Opinion
Munson H. Lane, Washington, D.C., McCoy, Greene & TeGrotenhuis, Cleveland, Ohio, Frank W. Knowlton, Frank J. Earnheart, Akron, Ohio, for plaintiffs.
Clarence W. Moore, Sol., U.S. Patent Office, Washington, D.C., for defendant.
JACKSON, Judge.
This civil action was brought pursuant to the provisions of 35 U.S.C. § 145 in which the plaintiffs seek to have this Court authorize the defendant, Commissioner of Patents, to grant a patent based upon rejected composition claims 1 and 9 through 12, inclusive, of application Serial No. 366,397 filed July 6, 1953, entitled 'Stable Dispersible Accelerator Masterbatch'. The corporate plaintiff is the record assignee of the application.
Process claims 13 to 16 were deemed allowable by the Board of Appeals in its decision on a request for reconsideration.
Involved claims 11 and 12 depend upon claim 10, and, therefore, stand or fall with that claim.
Claim 9 has all the limitations of claim 1 with the addition that the ratio of polymer to accelerator is sufficiently high to provide a continuous phase of rubbery material.
Claim 10 is somewhat broader than claim 1 in that the relative proportions of polymer and polysulfide in the composition is not stated, but it is stated that the rubbery polymer constitutes at least 25% Of the total weight of the composition forming a continuous phase of rubber.
With respect to the prior art, in the opinion of the Court, consideration of claim 1 is sufficient to determine the issue involved. Claim 1 reads as follows:
'An accelerator masterbatch for addition to a rubber during the compounding of the same consisting essentially of 25 to 75 parts by weight of an unmasticated, unvulcanized rubbery polyment of a conjugated diolefinic compound of less than 8 aliphatic carbon atoms and 75 to 25 parts of at least one water insoluble solid organic thiuram polysulfide accelerator, the accelerator being in the form of the particles as deposited from aqueous slurry, the polymer and the accelerator being free of the interblending had by mastication of the polymer in contact with the accelerator and by melting of the accelerator in contact with the polymer, whereby said masterbatch is characterized by being stable for extended periods of storage at normal temperatures.'
The rejection of the involved claims was made on the basis of the prior art patent to Glenn, No. 2,640,088, issued May 26, 1953, entitled 'Vulcanization Accelerators'. In that patent it is stated that the use of solid accelerators of the polysulfide type-- tetramethyl-thiuram disulfide-- with rubber has some disadvantages, and that those disadvantages might be overcome by forming the accelerator into pellets by adding to the powdered accelerator a small amount of binder comprising the rubber latex solids and water to make a wet paste for extrusion through a screen or die. The quantity of the latex solids used can very from 0.05 to 3.5 parts per 100 parts of accelerator powder, though up to 5% Or more is suggested if a free-flowing pellet is not undesirable.
The patentee indicates that use of a hardener up to 5 parts per 100 parts of accelerator would effectively eliminate lumping of the pellets so that it would possess a free-flowing property, and that the use of more than 3.5 parts of latex solids is said to give the pellet a 'rubbery feel'.
Plaintiff asserts that the critical feature of the invention and the principle issue here is whether a composition containing polysulfide accelerator and rubber, with the rubber in sufficient amount to make a continuous phase of rubber, sufficiently distinguishes over the reference disclosure as to be unobvious and, therefore, patentable.
It is not denied nor challenged by counsel for plaintiffs that in the Board of Appeals' finding with respect to 'continuous phase' there is nothing in the disclosure to suggest that any amount of rubber is needed to give that property to the mixture. In fact, the disclosure states that the proportions 'may vary widely'. Furthermore, the use of the term 'masterbatch' appearing in the application does not require that the rubber be in 'continuous phase' as was stated by plaintiffs' expert witness. Therefore, in the opinion of the Court, the contention that 'the critical feature' includes the use of rubber in quantity (over 25%) sufficient to form a continuous phase is not supported by the disclosure of the application. It may be observed that claim 1 does not contain that limitation. It is to be noted that claim 1 defines a mixture of accelerator and rubbery polymer in stated ranges, the accelerator being in the form of particles as deposited from and aqueous slurry. In the opinion of the Court that composition is old in the prior art with respect to the specific materials. The limitations of claim 1 would be fully met by the reference except that in the claim 25 parts of rubber are to be used in making the mixture and that is not specifically set out in Glenn.
The specific disclosure of the reference patent speaks of 3.5 parts of latex solids per 100 parts of the accelerator, but also, it is suggested in the reference that more rubber may be used with the pellets to give them a rubbery feel even when a, hardening agent is added. Plaintiffs' witness said that he did not know how much rubber would have to be used to provide a coagulum having a rubbery feel.
Because the patent reference mentions the characteristic of a rubbery feel when more than 3.5 parts of rubber are used, it seems to the Court that the plaintiffs should have made a more definite showing, comparing and relating 'rubbery feel' with percentages of rubber in order to meet their burden of proof. Blanchard v. Ooms, 80 App.D.C. 400, 153 F.2d 651. The Court noticed that in its rejection the Board of Appeals based its reasoning on the composition before it was extruded as set out in the reference.
The contention of criticality with respect to ratio of the parts, in the opinion of the Court, is unsupported by plaintiffs' proofs. The reference suggests that more rubber may be used than that specifically mentioned, and because of that fact the public should be free to utilize the suggestion. It would be obvious to employ changes in the amount of rubber.
In the opinion of the Court, claim 1 is unpatentable over the prior art.
The Court is of the opinion that the limitation set at 25% Of rubber is arbitrary, not critical, and without patentable significance. The basic composition is old and the reference suggests variations in the amounts of the several ingredients used or in their relative proportions. These suggestions are well within the skill of the art, the only main difference being that of degree.
In view of the record herein, together with a careful consideration of the briefs filed by counsel for the parties, the Court holds that the proof adduced here does not convince it of clear error on the part of the Board of Appeals. Therefore, the patentability of the involved claims should be denied.
In view of what has been said hereinbefore, the Court finds for the defendant, and concludes that the Complaint should be dismissed as to all of the involved claims.