The opinion of the court was delivered by: TAMM
In this action, brought under the provisions of Sec. 4915 of the Revised Statutes 35 U.S.C.A. § 63, plaintiff Peter A. Asseff, as the original applicant, and the Lubrizol Corporation, as assignee of Asseff's right, title and interest in the said application, seek to have this Court order the defendant, the Commissioner of Patents, to issue a patent upon certain claims of the Peter Asseff application. Peter Asseff's application, Serial No. 457,746, was filed in the Patent Office on September 9, 1942. The claims of the patent application upon which plaintiffs base this action are claims numbered one, five, and nine to twenty-four, inclusive. The specification of the application described the invention as one relating to lubricating compositions which are particularly suited for use under high temperature conditions such as those encountered in internal combustion engines of the Diesel type. It appears that ordinary lubricants utilized under the above-described conditions cause deposits to form, resulting in ring sticking and bearing corrosion. In other words, plain lubricating oil is generally incapable of use by itself under vigorous operating conditions such as high temperatures. Ordinary lubricating oil, no matter how highly refined, deteriorates by oxidation or decomposition, and as a result of this deterioration either fails to provide adequate lubrication, or the by-products of such deterioration collect as deposits which interfere with the operation of the equipment being lubricated and, or, the operation of the oil as a lubricant. The plaintiffs' composition is claimed to consist of a chemical addition agent which eliminates the above-described disadvantages of ordinary lubricants. To accomplish these objectives the plaintiffs' patent application relates to the compounding of a lubricating composition in which the main or base constituent is a compound, the molecular structure of which includes the combination of zinc, the capryl alcohol radical and the di-thiophosphate radical. Other compounds may be included in the composition such as detergents, pour point depressors, and extreme pressure agents to meet particular problems of lubrication.
The plaintiffs' application was initially rejected in the Patent Office by the primary examiner on the grounds that (1) the eighteen claims before the Court lacked invention over a patent issued to Cook et al. (Patent No. 2,344,392), (2) that claims nine through twenty-four lacked invention over Cook and Salzberg patents (No. 2,063,629) in view of the patents to Wilson (No. 2,280,419) and McNab (No. 2,289,795); (3) that claims sixteen, eighteen, twenty and twenty-one were too broad and indefinite in claiming 'corrosion inhibitors'. The Board of Appeals affirmed the decision of the primary examiner by a decision dated March 31, 1947. The defendant has, according to the complaint, refused to allow any of plaintiffs' claims on the ground that they are anticipated by the prior art, and the plaintiffs initiated this action within the statutory period seeking to compel the issuance of the patent sought by plaintiffs.
On December 8, 1936, a patent (No. 2,063,629) was granted to Paul L. Salzberg et al. for a compound employed as 'corrosion inhibitors * * * in lubricants for bearings which operate under high pressure'. (p. 3, col. 2, lines 41-43). The Salzberg patent relates to the production of acid esters portion is provided by aliphatic alcohols containing at least ten carbon atoms (p. 1, col. 1, lines 33-36).
On July 14, 1942, a patent was issued to John G. McNab on an application filed September 1, 1939 for compositions related to 'improved lubricants and especially crank case oils for the lubrication of internal combustion engines and particularly for high pressure fuel injection engines such as Diesel engines'. The McNab patent discloses the use of a salt of dithiophosphoric acid ester, specifically calcium dioctyl dithiophosphate (p. 3, col. 2, line 70) in conjunction with metals soaps of natural and synthetic fatty acids and naphthenic acid (p. 2, col. 2, lines 56-61). The McNab patent shows the use of a salt of dithiophosphate ester in which the alkyl radicle contains eight carbon atoms (p. 3, col. 2, line 70). The McNab patent teaches that viscosity improving agents and pour point depressors may also be included for their particular function (p. 4, col. 2, lines 17-30).
On April 21, 1942, a patent was granted to Chester E. Wilson (No. 2,280,419) covering addition of constituents to mineral lubricating oils to give them special characteristics especially adapting them to severe service uses 'such as are encountered in Diesel engines' (p. 1, col. 1, lines 1-6). The Wilson patent describes a lubricant containing an oil soluble salt of the so-called 'Mahogany' sulfonic acids, including the zinc salt, together with oil soluble metal salts of theophenals (p. 1, col. 1, lines 37-45). The sulfonic acids are said to function as detergents, while the sulfur of the theophenol imports anti-corrosive properties (p. 4, col. 1, lines 35-43).
On March 14, 1944, a patent was granted to Elmer W. Cook et al. (No. 2,344,392) on an application filed November 8, 1941, as a continuation in part of an application filed July 11, 1941. This patent describes the preparation of heavy metal salts of the dicapryl ester of dithiophosphoric acid, and teaches that such salts are useful as sludge preventors and anti-corrosive agents for lubricating oils used in internal combustion engines (p. 1, col. 1, lines 8-11 and 42-47). Zinc is specifically mentioned as one of the heavy metals (p. 1, col. 1, lines 1-23). These heavy metal salts are stated to cooperate with the heavy metal salts of diamyl phenol sulfides described in Cook et al.'s patent (No. 2,299,626), as well as with alkaline earth metal salts of petroleum sulfonates (p. 1, col. 2, lines 48-53). The dithiophosphoric acid ester salts are described as being good detergents and to possess important non-oxidizing or anti-oxidant properties (p. 1, col. 1, lines 43-48). The conjoint use of the reaction product with other detergents and corrosion inhibitors is also taught by this patent.
On October 28, 1941 a patent was issued to Peter A. Asseff (No. 2,261,047), one of the plaintiffs herein, on an application filed on July 28, 1941, covering a compounded lubricant. The patent describes a zinc methyl cyclohexanol dithiophosphate salt as an additive for lubricating oil, and discloses that metal phenates may be used in conjunction therewith (p. 2, col. 1, lines 6-12).
It will be observed that the claims here in issue relate in all instances to the use of a capryl alcohol, which alcohol contains only eight carbon atoms. Plaintiffs claim the use of capryl alcohol distinguishes their claims from Salzberg and McNab as outlined above. Salzberg utilized an aliphatic alcohol, but plaintiffs' witness, Dr. Smith, testified that capryl alcohol is an aliphatic alcohol. McNab (p. 3, col. 2, line 70) utilized an octyl alcohol and Dr. Smith testified that capryl alcohol is an octyl alcohol. (Tr. p. 103).
Long prior to plaintiffs' application for the patent here in suit, the art was conversant with the use of dioctyl dithiophosphate salt as indicated by the Salzberg and McNab patents heretofore briefly described. The alcohol used by plaintiffs falls clearly within the disclosure of the prior art. The preparation and use of the capryl ester was a logical and obvious adaptation of the teaching of the prior art, requiring for its accomplishment only the skill of the art. It is further noted that Salzberg indicates the equivalency of the calcium and zinc salts (p. 3, col. 2, lines 17-20) by specific reference to each, and it follows that plaintiffs' preparation of the zinc salt is plainly foreshadowed by the teaching of the prior art. The method of making the specific ester and salt therefrom were, of course, available to plaintiffs. Their production and use were no more than would be reasonably expected from one skilled in the art and did not constitute invention. Soneborn Sons v. Coe, 70 App.D.C. 97, 104 F.2d 230; Rembert et al. v. Coe, 78 U.S.App.D.C. 51, 136 F.2d 793.
The Wilson patent described briefly above shows that the advantageous use of plural additives, and the addition of halogen containing compounds, metal alcoholates and other compounds for their particular functions was recognized in the art. The plaintiff Asseff was following such prior art when he added a separate corrosion inhibitor, or a separate detergent, to dicapryl dithiophosphate salt. Applying these facts to plaintiffs' claims nine to twenty-four, the Court finds these claims lack invention and patentability over Salzberg, McNab and Wilson.
Claim one of plaintiffs' claims set forth a 'lubricating composition containing a characterizing amount of the product obtained by the simultaneous admixture of capryl alcohol, phosphorus pentasulfide and zinc oxide.' (Emphasis supplied.) Plaintiffs base strong contention for their claim or patentability over the Cook et al. patent, on the grounds of reduction to practice prior to the filing of the Cook patent. Evidence was introduced by plaintiffs in an effort to establish this prior reduction to practice. Insofar as Claim One is concerned, the plaintiffs' witness, Asseff, testified (Trans. pp. 67 and 68) that no exhibit offered by the plaintiffs related to any 'simultaneous admixture' of zinc, capryl alcohol and phosphorus materials. Insofar as this claim is concerned, plaintiffs are therefore remitted to the filing date of their application, which date being subsequent to the filing date of the Cook patent establishes the Cook patent as prior art to plaintiffs' claim. Alexander Milburn Co. v. Davis-Bournonville Company, 270 U.S. 390, 46 S. Ct. 324, 70 L. Ed. 651; Minnesota Mining & Manufacturing Co. v. Coe, 69 App.D.C. 256, 100 F.2d 429. The Court accordingly finds for the defendant upon this claim.
Claim Five of plaintiff's application is as follows: 'A lubricating composition for Diesel engines capable of inhibiting ring sticking and corrosion of the bearing surfaces of the engine with which the same comes in contact, specially when such bearing surfaces comprise a characterizing amount of a metal of the class consisting of nickel, copper, silver, cadmium, lead and tin, comprising major proportion of highly refined solvent extracted mineral lubricating oil having a viscosity index of the Dean and Davis scale of over 75 and a ...