McCormick Waterproof Portland Cement Co. v. Medusa Concrete Waterproofing Co.

(after stating the facts as above). [1] A block of artificial stone, made from a mixture of Portland cement and sand or other calcareous matter, appears to be solid; but in it there are many microscopic pores or capillary tubes; and these constitute from 20 per cent, to 40 per cent, of the cubic contents. This characteristic of concrete was known for 40 years before Newberry filed his application in March, 1905. As concrete had long and increasingly been used in constructions that contact with water, as in reservoirs, aqueducts, tunnels, and the'like, the desirability of having concrete impervious to water had been constantly appreciated.

Men of high class — civil and mechanical engineers — had given much thought and devoted great effort to a solution of the problem. Numerous prior patents and publications, from 1863 to 1904, were introduced by appellants; but it will not be necessary to review more than two or three of them to illustrate the fact that none reached the goal, that none made any impress upon the practical art. This is so because a large volume of clear testimony establishes that, until the Newberry product was on the market and in successful use (starting *290in 1905 with a few thousand pounds and rising in 1911 to a million pounds a year), manufacturers and dealers in cement, contractors and builders of concrete structures, chemists, civil’ and mechanical engineers, had known of nothing that would produce impervious concrete. In 1903 the question for discussion before the American Society of Civil Engineers was: “Is it possible to make concrete which will be impervious to water? If so, what is the best method?” A paper was read, and a general discussion was participated in by a_ large number of civil engineers. And in 1904 “Some Notes of Cost of Waterproofing the Concrete Lining of Reservoirs” was published. Eive engineers contributed to this publication. The sum of the proceedings in those two years was to show that the competent men who were familiar with the literature of the subject and were also concerned with the practical art knew of no means that were more than halfway efficient.

Workers in the prior art for 40 years had been going along very natural lines. Holes in the concrete? Well, use finer particles of calcareous matter, put into the mixture a larger proportion of pure cement, and tamp or compress the mixture more firmly before it sets. But this, while substantially increasing the material and labor costs', only partially reduced the total space taken up by the “voids.” Why not stop up the pores by covering the surface of the concrete with a cement paint or mineral paint? But those surface applications were liable to scale or be broken off, and what was wanted was a concrete which in itself should be impervious to water. Why not impregnate the concrete as far as possible from the outside by applying a solution that will enter and stop up the pores? Or put into the mixture a substance that will fill the pores in the concrete as it is being worked into form? But these methods, only halfway efficient at best, furnished no practical answer to the problem. For, if you cannot have a concrete that is completely impervious, what ultimate good is accomplished by simply delaying for a time the ultimate water-soaking of the structure?

Specifically we need notice only the Sylvester process and the Lie-bold and Nieske patents. The Sylvester process “consists in applying a wash of a solution of soap, which is allowed to soak into the surface of the concrete, and is then followed by a wash of a solution of alum. The soap enters the voids of the concrete and is followed by the alum. Where these two unite the chemical action precipitates an insoluble compound, which fills the voids in the concreté and renders it impermeable.” That was the theory; but, because soluble as well as insoluble compounds were precipitated, and because the soluble compounds were leached out of the pores, the process never made the slightest impression upon the practical art. Liebold proposed applying to the cement before it is ground a mixture of Japanese vegetable wax, caustic alkali, and boiling water. This compound would contain glycer-' ine, and other products soluble in water, and would therefore permit the proposed filler to be substantially leached out of the pores. Nieske’s patent in 1892, which is the only portion of the prior art relied on by appellants in this court, proposed to add to cement about one-tenth in bulk of either aluminum acetate or aluminum palmitate. Aluminum acetate *291is soluble in water. Aluminum palmitate is insoluble; but no way is shown of producing it without having associated with it water-soluble substances; and there is no evidence that it has been or can be practically used. And when Nieske declared that aluminum acetate and aluminum palmitate might be used as equivalents in his compound, he certainly failed to show that the Newberry conception had evef- entered his mind.

Now, what was Newberry’s solution of the problem? He said: It is unnecessary to attempt to pack the voids with a filler, or to stop up the pores with a paint, if you will consider the physical law that causes the water to enter them. That law is capillary attraction. The walls of the capillary tubes are water-altractile, and sex.the water climbs up them. The.se capillary tubes may be disregarded, if their walls, instead of being water-attractilc, are made water-repellant. The insoluble lime salt of a fatty acid is a water-repellant. One per cent, of that insoluble salt, of course, cannot serve as a filler for the 20 per cent, to 40 per cent, of voids in the concrete; but it can so change the character of the walls of the capillary tubes that water will be repelled and the concrete will be permanently waterproof. Preferably the insoluble lime salt of a fatty acid should be pure, for so it is most thoroughly water-repellant. If it were adulterated with glycer-ine or other v/ater-attractile substances, the water-repellant power of the insoluble lime salt might he so far overcome that the primary water-attTactile quality of the walls of the capillary tubes would remain. in action; and therefore you must use an insoluble lime salt that is substantially free from water-attractile substances — that is, so far free that the water-repellant power of the insoluble lime salt will not he overcome.

This solution of the problem was not a haphazard achievement. Newberry, the patentee, was graduated in science at Columbia in 1878. In 1880 he received from the same University the degree of Doctor of Philosophy. He was a student of chemistry at the Universities of Berlin and Paris in 1880 and 1881. He was Professor of Chemistry at Cornell from 1882 to 1892. From that time on he occupied himself with the chemistry of cements and other industrial products. With an accurate knowledge of what had gone before, his own large vision and his independent investigation along an untried line led him to success. Plis patent is clear. Inexpert workers in concrete arc plainly told how to achieve the new result in the best way. And in the light of this record we believe he is to be credited with an invention of a very high order.

Against the finding of infringement the strongest insistence is that the patent affords no ground for relief unless the alleged infringer uses an insoluble lime salt of a fatty acid that is absolutely free from glycerine or other soluble substance. The specification and claims are not thus limited; but it is contended that the history of the application requires this restriction. When the application was originally filed, the specification did not include the phrase “substantially free from glycerine or other soluble substance” in the paragraph we have marked A, nor did the paragraph marked B appear therein; and *292Hie claims called for mixing with cement a small percentage of stearate of lime. The examiner, failing to comprehend the invention, rejected the claims on reference to the Fiebold process, stating that the amount of glycerine which would be produced thereby could not materially affect the result. Applicant then amended by adding to the claims the phrase “free from glycerine or other soluble substance”; and.the.examiner, still failing to appreciate Newberry’s achievement, maintained the same position, and stated that the denial of the presence of'a useless substance was not sufficient to carry the claims over the references. Thereupon applicant amended the specification by putting in the paragraphs marked A and B, and redrafted the claims in their present form. The amendments were accompanied by an argument which enabled the examiner to understand the true nature of the invention, and to realize the significance of the expressions “a small .percentage” and “substantially free from glycerine or other soluble substance”; and thereupon the ' application was promptly allowed. The significance of these quoted expressions,, in the light of the disclosures of the specifications, was' perfectly clear to those versed in the cement art.

[2] We perceive no limitation or disclaimer in the file wrapper. Arguments and explanations, and amendments to emphasize them, are not to be so construed. Goodyear Dental Vulcanite Co. v. Davis, 102 U. S. 222, 26 L. Ed. 149; Daylight Prism Co. v. Marcus Prism Co. (C. C.) 110 Fed. 980; Dodge Needle Co. v. Jones (C. C.) 153 Fed. 186.

On behalf of appellants a competent and reputable .chemist testified that he had analyzed appellants’ product and found glycerine therein. Three competent and reputable chemists testified for appel-lee that they had analyzed appellants’ product and that it was free from glycerine or other substance soluble in water. So the finding of infringement might well be affirmed, even if the Newberry patent required absolute freedom from soluble substances. But on appellants’ own showing we think it is clear that the patent, giving it its true scope and meaning, has been infringed. While Fiebold and others of the prior art showed an insoluble lime salt of a fatty acid, they showed at the same time the presence of glycerine and other soluble substances. Their compounds contained from 85 per cent, to 90 per cent, of stearate of lime and 10 per cent, to 15 per cent, of glycerine. These compounds were inefficient, because the percentage of water-at-tractile substance was so high that it counteracted the water-repellant substance. “Substantially free from glycerine or other soluble substance,” therefore, means that the insoluble lime salt of the fatty acid must have a purity of more than 90 per cent.; and the higher the degree of purity, the more efficient the compound. According to the analysis of appellants’ chemist their compound contained about 4 per cent, of glycerine. Appellants put into the record what they claim is the formula of their process of manufacture. One side asserts that the use of the stated ingredients would necessarily result in the presence of glycerine; the other contends that whatever glycerine might otherwise be produced is vaporized and disappears during the heating and dry*293ing processes of the manufacture. But it is unnecessary to enter into the contentions and differences of the chemists, for one fact alone is sufficient, in our judgment, to demonstrate infringement, and that fact is that appellants are putting forth a waterproofing compound that does the work, and does it confessedly on the water-repellant principle disclosed by Newberry, for appellants rely on the water-repellant power of “a small percentage” (less than 1 per cent.) of “stearate of lime.” Consequently it is manifest that appellants’ compound is “substantially free from glycerine or other soluble substance”; that is, if soluble substances are present at all, they are present in such relatively small quantities that they do not materially detract from the water-repellant power of the insoluble stearate of lime which both parties use and rely on to attain the desired result.

The decree is affirmed.