170 



THE INDIA RUBBER WORLD 



[JANIARY 1, 1916. 



The Marks Reclaiming Patent Sustained. 



THE Philadelphia Rubber Works Co.. Philadelphia, Penn- 

 sylvania, announces that the United States Circuit Court 

 of Appeals has overruled the decision of the District Court 

 in Ohio and affirmed the decision of the District Court in Buf- 

 falo, sustaining the validity of the Marks or "Alkali" patent, 

 for rubber reclaiming. The importance of the case renders the 

 decision of Judge Lacombe of great interest. 



The claim upon which the patent (No. 635,141) stands 

 reads as follows : 



The described process for devulcanizing rubber waste which 

 consists in submerging the finely ground rubber waste m a 

 dilute alkaline solution in a sealed vessel, in heatmg the con- 

 tents of the vessel to a temperature of 344 degrees F. more 

 or less substantially as specified, and in maintaining said 

 temperature tor 24 hours more or less substantially as 

 specified. 



Reviewing this and the decisions of the district courts. 

 Judge Lacombe says: 



There is a mass of testimony in the record, dealing tech- 

 nically and scientifically with the theories as to just how the 

 solution of the patent acts upon the rubber scrap when the 

 mixture is heated as prescribed in the patent. It is interesting, 

 perhaps, but of no especial importance since it is in no way 

 helpful towards finding the answer to the simple question: 

 what did the patentee disclose? He advanced no theory 

 in his specifications; it was not necessary for him to do so. 

 All that the law required of him was a plain statement of his 

 process set forth in sufficient detail to be understood by a 

 person skilled in the art. If the result of his process is a 

 product which he describes as "devulcanized rubber having 

 substantially the characteristics of fresh rubber and capable 

 of being used in like manner and for like purpose"; and if 

 it further appears that this is the first time that this par- 

 ticular process was disclosed to the world. Marks was entitled 

 to his patent. Whether he had some theory when he applied 

 or has one now. whether the experts have conflicting theories 

 or not are matters of no importance. 



The description of the process is couched in plain and 

 simple language. Finely ground rubber waste is put into a 

 vessel. This vessel itself is located in an outer receptacle 

 capable of containing it and of being tightly closed. No 

 special shape is prescribed for either the vessel or receptacle, 

 they may be cylindrical or square, high or squat; it is suffi- 

 cient that one shall contain the other with a space to spare 

 between the two. Upon the rubber waste that has been put 

 into the inner vessel there is poured a dilute alkaline solu- 

 tion, a three per cent solution of caustic soda being preferred. 

 The patentee does not state the relative proportions of waste 

 and solution, but he does give very clear and definite instruc- 

 tions as to the quantity of solution which shall be used. 

 There is to be enough of the solution to permeate the finely 

 ground rubber waste and completely submerge it. The inner 

 vessel is then sealed up to prevent evaporation of the solu- 

 tion and steam is let into the outer receptacle under a pressure 

 of 125 pounds, more or less, equivalent to a temperature of 

 344 degrees F. This steam-pressure is maintained for the 

 time necessary — say 20 hours. 



There certainly seems to be no obscurity about these direc- 

 tions. The rubber waste is to be finely ground; the patentee 

 does not say through what size mesh its particles should pass. 

 but it might be supposed that a person skilled in the art 

 would know what would be the range of finely ground waste; 

 and the art of reclaiming rubber from waste (or trying to do 

 so) was an old one. The solution is stated to be "a dilute 

 alkaline solution" — 3 per cent of caustic soda is given as 

 preferred — but it might be supposed that one skilled in the 

 art would know within what limits he might depart from 

 3 per cent and still have "a dilute alkaline solution." Pre- 

 sumably all rubber waste is not absolutely identical; some 

 may require a stronger solution than others, and it might be 

 supposed that a person skilled in the art would know how 

 much he should vary the strength of the dilute solution in 

 order to obtain results with the kind of finely ground waste 

 he vi-as treating. Certainly the patentee's statement as to 



temperature and period of steam application is ijuite specific. 

 Examination of the record indicates that the suppositions 

 above postulated as to what one skilled in the art would 

 know about "finely ground rubber waste" and "a dilute 

 alkaline solution" are fully warranted. There is no vagueness 

 about the patentee's disclosure of his process. 



Does it accomplish its intended result? Out of the mixture 

 of waste and solution does there, when the process is com- 

 plete, remain "devulcanized rubber having substantially the 

 characteristics of fresh rubber and capable of being used in 

 like manner and for like purposes?" 



Defendant put his expert witness on the stand to prove 

 a series of experiments he had made, following the directions 

 of the patent and not producing the result which the patentee 

 claimed. This expert had never had any experience in treat- 

 ing rubber; practically he was not skilled in the art. It is 

 not infrequent in patent causes to find that experiments 

 conducted to show that a patent lacks utility turn out as it 

 was expected they would. Plaintiff calls attention to the 

 statement of a witness who had had large experience in treat- 

 ing rubber, that by following the Marks patent exactly he 

 had produced a fair product. This defense — inoperativeness — 

 is usually determined by the fate of another defense — infringe- 

 ment. If a patented process fails to produce a fair result, it 

 will not be used commercially. Conversely if a defendant is 

 found to use the patented process commercially, it will be 

 presumed that he gets a fair product by its use; and it will 

 take more than a series of laboratory experiments to show 

 that no such product results. Reaching as we have the con- 

 clusion hereinafter expressed as to infringement, we are satis- 

 fied that the patent sufficiently discloses a process which 

 enables a person skilled in the art to produce tlie result which 

 the patentee indicates. What is the showing of tlie prior art? 

 Hall No. 19.172 states that ground rubber waste should be 

 submitted to the "operation of boiling water in caldrons, 

 kettles, or tanks of any description." He says that lime- 

 water or alum can be used; but the method of using is mani- 

 festly remote from Marks. Hall No. 22.217 submits the 

 ground waste "in a close or proper vessel to the action of 

 steam direct upon the rubber, or in connection with water, 

 for the space of 48 hours." This is not the Marks process. 

 Hall 25.160 provides for placing the ground waste "in a close 

 steam boiler or other suitable vessel, into which steam is 

 conducted through a steam pipe. In its passage through the 

 pipe the steam is superheated." This also is not the Marks 

 process. It would be a waste of time to enumerate all the 

 prior patents in the record, some suggesting one element, 

 some another of Marks' process. We niav proceed at once 

 to the patent to Mitchell No. 395,987. January 8. 1889, which 

 both Judge Clarke and Judge Hazel concur in holding comes 

 nearer than any other to suggesting the process of the patent 

 in suit. The discussion of this patent in their several opinions 

 may be read; they reached opposite conclusions. Judge Clarke 

 finds that it "comes very close to being, if indeed it is not, a 

 clear anticipation of the process of the Marks patent." Judge 

 Hazel finds that Mitchell's process "defiberized rubber "waste 

 by the use of acid and pressure and then devulcanized it by 

 an additional step after washing out the caustic soda"; while 

 Marks, on the other hand, "defiberized, desulphurized and de- 

 vulcanized waste rubber by a single operation and in so doing 

 achieved a different result from Mitchell." After a careful 

 study of the two patents in the light of the discussion of 

 them by experts and counsel, we entirely concur with Judge 

 Hazel's conclusions. This Mitchell patent cannot be trans- 

 formed from a two-step process to a one-step process merely 

 because in an English patent (20,289 of 1889) Mitchell recom- 

 mended a one-step process to be carried out bv the use of 

 other agents than those specified in Mitchell 395.987. and in 

 Marks. In this English patent we find recommendations to 

 use iron in the form of borings or filings, or even larger 

 pieces, turpentine, bisulphide of carbon and naphtha. The 

 following excerpts from the Mitchell patent 395,987 indicate 

 to us quite clearly that Judge Hazel's construction was a 

 correct one. .After describing a process for removing fibre 

 and mineral matter, Mitchell says: 



Where the waste is unvulcanized this ends the proc- 

 ess. * * * When, however, it is desired to devul- 

 canize the rubber, I subject it to further treatment, as 

 follows: Immediately after washing out the mud and 



