Leonard v. Corn Products Refining Co.

¶1Patents @=>328 — -Infringement—Rubber Substitute.

¶2The Leonard patent, No. 615,863, for a rubber substitute and process of producing the same, consisting of heating together, until vulcanized, corn oil, sulphur, and paraffine in stated proportions, in view of the prior art, must be strictly construed, and limited to the product and process therein described and claimed. As so construed, held not infringed by a product containing no paraffine.

¶3Appeal from the District Court of the United States for the Eastern Division of the Northern District of Illinois.

¶4Suit in equity by William K, Leonard against the Corn Products Refining Company. Decree, for defendant, and complainant appeals.

¶5Affirmed.

¶6On December 13, 189S, appellant was granted a patent, No. 615,863, for the process of producing rubber substitute and in the composition matter to be used therefor. The two claims of the patent read as follows, viz.:

¶7“1. A composition of matter to be used as a rubber substitute consisting of corn oil, sulphur, and paraffine, in the proportions as -and for the purpose described.

¶8“2. The above-described process of producing a rubber substitute by mixing corn oil, sulphur, and paraffine, in the proportions substantially of 76 per cent. of com oil, 21 per cent, of sulphur, and 3 per cent, of paraffine, subjecting the mass to hea.t until the mass is vulcanized or the process of vulcanization begins, then shutting off the heat and allowing the process of vulcanization to continue and the mass to cool, substantially as and in the manner described.”

¶9*735The original application contained three claims. These read as follows:

¶10“1. The above-described process of making a rubber substitute, which consists in mixing corn oil, sulphur, and a small quantity of paraffine, or its equivalent, and submit the mass to heat in the manner and for the purposes described.

¶11“2. As an article of manufacture, a rubber substitute made of corn oil, sulphur, and paraffine, or its equivalent, heated to about 300 degrees Fahrenheit and then allowed to cool, substantially as and for the purpose described.

¶12“3. The above-described process of producing a rubber substitute by mixing corn oil, sulphur, and paraffine in the proportions substantially of 76 per cent, of corn oil, 21 per cent, of sulphur, and 3 per cent, of paraffine, subjecting the mass to heat until the oil is vulcanized or the process of vulcanization begins, then shutting off the heat and allowing the process of vulcanization to continue until complete and the mass to cool, substantially as and in the manner described.”

¶13The examiner rejected claim 1 as containing no patentable matter, in view of the prior art, citing Simpson patent, No. 46,610, of February 28, 1865 — the process of manufacturing india rubber, etc., fi-om sulphur and linseed oil and other similar vegetable oils combined with gum. This rejection appellant acquiesced in. Original claim 2 was pronounced by the examiner to be in objectionable form, with the suggestion that appellant’s invention resided in the particular composition of the matter described, and that the claim should be amended to cover such a composition, in which the several ingredients should he distinctly enumerated. Thereupon appellant substituted present claim 1 for' original claim 2, having first at the requirement of the examiner stricken therefrom the words “or its equivalent,” immediately following the word, “paraffine.” The present claims were then allowed.

¶14The specification calls for a process in which the patentee mixes in a. heating pot a quantity of com oil, some “flowers of sulphur” and a small quantity of paraffine wax, substantially in the proportion of corn oil 76 percent., sulphur 21 per cent., and paraffine wax 3 per cent. The sulphur and paraffine should be added before the oil reaches 300°. “I have found in practice,” reads the specification, “that the small quantity of paraffine wax used is better adapted to produce the desired result than any other like substance, though- a substantially- equally good result may be obtained by equivalent forms of wax, and I do not limit myself to paraffine alone for this purpose, the object being to prevent the mass from becoming sticky and impracticable to handle. With paraffine or equivalent substances used for that purpose, the rubber substance will not stick to the rolls when it is being ground or worked in practice.”

¶15The alleged infringement consists of a process in which only corn oil and sulphur, with heat, are used. The ingredient of the patented product used to prevent stickiness — paraffine—is omitted by appellee. Talcum is however used, but not as an ingredient. It is merely sprinkled upon the receptacles holding the product.'

¶16In 1899 appellant was given access to the factory of appellee’s predecessor, to ascertain appellee’s methods of manufacturing its rubber substitute. Appellant took no step to restrain appellee until about the time this suit was begun, in January, 1911, or 12 years after learning appellee’s process. In the meantime the alleged infringer had transferred its rights to the Corn Products Company and the latter to the appellee. All these companies manufactured the rubber substitute from corn oil extensively, without protest from appellant.

¶17Appellee contends that: (1) The patent is invalid for want of invention. (2) That no infringement is shown. (3) That the appellant was guilty of such laches as to bar any right to an accounting, even if infringement be shown.

¶18The District Court dismissed the bill for want of equity.

¶19Charles K. Offield, of Chicago, Ill., for appellant.

¶20Percival H. Truman, of Chicago, Ill., for appellee.

¶21Before KOHLSAAT, MACK, and EVANS, Circuit Judges.