' -- may be novel but it is not of sufficient import to sustain the claim to patentable invention. This element is not truly a step in the process of the patent but a condition inherent in the particular adaptation by reason of the mere continuity of operation, 'the new combination of conditions' upon which the patentee bases his claim to patentable invention. The successive steps of the process of the prior art, adapted to a continuous operation, will produce the same conditions: The 'acidified fibers,' previously treated with rosin size emulsion, will flow from the beater chest into the machine chest; the 'acidified sizing precipitates' (in the stock) will flow with the stock from the headbox into the machine chest; and, 'the diluted solution of aluminum sulphate' will flow from the reserve into the machine chest. It is evident that in any continuous operation in which the aluminum sulphate is introduced into the stock at the machine chest, the 'new combination of conditions' will necessarily and unavoidably result.
It seems reasonably apparent that the invention of this patent, like that of '775, embodies nothing more than an obvious combination of old elements adapted to a continuous operation. These elements were known long prior to the advent of the patent, singly and in combinations similar to, if not identical with, those defined in the claims. Their adaptation to a continuous operation required nothing more than the expected ingenuity of the person skilled in the art. It has been held that such combinations, in the absence of new and useful results, do not rise to the dignity of patentable invention. See the cases hereinabove cited.
This patent combines the successive steps of '845 with the allegedly novel concept of '775. There is clearly no patentable invention in this combination of elements. Standard Brands v. National Grain Yeast Corporation, 3 Cir., 101 F.2d 814, affirmed 308 U.S. 34, 60 S. Ct. 27, 84 L. Ed. 17.
Claims 6 and 8 are substantially identical. The invention of these claims is defined in Claim 8, which is typical, as follows: 'A method of sizing paper pulp which includes the continuous mixing of a sizing solution with paper making fibers that have been previously slightly acidified by treatment with a fresh alum solution and immediately coagulating the size by the continuous addition of alum.'
It is evident, upon a mere reading of this disclosure, that it comprises nothing more than the successive steps of the old process, and in the combination heretofore disclosed by the prior art. The claims are, therefore, void because of anticipation by and lack of invention over the disclosures of the prior art.
The accused process comprises the following combination of steps: first, the introduction into the stock at the beater of sufficient aluminum sulphate to remove all alkalinity from the fibers; second, the introduction into the stock at the machine chest of the rosin size emulsion; third, the introduction into the stock, as it is discharged into the secondary jordans, of sufficient aluminum sulphate to coagulate the size; and, fourth, the coagulation of the size in the stock as the stock flows through he secondary jordans to the paper machine. This is obviously another adaptation of the sizing process heretofore disclosed and in common use long prior to the advent of the patent.
This process does not infringe the process of the patent. It is clearly distinguishable in several respects. The process of the patent, limited by the express language of the specifications, requires: First, the introduction of the rosin size emulsion into the stock as the stock flows 'from the beater chest'; second, the introduction of the aluminum sulphate into the stock 'at the machine chest'; third, coagulation of the rosin size in the stock 'at the machine chest' by a mixture of 'acidified fibers,' 'acidified sizing precipitates,' and a solution of aluminum sulphate 'continuously added' at the machine chest. The accused process follows none of these teachings.
It is urged by the plaintiff that the defendant infringes the particular modification of the process described in the specifications. This modification is described as follows: 'There is another modification of this process that is also important, namely, in pumping the pulp stock from the machine chest to the headbox of the paper machine, there is generally an overflow of this undiluted pulp constantly being returned to the machine chest. Now, if the alum solution added for the coagulation of the size is combined with this stream of stock returning to the chest and it meets in the chest, the stream of pulp coming from the beater chest containing the size, there is no chance for variations in the chemical reaction. The alum is diluted with pulp where the chemical reaction is already complete and just sufficient alum is used to maintain the pH of the solution desired for proper coagulation which is generally about 4.6 although it will operate within the limits given in this specification.' (Emphasis by the Court.) The accused process does not follow this teaching.
The charge of infringement is sustainable only on a broad construction of the claims in suit, a construction consistent with claim 5 of the patentee's original application.
Such a construction, however, is precluded by the patentee's cancellation of the said claim upon its rejection by the Patent OFFICE. I.T.S. Rubber Co. v. Essex Co., 272 U.S. 429, 443, 47 S. Ct. 136, 71 L. Ed. 335. 'It is a rule of patent construction consistently observed that a claim in a patent as allowed must be read and interpreted with reference to claims that have been cancelled or rejected and the claims allowed cannot by construction be read to cover what was thus eliminated from the patent.' Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220, 61 S. Ct. 235, 239, 85 L. Ed. 132
The claim to invention is supported by proof of the commercial success which followed the favorable reception of the patents by several paper manufacturers who accepted licenses thereunder. It appears, however, that under the license agreements, copies of which are in evidence, these manufacturers acquired the right to use not only the inventions of the patents in suit but also the inventions of numerous other patents held by the plaintiff. Under these circumstances it cannot be successfully urged that the commercial success upon which the plaintiff relies was exclusively ascribable, if at all, to the patents in suit. This is particularly true here because it appears from the undisputed testimony that inventions other than those of the patents in suit were embodied in the 'sizing systems' installed by the plaintiff in the mills of the licensees. The proof is, therefore, of little or no value. See the opinion filed in the related suit, 57 F.Supp. 388, 399, 400.
Breach of Contract
The plaintiff, in addition to his claim for infringement, asserts a claim for damages for breach of contract, which is predicated solely and entirely on the alleged breach of a certain license agreement. It is urged, in support of this claim, that the infringement was not only a violation of the duty imposed by law, independent of contract, but also a breach of an express obligation embodied in the said agreement. It is our opinion that the claim for damages for the breach of contract, as it is here asserted, is not consistent with the claim for infringement and must, therefore, be dismissed. See the opinion filed in the related suit, 57 F.Supp. 388, 401.
The dismissal of the claim for damages for breach of contract, however, does not rest on this ground alone. The agreement upon which this claim is predicated does not include either Patent No. '775 or Patent No. '285.