ARKELL SAFETY BAG CO. v. SAFEPACK MILLS, 272 F. 1

BINQHAM, Circuit Judge. This is an appeal from a decree of the District Court for Massachusetts in an equity suit charging infringement of letters patent Nos. 790,021, 790,022, and 790,023, issued to James Arkell May 16, 1905, on applications filed December 21, 1901, July 17, 1903, and May 26, 1904, respectively.

The first patent is for a process for making stretchable crinkled paper from finished paper for wrapping or packing purposes; the second is for a machine for making such paper according to the process of the first patent; and the third is for a process and a machine for making paper of this character, in which the extent of the crinkling is regulated to allow the required amount of stretch. The patents are owned by the plaintiff. The defenses are anticipation, noninvention, and non-infringement.

The process of No. 790,021 consists in taking suitable finished paper, moistening or saturating it in one or two baths, smoothing or stretching it laterally, pressing it against a smooth cylinder, so that it will closely adhere thereto, bringing it in contact with an obstruction, known as a doctor blade, which crinkles the paper, and then removing and drying the paper; the crinkles rendering it stretchable.

The machine of No. 790,022 for carrying out tlie process of 790,-021 consists in substance of a tank 9, in which rotates a drum 10, curved cross-rods 63 and 65 to laterally stretch the paper, a smooth roll partly submerged in tank 17, a press roll %7, a ¿octor blade 36, and a carrier J9 to, receive the crinkled paper as it comes from the doctor and carry it away to the driers.

In No. 790,023 the process and machine are in all substantial particulars the same as the process and machine of the patents just spoken of, with the single exception that the carrier is so constructed that its speed may be regulated with reference to the' speed of the roll and the discharge of the crinkled paper at the doctor as to take out a definite portion of stretch in the crinkled paper and leave in it the amount desired. In No. 790,021 the claims in issue are Nos. 1, 2, 10, 19, 20, 21,. 22, and 23. Claims 21, 22, and 23 are all that we need refer to in the discussion of this patent.

They read as follows: “21. Tlie process of making stretchable paper, such as is suitable for wrapping or packing purposes, which consists in passing finished paper through a saturating bath; depositing it in a wet state upon a smooth-surfaced roller; thereafter squeezing it in close adherence to said roller; crowding the wet paper back against itself, while adhering to said roller, and thereby forming crinkles in the paper; and drying the paper thus crinkled, and rendering the crinkles permanent and the paper stretchable. “22.

The process of making stretchable paper, such as is suitable for wrapping or packing purposes, which consists in passing iinished paper through a saturating bath; depositing it in a wet state upon a smooth-surfaced roller ; thereafter squeezing it in close adherence to said roller; crowding the wet paper back against itself, while adhering to said roller, and thereby forming crinkles in the paper; and drying the paper thus crinkled, and rendering the crinkles permanent and the paper stretchable; the wet paper being extended laterally before it is crinkled. “23.

The process of making stretchable paper, such as is suitable for wrapping or packing purposes, which consists in wetting finished paper; depositing it in a wet state upon a smooth-surfaced roller; wetting the paper again while on said roller; thereafter squeezing it in close adherence to said roller; crowding the wet paper back against itself while adhering to said roller, and thereby forming crinkles in the paper; and drying the paper thus crinkled and rendering the crinkles permanent and the paper stretchable.” There are five steps called for by claim 21:

(1) Wetting the finished paper, by passing it through a saturating bath; (2) depositing it in a wet state upon a smooth-surfaced roller; (3) thereafter squeezing it in close adherence to the roller; (4) crowding the paper back against itself, while adhering to the roll, causing the crinkles in the paper; and (5) drying the paper thus crinkled. In claim 22 there is an additional step — that of extending laterally the wet paper before it is crinkled. In claim 23 the lateral extension is omitted, but, as an additional step to claim 21, provision is made for rewetting the paper while it is on the roller.

In patent No. 790,022 the claims in issue are Nos. 5, 7, 11, 15, 17, 20, 24, 35, 38, and 39. The only claims that we need to quote are 7, 11, and 35. They read as follows: “7.

In a machine for making stretchable crinkled paper, the combination of a smooth-faced receiving-roll adapted to have the paper deposited thereon; a doctor associated with said roll, and against which the paper is carried on said roll for crinkling; a receptacle containing a bath through which the paper passes before it reaches the receiving-roll; and a pressure roll arranged to press the wet paper in close adherence to the receiving' roll." “11.

In a machine for making stretchable crinkled paper, the combination of a smooth-faced receiving roll adapted to have the paper deposited thereon; a doctor associated with said roll, and against which the paper is carried on said roll for crinkling; a receptacle containing a bath through which the paper passes before it reaches the receiving roll; a pressure roll arranged to press the wet paper in close adherence to the receiving roll; and means for extending the paper laterally after it has been wet and before it reaches the doctor.” “35.

In a machine for making stretchable ciinkled paper, the combination of a smooth-faced receiving roll adapted to have the paper deposited thereon; a doctor associated with said roll, and against which the paper is carried on said roll for crinkling; means for wetting the paper while on the receiving roll; means for wetting the paper before it roaches the receiving roll; and a pressure roll arranged to press the wet paper in close adherence to the receiving roll.” The dements of claim 7 are:

(1) A smooth-faced receiving roll; (2) a doctor associated with said roll, and against which the paper is carried on the roll for crinkling; (3) a receptacle containing a bath through which the paper passes before reaching the receiving roll; and (4) a pressure roll to press the paper against the receiving roll. Claim II contains, in addition to the four elements of claim 7, means for extending the paper laterally after it has been wet and before it reaches the doctor; and claim 35 contains, in addition to the elements of claim 7, means for rewetting the paper while on the receiving roll.

By claim 15 the pressure roll is made adjustable; by claim 20 the doctor is provided with means for varying its pressure; and by claims 38 and 39 means for drying the paper were added. In patent No. 790,023 the process claims in issue are Nos. 12, 15, 16, 20, and «22, and the machine claims are 29, 30, and 33. We need only refer to claims 16 and 33, which read as follows: “16.

The process of making stretchable crinkled paper, which consists in pressing wet finished paper in close adherence to a roll, then crowding the wet paper while adhering to said roll back against itself to crinkle the paper, then delivering the wet crinkled paper to a carrier which travels at a greater speed than the paper is delivered from the crinkling roll, whereby the wet crinkled paper is stretched and the crinkles reduced, and drying the paper so as to make the reduced crinkles permanent and render the paper stretchable.” “S3.

In an apparatus for making stretchable crinkled paper, the combination of a roll to receive the paper; means for wetting the .paper; means for crowding the wet paper back against itself while adhering to said roll to crinkle it; a carrier for the paper arranged to travel at a greater speed than the wet crinkled paper is delivered from the crinkling roll so as to reduce the crinkles; and means for drying the paper to make the reduced crinkles permanent and render the paper stretchable.” The steps contained in the process set out in claim 16 are; .

(1) Pressing wet finished paper in close adherence to a roll; (2) crowding the paper while adhering to the roll back against itself to crinkle it; (3) then delivering the crinkled paper to a carrier, which stretches it by traveling at a greater speed than the paper is delivered from the crinkling roll; and (4) drying the paper. The elements in claim 33 are:

(1) A roll to receive the paper; (2) means for wetting the paper; (3) means for crowding the wet paper back against itself while on the roll to crinkle it; (4) a carrier arranged to travel at a greater speed than the crinkled paper is delivered from the roll, so as to reduce the crinkles; and (5) means for drying the paper.

In the court below it was held that the process of making crinkled stretchable paper, from moist paper in process of manufacture, by striking it while on a roll against a doctor, was old (Lysle, 414,5.57, 1889; English patent to Lewer & Edwards, No. 1927 of 1894) ; that the process of making such paper from heavy finished paper when wet was old and well known as early as December, 1895, as shown in the patent granted to Bartlett Arkell, No. 565,587, of August 11, 1896, applied for December 5, 1895; and that the process and apparatus for the manufacture of crinkled paper from thin finished paper when wet was also shown in tire patent granted to Bainbridge, No. 548,108, October 15, 1895; that, although Bainbridge did not pass his thin finished paper through a saturating bath before it reached the crinkling roll, he nevertheless provided a tank Ly means of which the finished paper was indirectly wel through the medium of a roll which passed through the bath and carried the moisture to the paper, the roll also operating to squeeze or press the moistened paper against the crinkling roll just before it reached the doctor; that the fact that the plaintiff passed its heavy finished paper directly through the bath before it reached the crinkling roll in both the process and apparatus patents, and in Some of the claims provided for rewetting the paper at the criulding roll, did not disclose features involving invention, but only the application of obvious steps and ordinary mechanical skill as applied to methods and devices well understood; that the step or practice of laterally extending the paper sheet and the means employed of a curved rod or roll for carrying it out were old in the paper-making art, and their application in the plaintiff’s process and machine likewise did not involve invention.

Letters patent No. 16,430, to Blake, January 20, 1857, and No. 37,790, to Schuyler, February 24, 1863. Means for adjusting the pressure roll (Bainbridge, No. 548,108; Schuyler, No. 37,790), for varying the pressure of the doctor (Fewer & Edwards, No. 1,927), and for drying the paper (Bainbridge, Fysle, and Fewer & Edwards) were regarded as of the same character.

Having given due consideration to the arguments of counsel and the proofs submitted, we are of the opinion that the conclusion reached by the court below in dismissing the bill as to patents Nos. 790,021 and 790,022 was right, and for the reasons stated, without regard to the alleged prior use of Allen. Claims 16 and 33 of patent No. 790,023 remain to be considered.

These claims are for a process and a machine which involve the stretching and reduction of the crinkles in the paper after leaving the doctor and during its transfer to the drier, due to the movement of the conveyor which travels at a greater speed than the paper is delivered from the crinkling roll and the doctor. It will be seen that these are broad, claims, and that the step of reducing the stretch of the paper and the means for accomplishing it are not specifically limited to reducing the stretch a predetermined amount.

The specification of the patent, however, states that— “the invention seeks to produce stretchable crinkled paper in which the extent of the crinkling is reliably regulated with reference to the particular work which the crinkles are required to perform when the paper is in active use,” and that “the wheels (>% and GS are removable, so that wheels of varying sizes may be substituted for either or both.

This enables the ratio of the diameter of these wheels to be varied as desired, so as to regulate the amount of crinkle in the paper as finally finished.” The plaintiff contends that, inasmuch as the specification discloses that the invention resides in reducing the stretch in the crinkled paper a predetermined amount, the claims should be read as limited in that respect to the disclosure of the specification.

If we regard them as thus limited, the question presented is whether the claims involve invention or are infringed; it being conceded that the prior art does not disclose a process or device that anticipates them. In the court below it was held that the claims did not involve invention, and, if they did, were not infringed.

In the English patent to Fewer & Edwards, No. 1,927 of 1894, means are distlosed for carrying the crinkled paper from the doctor to the drier; and the rolls by which this is accomplished are so arranged with reference to one another as not to reduce the crinkles in the paper; and it is claimed that the speed of the drying roll D 1 is so regulated and reduced with reference to the speed of the receiving roll P1 as not to lessen the stretch in the paper. But we are unable to determine from the specification and drawings that the speed of D1 is so reduced and regulated.

In Bainbridge, No. 548,108, the crinkled paper is taken from the doctor to the drier by means of a carrier, and in the specification it says that the crinkled paper “falls directly upon the traveling receiver and conveyer P, and is carried away to the drier * * * without disturbing or pulling out the crinldes formed therein, * * * ” and that “there is no strain upon the paper which would have a tendency to destroy the crinkled effect in any degree.” This would indicate that Bainbridge had conceived the idea of regulating the speed of the' carrier with reference to the speed of the crinkling roll, so that the crinkled paper would be moved on the carrier at the same speed it came off the doctor, and thus avoid any perceptible stretch.

In the patent to Eysle, No. 414,557, the crinkled paper is carried from the doctor over the roll g to the drier roll B; the drier roll and the roll g being operated by power; and in the specification it is stated that— i • “After passing over the edge of the doctor plate the web [crinkled paper] may pass directly to the guide-roll g, the speed of the latter and of the drying cylinder B being so regulated that it will not draw the web forward any faster than it is crowded over the edge of the plate [the doctor], so that there will be no tendency to smooth or straighten out the wrinkles formed in the web by reason of the crowding to which it has been subjected in its endeavor 'to pass the edge of the plate.” This patent, as well as the one to Bainbridge, discloses the idea of regulating and reducing the speed of the transfer means with reference to that of the crinkling roll and the paper as it comes off the doctor, so as to maintain the stretch or crinkles in the crinkled paper; the "movement of the paper as it comes off the doctor being at a less speed than that at which it was carried when on. the crinlding roll.

It being an obvious thing and well known that the stretch in the crinkled paper as discharged from the doctor would be reduced if the transfer means with the paper upon it were made to travel faster than the speed at which the paper was moving when discharged from the doctor, and it being disclosed in the prior art that the amount of stretch put into the crinkled paper at the doctor could be maintained during its transfer by giving the transfer means a given ratio of speed with reference to the speed of the crinkling roll and of the discharged paper, we think that it did not involve invention to change the ratio of speed between the transfer means and the crinkling roll by increasing the speed of the transfer means a fixed percentage so as to take out a given percentage of the-stretch in the paper, either as a step in the process or an element in the machine, and that the court below was right in dismissing the bill as to patent No. 790,023.

The decree of the District Court is affirmed, ’with costs to the ap-pellee.