'This is a great disadvantage in the making of strong fiber paper from sulfite pulp, for owing to the acid character of this fiber it does not become hydrated in the beating engine with the same facility as if it were alkaline, and the acid in its composition is constantly destroying the strength, especially when it is heated or dried during or after manufacture. On this account sulfite papers are generally weaker than those made from fiber isolated by an alkaline process.
'My process not only prevents the tendering action going on in a cellulose material which is acid, but places it in a chemical condition for the rapid absorption of water, and this hydration has much to do with the strength that can be obtained from the fiber when it is made into paper. Papers made from fiber isolated by the sulfite process will be, when using my process of treatment, as strong as any paper made from fiber prepared by any other method. This, however, is but a special application of the process, for any fibrous material, which in its natural condition offers resistance to the absorption of water, can be made more hygroscopic by treating it with a very small amount of alkali or alkali and carbon bisulfid.' (Emphasis by the Court.)
The plaintiff, in an apparent endeavor to avoid anticipation, rests his present claim to patentable invention on the concept of hydrating the cellulose fibers in 'both beater and jordan.' It is evident, however, that this concept is not novel. The beater and the jordan, as a means of hydrating the cellulose fibers, were utilized singly and in combination in many paper mills long prior to the advent of the patent in suit. The jordan had, in fact, replaced the beater in many mills. See the opinion filed in the related suit, D.C., 57 F.Supp. 388, 391, 397.
There is obviously nothing in either claim 1 or claim 2 which patentably distinguishes their disclosures from the disclosures of the earlier patent to the plaintiff. The only distinctions urged are tenuous and without merit.
It clearly appears from the undisputed testimony that the inventions of claims 1 and 2 were in public use in the mills of the Hollingsworth and Vose Company for more than two years prior to the plaintiff's application for the patent in suit. This company manufactured a durable kraft paper for insulating cable. This paper was made from an alkaline pulp, the fibers of which were beaten and hydrated in both beater and jordan while in an alkaline condition. The cellulose fibers of this paper were wholly alkaline.
It should be here observed that the hydration of cellulose fibers, while in an alkaline condition, was common practice in the manufacture of unsized papers made from kraft pulp. The extraction of cellulose fibers by the sulphate process imparts alkalinity to the fibers, and this alkalinity is retained unless overcome by the introduction of the sizing ingredients.
Claim 4 covers a 'pliable paper product made from cellulose fibers, having the interior of each fiber slightly alkaline and the surface of each fiber slightly acid.' (Emphasis by the Court.) This product, as thus defined, is not a new 'manufacture' but a mere improvement in an old 'manufacture,' resulting only from the application of the chemical process impliedly imported into the claim as the only means of producing the result. The product of this claim and the process of claim 3 are interrelated and inseparable.
This conclusion is supported by the patentee's description of the product. The patentee, after describing his process, describes the result of its application as follows: 'The effect of this process is to produce a fiber which is slightly alkaline in its interior and slightly acid on its outer surface.'
(Emphasis by the Court.) There is no indication in either the claim or the specifications that the product, as thus defined, can be produced by any other process.
It follows that this claim is void. Western Electric Mfg. Co. v. Ansonia B. & C. Co., 114 U.S. 447, 5 S. Ct. 941, 29 L. Ed. 210; Red River Refining Co. v. Sun Oil Co., D.C., 29 F.Supp. 636, affirmed, 3 Cir., 112 F.2d 575. 'While there may be instances in which a product may be patentable where the method of its production is not, and vice versa, nevertheless we regard it as sound law to hold that where, as seems to be the case here, the process claimed will produce only the product claimed, and the claimed product can only be produced by the claimed process, the process not being patentable, the product cannot be. In such a case, they are so interrelated as that there is not that independence between them which renders the product patentable if the process is not patentable.' In re Richter, 53 F.2d 525, 527, 19 C.C.P.A.,Patents, 756.
This claim is invalid also because of its failure to meet the requirements of the statute, R.S. Sec. 4888, 35 U.S.C.A. § 33; General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 58 S. Ct. 899, 82 L. Ed. 1402; United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 63 S. Ct. 165, 87 L. Ed. 232. The language of the claim is not sufficiently descriptive of the product therein defined.
The plaintiff charges that the method employed by the defendant in the manufacture of 'corrugating board' and 'bottom liner' infringes claim 2 of the patent. The accused method follows substantially the common practice of the prior art. The cellulose fibers, extracted from wood by an alkali process, are hydrated while in an alkaline condition by the 'beating action' of the jordans. It is evident that under these facts the charge of infringement is sustained only if we accord to the claim a construction sufficiently broad to embrace the common practice of the prior art.
The plaintiff charges that the method employed by the defendant in the manufacture of certain papers and 'bottom liner board' infringes claim 3 of the patent. It clearly appears from the testimony offered by the plaintiff that the accused method violates the teachings of this claim, construed in the light of the specifications.
The plaintiff charges that certain papers manufactured by the defendant (Exhibits 13, 14, 15a, 15d, 116, 117 and 118) infringe claim 4 of the patent. It is alleged that these papers are 'pliable papers,' the cellulose fibers of which possess an acid interior and an alkaline exterior. The proof offered in support of this allegation rests entirely on the speculative conclusions of experts whose testimony is far from persuasive. This 'absence of actual fact proof is not met by the presence of expert speculations no matter how voluminous.' Fried, Krupp, etc., v. Midvale Steel Co., 3 Cir., 191 F. 588, 591; see also George K. Hale Mfg. Co. v. Hafleight & Co., 3 Cir., 52 F.2d 714.
The burden is upon the plaintiff to prove infringement by a fair preponderance of evidence. It is our opinion that the evidence here presented is not of sufficient weight to support this burden.