Appeal from the District Court of the United States for the Western District of Wisconsin; Patrick T. Stone, Judge.
Before Sparks and Alschuler, Circuit Judges, and Briggle, District Judge. Sparks, Circuit Judge.
Appellant sued the Nekoosa-Edwards Paper Company for infringement of claims 1 to 12, inclusive, of Seaborne Letters Patent, No. 1,517,018. The Nekoosa Company was the customer of appellee B. F. Goodrich Rubber Company. That company intervened and assumed the defense, which was non-infringement, and invalidity on account of lack of invention. The District Court sustained both defenses and dismissed the bill, and from that decree this appeal is prosecuted.
The patent was issued November 25, 1924, upon an application filed November 24, 1923, and all rights thereunder were assigned to American Lakes Paper Company. The patent is for a "Paper Making Machine," but the alleged invention is confined to watermarking rolls for such machines. The specified object was "to provide improved means whereby a web of paper as it passes through a paper making machine may be impressed with designs or marks commonly termed 'watermarks' which serve to identify or give distinctive character to the paper."
As illustrative of the disclosure, Seaborne in his specification, and appellant in its brief, set forth with some particularity the prior state of the art. The impression of "watermarks" for two purposes is emphasized: (1) To identify bond or other writing paper in such a manner and at such stage of its manufacture that the "identification marks" will not be so distinct as to interfere with writing or typing thereon, (2) to give distinctive character to the paper, or "decorative marking," commonly used in wrapping paper, in such manner and at such stage in its manufacture, that the design is impressed in the surface of the finished paper and is clearly visible at all times. In the prior art the marking rolls for those purposes commonly consisted of two distinct types, which, together with their alleged disadvantages, the patentee and appellant set forth.
The roll which in the prior art was commonly used for "decorative marking" is typified throughout the record and argument by United States Patent No. 733,709, issued to Farwell, July 14, 1903. Such roll was ordinarily used in conjunction with the drying cylinder of the machine and was provided with a metal design-bearing surface which was "crowned" to compensate for the springing of the roll, and was wrapped with muslin through which the design was impressed upon the paper. As a disadvantage of this type, appellant notes the expense and delay occasioned by the frequency with which the muslin wrappings had to be replaced.
The other type of marking roll formerly used in machines to which the alleged invention relates is typified in the record and argument by United States Reissue Patent No. 12,218, to Behrend as of May 10, 1904, In his specification, Seaborne said that this type "comprises one or more rolls upon the peripheries of which are secured marking types or plates of resilient material * * * made as narrow, endless bands of soft rubber, the types or impression surfaces upon the bands consists of harder rubber vulcanized to the soft rubber bands which afford a cushion for the impression types or surfaces. In practice this * * * marking roll is found objectionable for a variety of reasons, the most serious one of which is that it is impossible to vulcanize the soft rubber on to the surface of the metal roll or otherwise rigidly and satisfactorily attach it thereto, so that the soft rubber base or cushion will not slip or creep slightly under the strain or force necessary to effect the impression to the paper web. Such creeping or slipping of the soft rubber that forms a cushion for the harder rubber type or impression surfaces speedily destroys the accuracy of the impressions upon the paper web, and also hastens the wearing out of the marking types or surfaces and of the cushions carrying the same."
Another objection urged by patentee to this type was the inequality of impression upon the paper web when marking very wide webs, caused by the tendency of the long roll to spring at its center. Patentee further noted the "mechanical limitations to the width of rubber bands that can be made and adapted for slipping over the ends of the rolls, and any inequality of pressure at different points of the roll must necessarily cause such bands to unequally slip or creep and thus destroy the uniformity of the impressions produced thereby."
Claims 4, 8 and 12 are typical of the several groups of claims and are set forth in the margin.*fn1
It was claimed by Seaborne, and is now urged by appellant, that all the objections to Farwell and Behrend, and their types, as hereinbefore referred to were met and fully overcome by the patent in suit. We insert Seaborne's Figure 4: 
H is a metal cyclinder which is covered with a layer of hard rubber, h, vulcanized thereon and forming preferably a continuous sleeve or tube around the surface of H. Over h and vulcanized thereto is another layer or sleeve of soft rubber, h*fn1, and over the layer of soft rubber, h*fn1, and vulcanized thereto, is an outer layer or sleeve of hard rubber, h n.2 [Footnote Omitted] The soft rubber layer, h*fn1, affords a cushion for the outer layer, h n.2 [Footnote Omitted], of hard rubber in or on the surface of which is to be formed the designs, type, or the like, whereby the marking or ornamenting of the paper web will be effected. Any designs which are desired to be impressed upon the surface of the paper web will be ground, formed or cut upon the outer surface of h n.2 [Footnote Omitted]. When it is desired to modify or soften the effect of the marking roll and to give the impressions an appearance resembling a fabric weave, the outer surface of h n.2 [Footnote Omitted] may be covered with one or more layers of textile fabric, such as muslin or the like, K. This, after being wrapped around the roll, will have its ends suitably fastened to prevent it from slipping or working loose. It may be in tubular form so as to be slipped over the end of the roll and shrunk thereon. By providing the surface of H with a layer of hard rubber vulcanized thereto, all possibility of any slipping or creeping occurring between H and h is avoided, and h affords a hard rubber base to which the soft rubber layer, h*fn1, of the cover may be securely vulcanized.
The patent further describes a modification of the alleged invention in which the marking surface, instead of being an endless sleeve of hard rubber, consists of a number of spaced individual, hard rubber marking plates, each of which is backed by cushion rubber. This modification was subsequently eliminated by disclaimer, which will be discussed later. We mention it at this time in order to get a complete picture of patentee's disclosure.
A consideration of the prior art is quite convincing that the patent disclosure here must be confined to the particular means for anchoring the cushion layer to the metal core.
The location of the Seaborne roll was not new. His preferred location was adjacent the drying cylinder, as in Farwell, but he permitted a variation in location so as to permit cooperation with any other roll, as in Behrend. It was not novel to crown a very long roll in order to compensate for springing; nor to grind or cut or form the designs in or on the outer surface of h n.2 [Footnote Omitted]; nor to wrap the marking roll with muslin if desired, for these features were all disclosed by Farwell. The hard rubber design-bearing surface backed by a cushion of soft rubber was likewise disclosed by Behrend, and the most serious objection urged to Behrend by Seaborne was the impossibility of vulcanizing the soft rubber cushion to the metal core.It was the effect of this supposed impossibility which he claimed to have circumvented by his disclosure. His ...