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pacting the mixture upon a suitable foun- cement whose base is hard bitumen in exdation, whereby the emulsion through ac- cess over fluxes and chemicals, emulsified tion of the air, soon oxidizes and becomes with an agent whose basis is water, and in insoluble in water, with production of a spreading and compacting the mixture on a waterproof wearing surface."

suitable foundation. Assuming that the reIn support of its defense of invalidity issued patent has the same effect and opthe defendant asserts that the patent is eration as if it had been originally filed in lacking in both novelty and invention; that its present form, is it valid ! it is not in such full, clear, and exact terms The application for the original patent as to enable any person skilled in the art No. 956,009, was filed April 13, 1909. At to which it appertains to practice or use that time, as has been pointed out, it was it; that the reissue revives claims aban- not novel in the hot construction of roads doned during the pendency of the applica- to mix with the materials constituting the tion for the original patent No. 956,009, mineral aggregate an asphaltic cement havgranted April 26, 1910; that the reissue ing a base of hard bitumen in excess over introduces new matter; and that claim 3 fuxes and chemicals and in spreading and thereof is broader than the original patent. compacting the mixture on a suitable foun

Bituminous roads antedated the applica- dation. Nor was the cold construction of tion for the original of the patent in suit. roads then novel. Such construction probAs said by the patentee in his specification, ably had its origin soon after the advent of such roads had usually been built by heat- the automobile, in the use of emulsions for ing and mixing the sand or stone and the the laying of dust, but the use of cold emulbitumen hot, and spreading such mixed ma- sions as a permanent binding agent for the terials hot over a prepared foundation. In stones, sand, gravel, and dust-forming roadsuch hot construction the bituminous con- beds followed fast upon their dust-laying tent was not pure bitumen, but was a bitu- Likewise the tendency to use oils and men containing a flux. It was a common emulsions having a greater and greater aspractice in such construction to use a bitu- phaltic content soon developed. The state men in which the hard asphalt was in ex- and development of the art is illustrated by cess of the flux, though if a particularly many patents. hard asphalt or a heavy flux was used the United States patent No. 752,487, of Van flux could be in excess of the asphalt. The Westrum, applied for December 10, 1903, asphalt so used was both "natural asphalt" and granted February 16, 1904, is for a and "artificial asphalt." The so-called "nat- method of sprinkling streets. The specificaural asphalt” was the lake asphalt, such as tion states (page 1, lines 65 to 69): Trinidad and Bermudas. The practice of “For the purpose of my invention in usfluxing (not emulsifying) such asphalts for ing a soluble sprinkling liquid I employ paving purposes had existed since their in- oily substances, such as petroleum, petroletroduction in this country, some time prior um residue, or other suitable mineral or tar to the year 1880. The so-called “artificial oils rendered soluble in water by any known asphalt" was

the residuum obtained by process. driving off by distillation oils from petro- Lines 16 to 21, page 2, read thus: leums having an asphaltic base, such as the “Finally, my improved sprinkling mediTexas, California, or Kansas petroleums. um diffuses much easier than petroleum in The distillation could be continued until the the road surfaces covered with dust partioils were almost entirely driven off, and the cles and binds permanently the stones, sand, residuum too hard to be used for paving dust, and earthy material or the like formpurposes without fluxing, or it could be ing the roadbed.” discontinued when the residuum arrived at It is to be observed that the oily suba consisteny or degree of hardness suitable stances employed are not restricted to for the purpose desired.

crude oils or oils of any particular characIn the reissued patent in suit Van West- ter. The latitude of the patent is such as rum describes and claims a method of mak- to permit the use of petroleum residue of ing roads by means of asphaltic cement any character and of any degree of hardlaid cold. More particularly his method ness or consistency. The commissioners of consists in mixing with the materials, such Lincoln Park, Chicago, who were sprinkas stone, sand, gravel, or earth, constitut- ling the roads in the park with an emulsion ing the mineral aggregate, in their natural of residuum of California asphaltic oil, and condition—that is, unheated-an asphaltis obtaining thereby a cementing value as well

as

It

2 F.(20) 83 a dust-laying value, and who were fied solution of asphalt and Texas oil or the spreading screenings upon the sprinkled like, and ammonia with or without sodium surface, and thereby constructing or build- silicate. The proportions given, omitting ing up the streets, were sued under this the optional sodium silicate solution, propatent. Westrumite Co. v. Commissioners duce an emulsion containing asphalt or of Lincoln Park (C. C.) 164 Fed. 989; Id., pitch, 10 to 20 per centum or more, Texas 174 Fed. 144, 98 C. C. A. 178.

oil from which some of the more volatile United States letters patent No. 752,486, compounds have been driven off, 60 per granted to Van Westrum February 16, cent. or less, chemicals, 15 per cent., and 1904, upon an application filed October 28, water, 15 to 25 per cent. The asphalt so1903, was not for a method of sprinkling lution was made by dissolving the asphalt streets, but was for a method of making in crude petroleum or benzine or petroleum roads or like surfaces. Line 85 et seq. of spirit in an autoclave under a pressure of the specification provides :

40 or 50 pounds to the square inch. “In carrying my invention into effect, I thus appears that the asphalt referred to employ as the binding agent a liquid form was a hard asphalt, probably Trinidad. ed by the admixture of water and an oily British patent No. 11,191, to Brashlersubstance dissolved or rendered soluble in Kurtz, granted February 1, 1906, upon, an water, the solution being made preferably application filed May 29, 1905, relates to with 75 to 97 per cent. of water to 25 to an improved method of treating asphalt, 3 per cent. of the oily substances. I mix whereby it may be converted into a mass the various materials to be used with my of pasty consistency, which, diluted with solution, applying said solution, consisting water or in an undiluted state, may be of water and oily substances rendered solu- used, "where asphalt has hitherto been emble in water, to the material during the ployed in a dissolved, powdered, or molten formation of the road, either by admixture state," "and further for making roadways therewith or by sprinkling thereon during or rendering them practically free from the period of constructing the road. I do dust.” The specification further states that not limit application of my invention in the method of the patent is "suitable for the matter of employing a fixing agent or emulsifying such substances as do not melt permanent binding fluid to any particular below 100° Centigrade and are insoluble in method of dissolving the oil in water or alkalies,” thereby indicating its applicabilirendering the same soluble therein, and I ty to hard asphalt. The amount of flux to employ any process for making the solution be added is not stated. As said by the dethat is to be used for mixing the materials fendant: “This patent covers an asphalt or for applying thereto during the process cement in which hard asphalt may predomof road or the like surface making.”

inate and the emulsification is carried out Claim 1 reads thus:

by means of a soapy agent and a colloidal “A method of making roads and like sur- substance (soap being itself a colloid)." faces, consisting in broken stones, sand, In view of the disclosures of these patdust, earthy materials, and the like, for ents it is obvious, I think, that, if invention forming the street body and the like, mix- is revealed by the first two claims of the ing the same with a solution consisting of patent in suit, it is only because the comwater and oily substances rendered soluble position of the asphaltic cement is new. In in water, forming a gummy and adhesive fact, this was conceded in the proceedings mixture by which the said materials are to obtain the reissue. But, as has bound together, substantially as described seen, the ingredients of that cement are not and for the purpose specified.”

new, either in a patentable or in a commerUnder this patent the application of the cial sense. Emulsified oils, emulsified asemulsion to the mineral aggregate is made phaltic oils, emulsified residuums of asphaleither by sprinkling or by mixing.

tic oils, and emulsified fluxed asphalt are British patent to Butterfield, No. 1,776, all found in the prior road construction art. applied for January 23, 1904, and grant- Hence, if invention exists, it resides in the ed January 19, 1905, relates to the making proportions of the ingredients of the asof macadamized roads and the like surfaces, phaltic cement. But even these proportions and also to the emulsions to be employed are apparently not beyond the scope of therein; the object being to obtain a firm some of the prior patents. Moreover, it is compact and dustless road with an asphalt admitted by plaintiff's expert that the surface, by applying to the road an emulsi- amount of asphalt in Van Westrum's coment is the same amount of asphalt that and as the relation of the quantity of aswas ordinarily contained in the asphaltic phalt and that of oil in an asphaltic oil cement used in the prior hot construction residuum, called for by some of the earlier of bituminous roads.

patents, depends upon the extent of the [2, 3] But let it be assumed that, prior distillation or the concentration, it is diffito the patent in suit, the use of hard as- cult, if not impossible, as is illustrated by phalt in excess over fluxes and chemicals the Lincoln Park treatment or construction, had not been disclosed, used, or known. to say that there was any well understood It is, of course, not contended by the plain- or defined gap between the asphaltic treattiff that a mere variation in the proportions ment or construction and the oil treatment, of the elements of a composition constitutes or that the one was not the obvious outnovelty or invention, within the meaning of growth and development of the other. But the patent law. To avail a patentee, it if, indeed, a gap did exist between the use must appear that from the new proportions of oil emulsions and asphaltic emulsions, a new material or substance, or an old ma- the patent to Butterfield stands as a refutaterial or substance with new characteristics, tion of any contention that it was Van "or at least substantially enhanced quali- Westrum who bridged that gap. ties of utility," has been created. Bethle- The plaintiff further contends and estabham Steel Co. v. Churchward I. Steel Co. lishes that the method of the patent has (C. C. A.) 268 F. 361. The new product been and is being widely used in the repair must differ from the old, otherwise than in of roads. But, while utility is essential to degree. To support a patent, the new patentability, yet patentability is not an characteristics of the composition must be inevitable consequence of utility. This is other than, or not confined to, a mere aug- not only well illustrated by the case of mentation or diminution of the known char- Brady Brass Co. v. Ajax Metal Co., supra, acteristics of the several ingredients which but the language and reasoning of that is in correlation with the increased or di- case are, I think, peculiarly apt and approminished amount of the respective ingredi- priate to the case at bar. It was there ents entering into the composition. Brady said: Brass Co. v. Ajax Metal Co. (C. C. A. 3) “The mere difference in proportions of 160 F. 84, 87 C. C. A. 240; J. E. Baker the constituents of an alloy, however useful Co. v. Kennedy Refractories Co. (C. C. A. the result may be, does not entitle the orig3) 253 F. 739, 165 C. C. A. 333.

inator to a monopoly of a patent, in the The asphaltio cement of the patent in absence of other circumstances than those suit fails, I think, to meet the required test. here disclosed." Mr. Smith, defendant's expert, testified It is likewise true, as asserted by the (Q. 103) "that variations in the relative plaintiff, that on the 8th day of April, proportions of the hard asphalt and flux 1919, the defendant became a licensor under do not change the character of the bitumi- patents No. 752,486 and No. 956,009 and nous base, except so far as its consistency that it continued as such licensor under the is concerned. Therefore, in that respect, earlier patent until its expiration and unthe difference, so far as the bituminous der the later patent until its surrender and base is concerned, is one of degree only, reissue on July 4, 1922, at which time the and not of kind, there being no sharp dis- defendant in the exercise of its rights tertinction of kind whatever expressed in this minated the license. The relation of licenrange.” This statement is corroborated by sor and licensee having terminated, the deother witnesses.

fendant is not now estopped from denying The plaintiff urges, however, that be the validity of the patent. Any inferences tween the prior art and that disclosed by against defendant's present position that the patent in suit there was a wide gap, might arise by reason of its former license in that the earlier patents pertained to oil are minimized, if not nullified, by the fact treatment of roads, and not to the asphaltic that the license agreement included patent treatment or construction, and that the No. 752,486, as well as No. 956,009, and bridging of this gap by Van Westrum was contained no provision for its termination accomplished only by the use of the inven- at the option of the licensee after the extive faculties. But as some oils have an piration of the earlier patent. asphaltic base, and others have not, and as [4] It appears from the evidence that the two appear to have been used indis- the validity of patent No. 956,009 has been criminately in the prior treatment of roads, challenged but once. The suit then insti2 F.(20) 83 tuted thereon was adjusted without decree. surface," are not only words which limit The full details and circumstances of the the scope of the claim, but are also terms adjustment are not in evidence. While proper in the light of the original patent long, general, and unexplained acquiescence to be employed for that purpose. in a patent may be persuasive evidence of It seems to me that, in a claim properly its validity, yet apparent acquiescence, defining a real invention, the function or which may have been due solely to the ex- effect of that invention may be set out ištence of other patents within whose scope without impairing the validity of the claim. a person desiring to practice the art of the I should think that in a valid claim the patent in question would have fallen, even scope of that claim might possibly be narhad the patent in question not existed or rowed by words of functional limitation been held invalid, has little, if any, tend- or by words defining the effect of the inency to establish validity. What would vention. But if, unsupported by its words, have been the history of patent No. 956,- specifying the function or effect of the sup009, had it not been flanked by Van West- posed invention, a claim is invalid, I think rum's other patents, No. 752,486 and No. that it cannot be validated, at least as a 752,487, cannot be known. The fact that general rule, by such words of function or the reissue was applied for within a few effect, for it would thereby be made a claim weeks after the expiration of patents No. for a mere function or effect, and conse752,486 and No. 752,487 may not be wholly quently void for that reason. In other without significance.

words, a claim for an unpatentable means For the reasons stated, and without con- or method of producing an effect is not valsidering the method employed by Van West- id. I think claim 3 has that vice. rum in constructing two streets in Whiting, But let claim 3 be tested upon another Ind., in 1906, or the method employed by theory. Assume that, instead of substitutdefendant in Weyland, Mass., in 1907, or ing in the claim the word "asphaltie" for the asserted vagueness of the patent in suit the words "oxidizable bituminous," it when applied to artificial asphalt (the kind should be substituted for the word "bitumiused by the defendant), or the alleged nous” only, and the claim should be read abandonment to the public by Van West- "oxidizable asphaltio emulsion." Let it be rum of his only element of novelty by the further assumed that an oxidizable asphalabandonment of claim 1 in the original ap- tic emulsion is an emulsified asphaltic ceplication, I am of the opinion that claims ment, whose base is hard asphalt in excess 1 and 2 are invalid for want of patentable over fluxes and chemicals. Obviously no novelty.

more favorable construction than this could Claim 3 remains. The defendant con- be placed upon this claim. Under such contends that it is too broad, in that it callsstruction claim 3 would differ from claims for the employment of a bituminous emul- 1 and 2 only by having expressed in it an sion, which is a more generic term than the alleged novel and useful effect of the speciterm "asphaltic emulsion,” used in the orig- fied method of the cold road construction. inal patent. The plaintiff meets this con- The embodiment of such a statement would, tention, and I think successfully, by point of course, neither create validity if it were ing out that the claim calls for an "oxidiz lacking nor destroy it if it were otherwise able bituminous emulsion,” and by estab- present. It would only emphasize an allishing that the only oxidizable bituminous leged useful and novel result obtained by emulsion is an asphaltic emulsion. Hence the employment of the methods specified in the claim must be read and interpreted as the claim. There would thus be presented if the word "asphaltic” were substituted for the question whether the alleged result was the words "oxidizable bituminous." So in- novel in a patentable sense, and, if so, terpreted, it covers broadly and generally whether the statements in the specification the employment of asphaltic cement in the of the reissue, upon which the result decold construction of roads, regardless of scribed in the third claim is predicated, the ratio in its composition of asphalt to was supported by the original patent, or fluxes and chemicals, and is consequently was new matter. invalid in view of the prior art, unless the It has been hereinbefore shown that the concluding words of the claim, "whereby only difference between an asphaltic cethe emulsion through action of the air soon ment, whose base is hard bitumen in excess oxidizes and becomes insoluble in water, over fluxes and chemicals, and an emulsified with production of a waterproof wearing asphaltic cement, whose base is hard bitumen not in excess over fluxes and chemicals, indefinite as to prices, notification by plaintiff is one of degree only. It has likewise been of all grades, to apply to all the contracts, and hereinbefore shown that there is no critical its acceptance by defendant, rendered all definite point in the proportionment of fluxes and

and binding. chemicals, upon the arrival at which the 2. Sales Owl (4)-Contracts for sale of prunes

to be grown held not invalid because of in. emulsion acquires properties different in definiteness as to sizes. kind from those it theretofore possessed. In contracts for sale and purchase of prunes The evidence adequately discloses that in

to be grown during the coming season reserva.

tion by the seller of the right to substitute these respects that which is true as to the

a percentage of different sizes from those speciproperties of hardness and consistency is fied held a reasonable provision to adapt the also true as to those other attributes that matured and not to render them invalid for unare native to asphalt and that are insepara- certainty. ble from its increasing hardness and consistency.

At Law. Action by the California Prune Consequently it is clear that, even upon & Apricot Growers, Inc., against Wood & the theory under consideration, claim 3 Selick, Inc. On motion by defendant for would be invalid, and for the like reasons judgment on pleadings. Denied. as claims 1 and 2. This becomes quite ob

Pitkin & Rosensohn, of New York City vious, I think, when it is remembered that (Wolcott H. Pitkin, of New York City, of asphaltic emulsions were not new at the

counsel), for plaintiff. time of Van Westrum's alleged invention,

Myers & Goldsmith and Thomas, Houghand that in his application for the reissued ton & Shepard, all of New York City (Norpatent it was conceded that the method of

man M. Behr, of New York City, of counbuilding roads which consists in mixing an sel), for defendant. asphaltic cement emulsified with an agent whose basis is water with a cold mineral

KNOX, District Judge. The pleadings aggregate, and spreading and compacting the mixture on a suitable foundation, was

now before the court are so voluminous, and

so involved, as to make difficult an intellinot novel at the time of the filing of the application for the original patent, or the gent statement of their contents. No little making of the alleged invention therein de- set forth the exact situation in which the

effort has been expended in an attempt to scribed.

parties find themselves after the succession The defendant urges that the parts of

of pleadings, counter pleadings, and mothe specification of the reissued patent in tions that have characterized this suit. The suit upon which the supposed novelty and

maze is so complete that I have determined invention of the third claim is based constitute new matter, involve a departure defendant's motion for judgment upon the

to attempt little more than to barely decide from the alleged invention of the original

pleadings. patent, and that the third claim is invalid

Such decision as I shall make will be upon for this further reason. Though I am the pleadings, and will in no wise be predisomewhat inclined to think this contention cated upon admissions contained in the depsound, yet, being convinced of the invalidi- ositions of persons who are claimed to have ty of the third claim, for the reasons al- spoken upon behalf of the plaintiff

. Aside ready stated, I deem it unnecessary to de- from the question as to whether such admistermine whether the finding of invalidity sions are properly before me—the deposimay be further supported.

tions not having been passed upon—I do not The bill of complaint must be dismissed.

now propose to read the extended examination of witnesses who were called upon to testify in support of defendant's conten

tion that plaintiff's contracts are invalid as CALIFORNIA PRUNE & APRICOT GROW. ERS, Inc., v. WOOD & SELICK, Inc.

being in violation of various anti-trust

statutes. The question of law and fact upon (District Court, S. D. New York. October 16, such issues will have to await the trial. 1924.)

Under the limitation thus placed upon the 1. Sales ml (3) - Contracts, indefinite as to price, rendered definite and binding by subse scope of the instant motion, it appears that quent agreement as to price.

the nub of this case is whether defendant's Where defendant contracted with plaintiff unfulfilled agreements of May 26, 1920, to for the purchase

of prunes, to be shipped dur purchase and pay for 30 carloads of prunes ing prices," while the 'contracts as made were "firm at seller's opening prices. Said prices

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