Appeal from the District Court of the United States for the District of New Jersey; Wm. Clark, Judge.
Before BUFFINGTON, THOMPSON, and BIGGS, Circuit Judges.
This is an appeal from a decree of the District Court for the District of New Jersey, dismissing a bill of complaint. The suit was for an injunction and accounting based on an alleged infringement of United States patent No. 1,579,628 issued to Olav Berg and Max Imhoff on April 6, 1926. During the course of the proceedings, both patentees died. The executors of Olav Berg were substituted as parties plaintiff and together with the licensee, the United Piece Dye Works, are appellants herein.
The patent in suit is for a process for weighting silk by the use of lead and for the product so obtained. The District Court held the patent invalid because completely anticipated by the disclosure of the Sisley patent, issued in France in 1896.
The weighting of silk is an old art well known to the silk dyeing industry. It is a process whereby metallic compounds are associated with silk fibers so as to increase the swell or volume of the silk and its weight. For many years the so-called weighting process has been in almost universal use. In order to weight silk by the tin-weighting process the silk is immersed in successive baths of tin tetrachloride, water (for the dual purpose of forming a tin hydroxide jelly and of disposing of any hydrochloric acid which may have been liberated), sodium phosphate (to neutralize any acid which might remain), sodium silicate, and water. In 1896, Puller, to whom was issued French patent No. 254,659, disclosed that it was possible to use in conjunction with the above-described tin-weighting process, the salt of a metal other than tin; namely, aluminum sulphate. To practice the Puller teachings, the silk, having received a preliminary tin-weighting treatment, is then subjected to successive baths of aluminum sulphate, water, sodium silicate, and water. In the same year, Sisley, having studied the tin-weighting process and the teachings of the Puller patent, concluded that any salts of metals which form insoluble phosphates might be substituted for the aluminum salt bath of the Puller patent. In his patent disclosures, Sisley, like Puller, required that the silk be first weighted by the tin process. As a substitute for aluminum he named twelve metals, among which was lead, as providing soluble salts which could be used conjointly with the tin salts for weighting. The entire working procedure, including the preliminary tin weighting, is briefly summarized:
"(1) Passage through a bath of bichloride or tin solution, washing.
"(2) Passage in the cold or the hot state through a bath of alkaline phosphate, silicate, or tungstate, washing.
"(3) Passage in the cold or the hot state through baths of metallic salts of the aforesaid metals, capable or yielding an insoluble phosphate, silicate, or tungstate."
The Berg and Imhoff patent in suit, which was issued in 1926, also requires as a preliminary that the silk be treated by the tin-weighting process, and then adds the steps claimed to be novel to the art. The silk, already weighted with tin, is immersed in a solution of lead acetate, washed in fresh water so thoroughly that no lead reaction can be found in the wash water, subjected to a warm bath containing sodium phosphate, and once more given a water wash. A further treatment with sodium silicate is optional. It is obvious that the novelty, if there is any novelty, must be found in that portion of the process involving the treatment with lead acetate, water, sodium phosphate, and water, for the patentees themselves make no claim to the preliminary steps of weighting with tin. We do not find any novelty when this process is compared with the prior patent. Sisley directed one who wished to use lead in the weighting process to select any one of the lead salts which is soluble in water and such as will form an insoluble phosphate, silicate, or tungstate. The choice is one which any qualified chemist would be able to make. Lead acetate is one of the salts soluble in water, and sodium phosphate, sodium tungstate, or sodium silicate are the possible alkaline salts. The patentees merely made a selection when they directed the use of lead acetate as the metal salt and sodium phosphate as the alkaline. We see no invention in making this choice. The argument that the Sisley patent does not anticipate the patent in suit because it does not specify a water wash treatment after the bath in the metal salt does not convince us. The Sisley patent does teach that the customary step after treatment of the silk with a metal is to subject it to a water wash.
We conclude that the findings of fact and conclusions of law of the District Judge are amply sustained by the evidence. The decree of the District Court is affirmed.
BUFFINGTON, Circuit Judge (dissenting).
This case concerns generally in the silk art the weighting of silk threads by metals and, referring to the patent in suit, such weighting by the use of lead, which is firmly held on the silk fibres in fixed and insoluble form - and we here note that the gist of this patent, and wherein its novelty, use, and efficiency lie, is the lead being fixed, and above all insoluble. We cannot emphasize too strongly this feature of insolubleness. If the lead fixation is soluble, then all the dangers of lead poisoning are free to operate. Such being the case, our first inquiry is whether, in the metallic weighting of silk, poison dangers were real and prohibitive where lead was used. Of that there can be no question. Weighting of silk by the use of tin was well known, but the tin supply of the world was limited and expensive. The possibility of the use of lead, which was much cheaper, was known, but the dangers of lead poison were such as forbade its use. In that regard the testimony of a witness of experience - and I find no proof to the contrary - is convincing when he says: "The art had ...