, really a storage tank, and thence it is pumped continuously to a jordan, where the fiber of the stock is further reduced; thence it goes into another storage tank, which is called the machine chest. From the machine chest the paper stock is passed into a mixing box. I the mixing box the stock receives further, large dilution by water. From the mixing box the stock moves through rifflers to screens, which remove over-sized particles and impurities, and thence flows to the head box. Thence the mix is passed onto an endless belt of fine mesh wire, called the machine or making wire, which moves upon rollers in the direction of the flow of the mix. As the water flows off and the making wire rolls on, there is left upon the making wire the substance of the mix, a web or material, which, when dried and pressed by driers and calenders, is in fact paper.
The appellee's process is described by the learned trial judge in his fourteenth finding of fact as follows: "In the defendant's process, ordinary straight calcium carbonate is used and added to the sized paper stock at the inlet to the machine chest. The paper stock in the machine chest to which the carbonate filler is added is in thick or concentrated from. The stock containing carbonate filler remains in the machine chest for at least two hours."
It is obvious from this finding, if it be supported by sufficient evidence, that the eighth claim of the patent is not infringed, since at the point where the appellee adds the carbonate filler, the fiber or stock is not in a condition to be passed onto the webforming device of the paper machine. The stock does not reach such condition until it comes into the mixing box and receives therein substantial dilution by water. An examination of the testimony convinces us that this finding of the court below is fully supported by the evidence, and we therefore concur in the ruling of the court below that the eighth claim of the "minimizing" patent is not infringed.
Is the first claim of the patent infringed by the appellee's procedure? It is obvious that, by adding the carbonate filler at the machine chest, the appellee has put it into the paper making system at a later place, therefore later in point of time than if the carbonate had been added at the jordan, the beater chest, or the beater. Can this be an infringement of the minimizing process of the appellant as referred to in claim 1? In the claim, time of contact between the antagonistic materials is solely referred to. The claim refers to "previously sized fiber." No other condition is imposed. The word minimize means "to reduce to the smallest part or proportion possible", "to reduce to the smallest possible amount or degree."*fn2 To minimize time of contact means to reduce the time of contact to the smallest possible proportion. As stated in the fourteenth finding of fact, in the appellee's procedure the stock containing carbonate filler remains in the machine chest for at least two hours. It is obvious that ...