Setrak K. Boyajian, Etc., Defendant-appellant, v. Old Colony Envelope Company, Inc., et al., Plaintiffs-appellees, 279 F.2d 572 (1st Cir. 1960)

This is an appeal from a decree of the United States District Court for the District of Massachusetts, entered September 16, 1959 upon plaintiffs-appellees' motion for summary judgment, which adjudged invalid all claims under U.S. Patent No. 2,804,395 of the defendant-appellant and dismissed his counterclaim for infringement.

Plaintiffs petitioned the district court under 28 U.S.C. §§ 2201, 2202 (1958) for a declaratory judgment against defendant, the owner of patent No. 2,804,395 that all the claims of said letters patent were invalid and not infringed. Defendant answered and counterclaimed for damages for infringement and other relief.

The patent in suit, issued to defendant on August 27, 1957 on application filed September 4, 1953, relates to "Envelopes And The Like With Remoistenable Adhesive Comprising Polyvinyl Alcohol."¹ 

In its opinion the district court stated: "The only possible basis for contending that Claim 4 shows an advance over the prior art is to rely upon the boiling of the polyvinyl alcohol, and the connected process of keeping the boiling mixture under agitation." It assumed for purposes of disposition of the motion, that such boiling and agitation produced a more satisfactory result. However, it concluded as a matter of ultimate fact and of law that such an improvement would not support a patent since it would have been obvious to one skilled in the art, and was pointed out by DuPont as a workable variation from the practice it recommended in regard to its brand of polyvinyl alcohol.²  The district court said that "this conclusion of invalidity could not be overcome even if defendant could prove every fact set forth in his affidavits and the other material submitted by him."

We disagree. Before it is possible to say that the employment of boiling was obvious to obtain the improved polyvinyl alcohol solution, it is necessary to know what the problem was which needed to be overcome.

The patent and its file wrapper state that defendant met a problem in seeking to utilize polyvinyl alcohol as the essential ingredient of an envelope sealing gum which was there characterized as "lack of operating stability as well as uniformity" of the polyvinyl alcohol solution. The file wrapper specifies the problem as the formation of clusters or lumps by particles of polyvinyl alcohol in the aqueous solution concentrations suitable for use as an envelope sealing gum. Defendant also stated in his deposition what the problem encountered was: "particles [of polyvinyl alcohol] remain aloof." The defendant attributes this characteristic both to the structure of polyvinyl alcohol itself and to the possible presence of contaminants.

Boiling may be an obvious method to get rid of certain volatile contaminants, once the presence of such is known or even to precipitate out substances with decreased solubility at higher temperatures. However, the use of boiling and agitation to obtain a uniform or homogeneous distribution of polyvinyl alcohol in the solution cannot be said to be obvious from the nature of boiling, and unless it had been suggested previously to overcome this problem of lack of homogeneity it would properly support the validity of a patent.

The DuPont brochure stated: "`Elvanol' solution, properly prepared, is a clear, colorless liquid, free from lumps." DuPont suggested the heating of a mixture of polyvinyl alcohol dispersed in cold water as a means of avoiding "lumps". If the problem that defendant's patent and file wrapper attest to is nothing more than the "lumps" that the DuPont suggestion obviated, then the further heating of the mixture to the boiling point might be said to be an obvious variation.³ 

However, part of the language setting out the problem met by Boyajian seems to go beyond the problem of breaking or avoiding lumps. For instance, he states that his process of boiling "shortens the chain lengths" of the polyvinyl alcohol. The file wrapper states: "[T]he percentage of water will vary in different regions within the same container, and agitation will only wetblend such variations without eliminating them. Nor heating `slightly' will materially (sic) change this situation, and so both the segregation and the lumps will persist indefinitely, perhaps diminishing by age but never disappearing."

Elsewhere in his deposition defendant said:

"Q. [T]he film is smoother. Does that refer to the property you spoke about the other day, that sometimes the solution appears clear if it isn't boiled, but if you put it on a film and run your finger over it, you can feel a roughness? A. A grit, yes.

* * * * * *

"A. * * * Well not just grit, but of course it lacks homogeneity, you might say.

* * * * * *

"A. * * * unboiled polyvinyl alcohol will have particles, compared with boiled solution. * * * Heavier particles floating in dilute solution. When it is applied it does not dry so fast as a homogeneous solution would."

The problem of "lumps" that is mentioned in the DuPont brochure is not further specified. The various statements of defendant as referred to above tend to show that the problem encountered was not merely one of breaking up detectable "lumps", although such does seem to be part of the problem. If the problem met by defendant differed from that treated by DuPont then we do not believe it can be said that boiling was an obvious treatment as indicated by the prior art. If, as seems here, the identity or nonidentity of the problems is not clear from the affidavits and other material before the district court, we do not believe that the validity of a patent may be rejected on a motion for summary judgment.⁴  See Toebelman v. Missouri-Kansas Pipe Line Co., 3 Cir., 1942, 130 F.2d 1016; American Optical Co. v. New Jersey Optical Co., D.C.D. Mass. 1944, 58 F. Supp. 601.

Affidavits submitted by the defendant that there was no use of polyvinyl alcohol as a sealing gum for envelopes prior to the introduction of defendant's product in 1953 would seem to be circumstantial support for a conclusion that there was an additional obstacle to the use of polyvinyl alcohol as an envelope sealing gum beyond the mere breaking down of lumps in the aqueous solution and that defendant was using boiling to meet this obstacle.⁵ 

The district court concluded that Claim 1 was invalid "because it does no more than use a series of laudatory adjectives." [176 F. Supp. 629.] It stated that: "The claim does not describe the structure or composition of Boyajian's adhesive composition. It does not even refer to boiling the solution" and held that the standards of 35 U.S.C. § 112 (1958) were not met. A portion of the file wrapper in the record before us indicates that defendant answered such an objection in two ways: (1) that boiling was implied; (2) that as he was the first to use polyvinyl alcohol in any form he was entitled to a broad claim reciting its use for that purpose in any form even if boiling was a necessary step. The record on appeal does not contain enough to indicate the Patent Office's basis in allowing this claim. However, if the patent was issued on the basis of boiling being implied, then there is no harm to defendant since other claims cover the invention, which is a method of obtaining such an adhesive and its application to envelope seals. If the claim was allowed on its own wording we agree with the district court that the descriptive language is functional and does not satisfy Section 112.

We also agree with the district court that the record does not indicate that sugar was used by defendant to achieve any result that differed from its utilization in the prior art. The claims reciting the use of sugar as an addition to the polyvinyl alcohol solution are invalid for obviousness.

We do not decide the validity of the defendant's claims involving the boiling and agitation of the polyvinyl alcohol solution. Our decision is merely that on the record before the district court, it was error to grant summary judgment invalidating such claims. It is possible that upon trial after viewing all the evidence a conclusion of invalidity will be reached. However, at this stage of the litigation and on the record we do not believe that the statutory presumption of validity has been overcome. See Long v. Arkansas Foundry Company, 8 Cir., 1957, 247 F.2d 366.

Judgment will be entered vacating the judgment of the district court and remanding the case for further proceedings not inconsistent with this opinion.