Appeal from the District Court of the United States for the Southern District of Indiana, Indianapolis Division.
Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.
ALSCHULER, Circuit Judge.
The complaint charged infringment of United States patents to Rodman, No. 1,279,160, 1918, and No. 1,372,832, 1921. The answer alleged invalidity of the claims sued on, and denied infringment. The District Court found that the claims were invalid and not infringed by appellees. The appeal challenges the decree with respect only to patent No. 1,279,160.
The patent is in the art of case hardening steel by the dry pack process, wherein the steel parts to be case hardened are packed and sealed with carbonaceous and energizing materials in a pot or container which is placed in a furnace and heat applied to raise the temperature within the container to a predetermined degree, whereby a gas is formed which penetrates a short distance through the surface of the metal objects, causing them to be carbonized, and upon proper cooling rendering the surface extremely hard and highly resistant to frictional wear. The object of the process is to harden the surfaces of machine parts most subject to wear, such as gears and cogs and bearings generally. Its advantage over carbonizing and hardening the entire object is that, by leaving the inner portion soft and tough, the tendency to brittleness of the object is much minimized.
Case hardening is a very old art, having been quite constantly practiced for about two centuries. The patent describes a carbonizing material having small granular centers or bases relatively inert, each coated or covered by a tacky mixture containing the active carburizing and energizing agents. The resultant product for which patentable advance is claimed is described in the claims in issue, set forth in the margin.*fn*
In the briefs are considered many propositions, only a few of which we deem essential to the disposition of the appeal. The main controversy is over the validity of the claims upon the prior art. The patent specification describes the composition and manner of producing one form of practice under the patent, and this is the only disclosure of the actual ingredients employed or manner of practicing the alleged invention. But neither that product nor the process of producing it is reserved in any of the claims in issue, nor does it appear that the particular process or product thus described has ever been used by appellees, nor by any one else.
It is not claimed in the practicing of the patent new materials are employed, nor that an advanced or more perfect result is attained under its teachings. As to this appellant says in its brief: "The invention is not predicated on the use of any specific ingredients, or proportions of specific ingredients, as will appear. And it does not purport to provide a carburizing agent whose activity is greater than that of all prior carburizers. On the contrary, it aims chiefly to provide carburizing material which is physically improved by the mechanical arrangement of the invention, whereby substantial advantages flow both to the manufacturer and the user."
Keeping in mind that the patent in suit has to do only with structural arrangement, without any asserted advance over the prior art in ingredients or proportions, we find it specifies a relatively inactive base of preferably "ordinary metallurgical coke" screened between 1/4-inch and 1/8-inch openings, with which is mixed a binder of molasses, tar or other hydrocarbon substance. The carbonaceous grains are tumbled with the binder, and there is then added the mixed powdered substances containing the energizer, and the tumbling is continued until as much of the powdered substance as may be will have adhered to the binder, thus forming on the surface of the base a coating wherein the powdered energizing substance is embedded. The grains thus coated are then spread out for drying.
Examining the prior patent art, we limit ourselves to patents issued to Rodman. The record discloses twenty patents to Rodman or his assignees for case hardening materials, ten of them dated February 15, 1910, and the others at different times thereafter. It discloses also nine foreign patents thereon issued to him.
United States patent No. 949,442, February 15, 1910, shows much tending to indicate anticipation. The specification refers to the inventor's co-pending application wherein there was disclosed a case hardening material consisting of coke, and an energizing substance which, as will be seen from the patent granted thereon, specifies the use of a binder element having the energizer embedded therein. But in this patent the same binder element is described in the specification and some of the claims as having the function of protecting some of the ingredients against atmospheric and weather deterioration. But we are here interested in what is in fact disclosed, rather than in the stated purpose of the disclosure. Claim 1 is for the method of preventing deterioration in case hardening compounds consisting of carbonaceous and energizing substances by coating "the carbonaceous particles with a protecting substance carrying the energizing substance." Claim 2 is essentially the same and refers to a method of "coating one of the substances with a tacky weather-proof substance in which is embedded another substance." Claims 4, 5, and 6 are:
"4. Cementing material consisting of a mixture of carbonaceous material, an energizing substance and a tacky water proof substance, the energizing substance being embedded in the water proof substance.
"5. Cementing material consisting of a carbonaceous substance and a hydrocarbon protector ...